Innovia Security Pty Ltd v Visual Physics, LLC
[2015] APO 81
•7 December 2015
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Innovia Security Pty Ltd v Visual Physics, LLC [2015] APO 81
Patent Application: 2006246716
Title:Image Presentation and Micro-Optic Security System
Patent Applicant: Visual Physics, LLC
Opponent: Innovia Security Pty Ltd
Delegate: Matt Kraefft
Decision Date: 7 December 2015
Hearing Date: 22 September 2015, in Canberra
Catchwords: PATENTS – Section 59 – opposition to grant of patent – synthetic magnification micro-optic system – lens/icon image arrays – lack of novelty established – “whole of contents” basis – inventive step – person skilled in the art could be reasonably expected to have ascertained the document relied upon – obviousness not established in light of document – opposition successful on basis of lack of novelty.
Representation: Patent applicant: Mr Anthony Franklin SC, assisted by Ms Katrina Crooks, legal practitioner, Shelston IP, Sydney.
Opponent:Mr Craig Smith, of counsel, assisted by Mr Ken Bolton, patent attorney, Watermark, Melbourne.
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2006246716
Title:Image Presentation and Micro-Optic Security System
Patent Applicant: Visual Physics, LLC
Date of Decision: 7 December 2015
DECISION
Claims 1, 5 to 8, 10 to 13, 15 to 22, 31, 35, 40 and 41 are not novel on a “whole of contents” basis.
All the claims of the specification have an inventive step.
The defects to the above claims in respect to novelty are clearly capable of remedy by amendment. The applicant is allowed two (2) months from the date of this decision to propose suitable amendments to overcome the defects.
REASONS FOR DECISION
BACKGROUND
Nanoventions Holdings, LLC filed patent application 2006246716 on 18 May 2006. By subsequent assignment, the application is now proceeding in the name of Visual Physics, LLC (“the applicant”). The application claims earlier priority dates from two US applications, the earliest of which was filed on 18 May 2005. Application 2006246716 was advertised accepted on 3 November 2011.
Securency International Pty Ltd filed a notice of opposition on 3 February 2012. A statement of grounds and particulars followed on 3 May 2012. By a change of company name, the opposition is now proceeding in the name of Innovia Security Pty Ltd (“the opponent”).
Following the opponent’s filing of evidence in support, the applicant requested to amend the complete specification under Section 104 of the Patents Act. After an examination report and a further amendment request, leave to amend was granted. The proposed amendments though were the subject of an opposition. On 18 February 2015, the amendments were allowed by a delegate’s decision, Innovia Security Pty Ltd v Visual Physics, LLC, [2015] APO 5.
The parties completed the evidentiary stages on 18 March 2015.
SPECIFICATION
The specification describes the invention as relating to an image presentation system that in an exemplary embodiment is formed of micro-structured icon elements in a polymer film. The invention is also described as relating to a synthetic magnification micro-optic system that in an exemplary embodiment is formed as a polymer film. Use of the invention as a security device for overt and covert authentication of currency, documents and products as well as visual enhancement is also discussed.
Two patent examples of lens structures for document security are discussed. Both are stated to suffer from similar drawbacks. They result in a relatively thick structure that is not particularly suitable for use with document authentication. Their use of cylindrical or spherical lenses provides a narrow field of view resulting in fuzzy images and requiring exact and difficult alignment of the focal point of the lenses with the associated images. Additionally, they have not proven particularly effective as security or anti-counterfeiting measures.
The specification mentions a need in the industry for secure and visually unique optical materials that can facilitate overt authentication of currency, documents, manufactured articles and products and for optical materials that provide visual enhancement of manufactured articles, products and packaging.
The specification, as amended under Section 104, ends with 42 claims. Apart from the omnibus claim at the end, there are four independent claims. These claims read as follows.
Claim 1. A synthetic optical image system, comprising:
an array of focusing elements, and
an image system including an array of microstructured icon elements designed to collectively form at least one image,
wherein the array of focusing elements and the image system cooperate to form at least one synthetic optical image,
wherein the array of microstructured icon elements is incorporated into an icon layer,
wherein a patterned coating material is applied to at least a portion of the surface of the microstructured icon layer, wherein the microstructured icon layer comprises depressed shapes and flats between them, and
wherein the patterning of the coating material constitutes regions where the coating material is present and regions where the coating material is absent,
wherein the coating material is coordinated with the icon elements, coating the depressed shapes, but not coating the flats.Claim 2. A synthetic optical image system, comprising:
an array of focusing elements, and
an image system including an array of microstructured icon elements designed to collectively form at least one image,
wherein the array of focusing elements and the image system cooperate to form at least one synthetic optical image,
wherein the array of microstructured icon elements is incorporated into an icon layer,
wherein a patterned coating material is applied to at least a portion of the surface of the microstructured icon layer,
wherein the patterning of the coating material constitutes regions where the coating material is present and regions where the coating material is absent, and
where the patterned coating material creates a second synthetic image in addition to the image collectively formed by the microstructured icon elements.Claim 4. A synthetic optical image system, comprising:
an array of focusing elements, and
an image system including an array of microstructured icon elements designed to collectively form at least one image,
wherein the array of focusing elements and the image system cooperate to form at least one synthetic optical image,
wherein the array of microstructured icon elements is incorporated into an icon layer,
wherein a patterned coating material is applied to at least a portion of the surface of the microstructured icon layer, the coating material including a polymer material, and
wherein the patterning of the coating material constitutes regions where the coating material is present and regions where the coating material is absent.Claim 37.An image presentation system comprising an array of microstructured icon elements, the microstructured icon elements designed to collectively form an image or certain selected information, wherein the image is designed to be viewed or the information read by use of a separate magnifying device,
wherein the array of microstructured icon elements is incorporated into an icon layer, and
wherein a patterned coating material is applied to at least a portion of the surface of the microstructured icon layer, the coating material including a polymer material.STATEMENT OF GROUNDS AND PARTICULARS
The opponent has amended the statement of grounds and particulars once. This amendment was allowed on 16 September 2013. The amendment was to principally add further particulars and documents relating to the common general knowledge in the field at the relevant time. The grounds of opposition set out in the statement of grounds and particulars, as amended, are that the invention as claimed lacks novelty, lacks an inventive step and is not a manner of manufacture, and the claims are not clear. The opponent has provided particulars for each of these grounds.
