Note Printing Australia Limited v De La Rue International Limited
[2010] APO 33
•23 December 2010
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Note Printing Australia Limited v De La Rue International Limited [2010] APO 33
Patent Application: 2001269313
Title:Method of providing an image on a substrate and an ink for use therein
Patent Applicant: De La Rue International Limited
Opponent: Note Printing Australia Limited
Delegate: Xavier Gisz
Decision Date: 23 December 2010
Hearing Date: 10 November 2010, in Canberra
Catchwords: PATENTS – opposition to the grant of a patent – section 59 –
– Clarity – claims must be construed before any other matters of validity are considered
– Fair basis – no inconsistency between the description and the claims
– Fully described – only experiments within the scope of the claims relevant
– Utility – only experiments within the scope of the claims relevant
– Novelty – the prior art document is not ‘suitable for’ the method claimed
– Inventive step –the claimed invention would not be obvious to a person skilled in the art – one of the prior art documents would not have been regarded as relevant by a person skilled in the art
– Opposition fails on all grounds
– Costs – specification only considered valid from when last amendments made – costs awarded against the Opponent from when last amendments allowed
Representation: Patent applicant: Ben Fitzpatrick and Julian Curwen, Davies Collison Cave
Opponent:Roger Green and Grant Jacobsen, Watermark
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2001269313
Title:Method of providing an image on a substrate and an ink for use therein
Patent Applicant: De La Rue International Limited
Date of Decision: 23 December 2010
DECISION
The invention is a method of applying an optically variable effect generating structure onto a substrate and a composition suitable for this method.
The application was opposed under section 59 on the grounds of clarity, that claims do not define the invention, utility, fair basis, insufficiency, novelty and inventive step.
The claims are found to be valid and thus the opposition fails on all grounds.
Costs are awarded against the Opponent from the day after the last amendments to the specification were allowed (18 July 2009). Costs are awarded against the Applicant up to the day the amendments were allowed (17 July 2009).
REASONS FOR DECISION
BACKGROUND
Patent application 2001269313 (the Application) to De La Rue International Limited (the Applicant) was advertised as accepted on 24 February 2005. On 24 May 2005 a notice of opposition was filed by Note Printing Australia Limited (the Opponent), and on 24 August 2005 the Statement of Grounds and Particulars was served.
On 23 May 2006 the Opponent served Evidence in Support. On 22 August 2006 the Applicant requested to amend the specification under s 104 and the allowance of the amendments was advertised on 22 March 2007. On 20 December 2007 the Applicant served Evidence in Answer. On 20 May 2008 the Opponent served Evidence in Reply and requested to amend the Statement of Grounds and Particulars. The delegate determined that some of the Evidence in Reply was actually further evidence and allowed the Applicant two months to serve evidence in response.
On 15 October 2008 the Applicant requested to amend the specification and on 16 January 2009 the Applicant made another request to amend the specification. These amendments were allowed on 17 July 2009 and the allowance of the amendments was advertised on 30 July 2009.
On 15 May 2009 the Applicant served the evidence in response to the further evidence. On 8 February 2010 the Opponent served further evidence. On 20 May 2010 the Applicant served evidence in response. On 8 July 2010 the Opponent served further evidence. On 3 September 2010 the Opponent served evidence in response.
The hearing was held in Canberra on 10 November 2010.
EVIDENCE
Evidence-in-Support is a declaration by Eric Scherman of 28 April 2006 and exhibits EWS-1 to EWS-15.
Evidence-in-Answer is a declaration by Gordon Cole of 18 December 2007 and exhibits GJC-1 and GJC-2.
Evidence-in-Reply is a declaration by Eric Scherman of 16 May 2008 and exhibits EWS-16 to EWS-19.
Further Evidence is the amended Statement of Grounds and Particulars. Evidence-in-Response comprises declarations by Gordon Cole of 13 May 2009 and Alan Morris of 13 May 2009 and exhibits GJC-3 and exhibits AM-1 to AM3.
