Innovia Security Pty Ltd v Visual Physics, LLC
[2015] APO 5
•18 February 2015
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Innovia Security Pty Ltd v Visual Physics, LLC [2015] APO 5
Patent Application: 2006246716
Title:Image presentation and micro-optic security system
Patent Applicant: Visual Physics, LLC
Opponent: Innovia Security Pty Ltd
Delegate: Xavier Gisz
Decision Date: 18 February 2015
Hearing Date: Written submissions filed by 27 November 2014
Catchwords: PATENTS - opposition under s 104 – allowability of proposed amendments – in substance disclosure – clarity and fair basis of amendments – amendments found allowable
Representation: Patent applicant: Shelston IP
Opponent:Watermark
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2006246716
Title:Image presentation and micro-optic security system
Patent Applicant: Visual Physics, LLC
Date of Decision: 18 February 2015
DECISION
Subject to appeal I allow the amendments filed 14 November 2013 and 19 May 2014 and I award costs according to Schedule 8 against Innovia Security Pty Ltd.
REASONS FOR DECISION
Background
Patent application 2006246716 entitled “Image presentation and micro-optic security system” is the national phase entry of WO 2006/125224 by Visual Physics, LLC (the Applicant). The acceptance of the application was advertised on 3 November 2011.
On 3 February 2012 Securency International Pty Ltd, now Innovia Security Pty Ltd (the Opponent), served a Notice of Opposition to the grant of the patent application. Evidence in Support was completed on 21 August 2013.
On 14 November 2013 the Applicant made a request to amend the specification. On 21 November 2013 the Evidence in Answer was completed. On 10 December 2013 an examiner issued an adverse report on the proposed amendments.
On 2 January 2014 a Delegate made a direction to stay the opposition until the amendments had been allowed, refused or withdrawn. The direction also noted that if the amendments have not been allowed, refused or withdrawn within three (3) months from the issuance of the direction then the stay of opposition would be reviewed.
On 19 May 2014 a Delegate advised that because there had been no response to the adverse report of 10 December 2013, it appeared that the applicant had no interest in pursuing the amendments, and consequently intended to refuse the proposed amendments.
On 19 May 2014 the Applicant responded to the adverse report and proposed new amendments to overcome the adverse findings. On 22 May 2014, the Delegate advised that, in light of the Applicant’s response to the adverse report, the stay on proceedings would remain in place.
On 10 July 2014 leave to amend the specification was advertised. On 10 September 2014 the Opponent filed a Notice of Opposition to the amendments under section 104(4) and on 10 October 2014 filed the Statement of Grounds and Particulars.
On 15 October 2014 a Delegate advised the parties that the matter would be heard on the basis of written submissions. The submissions to the hearing were completed on 27 November 2014.
Relevant law
I note that, as the Applicant requested examination before 15 April 2013, substantive amendments of the Patents Act 1990 (Cth) (“the Act”) brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth) do not apply to this opposition. The relevant sections of the Act are sections 102(1) and (2) as they existed prior to Raising the Bar.
These relevant sections of the Patents Act are set out below:
(1)An amendment of a complete specification is not allowable if, as a result of the amendment, the specification would claim matter not in-substance disclosed in the specification as filed.
(2)An amendment of a complete specification is not allowable after the relevant time if, as a result of the amendment:
(a) a claim of the specification would not in-substance fall within the scope of the claims of the specification before amendment; or
(b) the specification would not comply with subsection 40(2) or (3).
(2A) For the purpose of subsection (2), relevant time means:
(a) in relation to an amendment proposed to a complete specification relating to a standard patent - after the specification has been accepted.
The applicable parts of section 40 of the Patents Act 1990 as they apply to the present case are set out below:
(2)A complete specification must:
(a) describe the invention fully, including the best method known to the applicant of performing the invention; and
(b) where it relates to an application for a standard patent – end with a claim or claims defining the invention.
(3)The claim or claims must be clear and succinct and fairy based on the matter described in the specification.
Consideration of s 40 issues is confined to matters which arise as a result of amendment (see Kornelis’ Kunsthars Producten Industrie BV v WR Grace & Co-Conn (1994) AIPC 91-056 at 38,204). Consequently any pre‑existing deficiencies in the specification which are unaffected by amendment are irrelevant to the present action.
Paragraph 102(1): In-substance Disclosed in the Specification as Filed
When determining whether a matter is in-substance disclosed in the specification as filed, the courts have basically applied the test for fair basis. Thus for an amended claim to claim matter in-substance disclosed in the specification as filed, the amended claim must be fairly based on the specification as filed (see United-Carr Incorporated's Application [1971] RPC 23, RGC Mineral Sands Pty Ltd v Wimmera Industrial Minerals Pty Ltd (1998) 42 IPR 353).