EVIDENCE IN SUPPORT
The opponent filed evidence in support from Mr David Ian Lindsay and Dr Bruce Alfred Hardwick. Mr Lindsay is a patent attorney of the firm representing the opponent. He has exhibited a large number of documents of prior art. Dr Hardwick is a chemical engineer and joined Note Printing Works (“NPW”), a division of the Reserve Bank of Australia, in 1983. He had worked for NPW and its successor, Note Printing Australia Limited (“NPAL”), until his retirement 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 has had extensive experience domestically and internationally in various technical groups relating to banknote printing and security features. Dr Hardwick has essentially presented evidence of the background knowledge of the art and of the alleged lack of novelty and inventiveness of the claimed invention.
EVIDENCE IN ANSWER
The applicant filed evidence in answer from Mr Edward Stanley Radclyffe. Mr Radclyffe is an engineer and has extensive experience in passport security dating from the 1980s with the Department of Foreign Affairs. He has been a member of working groups, director of sections within the department, and contractor in respect to passport operations and passport security development up until 2007. Mr Radclyffe has principally presented evidence distinguishing the claimed invention, both at acceptance and with the allowed Section 104 amendments, from the opponent’s prior art.
EVIDENCE IN REPLY
The opponent filed evidence in reply from Dr Hardwick. In his evidence in reply Dr Hardwick has principally expanded on the points made in evidence in support to support the contentions that the claimed invention lacked novelty and was obvious.
EVIDENCE FROM RELATED APPLICATIONS
The present application is related, indirectly, to at least two other applications by the same applicant and opposed by the same opponent. The other applications are 2004294182 and 2010226869. The three oppositions were heard consecutively. Prior to the hearings, the applicant requested pursuant to Patent Regulation 5.23 that the Commissioner of Patents consult the evidence filed in each of the oppositions for the purposes of deciding each of the other oppositions. The Patent Office responded to this request indicating that a delegate had advised that the parties may raise Regulation 5.23 at the hearings in relation to any specific material.
At the beginning of the first hearing on the first day, I raised some concern whether the applicant’s request was capable of being met by Regulation 5.23. That regulation states that, for the purposes of deciding an opposition, the Commissioner may consult a document (my emphasis) that is relevant to the opposition and has not been filed “under this Chapter” and is available in the Patent Office. The delegate’s advice that Regulation 5.23 may be raised in relation to any specific material is consistent with the apparent application of the regulation in a limited way to a specific document or material. The applicant’s request was broader in wanting the evidence filed in any one opposition to apply across each of the other two oppositions as well. At the hearing the opponent indicated its consent to this proposal by the applicant. Accordingly I agreed to direct that evidence served in any one of the three oppositions is deemed to have been also served in the other two oppositions (Regulation 5.22). The direction was formally made on 6 October 2015.
Much of the evidence across the three oppositions was similar and thereby largely replicated. Two declarations though by Mr Graeme Mann have been filed by the applicant only in the opposition against application 2010226869. Consequently the most obvious practical effect of joining the evidence across the three oppositions was that the Mann declarations were also available for the applicant in the oppositions against applications 2004294182 and the present application. In a similar way for example, the evidence of Mr Gary Fairless Power, initially filed only in the opposition against application 2004294182, was also available for the opponent in its oppositions against the present application and 2010226869.
Unless otherwise indicated, references to evidence in this decision relate to the material filed initially for the present case.
