Innovia Security Pty Ltd v OVD Kinegram AG
[2014] APO 61
•25 August 2014
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Innovia Security Pty Ltd v OVD Kinegram AG [2014] APO 61
Patent Applications 2005284440
Title:Security Document
Patent Applicant: OVD Kinegram AG
Opponent: Innovia Security Pty Ltd
Delegate: Dr S. K. Aggarwal
Decision Date: 25 August 2014
Hearing Date: 03 June 2014, in Canberra
Catchwords: PATENTS – opposition to grant – lack of novelty of claims not established – prior art could have reasonably been ascertained, understood and regarded as relevant by the skilled addressee – insufficient evidence to establish that claims lack inventive step in light of prior art and common general knowledge – claims fairly based – specification describes the invention fully – claims are clear – cost in accordance with Schedule 8 awarded against the opponent.
Representation: Patent applicant: Mr Mark Horsburgh and Mr Jon Wright of the patent attorney firm Fisher Adams Kelly, Brisbane
Opponent:Mr Ken Bolton of the patent attorney firm Watermark, Melbourne
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2005284440
Title:Security Document
Patent Applicant: OVD Kinegram AG
Date of Decision: 25 August 2014
DECISION
The opponent does not succeed on any of the grounds of opposition. Subject to appeal, I direct that the application proceed to grant.
I award costs against the opponent.
REASONS FOR DECISION
Background
Patent application 2005284440 (WO2006/029744) directed to a Security Document was filed on 7 September 2005 by OVD Kinegram AG (“the applicant”). The application claims priority from German application DE10 2004 044 458.7 filed on 15 September 2004. The application 2005284440 was advertised accepted on 6 January 2011.
A notice of opposition to the application 2005284440 was filed on 6 April 2011 by Securency International Pty Ltd (“the opponent”) and a statement of grounds and particulars was served on 6 July 2011.
Following several extensions of time, the opponent completed their evidence in support on 21 August 2012. On 19 March 2013, the opponent advised the Commissioner that they had changed their company name to Innovia Security Pty Ltd. After several extensions of time, the applicant completed their evidence in answer on 21 August 2013. The opponent completed their evidence in reply on 19 November 2013.
The opponent and the applicant filed their summary of submissions prior to the hearing on 20 May 2014 and 27 May 2014 respectively through their respective attorneys.
The Statement of Grounds and Particulars
As a consequence of the Intellectual Property Legislation Amendment (Raising the Bar) Act 2012, there are substantial changes to the Patents Act 1990. In the case of the present application, the grounds of opposition are governed by the Patent Act in force before 15 April 2013.
The grounds of opposition specified in the statement of grounds and particulars are that the specification does not comply with sub-paragraphs 18(1)(b)(i), 18(1)(b)(ii) and sub-sections 40(2) or 40(3) of the Patents Act 1990.
The statement of grounds and particulars is confusing in that the grounds state that claims 1-30 lack novelty and inventive step and the particulars state that claims 1-4 and 17 lack novelty while the opposed specification has only 13 claims. The opponent provides detailed particulars in respect of the novelty of claims 1, 3, 4 and 11 in light of a single prior art document
US 2003/0169468 (Exhibit 11, “D1”). However in relation to inventive step, several prior art documents have been cited. It has been asserted that the remaining claims are not inventive in view of D1 when combined with another prior art document and/or common general knowledge in the art. The statement of grounds and particulars also asserts that the opposed specification lacks sufficiency in respect of paragraph 40(2)(a). Several aspects of non-clarity and one of fair basis have been raised in respect of sub-section 40(3).The Specification
The object of the invention is to provide an improved security document, such as a banknote or an identity card, presumably in terms of its counterfeit deterrence and the ability to self verify its authenticity wherein regions of the document can be brought into overlap with each other so that a security feature on the document becomes visible.