Paragraph 102(2)(a): In-substance Fall Within the Scope of the Claims Before Amendment
A useful test for considering the allowability of an amendment under paragraph 102(2)(a) is whether a proposed new claim would extend the patent monopoly in the sense that it would make something an infringement which is not an infringement already. This view was expressed in AMP Incorporated v Commissioner of Patents (1974) AOJP 3224 at page 3227 where the High Court stated:
“The amending claim must in-substance fall within the scope of the claims before amendment. The reference to substance imports the kind of test which is appropriate to a consideration of the question whether on not a particular act or a particular article is an infringement of the patent.”
I note that the allowability of an amendment under paragraph 102(2)(a) is determined by reference to the scope of the claims as a whole before the amendment. It is not that a proposed new claim must in-substance fall within the scope of every claim before amendment, rather it only need to in-substance fall within the scope of broadest claim(s) before amendment. This finds support in Robertshaw Controls Co v GSA Industries Ltd (1991) AIPC 90-784 at page 37,460 where it was pointed out that:
“There is also the fact that the Act does not require amended claim 3 to fall within the scope of the omnibus claim before amendment, but only within the scope of the claims ... while it may be that new claim 3 does not fall within the scope of the previous omnibus claim (a matter which I do not have to decide), it certainly falls within the scope of claim 1 before amendment, and consequently does not contravene the provisions of s. 78(2)(a) [the predecessor of section 102(2)(a )].”
Paragraph 102(2)(b): Compliance With Subsections 40(2) and 40(3)
The three relevant aspects of sections 40(2) and 40(3) are full description, clarity and fairly based. A brief review of the relevant tests for section 40(2) and 40(3) issues are provided below.
Section 40(2)(a) – fully describe the invention
As expressed in Kimberly-Clark v Arico [2001] HCA 8; (2001) 207 CLR 1, the test for full description is:
“... will the disclosure enable the addressee of the specification to produce something within each claim without new inventions or additions or prolonged study of matters presenting initial difficulty?”
Section 40(3) – clear
It is a requirement of subsection 40(3) of the Act that the claims must be clear. This requirement is understood to be satisfied if a person could ascertain "whether or not what he proposes to do falls within the ambit of the claim" (Monsanto Co v Commissioner of Patents (1974) 48 ALJR 59). Where it is impossible to ascertain the invention a claim should be found to lack clarity (see Décor Corp v Dart Industries 13 IPR 385 at 400).
Section 40(3) – fairly based
The accepted test for fair basis is that of a “real and reasonably clear” disclosure. In Rehm Pty Limited v Websters Security Systems (International) Pty Limited (1988) 81 ALR 79 Gummow J states at 95:
“The circumstance that something is a requirement for the best method of performing an invention does not make it necessarily a requirement for all claims; likewise, the circumstance that material is part of the description of the invention does not mean that it must be included as an integer of each claim. Rather, the question is whether there is a real and reasonably clear disclosure in the body of the specification of what is then claimed, so that the alleged invention as claimed is broadly, that is to say in a general sense, described in the body of the specification.”
Specification as accepted
The specification as accepted relates to an image presentation system formed from an array of micro lenses covering an image, illustrated in Figure 1b (reproduced below).
When the image is viewed through the array of micro lenses, it can form a variety of optical effects depending on the alignment between the lens and the image. For example in Figure 2a, as the device is tilted vertically, the synthetic image shifts horizontally.
In one embodiment, there are two synthetic images. The first synthetic image is viewable through the air (figure 44(a)). The second synthetic image only becomes apparent when the device is immersed in a depth of liquid (figure 44(b)). The liquid has a different refractive index than air, thus changing the focal length of the lenses.
In another embodiment figure 45 (a, b, c), there are several icon layers which are selectively viewed when immersed in fluids (i.e. gases or liquids) of different refractive indices.
Figure 46 shows an embodiment wherein different synthetic images are seen when the device is viewed from different angles.
One of the characterising features of the invention is the image layer which is formed from an array of microstructured icon elements. These icon elements can be coated with a coating material as illustrated in Figure 39(a):
Figures 39(b) and (c) illustrate the icon layer with various fill materials and coatings:
The proposed amendments
A marked-up version of the claims of the proposed amendments of 14 November 2013 and 19 May 2014 are provided below. Deleted words are indicated by
strikethrough, words added on 14 November 2013 are indicated by a single underline, while words added on 19 May 2014 are indicated by a double underline.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 coatinglayermaterial is coordinated with the icon elements coating the depressed shapes but not coating the flats.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.3. A synthetic optical image system of claim 1 or claim 2, wherein the coating material includes a polymer material.