10. Further Evidence is a declaration by Christopher Tierney of 2 February 2010 and exhibits CT‑1 to CT-7. Evidence‑in‑Response is a declaration by Alan Morris of 19 May 2010.
11. Further Evidence is a declaration by Christopher Tierney of 7 July 2010. Evidence‑in‑Response is a declaration by Alan Morris of 1 September 2010.
THE SPECIFICATION
12. The specification under opposition relates to optically variable effect generating structures, and more particularly, printable metallic optically variable effect generating structures.
13. The specification ends with 26 claims. The two broadest claims are the independent claim directed to a method of applying an optically variable effect generating structure to a substrate (claim 1) and a dependent claim that defines a composition suitable for applying an optically variable effect generating structure (claim 18). These claims are reproduced below:
1. A method of applying an optically variable effect generating structure on a substrate, the method comprising:
a) applying to the substrate a composition comprising metallic particles dispersed in a vehicle;
b) drying the composition;
c) curing the composition by exposure to radiation; and then
d) embossing into the composition an optically variable effect generating structure, wherein the vehicle is a radiation-curable vehicle selected from vehicles curable by UV, X-rays and electron beams and wherein the composition further comprises a solvent in addition to any solvent included in the vehicle.
18. A composition suitable for applying an optically variable effect generating structure on a substrate by the method of claim 1, the composition comprising metallic particles dispersed in a radiation-curable vehicle selected from vehicles curable by UV, X-rays and electron beams, wherein the composition further comprises solvent in addition to any solvent included in the vehicle.
STATEMENT OF GROUNDS AND PARTICULARS
14. The particulars of the statement of grounds and particulars were amended during the opposition to include four additional prior art documents on 11 June 2008. The grounds on which the application is opposed are: clarity, that claims do not define the invention, utility, fair basis, insufficiency, novelty, inventive step and manner of manufacture. All these grounds except manner of manufacture were argued by the Opponent at the hearing.
DECISION
Clarity and Claim construction (s 40(3))
15. The Opponent argued that the claims were unclear and thus did not satisfy section 40(3). Paragraph 64 of the Opponent’s submission states:
As discussed in paragraphs 27 to 37, the terms "method of applying" and "embossing" are not clear because the specification and claims contain little or no guidance as to the precise nature of the equipment to be used in the method.
16. However this is not the correct approach to determining whether the claims are clear. It is the purpose of the description, not the claims, to provide details such as the equipment to be used. The terms themselves have clear meanings consistent with the meanings provided in the description.
17. Paragraph 65 of the Opponent’s submission states:
The term "optically effect generating structure" is also unclear because Mr Morris has criticised whether the coarse intaglio structure used for embossing by Mr Tierney is suitable. This statement conflicts with the specification at page 1, lines 9-11 which states that "Optically variable effect generating structures" can include "non-holographic reflective embossed devices" as well as diffraction gratings and holographic devices", and also page 8, lines 3-4 which refer to "macro-embossed features".
18. The term “optically variable effect generating structure” is reasonably clear and is consistent with the teachings of the description at page 1 lines 9-11. Although the declarations by the experts provide some insight into the embodiments of the invention, they do not affect the clarity of this term.
19. The Opponent also asserted that the terms “drying the composition” and “metallic particles” were also unclear. However, the experts who gave evidence had no trouble in understanding these terms and providing opinions on the basis of their understanding which indicates that these terms are clear to those in the field of the invention.
20. The construction of the phrase “suitable for” was discussed at the hearing. The Opponent argued that the phrase “suitable for” could be construed more broadly to include the composition per se. The Applicant argued that the phrase limited claim 18 to only compositions with the claimed ingredients that were suitable for printing optically variable effect generating structures. In my opinion, the phrase “suitable for” does indeed limit the claim to only compositions that would be suitable for producing an optically variable effect generating structure produced by the claimed method.