The specification concludes with thirteen claims of which only claims 1 and 2 are independent. The independent claims read as follows:
1.A security document (1, 7), in particular a banknote or an identity card, having a first transparent region (11, 72) in which a first transparent optical element (18, 74) is arranged and a second region (12, 71) in which a second opaque optical element (19, 73) is arranged, which has a first optical effect, wherein the first region (11, 72) and the second region (12, 71) are arranged on a carrier (17, 75) of the security document in mutually spaced relationship in such a way that the first and second regions can be brought into overlap with each other, characterised in that
the first optical element (18, 74) and the second optical element (19,73) are of such a configuration and are so matched to each other that upon overlap of the second optical element with the first optical element at a first spacing (24, 26) between the first and the second optical element a second optical effect (52) is produced and upon overlap of the second optical element with the first optical element at a second spacing (22, 25) between the first and second optical elements, which is greater than the first spacing, a third optical effect (51) which is different from the second optical effect is produced, wherein the second optical element has a microstructured moiré pattern and the first optical element has an at least partially transparent layer in which there are superposed a moiré analyser which is matched to the moiré pattern and a convex lens which is of a focal length which corresponds to the second spacing and which is suitable for rendering the microstructuring of the moiré pattern visible.
2.A security document (1, 7), in particular a banknote or an identity card, having a first transparent region (11, 72) in which a first transparent optical element (18, 74) is arranged and a second region (12, 71) in which a second opaque optical element (19, 73) is arranged, which has a first optical effect, wherein the first region (11, 72) and the second region (12, 71) are arranged on a carrier (17, 75) of the security document in mutually spaced relationship in such a way that the first and second regions can be brought into overlap with each other, characterised in that
the first optical element (18, 74) and the second optical element (19, 73) are of such a configuration and are so matched to each other that upon overlap of the second optical element with the first optical element at a first spacing (24, 26) between the first and the second optical element a second optical effect (52) is produced and upon overlap of the second optical element with the first optical element at a second spacing (22, 25) between the first and second optical elements, which is greater than the first spacing, a third optical effect (51) which is different from the second optical effect is produced, wherein the second optical element (73) has a layer structured in accordance with a micropattern and the first optical element (74, 2) has a transparent layer in which a rastering of a convex lens of a focal length which corresponds to the second spacing (25) is superposed with a lens raster which is matched to the micropattern and which has a plurality of microlenses (79, 82, 84) of a focal length which corresponds to the first spacing (26).
Evidence
The evidence in support consists of a single statutory declaration from each of Mr Bruce Alfred Hardwick and Mr David Ian Lindsay.
Mr Hardwick was employed with Note Printing Works (NPW)/Note Printing Australia Limited (NPAL), a division of the Reserve Bank of Australia, until his retirement in 2005. He was also involved with Securency International Pty. Ltd (i.e. the opponent) as they are also a related Reserve Bank of Australia company. During his employment, he played a significant role in banknote printing. The first Hardwick declaration relies on exhibits BAH-1 to BAH-20 in support of the opponent’s case.
Mr Lindsay is a patent attorney with the patent attorney firm representing the opponent. The Lindsay declaration puts into evidence prior art documents D1-D9 as exhibits IDL-1 to IDL-9 in support of the opponent’s case.
The evidence in answer consists of two statutory declarations from Mr Karel Johan Schell and a single statutory declaration from Mr Norbet Zinsinger.
Mr Schell is the owner/director of Schell Consulting BV. He was involved with various aspects of security printing particularly for banknotes. The first and second Schell declarations rely on exhibits KS-1 to KS-9 and KS-10 to KS-11 respectively in support of the applicant’s case.
Mr Zinsinger is an European patent attorney of the firm, Louis, Pohlau, Lohrentz Patentantwalte. The Zinsinger declaration relies on a single exhibit NZ-1 and seeks to show that Dr Harwick is not impartial due to his previous involvement with the opponent and the opposition procedings against EP 0930979 (Exhibit BAH-3).
The evidence in reply consists of a second declaration by Dr Hardwick. The second Hardwick declaration mainly responds to some of the comments made in Schell and Zinsinger declarations.
I will provide the details of what is contained in the evidence, and the details of parties’ submissions, where relevant, later in my decision.
Decision
Onus of Proof
The examination request for this patent application was filed on 9 September 2008. As a consequence, substantive amendments of the Patents Act brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 do not apply to the present application. This includes the amendment to subsection 60 (3A) that allows the Commissioner to refuse a patent application if satisfied on the balance of probabilities that a ground of opposition exists.
