Innovia Security Pty Ltd v Visual Physics, LLC

[2017] APO 21

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Innovia Security Pty Ltd v Visual Physics, LLC [2017] APO 21

Patent Application:                2011271030

Title:An Optical System Demonstrating Improved Resistance To Optically Degrading External Effects

Patent Applicant:                   Visual Physics, LLC

Opponent:  Innovia Security Pty Ltd

Delegate:  M. G. Kraefft

Decision Date:  15 May 2017

Hearing Date:  22 February 2017, in Canberra

Catchwords:  PATENTS – section 59 – opposition to grant of patent – synthetic micro-optic image system – whether claimed invention was novel – whether claimed invention had inventive step – claims not novel and/or not inventive – applicant allowed an opportunity to amend.

Representation:  Counsel for the applicant:  Mr Anthony Franklin SC

Solicitor for the applicant:  Ms Katrina Crooks, Shelston IP

Patent attorney for the applicant:  Mr Greg Whitehead, Shelston IP.

Counsel for the opponent:  Mr Craig Smith

Patent attorneys for the opponent:  Mr Ken Bolton, Phillips Ormonde Fitzpatrick, and Mr Ian Lindsay, IP manager of Innovia Security Pty Ltd.

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application:                2011271030

Title:An Optical System Demonstrating Improved Resistance To Optically Degrading External Effects

Patent Applicant:                   Visual Physics, LLC

Date of Decision:                   15 May 2017

DECISION

Claims 1, 19, 21-27, 30, 31, 33-36, 39, 50, 52-61, 64, 65, 67 and 71-81 of the present application are not novel.  Claims 1-5, 7, 10-19, 21-68 and 70-82 do not have an inventive step.

To overcome these deficiencies, the applicant is allowed two (2) months from the date of this decision to propose suitable amendments.

Costs in accordance with Schedule 8 awarded against the applicant, Visual Physics, LLC.

REASONS FOR DECISION

BACKGROUND OF PATENT APPLICATION

1. Visual Physics, LLC (“the applicant”) filed patent application 2011271030 on 22 June 2011.  The application is based on a United States application filed on 22 June 2010 (“the priority date”).  Application 2011271030 was advertised accepted on 15 January 2015.

2. Innovia Security Pty Ltd (“the opponent”) filed a notice of opposition on 15 April 2015.  A statement of grounds and particulars followed on 15 July 2015.

3. The parties completed the evidentiary stages on 17 March 2016.

4. On 2 May 2016 the applicant filed a statement of proposed amendments under Section 104 to amend the specification.  The request to amend was allowed on 15 September 2016.

5. On 29 September 2016 the opponent filed a request to amend its statement of grounds and particulars.  That request was allowed on 17 October 2016.

   SPECIFICATION

6. The specification describes the invention as relating to an optical system, for projecting one or more synthetic optical images, which demonstrates improved resistance to optically degrading external effects.  As background the specification states that micro-optic materials for projecting synthetic images generally comprised (a) a light-transmitting polymeric substrate, (b) an arrangement of micro-sized image icons located on or within the polymeric substrate, and (c) an arrangement of focusing elements, for example micro-lenses.  The image icon and focusing element arrangements were configured such that, when the arrangement of image icons was viewed through the arrangement of focusing elements, one or more synthetic images were projected.  These projected images may show a number of different optical effects.  Material constructions capable of presenting such effects are discussed in the specification by reference to several patent publications.  These optically variable materials may be used as security devices for authentication of banknotes and other security documents.  Such optically variable materials are typically used in the form of a strip, thread, patch or overlay and either partially embedded within the banknote or security document, or applied to a surface thereof.  These materials may also be used as a stand-alone product that serves as a substrate for a subsequent printing or personalization process.

7. These optically variable materials possess a certain degree of optical sensitivity related to susceptibility on the part of the focusing element arrangement to soiling, physical ablation and to disturbances in focal properties whenever a disrupting material is brought into contact with a surface of the focusing element array.  Disrupting materials causing such disturbances may include adhesive coated substrates, liquids, or other materials having a refractive index different from that of air.  Synthetic images projected by these materials tend to disappear, de-focus, or blur when a disrupting material is applied, the disrupting material causing an undesirable alteration in the angle of refraction at the array surface.

8. The specification, as amended, concludes with 83 claims.  Eight of these claims are independent.

9. For convenience, claims 1 and 68 are recited below.  The full set of claims may be found at Annex A.

   1.A system for projecting one or more synthetic optical images, which demonstrates improved resistance to optically degrading external effects, and which comprises:

   (a)   one or more arrangements of microstructured image icons, the image icons of the or each arrangement of microstructured image icons being arranged in a regular array; and

   (b)   one or more totally embedded arrangements of image icon focusing elements,

   wherein the one or more arrangements of image icon focusing elements is disposed above the one or more arrangements of microstructured image icons such that at least a portion of the image icon focusing elements forms at least one synthetic image of at least a portion of the image icons, wherein the focal length(s) of the focusing elements in the system is locked in place by ensuring that interfaces responsible for focus are embedded within the system,
   wherein the microstructured image icons are selected from the group consisting of (a) optionally coated and/or filled voids or recesses formed within a substrate, wherein the voids or recesses each measure from about 0.5 to about 8 microns in total depth, and (b) shaped posts formed on a surface of a substrate, wherein the shaped posts each measure from about 0.5 to about 8 microns in total height.

   68. A sheet material made from a system for projecting one or more synthetic optical images, wherein the system comprises: (a) a regular array of microstructured image icons; (b) an array of refractive image icon focusing elements disposed above the array of image icons and formed from a first material having a refractive index (n1); and (c) a second material having a different refractive index (n2) that fills interstitial spaces between and covers the focusing elements, a distinct interface being formed between the first and second materials,

   wherein the microstructured image icons are selected from the group consisting of (a) optionally coated and/or filled voids or recesses formed within a substrate, wherein the voids or recesses each measure from about 0.5 to about 8 microns in total depth, and (b) shaped posts formed on a surface of a substrate, wherein the shaped posts each measure from about 0.5 to about 8 microns in total height.

10. It may be noted that claim 68 defines two materials of different refractive indexes, the first forming the focusing elements while the second fills interstitial spaces between and covers the focusing elements.  Claim 1 does not define any such materials. Instead, claim 1 defines totally embedded focusing elements, which may infer that at least a material or substance of some type is involved to embed the focusing elements.  It may also be noted that claim 1 contains the terminology “embedded” and that the focal length of the focusing elements is “locked in place”, while claim 68 merely defines the focusing elements being covered.

11. A variant of the definition in claim 68 of a distinct interface being formed between the first and second materials may be found in claim 69.  In the latter claim, instead of a distinct interface, the second material diffuses into the first material thereby forming a gradient interface with the first material.

    STATEMENT OF GROUNDS AND PARTICULARS

12. The opponent listed five grounds of opposition.  The grounds were that the claims were not novel, lacked an inventive step and were not for a manner of manufacture, and that the specification did not describe the invention fully or end with claims defining the invention, and that the claims were not clear, succinct or fairly based on the matter described in the specification.  The amended statement of grounds and particulars differed from the original only in amending the substance of four particulars and in amending the applicable claim numbers.  At least the latter amendment appeared to be responsive in part to the Section 104 amendment made by the applicant during the opposition proceedings.  At the hearing the opponent principally pursued only the grounds of lack of novelty and lack of an inventive step.

    EVIDENCE IN SUPPORT

13. The opponent filed evidence in support from Dr Bruce Alfred Hardwick.  Dr Hardwick is a chemical engineer and joined Note Printing Works (“NPW”), a division of the Reserve Bank of Australia, in 1983.  He worked for NPW and its successor, Note Printing Australia Limited (“NPAL”), until his retirement from the company in November 2005.  As technical development manager, Dr Hardwick led the research and development team responsible for taking the polymer banknote into production.  He also worked in various technical working groups or committees involved in research and development (“R&D”) related to banknote printing and security.  Furthermore Dr Hardwick is named as an inventor on a number of patents in this field.  He has also presented papers at international conferences and given lectures on similar topics.

14. In evidence, Dr Hardwick discussed the documentary resources he and others in the field would have consulted at the relevant time, including patent specifications.  He also commented on people in the field attending and accessing conference proceedings as means to monitor developments in the field.  Dr Hardwick also discussed the relevance of selected prior documents against the claimed invention.