TERMS OF THE ART AND NATURE OF INVENTION
There does not appear to be any explicit definition in the specification of what is meant by a synthetic magnification micro-optic system (my emphasis). Mr Radclyffe indicated at [32] and [33] of his evidence in answer that the term “synthetic”, in the context of the claimed icon elements collectively forming at least one image, referred to the creation of an image which is caused other than purely by the effect of the eye looking through the lens array. Page 4 of the specification discusses the ability to control the magnitude of the synthetic magnification by the selection of a number of factors, including the degree of skew between the axes of symmetry of the lens array and the icon array. Page 5 describes the skew in terms of the degree of rotational misalignment between the axes of symmetry of the two arrays. This description appears to refer to an optical effect known as the moiré effect. 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. Moiré magnification is described in some detail in Hutley et al (Exhibit BAH-8 to Dr Hardwick’s evidence in support). Also 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. From the above, I regard the specification as describing synthetic magnification to be the production of a magnified image by means other than lens magnification alone, with moiré magnification being one example of that.
The descriptive part of the specification contains elaborate discussion of the various optical relationships of the micro-lens and micro-image arrays, and the nature of the images, for producing the above-mentioned visual effects. On the other hand, the aspect of the present invention is not principally directed to such relationships and the images per se. Instead the claimed invention is principally directed to the application of a patterned coating material selectively to a micro-structured icon layer that consists of an array of micro-structured icon elements.
APPLICABLE LAW
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 13 November 2009. Consequently the Patents Act as in force immediately before 15 April 2013 applies in the present case.
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 at [29], [67]; 50 IPR 305 at 311, 319; Commissioner of Patents v Sherman [2008] FCAFC 182 at [18], [22]; 79 IPR 426; Genetics Institute Inc v Kirin-Amgen Inc [1999] FCA 742; [1999] 92 FCR 106 at [17]).
Section 18 of the Patents Act 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 ………
At the hearing, the opponent pursued only the grounds of lack of novelty and lack of inventive step.
NOVELTY
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).
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 at [20]; 137 CLR 228 at 235:
“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”.
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 AstraZeneca AB v Apotex Pty Ltd [2014] FCAFC 99, at [302], the full Federal Court held:
“Sufficiency of disclosure is a cardinal anterior requirement in the analysis of whether a prior art document anticipates a claimed invention. It is only after the stage of assessing the sufficiency of disclosure – which involves a determination about whether a prior document has “planted the flag” as opposed to having provided merely “a signpost, however clear, upon the road” or, perhaps, something less – that the notion of reverse infringement comes into play as the final and resolving step of the required analysis. It is not the first step of the required analysis; nor is it the only step”.
The above position does not appear to have been disturbed by the High Court on appeal. See AstraZeneca AB v Apotex Pty Ltd, [2015] HCA 30.
The opponent principally relied on the following patent documents, both on a “whole of contents” basis.
D1 WO 2005/106601
D1 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. The micro-image array is formed in the surface of a clear polymeric film which is effectively the substrate. In this context, page 12 at lines 11-12 of D1 states that the clear polymeric film acts as an optical spacer layer of appropriate thickness such that the micro-images are at the focal plane of the micro-lenses. Further on page 12, the creation of moiré magnification is contemplated by introducing a pitch mismatch between the micro-image array and the micro-lens array. Clearly a system for generating a synthetic optical image as claimed in the present claims is disclosed in D1.
One type of micro-image structure disclosed in D1 is an anti-reflection structure. D1 states, from page 7 line 24, that anti-reflection structures are well known in the field of optics and designed to reduce reflections arising from abrupt changes in the refractive index at the interface of two materials. A periodic array of surface structures that are smaller than the wavelength of light provides a continuous transition of the refractive index rather than an abrupt change, and reflection is minimised. One particular type of anti-reflection structure is known as the moth-eye structure 4 (see diagram below) which 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 of D1 describes moth-eye films having a characteristic “egg box” periodic modulation typically with a repeating period between 200-400nm and a structure height between 250-350nm. To provide sufficient contrast between the micro-images and the film, a thin metallic layer 5, such as aluminium, may be applied over the whole active surface of the device. Figure 18b above illustrates the thin metallic layer 5 being de-metallised such that metal free regions 110 are formed which overlap image and non-image areas.
In comparing D1 to the claimed invention, the first issue is whether the moth-eye structures constitute micro-structured icon elements incorporated into an icon layer. In the present specification, an icon layer is defined on page 27 as a substantially planar layer of micro-printing that may be applied to a face of a substrate, or be a free-standing layer. Figure 18b of D1 illustrates the moth-eye structures 4 in one plane on the surface of clear polymeric film 1. I am satisfied that D1 clearly discloses micro-structured icon elements incorporated into an icon layer. Even if that were incorrect, the present specification’s definition of an icon layer appears wide enough to cover numerous other possibilities. Page 27 of the specification further states that a wide variety of materials can be used for the icon layer. The list includes many types of polymers, glasses, metal oxides including aluminium oxide, printed ink or patterned coatings and combinations thereof. Item 108 in the above figure of D1 is an adhesive layer. As may be expected, adhesive layers are absent from the list in the present specification of materials for the icon layer. On the other hand, the application of the thin metallic layer 5 fits within the above definition of an icon layer with its example of metal oxides. Alternatively the selective application of the metallic layer 5 resulting in metal free regions 110 may be seen as a patterned coating material. The latter is also in the list of materials for the icon layer. I conclude D1, in several ways, discloses an array of micro-structured icon elements incorporated into an icon layer.