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.2.5. The synthetic optical image system ofclaim 1any one of claims 1 to 4, wherein the
system comprising the array of microstructured icon elements and the array of focusing
elements has a thickness of less than 50 microns, or focusing elements having an effective
diameter of less than 50 microns, or both.3.6. The synthetic optical image system ofclaim 1 or 2any one of the preceding claims,
wherein the icon layer is formed on a substrate.4. The synthetic optical image system of any one of claims 1 to 3, wherein the microstructured icon elements are formed either as recesses or as raised areas, or both.5. The synthetic optical image system of any one of claims 1 to 3, wherein the microstructured icon elements are selected from one or more of asymmetric void patterns, symmetric void patterns, light trap patterns, asymmetric raised patterns, symmetric raised patterns, holographic surface relief patterns, generalized diffractive relief patterns, binary structured patterns, binary optic patterns, stepped relief patterns, random rough and pseudo random rough patterns, nominally flat surfaced patterns, concave or convex patterns, and combinations thereof.6.7. The synthetic optical image system of any one of the preceding claims, wherein the
synthetic optical image system is one or more of a micro-optic system, a synthetic
magnification micro-optic image projection system, a moire magnification system, or a micro cylindrical lenticular image system.7.8. The synthetic optical image system of any one of claims 1, 2, 3, 4, 5 or67, wherein the icon layer is free standing, or is provided on a substrate, or both.8.9. The synthetic optical image system of any one of the preceding claims, wherein the array of microstructured icon elements includes areas having microstructures and areas that are unstructured, and wherein the array of microstructured icon elements is designed to exhibit optical contrast between the microstructures and the areas that are unstructured when the array is immersed in or in contact with a vacuum, a gas, a liquid or a solid, wherein the optical contrast can arise from one or more of refraction, internal reflection, surface reflection, scattering, polarization, optical rotation, diffraction, optical interference, or combinations thereof.9. The synthetic optical image system of any one of the preceding claims, wherein at least a portion of the microstructured icon elements has a coating.10. The synthetic optical image system of
claim 9any one of the preceding claimsclaim 1 or claim 2, wherein the coating isone or more ofa metal coating material, a patterned metalized coating, or is patterned and at least a portion of the patterned coating (i) provides an icon image independent of the microstructured icon elements such that the patterned coating creates at least one first synthetic image while the microstructured icon elements create at least one second synthetic image; (ii) forms either a positive image or a negative image; (iii) forms a color reversed image; or (iv) forms either an image that is opaque against a transparent background or an image that is transparent against an opaque background.11. The synthetic optical image system of any one of the preceding claims, wherein at
least a portion of the patterned coating (i) forms either a positive image or a negative image; (ii) forms a color reversed image; or (iii) forms either an image that is opaque against a transparent background or an image that is transparent against an opaque background.11.12. The synthetic optical image system of any one of the preceding claims, wherein at
least a portion of the microstructured icon elements forms one or more of (i) a positive image, (ii) a negative image, (iii) a color reversed image,or(iv) an image that is opaque against a transparent background,orand (v) an image that is transparent against an opaque background.12.13. The synthetic optical image system of any one of the preceding claims, comprising microprinting formed from an array of microstructured icon elements and an array of focusing elements, the arrays cooperating to form at least one synthetic optical image, the microprinting being optionally used for compact information storage, or identification of currency, in a security thread for currency, documents, packaging or manufactured articles.13.14. The synthetic optical image system ofclaim 9any one of the preceding claims, wherein at least a portion of the microstructured icon elements is coated with a coating prior to lamination to a second coating applied to the icon layer.14.15. The synthetic optical image system of any one of the preceding claims, wherein the
icon layer is formed of both positive icon elements and negative icon elements.15.16. The synthetic optical image system of claim36, whereinthe icon layer is formed of (i) positive icon elements in which the positive icon elements are formed as depressions or voids in the icon layer and background areas in the icon layer are formed as raised areas, (ii) negative icon elements in which the negative icon elements are formed as raised areas in the icon layer and background areas in the icon layer are formed as depressions or voids, (iii) positiveat least a portion of the microstructured icon elementsformed as depressions or voidsin the microstructured icon layer,at least a portion of the depressions or voids beingare filled with a fill material having a different property than the microstructured icon layer material,(iv) negative icon elements formed as raised areas in the icon layer with background areas formed as depressions or voids, at least a portion of the depressions or voids being filled with a fill material having a different property than the icon layer material, or (v) combinations thereof.16.17. The synthetic optical image system ofclaim 1 or 9any one of the preceding claims, wherein the coating material is selected from one or more of conformal coatings, nonconformal coatings, directional coatings, coatings with areas having different properties or materials than the icon layer, coatings in which the microstructured icon elements are formed.17.18. The synthetic optical image system of any one of the preceding claims, further including a fill material at least partially filling at least a portion of the microstructured icon elements.18.19. The synthetic optical image system of claim1718, wherein the fill material includes a coloring material or a fluorescing material or both a coloring material and a fluorescing material, or at least a portion of the microstructured icon elements are filled with different amounts of different materials.19.20. The synthetic optical image system ofclaim 1any one of the preceding claims, the coating material being patterned by printing, depositing a resist material on the coating and chemically etching at least a portion of the exposed coating, or chemically or mechanically removing at least a portion of the coating material.20.21. The synthetic optical image system ofclaim 1 or 9any one of the preceding claims, the coating material being one or more of a patterned coating material that creates a set of icon elements that collectively form an image in addition to the image collectively formed by the microstructured icon elements, a coating patterned with a geometry that does not coordinate with the geometry of the microstructured icon elements, a coating carrying information different than information carried by the microstructured icon elements, or a hot stamp foil