Innovia Security Pty Ltd v Visual Physics, LLC

[2015] APO 80

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Innovia Security Pty Ltd v Visual Physics, LLC [2015] APO 80

Patent Application:                   2004294182

Title:Micro-Optic Security and Image Presentation System

Patent Applicant:  Visual Physics, LLC

Opponent:  Innovia Security Pty Ltd

Delegate:  Matt Kraefft

Decision Date:  7 December 2015

Hearing Date:  21 September 2015, in Canberra

Catchwords:  PATENTS – Section 59 – opposition to grant of patent – synthetic magnification micro-optic system – lens/ icon image arrays - inventive step – person skilled in the art could be reasonably expected to have ascertained the document relied upon – obviousness not established in respect to diameter of micro-lenses – claims fairly based – opposition unsuccessful

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:                   2004294182

Title:Micro-Optic Security and Image Presentation System

Patent Applicant:  Visual Physics, LLC

Date of Decision:  7 December 2015

DECISION

The opposition fails on all grounds raised in this opposition.

Subject to appeal, I direct the application proceed to grant.

REASONS FOR DECISION

BACKGROUND

1. Nanoventions, Inc. filed patent application 2004294182 on 22 November 2004.  By subsequent merger and assignment, the application is now proceeding in the name of Visual Physics, LLC (“the applicant”).  The application claims earlier priority dates from three US applications, the earliest of which was filed on 21 November 2003.  Application 2004294182 was advertised accepted on 1 July 2010.

2. Securency International Pty Ltd filed a notice of opposition on 1 October 2010.  A statement of grounds and particulars followed on 24 December 2010.  By a change of company name, the opposition is now proceeding in the name of Innovia Security Pty Ltd (“the opponent”).

3. Following the opponent’s filing of evidence in support, the applicant requested to amend the complete specification under Section 104 of the Patents Act. That amendment was allowed on 19 December 2013.

4. The parties completed the normal evidentiary stages on 17 April 2014.  Subsequently the applicant made an application to file further evidence on the basis that the opponent’s evidence in reply was not strictly in reply.  Leave was granted for the applicant to file further evidence.  The applicant filed further evidence on 25 July 2014 and the opponent filed evidence in response on 23 September 2014.

   SPECIFICATION

5. The specification describes the invention 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.

6. 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.

7. 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.

8. The specification ends with 25 claims. Apart from the omnibus claim at the end, claim 1 is the only independent claim. Claim 1, as amended under Section 104, reads as follows.

   1. Film material comprising micro-images and a regular two dimensional array of non-cylindrical lenses, the film material utilizing the regular two dimensional array of non-cylindrical lenses to enlarge the micro-images, and to form a synthetically magnified image through the united performance of a multiplicity of individual lens/icon image systems, wherein the lenses have a diameter of less than 50 microns,

   wherein the micro-images are formed from:
   voids in a planar microstructure, wherein the voids in the microstructure are filled or coated with another material; or
   solid regions in a planar microstructure,
   wherein the micro-images are colored, dyed, or pigmented against a transparent background, or are transparent against a colored, dyed, or pigmented background, and
   wherein the film material is combined with a patterned back coating.

   STATEMENT OF GROUNDS AND PARTICULARS

9. The opponent has amended the statement of grounds and particulars twice. Both amendments have been allowed. The most recent amendment was in light of the allowance of the Section 104 amendment to the specification and of the evidence in reply. The amended statement of grounds and particulars cited the following grounds of opposition in the present case. The invention as claimed is not a manner of manufacture, lacks novelty, lacks an inventive step and lacks utility, and the claims do not define the invention and are not clear, succinct or fairly based. The opponent has provided particulars for each of these grounds.