A second issue is whether the moth-eye structures form a micro-structured icon layer comprising depressed shapes with flats between them (claim 1). At [48] in evidence in answer, Mr Radclyffe distinguished the claimed invention from D1 by stating the moth-eye structures were raised figures. While raised figures may dominate the moth-eye structures, there are also clearly depressions between the raised figures within each moth-eye structure. Across the micro-image array there are depressed shapes with flats between them. I find this integer of claim 1 is disclosed in D1.
The third issue is whether the thin metallic layer, and selective de-metallised areas thereof, as a patterned coating material, coats the depressed shapes but not the flats, or creates a second synthetic image. There is nothing particularly limiting or restrictive in claims 1, 2 or 4 about the nature of the patterning other than that the patterning constitutes regions where the coating material is present and regions where it is absent. This further supports the position outlined above that the metallic layer of D1, de-metallised in selected areas, constitutes a patterned coating material. In D1, one embodiment is disclosed of metallising the whole active surface of the film. This produces a black micro-image, where the micro-structures occur, in contrast to the non-structured areas of the film which appear metallic. Another embodiment of D1 involves the selective metallisation of a subset of the moth-eye structures. In this mode the micro-images would appear black on a clear transparent background. Similarly, the top of page 25, referring to the above Figure 18b, describes the metal free regions 110 overlapping both the image and non-image areas. There appear to be no clear and unmistakable directions in D1 to coordinate the coating material with the icon elements to coat the depressed shapes only and not the flats (claim 1). Similarly there are no clear and unmistakable directions of the patterned coating material itself creating a second synthetic image in addition to the image collectively formed by the micro-structured icon elements (claim 2). I conclude that claims 1 and 2 are novel over D1.
The opponent did not pursue claim 4 of the application. In respect to claim 4, D1 throughout describes the application of a thin metallic layer. There appears to be no disclosure of the coating material itself including a polymer material. I conclude that claim 4 is novel over D1.
The opponent similarly did not pursue claim 37 of the application. That claim defines an image presentation system wherein the image is designed to be viewed or information read by use of a separate magnifying device. The use of a separate magnifying device does not appear to be disclosed in D1. I conclude that claim 37 is novel over D1.
Since I have determined that the independent claims are novel over D1, it follows that the claims, as a whole, of the present application are novel over D1.
D2 WO 2005/052650 (=AU 2004294182)
D2 is by the same applicant as the present application and shares much of the same content. The document discloses a synthetic magnification optical image system operating broadly with the same principles as in the present application.
Figure 7c of D2 illustrates a micro-structure with gaps. In respect to this figure, page 31 lines 9-11 refer to the formation of icon elements which can be formed from voids in the micro-structure, or the solid regions, singly or in combination. Figure 7c can thus be regarded as illustrating a micro-structured icon layer with depressed shapes with flats between them. Alternatively, Figures 16a to 16c illustrate the icon elements being formed as bas-relief micro-structures. Clearly, voids are shown cut into the surface adjacent the optical spacer. Moreover that surface is described and shown as a tangible icon layer 311. I conclude a micro-structured icon layer comprising depressed shapes with flats between them is disclosed in D2.
In respect to a patterned coating material, page 31 lines 11-13 of D2, in reference to Figure 7c, states the voids can optionally be filled or coated with another material such as evaporated metal, or dyed or pigmented material. Similarly, for Figures 16a to 16c, the description at page 39 lines 3-5 states the voids to be filled with a dyed or pigmented material 323, 325 and 327.
The applicant distinguished icon fill material from coating material by referring to the definitions of those terms at pages 21 to 24 of the present specification. At the foot of page 23, coating material is defined as any material used to coat an icon layer or icon fill material. The latter reference would appear to support the applicant’s position of distinguishing the entities. Similarly Figures 16a to 16c illustrate dyed or pigmented fill material filling the voids and an optional sealing layer 321 then overlaying or coating the whole icon layer. Figure 38 for example also illustrates separate fills and coating materials. On the other hand, the present specification also describes circumstances where the distinction is somewhat artificial. There is significant commonality between the definitions of the icon fill material and the coating material. Several of the same material properties for both materials are listed for producing desirable optical effects or enabling non-contact detection or authentication of the material. Furthermore the first full paragraph on page 25 contemplates coating materials incorporating a fill material. By way of example, Figures 16d and 16e also illustrate an embodiment where sealing layer 321 clearly fills and coats the icon elements. The applicant attempted to distinguish the entities in this particular embodiment by stating that the specification described Figures 16a to 16c as having icon elements filled with a dyed or pigmented material while Figures 16d and 16e has a high refractive index material coating the icon elements. This description of the figures is correct. However if there was to be a strict correspondence of features and terminology then I would note the description in respect to Figure 7c describes the reverse. That is, the voids are optionally filled or coated with a material having a different refractive index, or dyed or pigmented material. The comparison of the sealing layer across Figures 16a to 16e is also noteworthy. As mentioned above, Figures 16a to 16c have dyed or pigmented fill material filling the voids and an optional sealing layer 321 then overlaying or coating the whole icon layer. In respect to Figures 16d and 16e, the description describes the icon elements being coated with high refractive index layer 328 (the illustrations show the layer 328 lining and following the shapes of the icon elements) and the optional sealing layer 321 as filling the icon elements. Whilst I accept the embodiments are different, there nonetheless appears to be a fair degree of interchangeability of described functions and terminology in respect to the fill materials and the coating materials. In the same vein, the applicant’s Mr Radclyffe, at [38] in evidence in answer, described Figure 39a as showing a coating material which, in section 938 of the figure, fills only the depressions.