    EVIDENCE IN ANSWER

15. The applicant filed evidence in answer from Mr Samuel M Cape and from Mr Timothy Paul Merchant. 

16. Mr Cape is an electrical and computer engineering graduate.  He began working for the applicant in 2005 on the development of micro-optic technology.  He refined many of the processes of creating micro-structures and micro-lenses.  Subsequently Mr Cape worked on writing a computer program that could assist with the design of the micro-images that could be used in conjunction with the micro-lenses.  Mr Cape has given a number of conference presentations and more recently has been a director of R&D.  He is named as one of the inventors for the present application.  In evidence Mr Cape principally challenged Dr Hardwick’s assertions of computer programs automatically factoring in the refractive index of any protective lacquers and adjusting the form of lenses or thickness of optical spacing accordingly.  Mr Cape also challenged Dr Hardwick’s assertions of the triviality of tailoring the geometry of lenses and the refractive indexes of the lens material and protective overcoat so that the focal length of the lens array was the same as the optical separation between the lenses and image icons.  Principally Mr Cape stated that, while such manipulation could be done to take account of the refractive index of a protective overcoat on a macro-lens, it was a quite different proposition to carry out the same exercise for micro-lenses.

17. Mr Merchant is a science graduate in printing management.  At the time of his declaration, Mr Merchant had worked in the security industry for over 35 years.  He has been employed by US government agencies responsible for passport and other official document security, and also by a commercial banknote printer and passport manufacturer.  More recently Mr Merchant has run his own security consulting firm.  In this role, Mr Merchant has advised governments and corporations on identity and product security, including the design of security devices and technology, materials compatibility and forensic analysis.  In evidence Mr Merchant commented on existing security devices at the relevant time and regarded the industry as international with the level of knowledge about security devices generally the same in most countries.  He acknowledged there were some micro-optic technologies in use on identity documents but did not believe they were commonly known in use on banknotes before the priority date.  Rather, what was fairly common were security features using very small glass beads.  Mr Merchant also mentioned consulting Internet sources, attending industry shows and holding subscriptions to various industrial periodicals and magazines as means to keep up to date with the technology in the field.  He indicated it was not common in the industry to review patents on a regular basis.  Finally Mr Merchant commented on the relevance of the opponent’s prior art against the claimed invention and challenged Dr Hardwick’s assertions in respect thereto.

    EVIDENCE IN REPLY

18. The opponent filed evidence in reply from Dr Hardwick.  In this evidence, Dr Hardwick referred to passages of the prior art, cited in the evidence in support, in more detail to support the position that all essential elements of the claims were disclosed or were part of the common general knowledge.  He also provided organisational examples where patent specifications were regularly consulted and reviewed.  Moreover Dr Hardwick maintained that tailoring the refractive indexes of micro-lenses and coatings, whilst not specifically claimed in the independent claims, was well known at the priority date.  The use of protective overcoats for optically variable devices was standard practice in the security printing industry and it was well known before the priority date when using a protective coating that one had to tailor the refractive index of the coating to the refractive index of the lens.  Dr Hardwick stated this was a matter of routine experimentation.  Moreover it would have immediately occurred to the skilled person in the art at the priority date to take account of the refractive indexes of the coating and the lenses in designing a micro-lens security system.

    BACKGROUND ART AND TERMINOLOGY

    Synthetic images

19. The specification mentions the projection of synthetic images, for example at [0003], [0005] and [0006].  In evidence in answer at [62], Mr Merchant described his understanding of the term “synthetic” in the present context to refer to an image which is not real, but is a projected image viewable through the use of an array of lenses viewing an array of images underneath.  The projected images may show a number of different optical effects. 

20. The term “synthetic”, in the context of icon elements collectively forming an image, may generally be understood in the art to refer to the creation of an image which is caused other than purely by the effect of the eye looking through the lens array.  The moiré effect is one example.  The moiré effect is a visual perception that occurs when viewing two substantially identical superimposed image arrays, where the image arrays differ in relative size, angle or spacing.  In the case of a lens array overlaying an image array of identical objects, moiré magnification may be achieved.  For example, if a lens array and image array have the same scale and are correctly aligned, all lenses would view the identical regions of their corresponding objects in the image array and the field of view would be uniform and the magnification would theoretically be infinite.  If the lens array were rotated out of alignment to the image array, the initial single magnified image would split into a regular array of images with the number of visible images increasing and their individual sizes decreasing as the angular mismatch increases.  The relative scales of the arrays as well as the F number of the lenses can affect not only the magnification of the image but also its rotation, orthoparallactic movement and the apparent visual depth of the image above or below the image plane.  Thus there are several ways of creating synthetic images, with moiré effects being one example.

    Embedded focusing elements & locked in focal lengths

21. The specification also refers to totally embedded arrangements of image icon focusing elements, at [0006] for example.  More specifically at [0010], the focal length(s) of the focusing elements is locked in place by ensuring that interfaces, for example refracting interfaces, responsible for focus are embedded within the system.  In other words, no other transparent materials or layers brought into contact with the system will serve to materially alter the focal length(s), or the optical acuity of the synthetic image(s) formed by this system.  It follows (and the opponent accepted) that, while some independent claims (e.g. claims 71 and 75) defined embedded focusing elements absent any reference to the causation of the focal length being locked in as in claim 1, nonetheless these claims with the “embedded” feature inherently defined the focal length being locked in.

    Disrupting materials

22. As mentioned earlier, the specification discusses the problem of the susceptibility of the focusing elements to soiling, physical ablation, for example scratching, and to disturbances in focal properties whenever a disrupting material is brought into contact with a surface of the focusing element array.  The specification states that disrupting materials causing such disturbances may include adhesive coated substrates, liquids, or other materials having a refractive index different from that of air.  

23. Gases at atmospheric pressure have refractive indexes very close to 1 because of their low density.  For example, air at 0^oC and 1 atm has a refractive index at or near 1.000293.  Almost all solids and liquids have refractive indexes above 1.3.  The opponent noted the discussion at [0047] of the specification.  In the context of optically variable devices (“OVDs”) in the form of a security strip, thread, patch or overlay, this paragraph describes the second material being selected from the group of urethane acrylates and acrylic monomers, the second material having a refractive index ranging from about 1.35 to 1.49.  The opponent stated the lowest refractive index of any material referenced in the specification is 1.35.  One could thus argue the embedding materials or substances in the present case also fit the specification’s description of disrupting materials by virtue of the embedding materials having a refractive index different from that of air.  One could thus further argue that a complete solution to the above problem is not readily apparent in the present case. 

24. At the hearing, the applicant suggested that a disrupting material is a foreign material, and something that is not intended to be there.  By contrast, the applicant indicated that the focusing elements of the claimed invention were totally embedded.  While conceding that a coating fell within the scope of the claims, the applicant contended the claims in the context of embedment required the embedding material to be a deliberately-placed feature and part of the system.

25. That distinction is not readily apparent from the specification.  For example, paragraph [0005] includes adhesive coated substrates as examples of disrupting materials causing a disturbance in focal properties, yet paragraph [0039] states that suitable second materials can include adhesives.  Furthermore that distinction does not appear to be a real distinction in practice.  There would appear to be substantially the same effect on the optical properties of the system, for example the focal length of the lenses, irrespective of whether an unintended, foreign material is present or whether a deliberate, embedding material is present.  The specification acknowledges the effect caused by the latter by reference to tailoring the geometry of the focusing elements and the refractive indexes of both the first and second materials to arrive at a desired focal length.  At [0022], without such tailoring, the focal length of the focusing elements would be either too long or too short for the system to produce one or more synthetic images.  Further at [0023], when tailoring focusing elements to arrive at a desired focal length, one would normally consider the radius of curvature and refractive indexes of the material used to make the focusing elements and the surrounding, encapsulating material, usually air.  Contrary to the description at [0010] of the specification that no other transparent materials or layers brought into contact with the system will serve to materially alter focal length(s), or optical acuity of synthetic images, in evidence at [27] Mr Merchant similarly acknowledged the effect on the focal properties of placing another material over the top of the lenses.  Moreover, the use of protective coatings that Mr Merchant described at [29] to be impractical because of their optical effects is essentially the same thing that is offered as a solution in the present case.  Claim 1 for example merely requires embedded focusing elements and claim 68, even less so, merely requires a second material to fill interstitial spaces and cover the focusing elements.  Overall I find there is no real distinction between a disrupting material and an embedding material in the present case.  From [0022] and [0023] of the specification and from Mr Cape’s evidence at [11] – [14], the alleged invention may appear to reside in tailoring the geometry of the focusing elements and selecting particular first and second materials of particular first and second refractive indexes in particular combinations to arrive at a system that maintained a desired focal length.