optionally including a frangible lacquer layer.21.22. The synthetic optical image system of claim1718, wherein the fill material at least partially fills a portion of a plurality of depressions in the microstructured icon elements.22.23. The synthetic optical image system of any one of claims 1-67, the microstructured icon elements being formed from a patterned coating material provided on selected portions of a substrate, the patterned coating material forming either positive or negative object patterns of the icon elements.23.24. The synthetic optical image system of any one of the preceding claims, wherein the system operates as an authentication system in which the array of focusing elements is separate from the image system and is used to read information contained in the image system.24.25. The synthetic optical image system of claim2324, wherein the array of focusing elements is formed as a sheet and the image system is formed as a sheet and the two sheets are adapted to be optically or mechanically coupled, with or without coupling fluid, and the focal length of the focusing elements is greater than the thickness of the sheet including the focusing elements.25.26. The synthetic optical image system of claim2425, wherein the array of microstructured icon elements is positioned on or in a surface of the image system sheet and the focal point of the focusing elements is at or slightly off of said surface of said image system sheet when the two sheets are coupled to form at least one synthetic optical image, the surface of the image system sheet including the microstructured icon elements designed to form the at least one synthetic optical image.26.27. The synthetic optical image system of any one of claims23 to 2423 or2526, wherein the image system sheet includes multiple patterns of icon elements that form different synthetic images in cooperation with the array of focusing elements.27.28. The synthetic optical image system of claim2627, wherein the different synthetic images are formed at different angles of rotation of the focusing element sheet in relation to the image system sheet, one icon element pattern is different from another icon element pattern, different focusing element sheets are required to form synthetic images from the different icon element patterns, or the differing icon element patterns are provided in at least two different icon element layers.28.29. The synthetic optical image system of claim2627 or2728, wherein a second focusing element sheet is placed over a first focusing element sheet to form synthetic images of two differing icon element patterns, one of the focusing element sheets having focusing elements with a different focal length than the focusing elements of the other focusing element sheet.29.30 The synthetic optical image system of claim2829, wherein the first and second focusing element sheets have different arrays of focusing elements.30.31. The synthetic optical image system of any one of claims 1-67. further including an optical spacer between the array of focusing elements and the image system.31.32. The synthetic optical image system of claim3031, wherein the thickness of the optical spacer is greater than the focal length of the focusing elements such that the at least one synthetic optical image is not distinguishable without placing another material over the array of focusing elements, the refractive index of the another material being sufficient to change the focal length of the focusing elements to focus on the icon elements of the image system, thereby providing the at least one synthetic optical image.32.33. The synthetic optical image system of any one of claims 1-67, further including at least two different icon layers each icon layer including an array of icon elements, wherein at least one first synthetic optical image is formed in cooperation of the array of focusing elements with the array of icon elements of a first icon layer, and wherein at least one second synthetic optical image formed in cooperation of the array of focusing elements with the array of icon elements of a second icon layer is not distinguishable without placing another material over the array of focusing elements, the refractive index of the another material being sufficient to change the focal length of the focusing elements to focus on the array of icon elements of the second icon layer, thereby forming the at least one second synthetic optical image.33.34. The synthetic optical image system of claim3132 or3233, wherein the another material is a liquid thereby providing at least one wetness-indicating synthetic optical image.34.35. The synthetic optical image system of any one of the preceding claims incorporated into currency or into a security thread for currency.35.36. The synthetic optical image system of any one of claims 1-67, wherein the at least one synthetic optical image seen by a viewer changes as the azimuthal angle of view of the image system changes.36.37. 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.37.38. The synthetic optical image system of any one of claims 1-67, wherein the array of microstructured icon elements includes patterns of icon elements that form at least two different synthetically magnified images in cooperation with the array of focusing elements, one synthetically magnified image apparent from one viewpoint of the system and a second synthetically magnified image apparent from a second viewpoint of the system.38.39. The synthetic optical image system of any one of claims 1-67, further including two different icon element layers with each said icon element layer including an array of microstructured icon elements, the thickness of the optical spacer being greater than the focal length of the focusing elements such that a synthetic optical image or images formed in cooperation of the array of focusing elements with either of the two different icon element layers is not distinguishable without placing a material over the array of focusing elements, wherein the placement over the array of focusing elements of a first material having a first refractive index is sufficient to change the focal length of the focusing elements to focus on the array of icon elements of a first of the two different icon element layers thereby forming at least one first synthetic optical image, and the placement over the array of focusing elements of a second material having a second refractive index is sufficient to change the focal length of the focusing elements to focus on the array of icon elements of a second of the two different icon element layers thereby forming at least one second synthetic optical image.39.40. The synthetic optical image system of any one of claims 1-3536, the array of icon elements including microstructured icon elements having a physical relief, the array of focusing elements being disposed relative to the array of icon elements, at least a portion of the focusing elements forming at least one synthetically magnified image of at least a portion of the icon elements.40.41. The synthetic optical image system of any one of claims 1 to3536, wherein the system operates as an authentication system or security device.41.42. A synthetic optical image system substantially as hereinbefore described with
reference to the accompanying drawings.The Particulars
The Statement of Grounds and Particulars opposes the amendments under subsection 102(1) and 102(2)(b). Under paragraph 102(2)(b), it is asserted that the proposed amendments would not comply with subsection 40(3).