Consequently the former standard for opposition proceedings applies and the opponent must establish that it is clear or practically certain that the patent is invalid (F Hoffman La Roche AG v New England Biolabs Inc [2000] FCA 283 at [29], [67]; [2000] FCA 283; 50 IPR 305 at 311, 319; Commissioner of Patents v Sherman [2008] FCAFC 182 at [18], [22]; [2008] FCAFC 182; 79 IPR 426; Genetics Institute Inc v Kirin-Amgen Inc [1999] FCA 742; [1999] 92 FCR 106 at [17]).
Novelty
Law Relating to Novelty
Section 7 of the Patent Act 1990 provides that
(2) For the purpose of this Act, an invention is to be taken to be novel when compared with the prior art base unless it is not novel in the light of any of the following kinds of information, each of which must be considered separately:
(a) prior art information (other than mentioned in paragraph (c)) made publicly available in a single document or through doing a single Act;
(b) prior art information (other than mentioned in paragraph (c)) made publicly available in 2 or more related documents, or through doing 2 or more related acts, if the relationship between the documents or acts is such that a person skilled in the relevant art would treat them as a single source of that information;
(c) prior art information contained in a single specification of the kind mentioned in subparagraph (b)(ii) of the definition of prior art base in Schedule 1.
The test for novelty has been discussed in the Full Federal Court decisions of Pfizer Overseas Pharmaceuticals v Eli Lilly and Company [ 2005] FCAFC 224 (see paragraphs 311 et seq) and Bristol-Myers Squibb Company v FH Faulding & Co Limited (2000) 97 FCR 524. As noted in both the decisions, the basic test for novelty is the "reverse infringement test" as set out in Meyers Taylor Pty Ltd v Vicarr Industries (1977) 137 CLR 228 at page 235 where Aickin J stated:
“The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged invention would if the patent were valid, constitute an infringement.”
Infringement is said to occur where "each and every one of the essential features of that claim have been taken" (Rodi and Wienenberger AG v Henry Showell Ltd (1969) RPC 367). However, as Pfizer (supra) noted, it is not sufficient for a citation to contain all the essential features of the claim, there must be "clear and unmistakable" directions to the claimed invention. In addition, to deprive a claim of its novelty, a citation must be the same as the claimed invention for the purposes of "practical utility". In other words, the citation has to "enable" the skilled worker to produce the invention from the written disclosure.
Novelty can however be found where a feature is not explicitly mentioned but nonetheless present as an inherent feature as an inevitable result of the disclosure. As noted in General Tire (supra) at page 486:
“if in carrying out the directions contained in a prior inventor's publication will inevitably result in something being made or done which, if the claim of the opposed specification were a claim of a valid patent, would constitute an infringement of that claim, then that claim would have been anticipated.”
Novelty Determination in the Current Case
US 2003/0169468 (Exhibit BAH-11, “D1”) is the only item of prior art advanced by the opponent as rendering claims 1-4 and 11 not novel. Before discussing the submissions of the parties in detail, I will briefly go through the contents of the opposed specification and the prior art document D1.
The opposed specification relates to a security document, in particular a banknote, having a first region in which a first transparent optical element is arranged and a second region in which a second opaque optical element is arranged. The security document is flexible so that the first transparent element can be brought into overlap with the second opaque element. The authenticity of the security document can be verified by viewing the second opaque element through the first transparent element. The document produces three optical effects: a first optical effect when the second opaque element is viewed without the first transparent element; a second optical effect when the second opaque element is viewed through the first transparent element at a first spacing; and the third optical effect when the second opaque element is viewed through the first transparent element at a second spacing (greater than the first spacing). In a preferred embodiment, the first optical effect is the direct visual appearance of the second opaque element, the second optical effect is a first pattern and the third optical effect is an enlarged representation of the first pattern.
In one preferred form, the opposed specification discloses the second opaque element as a microstructured Moiré pattern and the first transparent element as a Moiré analyser matched to the Moiré pattern. The analyser is superposed with a convex lens having a focal length corresponding to the second spacing for making the microstructuring of the Moiré pattern visible. In another preferred form, the second opaque element has a layer structured with a micropattern and the first transparent element has a layer in which a rastering of a convex lens of a focal length corresponding to the second spacing is superposed with a lens raster which is matched to the micropattern and which has a plurality of microlenses of a focal length which correspond to the first spacing.