D2 contains the same description in respect to Figure 7c and Figures 16a to 16c as the present specification. I am satisfied the embodiments related to at least Figure 7c and Figures 16a to 16c in D2 adequately disclose selective, that is patterned, coating of the depressed shapes but not the flats of the icon elements as defined in claim 1.
It would appear the applicant’s intent with claim 1 was to define the nature of the lining of the icon elements, beginning for example with Figure 35 of the present specification, with the features of claim 1 more particularly reflected in Figure 39 and the associated description. The applicant made some reference to this area of the present specification in submissions. The description and figures beyond Figure 33 of the present specification are not part of D2. However, as indicated above in the context of the whole specification, I have found that claim 1 is insufficiently distinguished from the figures, and associated description, that precede Figure 33 and which are in D2, more particularly Figures 7c and Figures 16a to 16c.
I conclude that claim 1 of the present specification is not novel over D2.
In respect to claim 2, while it may be possible that the patterned coating materials of D2 create a second synthetic image in addition to the image collectively formed by the micro-structured icon elements, such a feature does not appear to be clearly disclosed in D2. I conclude that claim 2 is novel over D2.
In respect to claim 4 of the application, the opponent submitted with reference to Dr Hardwick’s evidence in reply at [32] and [33] that D2’s reference, at page 69 lines 4 and 5, to the solidification of the fill material by radiation curing, meant the fill material was a radiation curable resist, in other words, polymer material. On the other hand, there appear to be no clear and unmistakable directions in D2 of the fill or coating materials themselves including a polymer material. I conclude that claim 4 is novel over D2.
The opponent did not pursue claim 37 of the application. Claim 37 similarly defines a coating material including a polymer material. That claim also defines an image presentation system wherein the image is designed to be viewed or information read by use of a separate magnifying device. The use of a separate magnifying device does not appear to be disclosed in D2. I conclude that claim 37 is novel over D2.
Insofar as the dependent claims are appended to claim 1, I comment as follows.
Claim 3, like claim 4, defines the coating material to include a polymer material. As for claim 4, I conclude that claim 3 is novel over D2.
Claim 5 defines the system comprising the array of icon elements and the array of focusing elements to have a thickness of less than 50 microns, or the focusing elements to have an effective diameter of less than 50 microns, or both. The latter feature is taught in several places in D2, including specifically on page 6 and at the foot of page 13. I conclude that claim 5 is not novel over D2.
Claim 6 defines the icon layer formed on a substrate. D2 discloses this feature throughout the document, finishing with a list of suitable materials for the optional substrate film at the top of page 74. I conclude that claim 6 is not novel over D2.
Claim 7 defines alternative types of synthetic optical image systems including a moiré magnification system. D2 discloses a moiré magnification system. I conclude that claim 7 is not novel over D2.
Claim 8 defines a free standing icon layer or one provided on a substrate. In respect to the latter alternative, as for claim 6, I conclude that claim 8 is not novel over D2.
In respect to claim 10, the use of a metallic coating is disclosed in D2 at page 31 line 12 in relation to Figure 7c. I conclude that claim 10 is not novel over D2.
Claims 11 and 12 define various alternative aspects of the images formed from at least portions of the patterned coating and the icon elements, respectively. I am satisfied at least some of these alternatives are adequately disclosed in D2 and conclude that claims 11 and 12 are not novel over D2.
Claim 13 defines the formation of micro-printing from the icon and lens arrays, and various optional applications for the micro-printing. The use in a security thread with overprinting for currency, documents, packaging or manufactured articles is disclosed from page 49 onwards of D2. I conclude that claim 13 is not novel over D2.
Claim 15 defines an icon layer formed of both positive and negative icon elements. This is expressly disclosed in D2 at page 31 lines 18 and 19. I conclude that claim 15 is not novel over D2.
Claims 16 to 22 define various properties, or patterning features, or application methods of fill materials and coating materials. I am satisfied that at least some of these alternatives are adequately disclosed in D2 and conclude that claims 16 to 22 are not novel over D2.
Claim 31 defines an optical spacer between the array of focusing elements and the image system. This is disclosed throughout D2 and was previously mentioned above in respect to Figures 16a to 16c. I conclude that claim 31 is not novel over D2.
Claim 35 defines the incorporation of the synthetic optical image system into currency or into a security thread for currency. These are two of many applications disclosed in D2. I conclude that claim 35, and similarly claim 41, are not novel over D2.
Claim 40 defines the icon elements having a physical relief, and the generation of a synthetically magnified image from the disposition of the array of focusing elements relative to the array of icon elements. The description in D2 in respect to Figures 16a to 16c, as discussed above, anticipates this claim. I conclude that claim 40 is not novel over D2.