Remark on antecedents
I note a number of the Opponent’s particulars relate to the correct referencing of features within the claim set, also known as antecedents. A brief explanation of antecedents and my approach to errors in antecedents is as follows.
When a claim introduces a new feature, that feature is generally referred to with the indefinite article ‘a/an’. When a claim refers to a feature that has previously been defined (an antecedent) it is generally referred to with the definite article ‘the’. If a claim refers to a feature (that has been previously been defined in the claim) with the indefinite article ‘a/an’ there are two possible interpretations:
1) A new feature is being defined which happens to have the same name as the previously defined feature in the claim.
2) It is referring to the previously defined feature (an antecedent), but a grammatical error has been made.
The first of these interpretations is typically neither the intent of the claim drafter nor the meaning derived by a fair reading of the claim. The second of these interpretations is, in the absence of any indication to the contrary, the preferred interpretation – the meaning attributed to a specific feature is carried through the claim set and outweighs the grammatical rules associated with antecedents.
Claim 1
The Opponent states in their submissions:
“Some of the terminology used to define the alleged invention is not commonly used in this field. As a result, these claims in isolation have an indefinite scope. For example, the ordinary worker would not immediately understand what is encompassed by terms such as 'synthetic optical image' (as opposed to a 'natural optical image' or even just an 'optical image'), and does 'coordination' of the coating material with the icon elements involve something more than coating the depressed shapes but not coating the flats as defined in the last two lines of claim 1. Claims are to be construed against redundancy and hence the ordinary worker must assume the term 'coordinated' has some particular meaning other than just coating the depressed shapes and not coating the flats, otherwise the term would be redundant. Similarly, the term 'synthetic' must define a particular type of image otherwise it too would be redundant.”
The Applicant states in their submissions:
“It is clear from a fair reading of claim 1, and in the context of the specification as a whole, that the coating material of claim 1 is "coordinated" with the icon elements such that it coats the depressed shapes, but not the flats.”
The Opponent states “…these claims in isolation have an indefinite scope”, however according to the accepted rules of claim construction any ambiguity or uncertainty in claims should be resolved with reference to the entire specification. It is reasonably clear that the coating material of claim 1 is coordinated with the icon elements such that it coats the depressed shapes, but not the flats. This aspect of the claim is within the disclosure of the specification and I consider it to be clear and thus complies with both s 102(1) and s 102(2).
The Applicant further states in their submissions:
“It is submitted that this is plainly evident from claim 1 and that the term "synthetic optical image" would be readily understood by a person of ordinary skill in the art as being an image caused other than purely by the effect of the eye looking through the array of focussing elements referred to in claim 1. This is supported by the statutory declaration of Edward Radclyffe dated 21 November 2013, paras [32]-[34] in the substantial opposition to the Application.”
Edward Radclyffe states at paragraphs 33 and 34 of his declaration:
“My understanding of the term "synthetic" as used in this context is that it refers to the creation of a image which is caused other than purely by the effect of the eye looking through the lens array. A synthetic optical image system is a system which creates an image of this kind.
The Opposed Application describes how the arrangement of the lens array and image array as specified in claim 1 can be "manipulated" to form at least one synthetic image. For example, axially symmetric values of the scale ratio (the ratio of the repeat period of the icons to the repeat period of the lenses) substantially equal to 1.0000 result in orthoparallactic effects when the symmetry axes of the lenses and the icons are misaligned. Axially symmetric values of the scale ratio less than 1.0000 or greater than 1.0000 result in deep or float effects respectively”
The description as filed discloses at the last paragraph of page 3:
“The present disclosure also relates to a film material that utilizes a regular two-dimensional array of non-cylindrical lenses to enlarge micro-images, called icons herein, and to form a synthetically magnified image through the united performance of a multiplicity of individual lens/icon image systems.”
Consistent with the Applicant’s submission and the expert opinion, I consider that a synthetic image is not merely any image viewed through a lens array, but specifically a magnified image that is formed from the united performance of a multiplicity of individual lens/icon image systems. This amendment to the claim is clear and within the disclosure of the specification and thus complies with s 102(1) and 102(2).
Claim 2
The Opponent states:
“New independent claim 2 includes a microstructured icon layer and a patterned coating material but the coating material is not necessarily coordinated with the microstructured icon layer. However, claim 2 does require the patterned coating material to create a second synthetic image in addition to the synthetic optical image formed by the array of focussing elements and imaging system with the array of icon elements.”
“Claim 2 appears to be directed to the description at page 107, lines 10 to 14. Here a patterned coating is used to create a different set of icon elements from the original microstructured icon elements. This new set of icon elements is used to generate a second set of synthetic images. Therefore, the synthetic images are generated in the same manner as the first set of synthetic images which requires the cooperation of the array of focussing elements. However, there is no disclosure of any embodiments in which the patterned coating itself creates a second set of synthetic images as required from amended claim 2.”