   EVIDENCE IN SUPPORT

10. The opponent filed evidence in support from Mr David Ian Lindsay, Mr Gary Fairless Power and Dr Bruce Alfred Hardwick.  Mr Lindsay is a patent attorney of the firm representing the opponent.  He has filed two declarations exhibiting several documents of prior art.  At the time of filing his declaration, Mr Power was a director of research and development for the opponent and had worked in the security document field since 1992 and in Australia since 1999.  He has commented on the background art with reference to several patent documents and on the alleged lack of novelty and obviousness of the claimed invention.  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 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 related to banknote security.  Dr Hardwick has essentially presented evidence of the background knowledge of the art and has fully supported Mr Power’s evidence.

    EVIDENCE IN ANSWER

11. 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 on the background knowledge of the art and distinguished the claimed invention, as amended under Section 104, from the opponent’s prior art.

    EVIDENCE IN REPLY

12. The opponent filed evidence in reply from Dr Hardwick. In his evidence in reply Dr Hardwick has principally commented on the alleged lack of novelty and obviousness of the claimed invention as amended under Section 104.

    FURTHER EVIDENCE

13. The applicant’s further evidence consisted of a further declaration by Mr Radclyffe which principally answered the points in Dr Hardwick’s evidence in reply.

    EVIDENCE IN RESPONSE

14. The opponent’s evidence in response consisted of a further declaration by Dr Hardwick which principally elaborated on his evidence in reply in the light of Mr Radclyffe’s further evidence.

    EVIDENCE FROM RELATED APPLICATIONS

15. The present application is related, directly or indirectly, to at least two other applications by the same applicant and opposed by the same opponent.  The other applications are 2010226869, a divisional application of the present application, and 2006246716.  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.

16. 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.

17. Much of the evidence across the three oppositions was similar and thereby largely replicated.  Two declarations though by Mr Graeme Mann have been filed for 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 2006246716.  In a similar way for example, the evidence of Mr Power, initially filed only in the present opposition, was also available for the opponent in its oppositions against applications 2010226869 and 2006246716.

18. 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

19. 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 for AU2006246716 that the term “synthetic” 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 GFP-5 to the Power declaration).  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.

20. 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 directed to such relationships and the images per se.  Instead the claimed invention is directed to the film material, the constructional nature of the micro-structure within the film material and a patterned back coating.

    APPLICABLE LAW

21. 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 2 January 2008. Consequently the Patents Act as in force immediately before 15 April 2013 applies in the present case.

22. 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]).

23. 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 ………

24. At the hearing, the opponent pursued only the grounds of lack of inventive step and lack of fair basis.

    INVENTIVE STEP

25. 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).

26. 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."

27. 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.

28. In AstraZeneca AB v Apotex Pty Ltd, [2014] FCAFC 99 at [202] and [203], the full Federal Court held 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

29. 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 71 to 73 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 stated problems in the specification of lens sizes and lens/image alignments suggest 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.

30. 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. 

31. 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 [8] and [15], indicated that he was an inventor in respect to at least two patent applications that related to security documents such as banknotes.  Mr Radclyffe stated 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.

1. 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 his evidence in reply in respect to the divisional application, 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.

2. 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

3. The opponent contended that the use of a moiré magnifier as an optically variable device, and its operating principles, were commonly 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.  However Mr Radclyffe, at [30] of his evidence in answer, stated that moiré magnification to his knowledge had not been used in any specific instances in the security device field.  In evidence in reply, Dr Hardwick exhibited some papers (exhibits BAH-9 to BAH-13) from a series of conferences, the Optical Security and Counterfeit Deterrence Techniques conferences.  Papers from these conferences were published by a particular professional society as the SPIE Proceedings.  The exhibits were dated between 2000 and 2002.  Two of the papers related to the use of moiré effects in banknotes and similar security documents.  In evidence in response, Dr Hardwick stated at [5] and [6] that many people involved in research and development of security features attended these conferences, presented papers thereat, brought back copies of the conference papers, or would have been aware of the conferences or accessed 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.  At [7], Dr Hardwick maintained that the conference papers formed part of the common general knowledge of people working in research and development in the field of optical security devices and documents at the priority date. 