In summary, I have found that claims 1, 5 to 8, 10 to 13, 15 to 22, 31, 35, 40 and 41 are not novel over D2.
INVENTIVE STEP
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 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).
D1 and D2 were published after the priority date of the present application. Consequently those documents are not available to support lack of inventive step in the present case.
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 at [45], 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 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.
In AstraZeneca at [202] and [203], the court found that if a problem addressed by a patent specification is itself common general knowledge, or if knowledge of the problem is part of the prior art information (Subsection 7(3)), then such knowledge or information will be attributed to the hypothetical person skilled in the art for the purpose of assessing obviousness. On the other hand, if the problem cannot be attributed to the hypothetical person skilled in the art in either of these ways then it is not permissible to attribute a knowledge of the problem on the basis of the inventor’s “starting point” such as might be gleaned from a reading of the complete specification as a whole. The High Court, on appeal in AstraZeneca AB v Apotex Pty Ltd, [2015] HCA 30, did not appear to disturb this position.
Person Skilled in the Art
Page 1 of the specification states that the unusual optical effects provided by the various embodiments of the disclosure can be used as a security device for overt and covert authentication of currency, documents and products as well as visual enhancement of products, packaging, printed material, and consumer goods. Pages 133 to 135 outline numerous and diverse fields of use such as government documents, currency, financial instruments, product and brand protection, health care, product packaging, electronic equipment, software, ticketing and individual products. The field of the alleged invention is not just restricted to optical security devices but is expandable more generally to visual enhancement features in a wide variety of devices. While the fields of use may be wide, the hypothetical person skilled in the art would nonetheless need to be knowledgeable and skilled in this case in the production of optical effects from small lens and image arrays. I would expect the appropriate person skilled in the art would be one with a science or engineering qualification together with qualifications or industry experience in optics, more particularly in optical devices.
The parties provided evidence from experts in two areas of application. Both areas related to document security though. The opponent’s Mr Power and Dr Hardwick both had significant experience principally in the banknote security industry before the earliest priority date. The applicant’s Mr Radclyffe and Mr Mann both had significant experience principally in the application of security features in passports. In this respect I regard all declarants in this case as able to have provided relevant evidence.
Mr Power and Dr Hardwick were also involved in research and development in their field. Mr Power was employed directly by the opponent. Dr Hardwick chaired a technical committee that oversaw the research and development of NPAL and of the opponent. In evidence in support, Dr Hardwick, at [11], indicated that he was an inventor in respect to a number of patents in the field of banknotes and banknote security. Mr Radclyffe stated at [13] of his evidence in answer that he was also the named inventor on an Australian patent relating to images within a laminate. Mr Mann was appointed the staff scientist with his company in 1999 and gained the responsibility of researching and keeping up to date with competing technologies. He has stated he is the named inventor on four patents in the security field.
It appears the declarants from both sides in this case may be over-qualified above the appropriate, hypothetical person skilled in the art. Firstly I would note there is no evidence from personnel involved in visual enhancement features of general consumer merchandise, to which the present application is also stated to pertain. Secondly, in Root Quality Pty Ltd v Root Control Technologies Pty Ltd, [2000] FCA 980 at [70], the person skilled in the art or the skilled addressee was described as the uninventive skilled worker. The opponent’s Mr Power and Dr Hardwick both were involved in research and development with at least Dr Hardwick also being a listed inventor. Similarly the applicant’s declarants were listed inventors. I regard that the declarants on both sides were above the level of an uninventive skilled worker as required from the Root Quality decision. While it may be that, in some highly technical fields, the appropriate person skilled in the art is the researcher or even an inventive person, this does not appear to be the case in the present matter in the light of the stated problems in the specification of lens sizes and lens/image alignments. In this respect, it is noteworthy that the opponent’s Dr Hardwick stated, at [7] of evidence in reply against application 2010226869, that the person skilled in the art would have had a solid grounding and understanding of optics, but would not necessarily require a particularly high level of expertise in the field of optics.
I conclude that I need to treat the evidence from both sides with a little caution as the declarants are at a higher level in terms of representative, hypothetical persons skilled in the art to whom the specification is addressed. Nonetheless the specification is clearly directed to those with an interest in or involved in the design or production of optical effects with micro-lens and micro-image combinations regardless of field of use. All the declarants in this case fit that description and I give substantially the same weight to each declarant’s evidence.
Common General Knowledge
The opponent contended that the use of a moiré magnifier as an optically variable device, and its operating principles, were known at the relevant time. The applicant did not counter the knowledge of moiré magnification at the relevant time. I am prepared to accept that the phenomenon of moiré magnification was common general knowledge at the priority date. Mr Radclyffe, at [91] of his evidence in answer, stated that he was confident that not many people in Australia in the security industry knew a lot about moiré magnification at the relevant time. Mr Radclyffe did not comment specifically about the knowledge of those working with optical effects or optical devices in the security industry, amongst whom I would have expected significant knowledge about moiré effects. Consequently I take Mr Radclyffe’s statement to mean that, while the phenomenon of moiré magnification may have been commonly known amongst persons skilled in the art, its applicability in the security device field was not. In evidence in support at [19], Dr Hardwick indicated an awareness of conference papers published from a series of conferences, the Optical Security and Counterfeit Deterrence Techniques conferences. In evidence against application 2004294182, Dr Hardwick exhibited two papers from these conferences that related to the use of moiré effects in banknotes and similar documents. The exhibits were dated between 2000 and 2002. At [17] – [19], Dr Hardwick stated that many people involved in research and development of security features attended these conferences, presented papers thereat, or would have been aware of the conferences, or accessed the conference papers, published by a particular professional society as the SPIE Proceedings. He specifically mentioned himself, other members of his research team, and others involved in research and development in the area of optical document security from other organisations who attended the conferences.