The Applicant states:
“In relation to claim 2, the opponent asserts that there is no disclosure of "how a patterned coating material alone creates a synthetic image". Again, the applicant submits that this assertion is incorrect.
For example, at page 96, lines 2-6, under the heading "Patterned coatings", the specification clearly describes how a coating (within an icon layer of an image system), can be used to create one synthetic image while microstructured icon image elements (within the same icon layer) can be used to create a second synthetic image.
In addition, contrary to the opponent's submission, the passage at page 107, lines 10-14, also describes that a coating (within an icon layer of an image system) may be used to create a different set of icon elements from the microstructured icon elements that could be used to generate a second set of synthetic images.”
I am satisfied that the specification provides sufficient detail of how the second synthetic image is formed. This amendment to the claim is clear and within the disclosure of the specification and thus complies with s 102(1) and 102(2).
Claims 3 and 4
The Opponent states:
“Claim 3 defines the coating material of claim 1 or claim 2 to include a polymer material. The embodiment shown in Figure 39a simply describes gold as a suitable coating material. The gold is sputtered over all the icon elements and then removed from the flats by suitable means described at page 108, lines 1 and 2.
The definitions section of the specification describes metal deposited by CVD (Chemical Vapour Deposition) or sputtering as a suitable coating material (see page 25, lines 5 and 6). A suitable coating material that incorporates a fill material is described, but these include polymer materials that are solvent cured, thermally cured, oxidation cured, reaction cured or radiation cured. The ordinary worker would understand that the process of curing a polymer film material is incompatible with a metal deposition process. None of the embodiments described provide any basis for a synthetic optical image system where the coating layer is present in the depressed shapes but not the flats and includes a polymer material.”
The Applicant states:
“In relation to claim 3, the opponent submits that "None of the embodiments described provide any basis for a synthetic optical image system where the coating layer is present in the depressed shapes but not the flats and includes a polymer material". The opponent bases this assertion on the embodiment of Figure 39(a). It is submitted that this embodiment is provided by way of example only and claim 1 is not limited to each and every one of the features of this embodiment, as suggested by the opponent. The specification provides clear support for a range of coating materials, including metallic and polymer materials, in the definition spanning pages 23-26.”
I am satisfied that, when the specification is considered as a whole, there is a disclosure of polymer coating materials that coat some regions and not other regions. This amendment to the claim is clear and within the disclosure of the specification and thus complies with s 102(1) and 102(2).
Claim 8
The Opponent states:
“Claim 8 defines the icon layer to be freestanding, provided on a substrate, or both. None of the embodiments provide any basis for an icon layer that is both freestanding and provided on a substrate.”
The Applicant states:
“In relation to claim 8, it is submitted that the specification provides clear support for the subject matter of this claim at page 27 under the heading "Icon layer".”
The description provides details of an icon layer that is freestanding or provided on a substrate (pages 93, 94, 97, 99, 100, 106 of the description as filed). Although the description does not explicitly disclose both of these layer types in one icon layer, it reasonable to expect that a person skilled in the art would readily understand how this could be achieved, i.e. making one region of the icon layer freestanding while another adjacent region is provided on a substrate. This amendment to the claim is clear and within the disclosure of the specification and thus complies with s 102(1) and 102(2).
Claim 10 and 11
The Opponent states:
“Claim 10 lacks clarity as there is no antecedent for 'the coating'. It may be a reference to 'the coating material' defined in claims 1 and 2, or a new integer of the synthetic optical image system.”
The Applicant states:
“The opponent asserts that claim 10 lacks clarity because there is no antecedent for "the coating". It is submitted that it would be readily apparent to a person of ordinary skill in the art, upon reading the specification as a whole, that the reference to "the coating" in claim 10 is a reference to the "patterned coating material" previously introduced in claims 1 and 2.”
Although the claim could be made amended to replace “the coating” with “the patterned coating”, the antecedent is already sufficiently clear in claim 10 (and similarly in claim 11) and thus the amendments to claims 10 and 11 comply with s 102(2).
Claim 12
The Opponent states:
“Claim 12 encompasses a synthetic optical image system in which the microstructured icon elements form a positive image, a negative image, a colour reversed image, an image that is opaque against a transparent background and an image that is transparent against an opaque background. None of the described embodiments in the specification as filed provide basis for a synthetic optical image system with icon elements forming these five different types of image.”
The Applicant states:
“In relation to claim 12, it is submitted that the specification provides clear support for the subject matter of this claim at least at pages 26-27, and at page 96 under the heading "Positive and negative images, including patterned coatings".”
The issue raised by the Opponent is that although there is a disclosure of each of the five types of image, there is no a disclosure of a combination of these image types. This is due to the phrase “one or more of [the five different image types]” in claim 12, reproduced below:
“12. The synthetic optical image system of any one of the preceding claims, wherein at least a portion of the microstructured icon elements forms one or more of (i) a positive image, (ii) a negative image, (iii) a color reversed image, (iv) an image that is opaque against a transparent background, and (v) an image that is transparent against an opaque background.”