4. This evidence is telling by the high level at which it is pitched.  Dr Hardwick referred throughout to people involved in research and development and to the presenters 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 on the other hand stated he was not aware of these conferences or papers from the SPIE Proceedings at the priority date.  At [4] in his further evidence, Mr Radclyffe also indicated he did not recall others mentioning the conferences or the SPIE Proceedings as a source of information about technologies in the security device field.  I am inclined to the latter view.  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 relevant time.  Moreover, the evidence in this case appears to contain just a few papers from those proceedings within three 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.  

5. The opponent pressed the point by referring to the Hutley paper and to US Patent 5712731 (“Drinkwater patent”).  The latter was in evidence as Exhibits IDL- 2 to Mr Lindsay’s declaration and BAH-15 to Dr Hardwick’s evidence in reply.  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 Mr Power regarded the Drinkwater patent as extremely well-known at the time and Dr Hardwick regarded the patent as known in the circles he worked in.  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. Mr Radclyffe further stated that patents did not arise as a source of information in discussions he had with many people working in the field. At [50], Mr Radclyffe stated that he did not consider any of the documents relied upon by the opponent would have been commonly known or referred to in the industry. In evidence in answer at [23], Mr Mann considered that patents would have been a source of research when looking at competing technologies. He did not consider that persons working in the field would have had a day to day knowledge of the contents of patents or used them as general reference material. Until the present matter, Mr Mann had not heard of the Drinkwater patent.

6. 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.

7. 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

8. 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

9. 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.

10. As mentioned earlier, Mr Mann considered that patents would have been a source of research when looking at competing technologies.  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.

11. 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

12. 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.  This describes the claimed features in the present application of a film material utilizing a regular two dimensional array of non-cylindrical lenses to enlarge the micro-images, and to form a synthetically magnified image through the united performance of a multiplicity of individual lens/icon image systems.

13. One comparison of the claimed invention with the Drinkwater patent requires a determination of whether the latter discloses micro-images being formed from voids in a planar micro-structure or from solid regions in a planar micro-structure.  The Drinkwater patent primarily discloses micro-images being printed onto the substrate of a security document, for example by intaglio printing.  Figure 7a of the present specification similarly illustrates icon elements deposited by common printing methods such as intaglio printing.  Figure 7c appears similar to Figure 7a in its depiction of icon elements.  However the specification states that Figure 7c depicts a microstructure approach to forming icon elements by the creation of voids or solid regions in the micro-structure.  

14. The opponent submitted there was no relevant difference between Figures 7a and 7c or from the language of the claims to differentiate the layers of ink laid down by intaglio printing from a micro-structure that has voids in it.  On the other hand, only Figure 7c is described as depicting a micro-structure arrangement.  The specification is silent on Figures 7a or 7b relating to any micro-structure.  Rather the specification describes those figures as depicting icon elements printed on the lower surface of an optical spacer, and icon elements as pigments, dyes or particles embedded in a supporting material on the optical spacer, respectively.  The applicant’s evidence and submissions throughout are consistent with this in that those icon elements are not voids or solid regions in (applicant’s emphasis) a planar micro-structure.  I concur.  There is no micro-structure per se in Figures 7a or 7b having voids and solid regions.  Additionally, while one could argue the scales across Figures 7a to 7c may not necessarily be uniform although there is insufficient reason to doubt they are uniform, the icon elements in Figure 7c have a clearly more pronounced relief profile than the printed elements in Figure 7a.  In the context of the specification, I think it could not fairly be said that areas where there is no print are voids in a micro-structure and areas where there is print are solid regions in a micro-structure.  In one embodiment, the Drinkwater patent discloses micro-images being printed onto the substrate of a security document.  This does not disclose the claimed invention.