This evidence is telling by the high level at which it is pitched. Dr Hardwick referred to people involved in research and development as attendees at these conferences. This would illustrate the caution with which I need to consider the evidence in this case as discussed in the preceding section. Mr Radclyffe, and similarly Mr Mann, on the other hand stated they were generally not aware of these conferences. Mr Radclyffe stated at [89] that while he had heard very generally of SPIE, he would not have attended the conferences or read the papers unless he was looking for something very specific. I am inclined towards Mr Radclyffe’s evidence. I am not convinced the representative person skilled in the art, as discussed in the preceding section, would have been aware of the conferences or SPIE Proceedings to the extent that the papers therefrom would have been regarded as part of the common general knowledge at the priority date of the present application. Moreover, the evidence in this case appears to contain just a few papers from those proceedings within five years before the priority date that related to moiré effects in banknotes and similar security documents. The evidence does not appear to clearly establish it was common general knowledge to apply or use the phenomenon of moiré magnification in devices or materials in particular industries including the security device field.
The opponent pressed the point by referring to the Hutley paper and to US Patent 5712731 (“Drinkwater patent”). Both documents provided a similar explanation of the creation of moiré magnification effects. The Hutley paper did not discuss applications for the moiré magnifier other than express the knowledge of its commercial use in novelty brooches and its potential feasibility in image processing, office copiers and cameras. The Drinkwater patent was one of the patents discussed in the background section of the present patent specification and describes a security device including an array of micro-images coupled with an array of substantially spherical micro-lenses. The opponent submitted the Drinkwater patent formed part of the common general knowledge on the basis that Dr Hardwick regarded the patent as very well known in security document circles. Dr Hardwick further stated at [29.3] of his evidence in support that the industry generically referred to this patent as the Drinkwater patent. While the Drinkwater patent may have been well known in the circles of the opponent’s expert declarants, this did not necessarily mean its contents were common general knowledge in the field (Minnesota Mining and Manufacturing Co. v Beiersdorf (Australia) Ltd., [1980] HCA 9, (1980) 144 CLR 253). The applicant’s Mr Radclyffe, at [24] of his evidence in answer, considered it unlikely that average skilled persons in the field of security devices would have had details of patents as part of their common general knowledge, other than one or two very famous patented technologies. He stated that none of those were relevant in the present case.
I conclude the evidence in these proceedings is insufficient to show the Drinkwater patent was common general knowledge at the relevant time. Mr Power exhibited a further patent (exhibit GFP-6) that related to moiré-based security devices. However that document was not pressed in this case.
I conclude the evidence is insufficient to show it was common general knowledge at the relevant time to apply or use the phenomenon of moiré magnification in security devices or other similar applications.
Whether There is an Inventive Step
Common General Knowledge Alone
The opponent relied on the Drinkwater patent being common general knowledge to submit the claimed invention was obvious in the light of the common general knowledge alone. In the alternative the opponent relied on the Drinkwater patent as a subsection 7(3) document. Since I have found the Drinkwater patent was not part of the common general knowledge at the relevant time, and there being no other substantive challenge on the basis of the common general knowledge alone, I conclude the claimed invention has an inventive step in the light of the common general knowledge alone. I will thus next consider whether the Drinkwater patent qualifies as a subsection 7(3) document.
Whether the Prior Art Could be Ascertained, Understood and Regarded as Relevant
At the relevant time, subsection 7(3) restricted prior art information used to support lack of inventive step to that which the person skilled in the art could be reasonably expected to have ascertained, understood and regarded as relevant.
In evidence in answer at [23] for application 2010226869, Mr Mann considered that patents would have been a source of research when looking at competing technologies. As mentioned above, Mr Radclyffe considered that skilled persons in the field would have commonly known the details of one or two very famous patented technologies. This suggests that persons skilled in the art would have considered conducting searches of patents or patented technologies, or otherwise made themselves aware of patents in appropriate circumstances. The Drinkwater patent is a particular example of one that persons skilled in the art appeared to have some regard of. The opponent’s declarants appeared to have a particularly high regard of the Drinkwater patent. The patent is also discussed in the background section of the present application.
On the available evidence in this case, I conclude the relevant person skilled in this art could be reasonably expected to have ascertained the Drinkwater patent. Moreover I have little doubt that the person skilled in this art would have understood the Drinkwater patent and regarded it as relevant.