I consider that there is a sufficient disclosure that would enable a person skilled in the art to combine all of these image types (in a side-by-side arrangement) in a single synthetic image. This amendment to the claim is clear and within the disclosure of the specification and thus complies with s 102(1) and 102(2).
Claim 13
The Opponent states:
“Claim 13 lacks clarity as it is not clear if 'an array of microstructured icon elements', 'an array of focusing elements' or 'at least one synthetic optical image' are the same as the array of microstructured icon elements, the array of focusing elements and the at least one synthetic optical image defined in claims 1, 2 and 4, or new integers of the synthetic optical image system.”
The Applicant states:
“The opponent asserts that claim 13 lacks clarity. It is submitted that it would be readily apparent to a person of ordinary skill in the art, upon reading the specification as a whole, that the features of claim 13 refer to the corresponding features previously introduced in claims 1, 2 and 4.”
Although claim 13 could be amended to more clearly indicate antecedent features by referring to each feature with the definite article ‘the’, it is already sufficiently clear thus claim 13 complies with s 102(2).
Claim 17
The Opponent states:
“Claim 17 encompasses an optical image system in which the coating is conformal and non-conformal and directional. None of the described embodiments provide basis for an optical system having coatings in accordance with the features of claim 17.”
The Applicant states:
“In relation to claim 17, it is submitted that the specification provides clear support for the subject matter of this claim at page 31 under the headings "Conformal coating material", "Non-conformal coating material", and "Directional coating material".”
I consider that figures 39(b) and 39(c) and accompanying description at pages 108 and 109 provide a disclosure of a combination of coatings in adjacent regions. This amendment to the claim is within the disclosure of the specification and thus complies with s 102(1) and 102(2).
Claim 18
The Opponent states:
“Claim 18 lacks clarity as it is not clear whether 'a film material' is the same as the film material described in claim 16, or a new integer of the synthetic optical image system.”
The Applicant states:
“The opponent asserts that claim 18 lacks clarity in relation to the feature of "a film material". It appears that the opponent intended to refer to the feature of "a fill material". Claim 18 clearly refers to the use of a fill material for at least partially filling a portion of the microstructured icon elements. Claim 16 refers to the use of a fill material having a different property than the microstructured icon layer. It is submitted that these characterisations of the fill material would be readily apparent to a person of ordinary skill in the art, upon reading the specification as a whole.”
It is reasonably clear that reference to ‘a fill material’ in claim 16 is an antecedent of ‘a fill material’ in claim 18 and thus complies with s 102(2).
Claim 20
The Opponent states:
“Claim 20 lacks clarity as there is no antecedent for 'the exposed coating'.”
The Applicant states:
“The opponent asserts that claim 20 lacks clarity on the basis that there is no antecedent for the feature of "the exposed coating". It is submitted that it would be readily apparent to a person of ordinary skill in the art, upon reading the specification as a whole, that the reference to "the exposed coating" in claim 20 is a reference to those portions of the coating not covered by the resist material.”
It is reasonably clear that ‘the exposed coating’ is the portion of coating which is not covered by the resist material. This amendment to the claim is clear and thus complies with s 102(2).
Claim 21
The Opponent states:
“Claim 21 lacks clarity because it is not clear whether 'an image in addition to the image collectively formed by the microstructured icon elements' is the same or different to the 'second synthetic image' defined in claim 2 or a new integer of the optical image system.”
“Claim 21 also lacks clarity as it is not clear how the coating material provides a coating pattern with a geometry that does not coordinate with the microstructured icon elements as well as coordinate with the icon elements as required by line 13 of claim 1.”
The Applicant states:
“The opponent asserts that claim 21 lacks clarity on the basis that the phrase "an image in addition to the image collectively formed by the microstructured elements". It is submitted that it would be readily apparent to a person of ordinary skill in the art, upon reading the specification as a whole that this phrase refers to some additional image (synthetic or otherwise), being in addition to the image formed by the image system of claims 1, 2 and 4.”
Claim 1 defines a first image formed by microstructured icon elements with coordinated coating material filling the depressed shapes but not coating the flats. When the first image is viewed through the array of focussing elements a first synthetic image can be seen.
Claims 21 defines a second image formed by a patterned coating that is not coordinated with the microstructured icon elements. When the second image is viewed through the array of focussing elements a second synthetic image can be seen.
Claims 21 further defines that the second image (and second synthetic image) is in addition to the first image (and first synthetic image). It is reasonably clear that the presence of the first image (and first synthetic image) does not exclude the presence of a second image (and second synthetic image) in the same system. Consequently claim 21 is consistent with the independent claims it is ultimately dependent upon (claims 1, 2 and 4). This amendment to the claim is clear and thus complies with s 102(2).
Claim 22
The Opponent states:
“Claim 22 lacks clarity as it is not clear whether the 'plurality of depressions in the microstructured icon elements' is the same or different to the 'depressed shapes' defined in claim 1 or a new integer of the optical image system.”