The prior art document D1 discloses a security document which is in many respect similar to the security document described in the opposed specification. The security document of D1 consists of a verification element and a security element, and is flexible so that the verification element can brought into overlap with the security element. The verification element comprises a partially transparent material while the security element comprises a hologram carrier which, under incident light, reconstructs a pattern in a holographic fashion which lies outside the carrier plane. The authenticity of the document can be verified by bringing the verification element in flat contact with the security element and viewing the information concealed in the pattern produced holographically by the security element.
In one embodiment, D1 discloses that the security element produces a line pattern outside the plane of the banknote under incident light while the verification element also produces a line pattern under incident light in the same plane outside the banknote if the verification element and the security element are superposed. The line patterns are adjusted such that a Moiré pattern is obtained. In another embodiment, the security element produces a pattern outside the plane of the banknote which is made visible by magnification with the aid of a lens structure in the verification element.
Detailed submissions were made by the parties in respect of the novelty of independent claims 1 and 2 in light of D1. Firstly, I will consider the parties’ submissions in regard to a key feature of the above claims that:
“first optical element and the second optical element are of such a configuration and are so matched to each other that upon overlap of the second optical element with the first optical element at a first spacing between the first and the second optical element a second optical effect is produced and upon overlap of the second optical element with the first optical element at a second spacing between the first and second optical elements, which is greater than the first spacing, a third optical effect which is different from the second optical effect is produced”.
In respect of the above feature, Mr Bolton suggested that the prior art document D1 discloses a verification element and a security element which correspond to a first transparent optical element and a second opaque optical element respectively of the claimed invention. He put the view that a second optical effect is generated when the verification element and the security element are made to overlap. Mr Bolton further suggested that the security element shown in the document produces a pattern outside the plane of a banknote which is made visible with the aid of lens structure provided by the verification element, and that this produces a third optical effect.
In support of the opponent, Mr Hardwick stated that D1 discloses the various optical effects required for claim 1. Mr Hardwick did not comment about the disclosure of individual features of the claimed invention in D1.
Disagreeing with the opponent, Mr Horsburgh submitted that D1 describes several distinct embodiments of the security element. While in one embodiment, the verification element converts the phase modulation of the security element into a visible amplitude modulation where a stripe pattern is created holographically by the security element, in other embodiment, a lens structure is utilized to produce an amplitude-modulated pattern. Mr Horsburgh asserted that in each of the embodiments, only a single effect is produced when the verification element is in flat contact with the security element and that none of the embodiments of D1 discloses a security document that produces three optical effects, in which two of the three optical effects become visible when the security element is viewed through the verification element at two different spacings.
Having considered the document as a whole, it is evident to me that D1 neither discloses nor suggests viewing the security element through verification element at two different spacings. On the contrary, D1 requires the verification element to be in flat contact with the security element and the fixed spacing shown in various embodiments refer to a holographic spacing of a holographic pattern outside of the carrier plane. I am therefore satisfied that D1 does not disclose the feature of two optical effects when the security element is viewed through the verification element at two different spacings.
In view of the above, I find that claims 1 and 2 are novel in light of D1. The remaining claims of the opposed specification are appended to either claim 1 or claim 2 and therefore are also novel in light of D1. Hence, the opposition fails on this ground of opposition.
Inventive Step
Law Relating to Inventive Step
Section 7 of the Patent Act 1990 at the relevant date provides that
(2) For the purpose of this Act, an invention is to be taken to involve an inventive step when compared with the prior art base unless the invention would have been obvious to a person skilled in the relevant art in the light of the common general knowledge as it existed in the patent area before the priority date of the relevant claim, whether that knowledge is considered separately or together with the information mentioned in subsection (3).
(3) The information for the purposes of subsection (2) is:
(a) any single piece of prior art information; or
(b) a combination of any 2 or more pieces of prior art information;
being information that the skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood, regarded as relevant and, in the case of information mentioned in paragraph (b), combined as mentioned in that paragraph.
The High Court in Aktiebolaget Hassle v Alphapharm Pty Ltd [2002] HCA 59 confirmed that “obvious” means “very plain” as stated by the English Court of Appeal in The General Tire & Rubber Company v The Firestone Tyre and Rubber Company Ltd where it was said:
"'Obvious' is, after all, a much-used word and it does not seem to [us] that there is any need to go beyond the primary dictionary meaning of 'very plain'.”