    APPLICABLE LAW

1. As a consequence of the Intellectual Property Legislation Amendment (Raising the Bar) Act 2012 (“the Amendment Act”), there are substantial changes to the Patents Act 1990.  The date of effect of those changes was 15 April 2013.  The application of the Amendment Act in the present case depends on the date of the request for examination.  The applicant filed its request for examination on 28 March 2013.  Consequently the Patents Act as in force immediately before 15 April 2013 applies in the present case.

2. This means the former standard for opposition proceedings applies and the opponent bears the onus of establishing that it is clear or practically certain that a valid patent could not be granted (F Hoffman-La Roche AG v New England Biolabs Inc [2000] FCA 283; 50 IPR 305 at 311, 319; Commissioner of Patents v Sherman [2008] FCAFC 182; 79 IPR 426; Genetics Institute Inc v Kirin-Amgen Inc [1999] FCA 742; [1999] 92 FCR 106 at [17]).

3. Section 18 of the Patents Act 1990 relates to patentable inventions.  Relevant parts of subsection (1) appear below.

   (1)Subject to subsection (2), an invention is a patentable invention for the purposes of a standard patent if the invention, so far as claimed in any claim:

   (a)   is a manner of manufacture within the meaning of section 6 of the Statute of Monopolies; and

   (b)   when compared with the prior art base as it existed before the priority date of that claim:

   (i)is novel; and

   (ii)involves an inventive step; and

   (c) is useful; and ………

4. Subsections 40(2)(a), (b) and (3) at the relevant time were as follows.

   (2)A complete specification must:

   (a)   describe the invention fully, including the best method known to the applicant of performing the invention; and

   (b)   where it relates to an application for a standard patent - end with a claim or claims defining the invention; and …

   (3)The claim or claims must be clear and succinct and fairly based on the matter described in the specification.

   NOVELTY

5. Under subsection 7(1), an invention is taken to be novel unless it is not novel in the light of the prior art base.  Information in a document forms part of the prior art base for the purposes of novelty if it was published before the priority date of a claim, or the information was contained in a specification published after the priority date of the claim under consideration and, if that information is, or were to be, the subject of a claim of the specification, that claim has, or would have, a priority date earlier than that of the claim under consideration (referred to as “whole of contents” novelty).

6. It is well established that the general test for lack of novelty is the reverse infringement test. The classic formulation of this test is that given by Aickin J in Meyers Taylor Pty Ltd v Vicarr Industries Ltd, [1977] HCA 19; 137 CLR 228 at 235 [20]:

   “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 anticipation would, if the patent were valid, constitute an infringement”.

7. This test is satisfied if the alleged anticipation discloses all the essential features of the invention as claimed (see Nicaro Holdings Pty Ltd v Martin Engineering Co, [1990] FCA 40; (1990) 91 ALR 513 at 517). In order to meet this requirement, the prior art must "contain clear and unmistakeable directions to do what the patentee claims to have invented" (The General Tire & Rubber Company v The Firestone Tyre and Rubber Company Limited, [1972] RPC 457 at 486). In a similar vein, what a prior art document teaches is to be distinguished from what might be “included” or “encompassed”. “A prior broad disclosure thus may not be sufficient ‘in the absence of the skilled addressee understanding or perceiving’ the later claimed invention therein” (Sanofi-Aventis Australia Pty Ltd v Apotex Pty Ltd (No. 3), [2011] FCA 846 at [180]).

8. The opponent principally relied on the following documents.

   WO 2006/125224 (Exhibit BAH-4) – (“D1”)

9. This document relates to an image presentation system employing micro-structured icon elements to form an image.  In one form a synthetic magnification micro-optic system is provided that includes an array of focusing elements, specifically micro-lenses, and an array or pattern of micro-structured icon elements.  Use of the system as a security device for overt and covert authentication of currency, documents and products as well as visual enhancement is also discussed.  The system structure and use appears substantially the same as that of the claimed invention.

10. At page 5, the document discusses the effects that may be created by angular misalignment between the lens array and the icon array, as well as by the relative scales of the two arrays and the F number of the lenses.  Continuing on page 6, the applicant in that case has designated the means for creating a number of distinct visual effects.  For example, Unison Motion presents images that show orthoparallactic movement, that is, when the icon array is tilted the images move in a direction of tilt that appears to be perpendicular to the direction anticipated by normal parallax.  Unison Deep presents images that appear to rest below the icon layer.  Unison Float presents images that appear to rest above the icon layer.

11. Figure 34 illustrates a cross-section through an icon layer 821. 

12. The icon layer may incorporate a variety of micro-structures that can act as elements of icon images.  The micro-structured icon elements can be formed as either recesses or raised areas in a layer of material, such as icon layer 821.  The micro-structured icon elements can take a wide variety of forms and geometries, for example asymmetric void patterns 822, symmetric void patterns 823, light trap patterns 824, etc.

13. Page 89 describes the creation of icon patterns.  Icon tools, like lens tools, are originated using photomasks and photoresist methods.  An icon pattern is typically designed with the aid of computer-aided design (“CAD”) software and this design is transmitted to a semiconductor mask manufacturer.  The icon mask is used to expose photoresist on a glass plate where the thickness of the resist to be exposed is typically in the range of 0.5 to 8 microns, depending on the optical density of the desired synthetic image.  Depending on the choice of original mask design and resist type used (positive or negative), the icons may be created in the form of voids in the resist pattern or in the form of mesas or posts in the resist pattern, or both.  In another embodiment, page 73 describes icon recesses formed on a surface of an optical spacer, each measuring from about 0.5 to about 8 microns in depth.  These measurements are equivalent to those of the voids and posts in the claims of the present application.

14. The coating or filling of voids with various materials is extensively discussed in the document.  For example, page 91 states that the synthetic magnification micro-optic system can be combined with additional features such as icon fill materials, back coatings, top coatings, both patterned and non-patterned, amongst other things.  Page 59 specifically describes an embodiment of icon elements formed as bas-relief surfaces that are then filled with a pigmented or dyed material.  The icon layer may also be coated with a sealing layer.  This anticipates the claimed optionally coated and/or filled voids or recesses formed within a substrate in the present case.

15. The applicant submitted that D1 did not contain clear and unmistakable directions to provide a second material to totally embed the lens array.  Specifically there was no diagram in D1 illustrating any complete coating or total embedding of lenses.  Figures 17c and 18a-f came closest by illustrating lenses that were partially coated.  These partial coatings were additional print elements applied to the lens surfaces.  The opponent referred to page 91 of D1 where the additional features of the synthetic magnification micro-optic system included top coatings.  The applicant pointed out that D1 provided no details of how or where these top coatings were applied and there was nothing to suggest that this involved the provision of a second material which totally embedded the lens array.  In respect to page 91, I concur.  It is open that the top coatings may refer to covering the tops of icon layers, lenses or something else.  I find that page 91 of D1 does not contain clear and unmistakable directions that the referenced top coatings apply to totally embed the lenses. 

16. Page 23 of D1 provides a definition of coating material in the context of the disclosures in D1.  Amongst other things, a coating material is any material used to coat any layer of a moiré magnification system, including the lenses.  Further in the definition, a coating material may refer to any layer(s) of materials deposited, laminated or applied to the lenses, or any layer internal or external to the lenses, amongst other things.

17. The applicant submitted these were oblique references in the definition part of the specification and not part of the description of the invention in that case.  Moreover these references were loose in suggesting the coating of many things, one of which included lenses.  The applicant asserted there were no clear and unmistakable directions to the combination of the claimed invention, nor in particular to providing a second layer that totally embedded the lens array.  In this context the applicant noted the only examples in the detailed description and drawings of D1 of a coating over lenses was the print material that only partially covered the lenses as shown in Figures 17c and 18a-f.

18. While it is correct that there are no embodiments in D1 that describe or illustrate total covering of lenses, the definition of coating material from page 23 onwards is quite clear.  Coating materials are envisaged for coating lenses, amongst other things.  Moreover the context at this point would suggest that the coatings completely cover the lenses.  There is no indication at this point to the contrary.  Thus D1 envisages arrangements where focusing elements are totally embedded or covered, and as such the interfaces responsible for focus are embedded, thereby also locking in the focal lengths of the lenses.