15. The Drinkwater patent though also discloses an embodiment where an image array is formed by selectively removing areas from an aluminium film to form images, by an etching process for example.  In submissions, the applicant acknowledged this got closer to describing voids or solid regions in a planar micro-structure.  I expect this process would also result in a more pronounced relief profile.  I am satisfied this embodiment in the Drinkwater patent discloses micro-images in the form of voids or solid regions in a planar micro-structure.

16. The applicant attempted to distinguish this disclosure from the claimed invention by noting that the Drinkwater patent fails to disclose filling or coating the voids with another material.  On the other hand, claim 1 of the application defines the micro-images being formed in any of two ways; that being, as voids or as solid regions in a planar micro-structure.  There is no definition in claim 1 of a fill or coating associated with the solid regions.

17. The claimed invention stipulates lenses having a diameter of less than 50 microns.  The Drinkwater patent, at column 2 lines 44-46, discloses lenses typically of 50-250 microns in diameter.  The claimed diameter is at the boundary of the low end of the range disclosed in the Drinkwater patent.   While various lens designs have existed over a considerable period of time, correlations nonetheless generally may be applied between focal lengths, lens diameters and lens thicknesses.  The present specification mentions the previous problem of a relatively thick lens structure detracting from its use with document authentication.  Consequently the need to reduce lens sizes may have seemed obvious.  On the other hand, the full Federal Court’s AstraZeneca decision stated 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. 

18. There is little evidence in this case of any problems in the art that may have been common general knowledge.  For example, in evidence in support at [18], Dr Hardwick mentioned excessive ink wear with the original polymer banknotes from the 1970s.  As to knowledge of problems in the prior art, the Drinkwater patent discussed micro-printing within security threads.  The problem was the need for a very precise register between the micro-lenses and the printing.  Another problem was the suitability of security devices for mass production.  On the available evidence, lens sizes did not directly appear as a problem amongst the common general knowledge of persons skilled in the art or in prior art information at the relevant time. 

19. Even so, it is noteworthy that Dr Hardwick was merely able to offer, at [28], that he would have been confident at the relevant time that micro-lens arrays could be produced with a focal lens suitable for banknotes based on his knowledge of embossing of UV curable inks.  He also indicated at [30] that it was well known to him at the relevant time that a security element suitable for a banknote would need to be less than 200 microns.  By example Dr Hardwick referred, at [9], to a Fresnel lens his team embossed into a 75 micron polymer substrate around 1997.  In the same paragraph, Dr Hardwick also implicitly acknowledged the different technological aspects involved.  He stated there was more interest in embossing a Fresnel lens in a window for self-verification purposes than the further development of micro-lens arrays.  Furthermore, while Mr Power exhibited some disclosures of lenses of less than 50 microns before the earliest priority date, he indicated at [10] of his evidence in support that he was less certain whether lenses of less than 50 microns could be mass produced.  Those disclosures also did not appear to relate directly to synthetic magnification through the united performance of a multiplicity of individual lens/icon image systems as claimed.  I conclude it would not have been obvious at the relevant time to provide lenses with a lens diameter of less than 50 microns in a film material as claimed in the present application. 

20. As to the claimed addition of a patterned back coating, the opponent submitted that the claimed invention did not require any interaction between the coating and the other integers of the claim.  In this sense the opponent asserted the claimed invention was a mere collocation and therefore could not give rise to an inventive step.  On the other hand, claim 1 of the present application expressly defines the film material being combined with a patterned back coating.  This would appear to be no less a proper combination than the statement of Dr Hardwick in evidence in reply at [40] that it was common practice in the security printing industry before the priority date to apply a protective coating over a metallised film containing micro-structures. 