A person skilled in the art is a non-inventive worker who is not overly qualified and has a practical interest in the subject matter of the invention. In Root Quality Pty Ltd v Root Control Technologies Pty Ltd (2000) 49 IPR 225 at 241-242, Finkelstein J stated:
"Generally speaking the skilled addressee is the person who works in the art or science with which the invention is connected.”
While inventiveness requires more than novelty, even a "scintilla of inventiveness" is sufficient and a step, if otherwise inventive, does not lose its inventiveness because the idea, once conceived, is very simple to put into effect (Winner v Ammar Holdings Pty Ltd 25 IPR 273). The test is objective, so that it is irrelevant whether the invention was a matter of chance or the result of long experimentation and much effort (Winner v Ammar at 294).
Common General Knowledge
As a precursor to any inventive step consideration, the state of the common general knowledge in the art has to be established. The common general knowledge is the background knowledge attributable to the person skilled in the art. A widely accepted definition of common general knowledge is that provided by Aickin J in Minnesota Mining and Manufacturing Company and Another v Beiersdorf (Australia) Limited 144 CLR 253 at 292:
"The notion of common general knowledge itself involves the use of that which is known or used by those in the relevant trade. It forms the background knowledge and experience which is available to all in the trade in considering the making of new products, or the making of improvements in old, and it must be treated as being used by an individual as a general body of knowledge.”
The state of the common general knowledge is a question of fact which must, in general, be determined on the basis of evidence from persons whose background enables them to testify authoritatively as to the common general knowledge in the particular art.
Approach Used to Assess Inventive Step
There are a number of approaches which the courts have used to assess inventive step. In Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd (1981) 148 CLR 262 at 286, Aickin J stated:
"The test is whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not.”
The High Court in Aktiebolaget Hassle (supra) referred with approval to this approach and further held:
"That way of approaching the matter has an affinity with the reformulation of the `Cripps question' by Graham J in Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd (1970) RPC 157. This court had been referred to Olin in the argument in Wellcome Foundation. Graham J had posed the question:
`Would the notional research group at the relevant date in all the circumstances which includes a knowledge of all the relevant prior art and of the facts of the nature and success of [compound], directly be led as a matter of course to try [the claimed invention] in the expectation that it might well produce [the desired result]?'
That approach should be accepted."
Inventive Step Determination in the Current Case
Mr Bolton advocated the use of a “problem solution approach” for assessing inventive step in the current case and relied on prior art documents US 2003/0169468 (Exhibit 11, “D1”), US 5383687 (BAH-12, “D2), US 5712731 (BAH-8, “D3”) and US 2004/0076310 (BAH-14, “D5”) in support of the opposition.
Before determining the inventive step of the claimed invention, I will identify the person skilled in the art and the common general knowledge of that person at the priority date of the claims of the opposed specification. I will also determine whether the prior art documents D1-D3 and D5 could reasonably be expected to have been ascertained, understood and regarded as relevant by the skilled addressee.
The person skilled in the art
Mr Bolton submitted that the relevant skilled person must be a person who is familiar with the development and production of security features for the documents. In the absence of any contrary suggestion from the applicant, I regard the person skilled in the art as one with knowledge of development and production of self-verifying security documents.
Mr Bolton criticized the applicant witness stating that Mr Schall’s time as statutory director of Royal Johan Anschede Currency Printers ended eleven years before the priority date, and his declarations fail to establish that he was familiar with the state of art in relation to the security documents within Australia at the priority date. Disagreeing with the opponent, Mr Horsburg asserted that Mr Schell is as close to the notional non-inventive skilled addressee as is possible.
On the other hand, Mr Horsburg submitted that Dr Hardwick cannot be considered to be a non-inventive worker in the art as he has patents in the field of banknote security features. Mr Horsburg asserted that since Dr Hardwick has been closely associated with the opponent for an extended period of time, he cannot give independent evidence. In response, Mr Bolton stated that Dr Hardwick has thirty years of experience in banknote production, and his association with the opponent is no reason to conclude that his evidence is in any way biased.
Ultimately, I do not have to decide one way or the other regarding their testimonies since the outcome of my decision does not change.