19. I conclude that claims 1, 31, 33-35, 50, 52, 56-59, 67, 71-74, 77, 78, 80 and 81 are not novel over D1.

20. Claim 2 defines the system having a refractive index from an outer surface to refracting interfaces that is varied between a first and a second refractive index, the first being substantially or measurably different from the second, with at least one of the first and second refractive indexes being tailored to achieve a desired focal length.  Claims 4 and 6 define focusing element material and a second material of different refractive indexes in the system, with at least one of the refractive indexes being tailored to achieve a desired focal length.   D1 does not clearly disclose the relationships between the refractive indexes of the materials making up the image presentation system or the tailoring of any of those indexes to achieve a desired focal length.  I find claims 2, 4 and 6 are novel over D1.

21. Claims 3, 5, 7-18, 32, 40-49, 51, 62 and 63 are all directly or indirectly appended back to claims 2, 4 or 6, and are thus also novel over D1.

22. Claim 19 is effectively non-limiting in respect to the shape of the focusing elements and is therefore not novel over D1.

23. In respect to claim 20, page 38 of D1 describes the visibility of Unison Deep and Unison Float effects over a wide range of viewing angles and orientations as providing a simple and convenient method of differentiating Unison Deep and Unison Float materials from simulations utilizing cylindrical lenticular optics or holography.  There are no clear and unmistakable directions of the use of cylindrical lenses in D1.

24. In respect to claim 21, D1 discloses the use of non-cylindrical lenses, for example Figures 1a and 1b.

25. In respect to claim 22, pages 66 and 67 of D1 together with Figures 19a and 19b, respectively, describe and illustrate a spherical and an aspheric lens.

26. In respect to claims 23, 26, 60 and 61, page 89 of D1 describes the formation of lenses having a nominal 30 micron repeat period.

27. In respect to claims 24 and 25, page 2 of D1 mentions a US patent, to Drinkwater, and states that this patent discloses a security device that includes an array of micro-images coupled with an array of substantially spherical micro-lenses, each typically 50-250 µm.

28. In respect to claims 27, 30, 36, 39 and 53-55, D1 discloses the total thickness of the system to be typically less than 50 µm (page 32).

29. In respect to claims 28, 29, 37 and 38, while D1 also on page 32 mentions that the actual thickness depends on the F number of the lenses, the diameter of the lenses and the thickness of additional security features or visual effect layers, there appear to be no clear and unmistakable directions of the system in D1 having thicknesses in the ranges defined in claims 28, 29, 37 and 38.

30. In respect to claims 64 and 75, D1 discloses the use of an optical spacer, for example on pages 32 and 73, between lenses and icon elements.

31. In respect to claims 65 and 76, D1 discloses materials for the optical spacer at page 73, some of which are coincident with the selections of materials claimed in claims 65 and 76.

32. In respect to claim 66, none of the embodiments of D1 describe or illustrate an outer boundary of embedded focusing elements being a planar surface.  The print elements that partially cover the lenses in Figures 17c and 18a-f are conformal coatings with the shape of the lenses.  There are no clear and unmistakable directions in respect to a planar surface outer boundary of embedded focusing elements.

33. Claims 68 and 69, like claims 4 and 6, define focusing element material and a second material of different refractive indexes.  Furthermore, claims 68 and 69, like claims 4 and 6, respectively define a distinct interface and a diffuse or gradient interface between the first and second materials.  Such aspects are not disclosed in D1.

34. In respect to claim 70, D1 does not disclose the tailoring of refractive indexes to achieve a desired focal length.

35. In respect to claim 79, D1 discloses, at the foot of page 22, options of the micro-structured icons having fill materials that may be mixed or combined with dyes, colouring agents, pigments and powdered materials, amongst other things.

36. Claim 82 is similar to claim 2 and is thus also novel over D1.

37. In summary I conclude that claims 1, 19, 21-27, 30, 31, 33-36, 39, 50, 52-61, 64, 65, 67 and 71-81 are not novel over D1.

    US 2008/0037131 (Exhibit BAH-5) – (“D2”)

38. Although formatted differently, this document repeats much of the content of D1.  D2 differs from D1 by the addition of Figures 49 to 63 and associated additional description from [0491] of D2 onwards.  That discussion relates to sequenced synthetic images.  The applicant in that case referred to this embodiment as Unison Flicker.  The Flicker synthetic images are static in-plane images as opposed to dynamic or moving in-plane images as in the Motion images discussed in the document prior to this point. 

39. In respect to D2, the opponent did not make any further submissions over those made for D1.  As for D1, I conclude the same claims, as above, are not novel over D2.

    INVENTIVE STEP

40. Subsection 7(2) of the Patents Act states that an invention is taken to involve an inventive step unless it would have been obvious to a person skilled in the art in the light of the common general knowledge, considered alone or together with the prior art. A document, or two or more related documents if a person skilled in the art would treat them as a single source of information, is prior art for this purpose if "a skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood, regarded [the document] as relevant" (Subsection 7(3) at the relevant time).

41. The test for whether an invention is obvious is whether it would have been a matter of routine to proceed to the claimed invention. In Wellcome Foundation Ltd v VR Laboratories (Aust.) Pty Ltd, [1981] HCA 12, 148 CLR 262 at 286 [45], 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."

42. The High Court in Aktiebolaget Hässle v Alphapharm Pty Ltd, [2002] HCA 59, (2002) 56 IPR 129 at [50] – [53], appeared to approve of the Wellcome test.  In discussing what was meant by a matter of routine the High Court noted and accepted an affinity with the approach in Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd, (1970) 87 RPC 157, of whether the person skilled in the art would directly be led as a matter of course to try what was claimed in the expectation that it might well produce a useful alternative. In Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [No. 2], [2007] HCA 21, (2007) 235 ALR 202, general principles regarded to be of continuing relevance, at [50] – [52], were that “obvious” means “very plain”, a scintilla of invention remains sufficient to support the validity of a patent, there must be some difficulty overcome, some barrier to be crossed, and an invention must be beyond the skill of the calling.

43. Where the invention lies in a combination of integers, the question is not whether each individual integer was obvious but rather whether the combination as a whole was obvious when compared to the prior art base.  In Alphapharm at [41], the High Court stated:

    “The claim is for a combination, the interaction between the integers of which is the essential requirement for the presence of an inventive step.  It is the selection of the integers out of ‘perhaps many possibilities’ which must be shown by Alphapharm to be obvious, bearing in mind that the selection of the integers in which the invention lies can be expected to be a process necessarily involving rejection of other possible integers.”

    Person Skilled in the Art

44. In Root Quality Pty Ltd v Root Control Technologies Pty Ltd, [2000] FCA 980, Finkelstein J stated at [70] and [71] that the skilled addressee is the person to whom the patent is addressed and who must construe it. Such person works in the art or science with which the invention is connected or is likely to have a practical interest in the subject matter of the invention. A variety of people may have that interest. Finkelstein J further noted various descriptions given to the skilled addressee. These included the “uninventive skilled worker in the particular field” (Leonardis v Sartas No 1 Pty Ltd, (1996) 67 FCR 126) and the “person skilled in the art” (Genentech Inc v Wellcome Foundation Ltd, (1989) 15 IPR 423).

45. The field of the alleged invention in the present case is in optical systems, more specifically for the projection of images, and more specifically involving OVDs.  The opponent related the use of OVDs in the area of document security and described this area as a highly technological one where the person skilled in the art would have had higher level science or engineering qualifications, with either qualifications in physics, or industry experience relating to the physics of optical devices including lenses.  The applicant broadened the applicable fields of use beyond just for document security, such as in currency and passports, to also include consumer products and toys.  Nonetheless an emphasis on document security was prevalent, as evidenced by both of the applicant’s declarants having experience in this field.  I expect the hypothetical person skilled in the present art would have been knowledgeable and skilled in the production of optical effects from small lens and image arrays.  Such a person or persons would likely have a science or engineering qualification or industry experience in optics, more particularly in OVDs and their application in document security.

1. The parties did not appear to significantly dispute who the hypothetical person skilled in the present art may have been.  Rather, they challenged each other’s declarants as not being representative.  For example the opponent pointed out that Mr Merchant did not indicate any experience with moiré magnification.  Furthermore the opponent took issue with Mr Merchant’s statements that patent searches or reviews were not generally done in the industry, contrasting that with Dr Hardwick’s evidence of how routine such consultation and review of patents was.  On the other hand, the applicant noted that Dr Hardwick had links to the opponent.  Since there was no other declarant for the opponent then the applicant noted the opponent did not provide any evidence from an independent expert.  Moreover the applicant contended that Dr Hardwick was over-qualified.  Notably Dr Hardwick was involved in high-end R&D in respect to banknote security at NPAL, led R&D teams, and developed and patented a number of banknote security features.  The applicant thus submitted that evidence from Dr Hardwick of common general knowledge or of him or his team consulting patents in respect to banknote security was too high an expectation over that of the ordinary person skilled in the art in the somewhat less rigid field of document security generally, such as in passports.