The Applicant states:
“The opponent asserts that claim 22 lacks clarity on the basis that the phrase relating to the "plurality of depressions in the microstructured icon elements" is not clear. It is submitted that it would be readily apparent to a person of ordinary skill in the art, upon reading the specification as a whole, that claim 18 specifies that the microstructured icon elements are formed so as to include a plurality of depressions.”
It is reasonably clear to me that the 'plurality of depressions in the microstructured icon elements' is indeed the 'depressed shapes' defined in claim 1. This amendment to the claim is clear and thus complies with s 102(2).
Claim 23
The Opponent states:
“Claim 23 lacks clarity as it is not clear whether 'a patterned coating material' is the same or different to that of claims 1, 2 and 4, or a new integer of the optical image system.”
The Applicant states:
“The opponent asserts that claim 23 lacks clarity on the basis that the feature of "a patterned coating material" is not clear. It is submitted that it would be readily apparent to a person of ordinary skill in the art, upon reading the specification as a whole, that the reference to "the patterned coating material" in claim 23 is a reference to the "the patterned coating material" previously introduced in claims 1, 2 and 4.”
Although claim 23 could be amended to more clearly indicate antecedent features by referring to the ‘patterned coating material’ with the definite article ‘the’, it is already sufficiently clear thus claim 23 complies with s 102(2).
Claim 33
The Opponent states:
“Claim 33 lacks clarity as it is not clear whether the 'at least two different icon layers' are additional to, or a further characterisation of, the 'icon layer' defined in claims 1, 2 and 4.”
The Applicant states:
“The opponent asserts that claim 33 lacks clarity on the basis that the phrase "at least two different icon layers" is not clear. It is submitted that it would be readily apparent to a parson of ordinary skill in the art, upon reading the specification as a whole; that claim 1 is not limited to a specific number of icon layers and claim 33 specifies that there are at least two different icon layers.”
It is reasonably clear that the ‘different icon layers’ in the claim is defining an additional icon layer (as illustrated in figure 45). This amendment to the claim is clear and thus complies with s 102(2).
Claim 38
The Opponent states:
“Similarly, claim 38 lacks clarity as it is not clear whether the 'at least two different synthetically magnified images' are a further characterisation of the single synthetically magnified image defined in claims 1 and 4 or the same or additional to the two synthetically magnified images defined in claim 2.”
The Applicant states:
“The opponent asserts that claim 38 lacks clarity on the basis that the phrase "at least two different synthetically magnified images" is not clear. It is submitted that it would be plainly evident to a person of ordinary skill in the art that claim 38 refers to a particular arrangement in which at least two different synthetic magnified images are formed. In this regard, it is noted that claim 1 is not limited to any particular number of synthetic images.”
It is reasonably clear that claim 38 defines a second synthetic image in addition the synthetic image already defined in the independent claims; the two synthetic images are viewable depending on the viewpoint as shown in figure 46. This amendment to the claim is clear and thus complies with s 102(2).
Claim 40
The Opponent states:
“Claim 40 lacks clarity as it is not clear whether the 'physical relief' of the array of icon elements is a reference to the depressed shapes and flats between them defined in claim 1, or a different feature of the optical image system.
Claim 40 also lacks clarity as it is not clear whether the 'at least one synthetically magnified image' is the same as the 'synthetically magnified image' of claim 1 or claim 4, or either of the synthetically magnified images defined in claim 2, or indeed a different image.”
The Applicant states:
“The opponent asserts that claim 40 lacks clarity on the basis that the phrase "physical relief" is not clear. It is submitted that it would be readily apparent to a person of ordinary skill in the art that the reference to microstructured icon elements having a physical relief refers to the depressed shapes having a depth.
The opponent also considers that the phrase "at least one synthetically magnified image" is not clear. It is submitted that it would be readily apparent to a person of ordinary skill in the art, upon reading the specification as a whole, that the reference to "at least one synthetically magnified image" in claim 40 refers to the "at least one synthetic optical image" formed by cooperation of the array of focusing elements and the image system, as previously introduced in claims 1, 2 and 4.”
It is reasonably clear that the ‘physical relief’ is referring to the microstructured icon elements. This aspect of the amendments to the claim complies with s 102(2).
I consider that the ‘synthetically magnified image’ of claim 40 is essentially synonymous with the ‘synthetic optical image’ of the earlier claims. Although it is preferable that each feature is defined consistently and with the same terminology throughout a claim set, a failure to do so does not necessarily imply the claims lack clarity. In this case I consider this aspect of the claim to be sufficiently clear and thus this amendment to the claim complies with s 102(2).
Conclusion
I am satisfied that the proposed amendments are allowable according to the criteria set out in s 102. Subject to an appeal against this decision I allow the amendments filed on 14 November 2013 and 19 May 2014.
Costs
It is usual in matters before the Commissioner for costs to follow the event. I see no reason to depart from the usual practice. I award costs according to Schedule 8 against the Opponent, Innovia Security Pty Ltd.
Xavier Gisz
Delegate of the Commissioner of Patents
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