The common general knowledge in the art
Based on the declarations before me, I am of the view that the following were common general knowledge in the art in Australia before the priority date of the claims of the opposed specification:
1.Security features such as microtext, micropatterns, line patterns and diffractive patterns.
2.Generation of Moiré effect using two sets of printed lines.
3.Ability to enlarge areas of micropatterns using a Moiré magnifier.
4.Formation of microlenses or lenses of different types in adjacent regions.
5.Self verification of a banknote using a magnifying lens by folding the banknote to overlap the magnifying lens and a security feature.
6.Hot stamping to structure parts of a security document and the use of protective lacquers to cover security elements.
D1, D2, D3, and D5 ascertained, understood and regarded as relevant by the skilled addressee
Referring to the Hardwick declarations, Mr Bolton submitted that D1-D3 and D5 were information that the skilled person could reasonably be expected to have ascertained, understood and regarded as relevant before the priority date. In the absence of any contrary suggestion from the applicant, I am inclined to accept Mr Bolton’s assertion on this point.
Inventive step in light of the prior art documents
Mr Bolton suggested that the problem sought to be addressed by the invention is to improve security documents by providing a verification process that involves something more than revealing a concealed security feature, and that the alleged invention achieves this by integrating three optical effects into a security document which uses only one transparent element and one opaque element.
While suggesting that the first optical effect is just the plain appearance of the second optical element and anything with a visual appearance satisfies this requirement, Mr Bolton submitted that D1 provides the remaining second and third optical effects with its disclosure of the concept of producing both a Moiré pattern and a magnified version of the pattern. He put the view that since D3 discloses microlens arrays of different focal lengths combined to provide different optical impressions at different focal length, the invention defined in claim 1 lacks an inventive step when the disclosures of D1 and D3 are combined. In support of the opponent, Mr Hardwick stated that claim 1 is obvious in view of D1.
In relation to independent claim 2, Mr Bolton argued that this claim differs from claim 1 in that the second opaque optical element is a micropattern and the first transparent optical element is a rastering of a convex lens with a microlens raster. He asserted that since D3 discloses integration of two different types of lens in a lens raster corresponding to the underlying pattern, the invention defined in claim 2 lacks an inventive step in light of D1 in combination of D3 and/or the common general knowledge in the art.
In response, Mr Horsburgh submitted that the evidence of Dr Hardwick is tainted by hindsight as he has not expressed any opinion on what a skilled worker in the field may have done prior to being provided with the details of the opposed specification. Mr Horsburg further submitted that in contrast to the evidence of Dr Hardwick, the evidence provided by Mr Schell is neither tainted by bias nor hindsight. He stated that Mr Schell was given the problem without having access to the patent specification and while referring to some of the prior art relied by Dr Hardwick, the solution arrived at by Mr Schall is to consider a dot frequency modulated image or a lenticular watermark.
As discussed under novelty, I have found that D1 neither discloses nor suggests viewing the security element through the verifications element at two different spacings and thus fails to disclose the feature defined in claims 1 and 2 that upon overlap of the second optical element with the first optical element at a first spacing between the first and the second optical element a second optical effect is produced and upon overlap of the second optical element with the first optical element at a second spacing between the first and second optical elements, which is greater than the first spacing, a third optical effect which is different from the second optical effect is produced.
I need to determine whether the above feature would be obvious when the disclosure of D1 is combined with the disclosure of D3 and/or common general knowledge in the art.
D3 relates to a security device for security documents such as banknotes and credit card. The security device includes an array of microimages which when viewed through a corresponding array of substantially speherical microlenses, generates a magnified image. To make counterfeiting of security documents more difficult, the device may have lens arrays consisting of combination lenses of different focal lengths. Typically the microlenses and the microimages arrays are relatively rotatable, and as the two arrays are rotated, the changing arrays of images form a visual security feature. D3 does not suggest viewing the microimages through the lenses at two different spacings, and the production of second and third optical effects.
While suggesting that the claimed invention is obvious, the opponent has not explained steps that a skilled addressee in the art may have been taken to arrive at the claimed invention in light of the prior art documents D1, D3 and/or common general knowledge in the art while seeking to provide an improved security document. Furthermore there is no evidence that the skilled addressee could reasonably be expected to have combined the disclosures of D1 and D3. Notwithstanding this, even if it had been established that the skilled addressee addressee could reasonably be expected to have combined the disclosure of D1 with D3 and/or common general knowledge in the art, the combination does not include viewing the second optical element through the first optical element at two different spacings, and the production of second and third optical effects. I consider that there is insufficient evidence to establish that independent claims 1 and 2 are obvious.