2. Dr Hardwick’s evidence indicates that he was clearly a leading expert of R&D in the banknote security field and that he is well regarded internationally.  I can accept that I need to treat Dr Hardwick’s evidence with a little caution.  On the other hand, his evidence is clearly relevant in the present case.  Furthermore, while there may be a distinction between required levels of security for banknotes over passports, both examples are in the general category of document security.  It would appear the distinction is not as significantly relevant in this case as the applicant makes out.  I will determine the weight to be accorded to Dr Hardwick’s evidence where appropriate in this decision.

   Common General Knowledge

3. The applicant submitted that the closest the opponent came to outlining the common general knowledge in the present field was in Dr Hardwick’s evidence in support, at [27]. From the nature of the invention, as at [0006] of the specification, Dr Hardwick stated that he understood that the focal length of the image-icon focusing elements was locked in or preserved by encasing it within the system. He added that this may be as simple as adding a protective overcoat which is completely standard practice and has been for decades. Dr Hardwick further stated that the computer programs used to make lens-based security devices automatically factor in the refractive index of any protective lacquers and adjusts the form of the lenses and/or thickness of the optical spacing accordingly, and that this had been the case since well before the priority date. While the applicant was concerned about equating the embedded focusing elements in the present case to a mere protective overcoat over the lenses, the applicant nonetheless further submitted that Dr Hardwick’s statements had no basis in fact. Mr Merchant explained at [27] that the lenses in micro-optic security devices were exposed so the correct refractive index necessary to form and project an image was retained. At [29] of his evidence Mr Merchant stated that, as of the year of the priority date, he had not heard of any solution to the soiling or scratching problem of exposed lenses in micro-optic devices.

4. The provision of coatings over macro-lenses, for cameras, telescopes and spectacles for example, would appear to have a long history.  Anti-reflection (“AR”) coatings on lenses date from British physicist, Lord Rayleigh’s use of thin-film coatings in 1886.  Moreover it was known that the coatings worked to reduce the amount of light reflected back because the coatings have a refractive index that is between the refractive indexes of air and the lens material, for example glass.  This causes the light intensity reflected from the inner surface and from the outer surface of the coating to be nearly equal.  When applied with a coating with thickness of about a quarter of light’s wavelength, these two reflections will be partially or completely out of phase and substantially cancel each other out through destructive interference.  Commercial applications where low loss or low reflection has been desired have included AR coatings on spectacles and camera lens elements.  While the above discussion relates to optical design features to control reflectivity rather than managing the maintenance of the focal lengths of lenses, as in the present application, one may deduce that the consideration and accounting of the different refractive indexes of substances and materials in optic systems had been a factor in optics for a considerable period of time.  In a similar vein, at [9] of his evidence in answer, Mr Cape acknowledged the over-coating of macro-lenses for uses such as in cameras, telescopes or spectacles before the priority date and that the focal length in such cases could be manipulated taking into account refractive index and lens geometry.

5. In respect to micro-lenses, the parties’ evidence regarding the coating thereof appears to be relatively finely balanced.  Dr Hardwick stated at [27] that protective overcoats over lenses had been standard practice for decades but did not present any documentary or other evidence to support that contention.  He also did not indicate that he was specifically discussing micro-lenses, as opposed to macro-lenses, although that may be inferred from his surrounding discussion of micro-structured systems generally.  Mr Cape mentioned just one example known to him of a coated micro-lens system.  Mr Merchant had not heard of any solution regarding soiled, exposed lenses in micro-optic devices.  Given Dr Hardwick’s somewhat higher pitch above that of the ordinary person skilled in the present art as indicated above, I somewhat prefer the applicant’s evidence on this point.  In Innovia Security Pty Ltd v Visual Physics, LLC, [2015] APO 82 at [66], I commented on the application of protective coatings in many fields to mitigate the occurrence of damage, including the application of such coatings to security devices. The application of coatings over voids in micro-structures in security devices is specifically discussed. In the present case though, I regard the evidence as insufficient to find that coatings over micro-lenses was common general knowledge at the relevant time.

6. I conclude the claimed invention has an inventive step over the common general knowledge, at the relevant time, when considered alone.

   Whether Patent Documents Could Be Reasonably Expected To Have Been Ascertained

7. The parties were clearly in dispute about whether the person skilled in the present art could, before the priority date, be reasonably expected to have ascertained patent documents.  At [32] of his evidence, Mr Merchant stated that he would generally not do patent searches or review patents to keep up to date with developments in the field.  He was much more likely to simply go out and see what was being used in the marketplace.  In Mr Merchant’s experience, it was not common in the industry to review patents on a regular basis.  On the other hand Dr Hardwick’s higher pitch is again evident.  For example he stated, at [14] of his evidence in support, that he and his R&D team would consult patent specifications.  Dr Hardwick further stated that he read patent specifications for a number of reasons: to gain ideas for solving specific problems faced; as a source of information regarding developments in the field generally; and to ensure NPAL had freedom to operate in areas it was carrying out R&D.  At [19] of his evidence in reply, Dr Hardwick indicated an awareness that other organisations he consulted to in the industry also conducted regular patent searches and reviews of patent specifications.

8. While Dr Hardwick’s experience may be said to pitch him above that of the ordinary person skilled in the present art, on the other hand I similarly have some concern with Mr Merchant’s somewhat simplistic approach that he was much more likely to simply go out and see what was being used in the marketplace.  The field relating to the use of OVDs in security devices is relatively highly technological and was well read.  There is a history of findings that the person skilled in this art could be reasonably expected to have ascertained patent documents.  See for example Innovia Security Pty Ltd v Giesecke & Devrient GmbH, [2015] APO 25 at [64], Innovia Security Pty Ltd v OVD Kinegram AG, [2015] APO 26 at [91], and Innovia Security Pty Ltd v Visual Physics, LLC, [2015] APO 81 at [80]. I am satisfied in the present case that the person skilled in the art could be reasonably expected to have ascertained relevant patent documents. D1, D2 and a following third patent document all relevantly relate to micro-optic security devices. I am satisfied these documents meet the requirements of Subsection 7(3).

   D1 and D2

9. Earlier I found that several claims of the application were not novel over D1 and D2.  Consequently there were no further steps required of the person skilled in the art to lead from this prior art to the invention as claimed in those claims.  I find that claims 1, 19, 21-27, 30, 31, 33-36, 39, 50, 52-61, 64, 65, 67 and 71-81 do not have an inventive step over D1 and D2.

10. In respect to claim 2, accounting for the refractive indexes of materials and substances in optic systems and their effects on the focal properties of lenses appeared to have been a feature in optics for a considerable period of time, as discussed above.  Moreover, in referring to the specification’s discussion of tailoring the geometry of the lenses and the refractive indexes of the materials, at [35] of his evidence in support Dr Hardwick stated that setting the focal length of the lens to the image is probably the most basic aspect of any magnifying optical system and that taking account of any protective overcoats or clear lacquers is, of course necessary, but trivial.  While I have earlier indicated that I need to treat Dr Hardwick’s evidence with a little caution, and his above reference to the triviality of the exercise may be a case in point, I nonetheless accept the broad tenet of his statement.  Dr Hardwick supported this position at [36] of his evidence by indicating that the specification admitted at [0023] that the refractive index of any material encapsulating the lenses is normally taken into consideration.  In D1 and D2 there is discussion that coating materials typically provide detectibly different properties and optical effects from those of other materials, such as in the lens layer, and that the refractive index of coatings is one element, amongst others, that provides such properties and effects (D1 at page 24 lines 1-8, for example).  In view of the above, where coatings were envisaged over the micro-lenses as in D1 and D2, I find it would have been obvious at the relevant time that the refractive indexes of the materials or substances that were involved would have required an adjustment of lens system geometry and/or particular selections of materials and thus tailoring of one or more of the refractive indexes to achieve the desired focal length.

11. I conclude that claim 2, and similarly claim 4, do not have an inventive step over D1 and D2.  Claim 6 is also similar but defines the second material diffusing into the first material thereby forming a gradient interface.  This definition exemplifies gradient index (“GRIN”) lenses.  While GRIN lenses were well known (Dr Hardwick’s evidence in support at [92]), I am not convinced it would have been obvious to include this feature with the system of D1 and D2 at the relevant time.  I conclude that claim 6 has an inventive step over these documents.