21. On the other hand, the opponent also stated that Mr Radclyffe acknowledged in evidence in answer at [42] that the Drinkwater patent teaches an option that a coating can be applied to other areas of the substrate with printing on it.  The relevant passage from the Drinkwater patent is in column 14 and relates to Figure 5.  This embodiment involves a substrate in which micro-images are printed on one side of the transparent substrate while micro-lenses are cast or moulded into the other side of the substrate.  The substrate in other areas may be provided with an opacifying coating which could then be printed over with security indicia.  Mr Radclyffe stressed the application of the opacifying coating to other areas of the substrate to suggest this was not a film material comprising the micro-images and micro-lenses combined with a patterned back coating as claimed in the present application.  On the other hand, the claimed combination is non-specific.  Claim 1 merely requires the film material to be combined with a patterned back coating.  The security indicia being printed over the opacifying coating in Drinkwater also fit the definition of a patterned coating.  I am satisfied that the Drinkwater patent discloses a film material combined with a patterned back coating.

1. In respect to the claimed lens diameters of less than 50 microns though, I conclude the present claims have an inventive step.

   FAIR BASIS

2. The opponent submitted the claims of the application were not fairly based on the matter described in the specification because features to achieve the desired objects of the invention were omitted from the claims.  To support this contention, the opponent principally relied on the requirement for a real and reasonably clear disclosure in the body of the specification of what was claimed (Lockwood Security Products Pty Ltd v Doric Products Pty Ltd, [2004] HCA 58; 217 CLR 274). The opponent stated the application was clearly directed to achieving certain unusual optical effects (page 1 lines 10-11) for inclusion as part of an optically variable device in a security document. Those distinct visual effects were described in greater detail from page 5 line 20 onwards and included orthoparallactic movement, and the presentation of images that appeared to rest above or below the icon plane as well as move between those two positions. By contrast, the claims were not directed towards features to produce each of these identified visual effects.

3. As mentioned earlier, the aspect of the present invention is on the film material, the constructional nature of the micro-structure within the film and a patterned back coating, rather than the optical relationships per se of the micro-lens and micro-image arrays for achieving the described visual effects.  In this respect, the elaborate description of the latter in the specification is of little consequence in respect to the nature of the film material as claimed and described.  On this point, I am satisfied the claims are supported by the matter described in the specification. 

4. The opponent further submitted there was no disclosure of a patterned back coating as part of any invention.  The opponent did not clearly elaborate this point other than to suggest that the breadth of a long list of additional features, beginning on page 70 at line 7 and including back coatings, top coatings, both patterned and non-patterned, reinforced that these features were not part of the disclosed invention.  On the other hand, a patterned back coating is clearly described on page 70 as one option that the synthetic magnification micro-optic system can be combined with.

5. I conclude the present claims are fairly based.

   CONCLUSION

6. I conclude the opponent has been unsuccessful on its grounds of opposition against the patent application.

7. Subject to appeal, I direct the application proceed to grant.

   COSTS

8. The parties generally submitted that costs should follow the event.  The applicant further submitted that account should be taken of the significant narrowing of the case by the opponent.  For instance, the opponent reduced the number of alleged prior art references relied upon to principally just one in its written submissions.  On the other hand the opponent noted that the applicant had amended the patent specification after the evidence in support had been filed thus indicating a concession by the applicant as to the effectiveness of the opposition against the accepted claims.

9. It would not appear to be unusual for the opponent to reduce the breadth of its case where the applicant has narrowed the scope of the claims by amendment, as in this case.  Consequently I am not convinced the applicant’s point is well made.  In any case the applicant is the successful party.  The opponent’s point may have more merit.  It is common practice to take account of amendments to the specification made by the applicant during opposition proceedings in an award of costs where appropriate.  On the other hand, in the present case, I would note that the opposition has been principally unsuccessful on the claimed feature of lens diameters of less than 50 microns.  This was also a feature of the accepted claims and thus the applicant’s success did not necessarily arise from amending the specification.

10. In the present circumstances I see insufficient reason to depart from the normal practice that costs follow the event.  I award costs in accordance with Schedule 8 against the opponent, Innovia Security Pty Ltd.

    M. G. Kraefft
    Delegate of the Commissioner of Patents