The opponent did not argue that claim 1 and 2 are not inventive in light of D2 and D5 when taken individually or in combination with any other documents and /or common general knowledge in the art. For the sake of completeness, I note that none of these documents discloses viewing the second optical element through the first optical element at two different spacings, and the production of second and third optical effects.
I find claims 1 and 2 are inventive. The remaining claims of the opposed specification are either appended to claim 1 or claim 2 and are also inventive. Therefore, the opposition fails on this ground of opposition.
Section 40 Matters
Fair basis, Sufficiency, Clarity
The test for fair basis accepted in LockwoodSecurity Products Pty Ltd v Doric Products Pty Ltd [2004] HCA 69, 98-99 as being relevant to the consideration of fair basis is:
· whether there is a real and reasonably clear disclosure of the claimed invention in the specification [from Société Des Usines Chimiques Rhône-Poulenc v Commissioner of Patents (1958) 100 CLR 5 and cited with approval in Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd (1988) 81 ALR 79] or
· whether the claims travel beyond the subject matter of the invention described in the specification [Olin v Super Cartridge (1977) 180 CLR 236].
The legal test for sufficiency is set out in the High Court decision in Kimberly-Clark Australia Pty Ltd v Arico Trading International Pty Ltd ( 2001) HCA 8 at [25]:
"The question is, will the disclosure enable the addressee of the specification to produce something within each claim without new inventions or additions of prolonged study of matters presenting initial difficulty?"
It is noteworthy that patent claims frequently contain terms that are imprecise. This does not give rise to an objection of lack of clarity if it is possible for the addressee to ascertain whether or not an act falls within the ambit of the claim. This is a practical determination, rather than a strictly literal exercise, and it is acceptable if there is minor uncertainty at the edges of a claim.
"The court will give little weight to puzzles which may arise 'at the edge of the claim' if those puzzles would not, as a practical matter, cause difficulty for the skilled addressee or manufacturer wishing to satisfy himself that what he proposes to do will not infringe that patent" (Glaverbel SA v British Coal Corp [1994] RPC 443 at 495).
During the hearing Mr Bolton raised two aspects of fair basis, one of sufficiency and several aspects of clarity.
In relation to fair basis, Mr Bolton submitted that claim 1 defines the first optical element to have an at least partially transparent layer in which a Moiré analyser and a convex lens are superposed. However, the description and drawings fail to provide any disclosure of a convex lens on top of the Moiré analyser, and therefore, claim 1 lacks fair basis. Mr Boton raised a similar issue in regard to claim 2 in that the description does not disclose a convex lens superposed with a lens raster. Mr Hardwick stated that it would be obvious to interlace sets of lenses despite superposition tending to relate to placing of one item over other.
In response, Mr Horsburg stated that the opponent’s case with respect to fair basis would seem more correctly to be of clarity with the use of the term “superposed”, and that any ambiguity can easily be resolved by reference to the body of the specification, as has been done by all the declarants. Mr Schall stated that he considers the word “superposed” to be the correct word to describe the interleaved nature of the Moiré analyser and the convex lens or the convex lens and the lens raster, and that the word did not refer to one thing having to be placed on top of another.
In view of the above, I consider that there is no basis for the opponent’s objection in the present matter and the claims are fairly based.
In relation to sufficiency and clarity, I cannot see any merit in the opponent's arguments. All are matters which are easily understood when the specification is read as a whole, as should be expected. It is noteworthy that none of the declarants has identified any particular difficulty with any of these issues. I therefore find that the specification describes the invention fully and the claims are clear.
Conclusion
The opponent does not succeed on any of the grounds of opposition.
Subject to appeal, I direct that the application proceed to grant.
Costs
The award of costs is a discretionary matter. It is a general principle in matters such as these that costs follow the event, and I see no reason to depart from this practice. I have found that the opponent has been unsuccessful in all respects. I therefore award costs in accordance with Schedule 8 against the opponent.
Dr S. K. Aggarwal
Delegate of the Commissioner of Patents
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