12. Claim 3 is substantially non-limiting.  It is not so much the difference between the first and second refractive indexes of the materials that is causative of a change in focal length.  Rather it is any variation of that difference.  Alternatively it is the difference between the refractive index of the outer surface material and that of air, if that material is used to embed the focusing elements, that causes a change in focal length.  As such, a change of at least about 0.1 µm, as claimed, is substantially non-limiting.  I conclude that claim 3 does not have an inventive step over D1 and D2.

13. In respect to claim 5, which is appended to claim 4, D1 and D2 disclose (for example D1, page 24 line 23 to page 25 line 2) the application of coating materials by wet coating, spraying, laminating and dipping, amongst other things.  This inherently describes a coating that coats and thus embeds the array of image icons as well.  I conclude that claim 5 does not have an inventive step over D1 and D2. 

14. In respect to claim 7 noting its appendency to claim 4, D1 and D2 disclose converging lenses throughout and therefore claim 7 does not have an inventive step over these documents.

15. While diverging lenses may have been well known, they are opposite to the lenses disclosed in D1 and D2.  The disclosures of D1 and D2 teach away from the use of divergent lenses.  I conclude that claim 8 has an inventive step over D1 and D2.

16. In respect to claim 10, D1 and D2 disclose, at page 44 line 8 and [0215] respectively, lens material with a refractive index of 1.51.  Claim 14 defines the first material having a refractive index ranging just above that disclosure.  I conclude that claims 10 and 14 do not have an inventive step over D1 and D2.

17. In respect to claim 11, acrylated urethanes, amongst other polymers, are described as suitable materials for the micro-lenses (for example the sentence bridging pages 135 and 136 of D1).  I conclude that claim 11 does not have an inventive step over D1 and D2.

18. In respect to claims 12, 13, 16 and 17, D1 and D2 do not appear to disclose a range for the refractive indexes of any coatings.  Nonetheless I would regard the selection of materials with such refractive indexes to have been well within the domain of the person skilled in the art at the relevant time.  I conclude that claims 12, 13, 16 and 17 do not have an inventive step over D1 and D2.

19. In respect to claim 15, D1 and D2 disclose, at page 73 lines 17-20 and [0287] respectively, acrylics and epoxies as suitable for forming the icon and micro-lens arrays.  I conclude that claim 15 does not have an inventive step over D1 and D2.

20. In respect to claim 18, D1 and D2 disclose optionally transparent coatings (for example D1, page 24, lines 7 and 8) and that the coatings may also have adhesion promoting properties (D1, page 26, lines 6 and 7).  I conclude that claim 18 does not have an inventive step over D1 and D2.

21. In respect to claim 20, D1 and D2 disclose the use of spherical and aspheric converging lenses which focus to a point or points, while cylindrical lenses do not.  D1 and D2 teach away from the use of cylindrical lenses.  I conclude that claim 20 has an inventive step over D1 and D2.

22. In respect to claims 28, 29, 37 and 38, D1 and D2 mention, at page 32 lines 20-22 and [0185] respectively, the total thickness of the system typically being less than 50 µm.  On the other hand, the same passages also mention that the actual thickness depends on several factors including additional security feature or visual effect layers.  These additional layers thus envisage thicker systems for accommodating them.  I conclude that claims 28, 29, 37 and 38 do not have an inventive step over D1 and D2.

23. Claim 32 defines a sheet material made from the system of at least claim 4 and, like claim 4, is thus also not inventive over D1 and D2.

24. Claim 40 defines a base platform and is similarly appended to at least claim 4.  Moreover claims 41-49 relate to selections of materials, ranges of refractive indexes of materials and properties thereof already substantially discussed for earlier claims.  I conclude that claims 40-49 do not have an inventive step over D1 and D2.

25. Claim 51 defines a security device made from the system of at least claim 4 and, like claim 4, is thus also not inventive over D1 and D2.

26. Claims 62 and 63 are directed to the system of at least claim 4 wherein the first and second materials, respectively, are high refractive index materials with refractive indexes of more than 1.7.  Consistently with earlier claims directed to the ranges of refractive indexes of materials, I conclude that claims 62 and 63 do not have an inventive step over D1 and D2.

27. Claim 66 defines the system of claim 1 wherein an outer boundary of the one or more embedded arrangements of focusing elements is a planar surface.  The application of an outer embedding material to arrive at a planar surface, as distinct from a lens-conforming surface as in D1 and D2, would appear to have been a matter of routine at the relevant time.  I conclude that claim 66 does not have an inventive step over D1 and D2.

28. Claim 68 is similar to claim 4 in defining arrays of micro-structured icons and focusing elements with one overlaying the other, and where the first and second materials have different refractive indexes, with the second material filling interstitial spaces between and covering the focusing elements and where a distinct interface is formed between the first and second materials.  The claim also defines the depths or heights of the voids or posts, respectively, of the micro-structured icons.  As for claim 4, I conclude that claim 68 does not have an inventive step over D1 and D2.

29. As mentioned earlier, claim 69 differs from claim 68 by the second material diffusing into the first material thereby forming a gradient interface rather than a distinct interface.  Claim 69 is also similar to claim 6.  For the same reasons as for claim 6, I conclude that claim 69 has an inventive step over D1 and D2.

100. Claim 70 defines the sheet material of at least claim 68 wherein at least one of the refractive indexes is tailored to achieve a desired focal length.  For the same reasons as for claim 2, I conclude that claim 70 does not have an inventive step over D1 and D2.

101. Claim 82 is appended to claims 71, 75, 78 and 81 and is otherwise similar to claim 2.  For the same reasons as for claim 2, I conclude that claim 82 does not have an inventive step over D1 and D2.

102. In summary I conclude that claims 1-5, 7, 10-19, 21-68 and 70-82 do not have an inventive step over D1 and D2.

WO 2005/106601 (Exhibit BAH-6) – (“D3”)

103. This document discloses a security device comprising a substrate having an array of micro-lenses on one side and one or more corresponding arrays of micro-images on the other side.  The micro-images are located at a distance from the micro-lenses substantially equal to the focal length of the micro-lenses.  The substrate is sufficiently transparent to enable light to pass through the micro-lenses to reach the micro-images. 

104. The creation of moiré magnification and the generation of moving images are discussed on page 12.  A pitch mismatch is introduced between the micro-image array and the micro-lens array with the preferred method being where the pitch mismatch is achieved by introducing a small rotational misalignment between the micro-image array and the micro-lens array.  Clearly a system for projecting a synthetic optical image as claimed in the present claims is disclosed in this document.

105. Each micro-image may be defined by an anti-reflection structure on the substrate formed by a periodic array of identical structural elements.  From page 16, the structure may be any periodic structure that is finer than the wavelength of light and provides a surface layer in which the refractive index varies gradually from unity to the index of the bulk material, and thereby minimises reflections that are associated with sudden changes in refractive index.  One particular type of anti-reflection structure known as the moth-eye structure 4 (see diagram below) is discussed.  This structure mimics the structure observed on the eye of some nocturnal moths that minimises the reflection of light allowing the moths to remain undetected by predators.  The foot of page 16 describes moth-eye films having a characteristic “egg box” periodic modulation typically with a repeating period between 200-400nm and a structure height between 250-350 nm. 

106. Figure 21, reproduced below, illustrates a protective coating or varnish 138 applied to the outer surface containing the micro-lens array (page 26 of D3).

107. Page 13 of the document states the micro-lenses are not limited to any specific type or geometry of micro-lens.  Both spherical and aspherical surfaces are applicable.  Moreover, at lines 24-26 of page 13, it is not essential for the micro-lenses to have a curved surface.  Gradient refractive index (“GRIN”) lenses image light by a gradual refraction throughout the bulk of the material as a result of small variations in refractive index.  The use and advantage of GRIN lenses is discussed on page 22 of the document.  The advantage is that it enables the surface of the micro-lens array to be planar which facilitates over-coating or over-printing the device with further protective coatings or printed layers.