Drinkwater Patent
The Drinkwater patent discloses a security device, for security documents such as banknotes, that includes an array of micro-images that, when viewed through a corresponding array of substantially spherical micro-lenses, generates a magnified image. The micro-lenses may be applied to a transparent polymeric material that overlays the micro-images by embossing or curing. Column 3 of the Drinkwater patent describes the moiré effect in the following terms. When the micro-lens array and the micro-image array are perfectly aligned into register, each lens has underneath it a micro-image in perfect register so that an observer sees only one magnified image of the micro-images. However, if the spherical lens array is rotated relative to the image array, the single magnified image splits into a regular array of images with the number of visible images increasing and their individual sizes decreasing as the angular mismatch increases.
One embodiment disclosed in Drinkwater is where an image array is formed by selectively removing areas from an aluminium film to form images, by an etching process for example.
The above describes the claimed features in the present application of a synthetic optical image system wherein an array of focusing elements cooperates with an array of micro-structured icon elements to form at least one synthetic optical image. Moreover the described embodiment would clearly produce a micro-structure with depressed shapes and flats between them as claimed in the present application.
In respect to the claimed patterned coating material, the opponent submitted that it would be obvious to apply a coating to parts of a micro-structure, including for the purpose of having the etched portions of the micro-images take on a desired colour. On the other hand, this statement, and similar statements in Dr Hardwick’s evidence in respect to contrast (for example at [70] in evidence in support against application 2010226869), appears to be an assertion without substantive backing. For instance, Dr Hardwick merely indicated that if he wanted to create a coloured or reflective image, it would be obvious to fill the voids with ink or metal. That is, the obviousness or otherwise of filling or coating the voids would presuppose a desire to create a coloured or reflective image in the first place.
The nearest that the Drinkwater patent appears to come in respect to coatings is the disclosure of an opacifying coating. On the other hand, the opacifying coating is applied to other areas of the substrate remote from the micro-images, and the coating may be printed over with security indicia (column 14 with reference to Figure 5). While the opacifying coating with overprinted security indicia may qualify as a patterned coating material, the coating’s provision remote from the micro-images would appear to teach away from the claimed feature of claim 1 in the present case of the coating material being coordinated with the micro-structured icon elements to coat the depressed shapes but not the flats. This is apposite to the requirement for obviousness of the person skilled in the art being directly led as a matter of course from the Drinkwater patent to try the claimed invention. I conclude that claim 1 has an inventive step over the Drinkwater patent.
Claim 2 principally differs from claim 1 in defining the patterned coating material as creating a second synthetic image in addition to the image collectively formed by the micro-structured icon elements. Whilst the opacifying coating with overprinted security indicia in Drinkwater may present a separate image from that generated by the micro-structured icon elements, the evidence in this case is insufficient to indicate that the person skilled in the art would have proceeded from that as a matter of course to generate a second synthetic image as defined by the context of the present specification. I conclude that claim 2 has an inventive step over the Drinkwater patent.
In respect to claim 4, there appears to be no disclosure in Drinkwater of the opacifying coating including a polymer material. The opponent submitted, by referring to Dr Hardwick’s evidence in reply at [32] and [33], that the use of polymers as part of coating materials was, unsurprisingly, well known before the priority date. Dr Hardwick stated the forming or printing of image icons using polymeric material was well known before the priority date. However this aspect of Dr Hardwick’s evidence is silent about coating materials including a polymer material, other than an inference that Dr Hardwick has drawn from D2. On the other hand, as mentioned above, D2 is unavailable to support arguments of lack of inventive step in the present case. I find the evidence in this case is insufficient to indicate that the person skilled in the art would have proceeded as a matter of course to provide a coating material including a polymer material merely because image icons may have used polymeric material. I conclude that claim 4 has an inventive step over the Drinkwater patent.
Claim 37 similarly defines a coating material including a polymer material. Like claim 4, I conclude claim 37 has an inventive step.
Since I have determined that all the independent claims have an inventive step, it follows that the claims as a whole in this specification have an inventive step.
CONCLUSION
I have concluded that claims 1, 5 to 8, 10 to 13, 15 to 22, 31, 35, 40 and 41 are not novel on a “whole of contents” basis over D2.
I have also concluded that all the claims of the specification have an inventive step.
The defects to the above claims in respect to novelty are clearly capable of remedy by amendment. I allow the applicant two (2) months from the date of this decision to propose suitable amendments to overcome the above defects.
COSTS
Each party sought its costs. The applicant further submitted that account should be taken of the significant narrowing of the case by the opponent at a late stage in the proceedings. On the other hand, as noted above from the outset, the applicant amended the specification under Section 104 of the Patents Act. While the applicant also submitted that the amended claims were not substantially different from the claims as accepted, I would note that some differences influenced the outcome in the present case. Two examples are the claiming of the patterned coating material being coordinated with the icon elements to coat the depressed shapes but not the flats, and the patterned coating material creating a second synthetic image. In these circumstances, it would not appear to be unusual for the opponent to reduce the breadth of its case. Despite the opponent indicating as such relatively late in the proceedings, I see insufficient reason to depart from the normal practice that costs should follow the event.
I award costs in accordance with Schedule 8 against the applicant, Visual Physics, LLC.
M. G. Kraefft
Delegate of the Commissioner of Patents
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