108. D3 is silent in respect to voids or posts of the micro-structures being between about 0.5 to about 8 µm as claimed in the present application.  The applicant’s Mr Cape stressed, at [6] of his evidence, the importance of this depth/height range.  If the voids were less than 0.5 µm deep, or the posts were less than 0.5 µm tall, the contrast would be much too low to see the synthetic images very well.  Above 8 µm, the icon elements would be very difficult to manufacture.  Also, although the contrast increases with higher icon depths or heights, this is only true up to a point.  The contrast gain is one of diminishing returns where at some point a deeper or taller icon will not result in better contrast but will just add thickness to the final product.  The opponent submitted these dimensions were typical, known dimensions and Mr Cape’s statements of the problems in going beyond that range only reinforced the obviousness of the range.

109. It may be that Mr Cape has explained the reasons for the claimed depth/height range.  On the other hand, that does not necessarily mean the reasoning and thus the selected range was commonly known or obvious to the ordinary person skilled in the art at the relevant time.  As mentioned earlier, in D3 the micro-structures are anti-reflection structures and are between 250-350 nm.  That is, at 0.25-0.35 µm, they are smaller than the micro-structured icons claimed in the present application.  Thus D3 may be said to teach away from the claimed invention.

110. I conclude that the claimed invention has an inventive step over D3.

CONCLUSION

111. I have concluded that claims 1, 19, 21-27, 30, 31, 33-36, 39, 50, 52-61, 64, 65, 67 and 71-81 of the present application are not novel over D1 and D2.  I have also concluded that claims 1-5, 7, 10-19, 21-68 and 70-82 do not have an inventive step over D1 and D2.

112. To overcome these deficiencies, I allow the applicant two (2) months from the date of this decision to propose suitable amendments.

COSTS

113. Both parties sought their costs and generally accepted that costs should follow the event.  The opponent though also noted the applicant’s making of the Section 104 amendment during the opposition proceedings for consideration in any award of costs. 

114. The opposition is successful.  I award costs in accordance with Schedule 8 against the applicant, Visual Physics, LLC.

M. G. Kraefft
Delegate of the Commissioner of Patents

Annex A – Claims

1.A system for projecting one or more synthetic optical images, which demonstrates improved resistance to optically degrading external effects, and which comprises:

(a)one or more arrangements of microstructured image icons, the image icons of the or each arrangement of microstructured image icons being arranged in a regular array; and

(b)one or more totally embedded arrangements of image icon focusing elements,

wherein the one or more arrangements of image icon focusing elements is disposed above the one or more arrangements of microstructured image icons such that at least a portion of the image icon focusing elements forms at least one synthetic image of at least a portion of the image icons, wherein the focal length(s) of the focusing elements in the system is locked in place by ensuring that interfaces responsible for focus are embedded within the system,
wherein the microstructured image icons are selected from the group consisting of (a) optionally coated and/or filled voids or recesses formed within a substrate, wherein the voids or recesses each measure from about 0.5 to about 8 microns in total depth, and (b) shaped posts formed on a surface of a substrate, wherein the shaped posts each measure from about 0.5 to about 8 microns in total height.

2.The system of claim 1, wherein the image icon focusing elements are refractive focusing elements having a focal length, the system having a refractive index from an outer surface to refracting interfaces that is varied between a first and a second refractive index, the first refractive index being substantially or measurably different than the second refractive index,

wherein at least one of the first and second refractive indices is tailored to achieve a desired focal length.

3.The system of claim 2, wherein the difference between the first refractive index and the second refractive index causes a change of at least about 0.1 micron in the focal length of the focusing elements.

4.The system of claim 1, which comprises: (a) an array of image icons; (b) an array of image icon focusing elements formed from a first material having a refractive index (n1); and (c) a second material having a different refractive index (n2) that fills interstitial spaces between and covers the focusing elements, a distinct interface being formed between the first and second materials, wherein at least one of the refractive index of the first material and the refractive index of the second material is tailored to achieve a desired focal length.

5.The system of claim 4, wherein the second material forms an outer boundary or layer of the array of image icons, thereby also embedding the array of image icons.

6.The system of claim 1, which comprises: (a) an array of image icons; and (b) an array of image icon focusing elements formed from a first material having a refractive index (n1) and a second material having a different refractive index (n2), the second material diffusing into the first material thereby forming a gradient interface with the first material, wherein at least one of the refractive index of the first material and the refractive index of the second material is tailored to achieve a desired focal length.

7.The system of claims 4 or 6, wherein the focusing elements are converging lenses.

8.The system of claims 4 or 6, wherein the focusing elements are diverging lenses.

9.The system of claim 8, wherein the refractive index of the first material is less than the refractive index of the second material.

10.The system of claims 4 or 6, wherein the first material has a refractive index ranging from about 1.5 to about 1.8.

11.The system of claim 10, wherein the first material is selected from the group of acrylated urethanes, epoxy acrylates and acrylic oligomers.

12.The system of claims 4 or 6, wherein the second material has a refractive index ranging from about 1.35 to about 1.49.

13.The system of claim 12, wherein the second material is selected from the group of urethane acrylates and acrylate monomers.

14.The system of claim 10, wherein the first material has a refractive index ranging from about 1.549 to about 1.56.

15.The system of claim 14, wherein the first material is a modified epoxy acrylate.

16.The system of claim 12, wherein the second material has a refractive index ranging from about 1.44 to about 1.45.

17.The system of claim 16, wherein the second material is isodecyl acrylate.

18.The system of claims 4 or 6, wherein the second material is a transparent or translucent adhesive.

19.The system of claim 1, wherein the one or more totally embedded arrangements of image icon focusing elements includes image icon focusing elements selected from the group of cylindrical lenses, non-cylindrical lenses, and combinations thereof.

20.The system of claim 19, wherein the one or more totally embedded arrangements of image icon focusing elements includes cylindrical lenses.

21.The system of claim 19, wherein the one or more totally embedded arrangements of image icon focusing elements includes non-cylindrical lenses.

22.The system of claim 19, wherein the lenses have spheric or aspheric surfaces.

23.The system of claim 19, wherein the lenses have widths or base diameters of less than or equal to about 1 millimeter.

24.The system of claim 23, wherein the lenses have widths or base diameters ranging from about 200 to about 500 microns.

25.The system of claim 23, wherein the lenses have widths or base diameters ranging from about 50 to about 199 microns.

26.The system of claim 23, wherein the lenses have widths or base diameters of less than about 50 microns.

27.The system of claims 1 or 19, wherein the system has a thickness of less than or equal to about 1 millimeter.

28.The system of claim 27, wherein the system has a thickness ranging from about 200 to about 500 microns.

29.The system of claim 27, wherein the system has a thickness ranging from about 50 to about 199 microns.

30.The system of claim 27, wherein the system has a thickness of less than about 50 microns.

31.A sheet material made from the system for projecting one or more synthetic optical images of claim 1.

32.A sheet material made from the system for projecting one or more synthetic optical images of claims 4 or 6.

33.The sheet material of claim 31, which is selected from the group of substrates for subsequent printing or personalization, sheet materials for security documents, and base platforms for identification cards and security documents.

34.The sheet material of claim 33, which is a sheet material for security documents.

35.The sheet material of claim 33, which is a base platform for identification cards and security documents.

36.The sheet material of claims 31 or 33, wherein the sheet material has a thickness of less than or equal to about 1 millimeter.

37.The sheet material of claim 36, wherein the sheet material has a thickness of from about 200 to about 500 microns.

38.The sheet material of claim 36, wherein the sheet material has a thickness of from about 50 to about 199 microns.

39.The sheet material of claim 36, wherein the sheet material has a thickness of less than about 50 microns.

40.A base platform made from the system for projecting one or more synthetic optical images of claims 4 or 6.

41.The base platform of claim 40, wherein the first material has a refractive index ranging from about 1.35 to about 1.49.

42.The base platform of claim 41, wherein the first material is selected from the group of urethane acrylics and acrylic monomers.

43.The base platform of claim 40, wherein the second material has a refractive index ranging from about 1.5 to about 1.8.

44.The base platform of claim 43, wherein the second material is selected from the group of epoxy acrylates, polyester oligomers, poly(aromatic carbonates), and poly(aliphatic carbonates).

45.The base platform of claim 41, wherein the first material has a refractive index ranging from about 1.449 to about 1.46.

46.The base platform of claim 45, wherein the first material is tri(propylene glycol) diacrylate.

47.The base platform of claim 43, wherein the second material has a refractive index ranging from about 1.584 to about 1.685.

48.The base platform of claim 47, wherein the second material is polycarbonate.

49.The base platform of claim 40, wherein the second material is a transparent or translucent adhesive.

50.A security device made from the system for projecting one or more synthetic optical images of claim 1.

51.A security device made from the system for projecting one or more synthetic optical images of claims 4 or 6.

52.The security device of claim 50, which is selected from the group of security strips, threads, patches, and overlays, for mounting on a surface of, or at least partially embedding within, a sheet material.

53.The security device of claims 50 or 52, wherein the security device has a thickness of less than about 50 microns.

54.The security device of claim 53, wherein the security device has a thickness of less than about 45 microns.

55.The security device of claim 54, wherein the security device has a thickness of from about 10 to about 40 microns.

56.A sheet material having opposing surfaces and comprising at least one security device of claim 52 mounted on a surface of, or at least partially embedded within, the sheet material.

57.A document made from the sheet material of claim 56.

58.The document of claim 57, which is selected from the group of banknotes, passports, identification cards, credit cards, and labels.

59.The document of claim 58, which comprises a banknote.

60.The system of claim 26, wherein the lenses have widths or base diameters of less than about 45 microns.

61.The system of claim 60, wherein the lenses have widths or base diameters ranging from about 10 to about 40 microns.

62.The system of claims 4 or 6, wherein the first material is a high refractive index, colored or colorless material having a refractive index of more than 1.7.

63.The system of claims 4 or 6, wherein the second material is a high refractive index, colored or colorless material having a refractive index of more than 1.7.

64.The system of claim 1, wherein optical separation between the arrangements of image icons and image icon focusing elements is achieved using an optical spacer.

65.The system of claim 64, wherein the optical spacer is formed using a material selected from the group consisting of polycarbonates, polyesters, polyethylenes, polyethylene napthalates, polyethylene terephthalates, polypropylenes, polyvinylidene chlorides, and combinations thereof.

66.The system of claim 1, wherein an outer boundary of the one or more embedded arrangements of image icon focusing elements is a planar surface.

67.The system of claim 1, wherein the one or more embedded arrangements of image icon focusing elements are refractive image icon focusing elements.

68.A sheet material made from a system for projecting one or more synthetic optical images, wherein the system comprises: (a) a regular array of microstructured image icons; (b) an array of refractive image icon focusing elements disposed above the array of image icons and formed from a first material having a refractive index (n1); and (c) a second material having a different refractive index (n2) that fills interstitial spaces between and covers the focusing elements, a distinct interface being formed between the first and second materials,

wherein the microstructured image icons are selected from the group consisting of (a) optionally coated and/or filled voids or recesses formed within a substrate, wherein the voids or recesses each measure from about 0.5 to about 8 microns in total depth, and (b) shaped posts formed on a surface of a substrate, wherein the shaped posts each measure from about 0.5 to about 8 microns in total height.

69.A sheet material made from a system for projecting one or more synthetic optical images, wherein the system comprises: (a) a regular array of microstructured image icons; and (b) an array of refractive image icon focusing elements disposed above the array of image icons and formed from a first material having a refractive index (n1) and a second material having a different refractive index (n2), the second material filling interstitial spaces between at least a portion of the image icon focusing elements, covering the focusing elements, and diffusing into the first material thereby forming a gradient interface with the first material,

wherein the microstructured image icons are selected from the group consisting of (a) optionally coated and/or filled voids or recesses formed within a substrate, wherein the voids or recesses each measure from about 0.5 to about 8 microns in total depth, and (b) shaped posts formed on a surface of a substrate, wherein the shaped posts each measure from about 0.5 to about 8 microns in total height.

70.The sheet material of claim 68 or claim 69, wherein at least one of the first and second refractive indices is tailored to achieve a desired focal length.

71.A sheet material having opposing surfaces and comprising at least one security device mounted on a surface of, or at least partially embedded within, the sheet material, wherein the security device is made from a system for projecting one or more synthetic optical images, the system comprising:

(a)one or more arrangements of microstructured image icons, the image icons of the or each arrangement of microstructured image icons being arranged in a regular array; and

(b)one or more embedded arrangements of refractive image icon focusing elements, wherein interstitial spaces between at least a portion of the image icon focusing elements are filled and the focusing elements are covered,

wherein the one or more arrangements of refractive image icon focusing elements is disposed above the one or more arrangements of image icons such that at least a portion of the image icon focusing elements forms at least one synthetic image of at least a portion of the image icons,
wherein all interfaces responsible for focus are embedded within the system,

wherein the microstructured image icons are selected from the group consisting of (a) optionally coated and/or filled voids or recesses formed within a substrate, wherein the voids or recesses each measure from about 0.5 to about 8 microns in total depth, and (b) shaped posts formed on a surface of a substrate, wherein the shaped posts each measure from about 0.5 to about 8 microns in total height.

72.A document made from the sheet material of claim 71.

73.The document of claim 72, which is selected from the group of banknotes, passports, identification cards, credit cards, and labels.

74.The document of claim 73, which comprises a banknote.

75.A system for projecting one or more synthetic optical images, which demonstrates improved resistance to optically degrading external effects, and which comprises:

(a)one or more arrangements of microstructured image icons, the image icons of the or each arrangement of microstructured image icons being arranged in a regular array; and

(b)one or more embedded arrangements of refractive image icon focusing elements, wherein interstitial spaces between at least a portion of the image icon focusing elements are filled and the focusing elements are covered,

wherein the one or more arrangements of refractive image icon focusing elements is disposed above the one or more arrangements of image icons such that at least a portion of the image icon focusing elements forms at least one synthetic image of at least a portion of the image icons,
wherein all interfaces responsible for focus are embedded within the system, and
wherein optical separation between the arrangements of image icons and refractive image icon focusing elements is achieved using an optical spacer,

wherein the microstructured image icons are selected from the group consisting of (a) optionally coated and/or filled voids or recesses formed within a substrate, wherein the voids or recesses each measure from about 0.5 to about 8 microns in total depth, and (b) shaped posts formed on a surface of a substrate, wherein the shaped posts each measure from about 0.5 to about 8 microns in total height.

76.The system of claim 75, wherein the optical spacer is formed using a material selected from the group consisting of polycarbonates, polyesters, polyethylenes, polyethylene napthalates, polyethylene terephthalates, polypropylenes, polyvinylidene chlorides, and combinations thereof.

77.A system for projecting one or more synthetic optical images, which demonstrates improved resistance to optically degrading external effects, and which comprises:

(a)one or more arrangements of microstructured image icons, the image icons of the or each arrangement of microstructured image icons being arranged in a regular array; and

(b)one or more embedded arrangements of image icon focusing elements, wherein interstitial spaces between at least a portion of the image icon focusing elements are filled and the focusing elements are covered,

wherein the one or more arrangements of image icon focusing elements is disposed above the one or more arrangements of microstructured image icons such that at least a portion of the image icon focusing elements forms at least one synthetic image of at least a portion of the image icons,
wherein all interfaces responsible for focus are embedded within the system,
wherein the microstructured image icons are optionally coated and/or filled voids or recesses formed within a substrate, wherein the voids or recesses each measure from about 0.5 to about 8 microns in total depth.

78.The system of claim 77, wherein the image icon focusing elements are refractive focusing elements.

79.The system of claim 77 or 78, wherein the voids or recesses are filled with a submicron particle pigmented coloring material.

80.A system for projecting one or more synthetic optical images, which demonstrates improved resistance to optically degrading external effects, and which comprises:

(a)one or more arrangements of microstructured image icons, the image icons of the or each arrangement of microstructured image icons being arranged in a regular array; and

(b)one or more embedded arrangements of image icon focusing elements, wherein interstitial spaces between at least a portion of the image icon focusing elements are filled and the focusing elements are covered,

wherein the one or more arrangements of image icon focusing elements is disposed above the one or more arrangements of microstructured image icons such that at least a portion of the image icon focusing elements forms at least one synthetic image of at least a portion of the image icons,
wherein all interfaces responsible for focus are embedded within the system,

wherein the microstructured image icons are formed from shaped posts formed on a surface of a substrate, wherein the shaped posts each measure from about 0.5 to about 8 microns in total height.

81.The system of claim 80, wherein the image icon focusing elements are refractive focusing elements.

82.The system of any one of claims 71, 75, 78 and 81, wherein the image icon focusing elements has a focal length and the system has a refractive index from an outer surface to refracting interfaces that is varied between a first and a second refractive index, the first refractive index being substantially or measurably different than the second refractive index,

wherein at least one of the first and second refractive indices is tailored to achieve a desired focal length.

83.A system for projecting one or more synthetic optical images substantially as herein described with reference to any one of the embodiments of the invention illustrated in the accompanying drawings and/or examples.