21. The Opponent argues that the phrase “…composition further comprises a solvent in addition to any solvent included in the vehicle” is not clear. Specifically, the Opponent argues that, depending upon which solvent is considered ‘added’ and which solvent is ‘included’, two identical methods or compositions could either be considered infringing or not infringing and hence the claims are unclear. I believe the Opponent has reached this conclusion by considering the validity of the claims (and potential infringement) before properly construing the claims. However, the validity of the claims or the potential infringement of the claims can only be considered after the claims are properly construed.
22. The meaning of the phrase “…composition further comprises a solvent in addition to any solvent included in the vehicle” can be better understood by a purely editorial change – that is, without reference to the purpose of each of the composition ingredients. Specifically, the phrase refers to the composition containing at least one solvent, in addition to any other ingredients in the composition. Thus the phrase could be more efficiently rephrased as “… the composition comprises at least one solvent”. However, the fact that a phrase could be expressed more efficiently does not necessarily imply the claim is unclear.
23. It is only where it is impossible to ascertain the invention that a claim should be found to lack clarity (see Décor Corp v Dart Industries 13 IPR 385 at 400). As I have indicated above, the invention can be ascertained. I therefore find all claims to be clear, thus satisfying the clarity requirement of s 40(3).
The claims do not define the invention (s 40(2)(b))
24. The Opponent argues that claims 1 and 18 are far broader than the invention described and contain no limitation as to the type and amounts of metallic particles, radiation curable vehicle and type and amount of solvent to be added and thus the claims do not define the invention. The claims are required to fulfil the statutory purpose of “defining the invention”, but this requirement is not the same as the requirement of fair basis as is seemingly implied by the Opponent. It would only be in circumstances where the claims were so ambiguous or unclear that they would be considered not to define an invention at all. The claims have been found to be clear and unambiguous. Therefore the claims define the invention and thus satisfy s 40(2)(b).
Fair basis (s 40(3))
25. The Opponent argues that claim 18 is not fairly based on the description for the following reason:
Claim 18 in particular is [sic] lacks fair basis because it is unduly broad having regard to the matter disclosed in the specification. This is shown by the scenarios in paragraph 59.
26. Paragraph 59 refers to the Opponent’s submissions on the possible interpretations of the phrase “…composition further comprises a solvent in addition to any solvent included in the vehicle”. Since I have determined that this phrase is clear, this argument is obviated.
27. In order for a claim to be fairly based, the claims must be consistent with what the specification as a whole describes as the invention. However, there is nothing inconsistent between the description and the claims. Thus the claims are fairly based on the description.
Sufficiency (s 40(2)(a))
28. There was a significant amount of evidence provided from both parties about whether the description provided sufficient detail to reproduce the invention as required by section 40(2)(a). Both the Applicant and the Opponent provided experimental results relating to the invention performed by experts in the field of printing.
29. The Applicant’s expert, Mr Morris, performed twelve experiments which were collectively designated as exhibit AM-3. The purpose of Mr Morris’ experiments is given in paragraph 19 of his declaration of 13 May 2009:
I have conducted a number of experiments in which I made a range of compositions according to the opposed patent using a number of different metals, specifically tin, aluminium, copper, zinc, indium, silver, lead and cadmium.
30. At paragraph 25, Mr Morris summarises the results of his experiments:
In summary, the results of my experiments confirm that a range of different metals can be used in the method and compositions of the opposed patent to achieve a good level of emboss.
31. The Opponent’s expert, Mr Tierney, performed five experiments which were designated as exhibits CT-3 to CT-7. The purpose of Mr Tierney’s experiments is given in paragraph 36 of his declaration of 2 February 2010:
With the collective results of the Amended Application and the Morris experiments in mind, I designed and conducted a number of experiments to explore the relationship between metal concentration, added solvent and the generation of an optically variable effect.
32. Mr Tierney summarises his experiments at paragraph 49:
The composition claimed in claim 18 of the Amended Application covers such a wide range of metallic ink formulations that include many compositions that would not be suitable for producing an effective embossed, optically variable effect.
33. I believe Mr Morris’ and Mr Tierney’s apparently conflicting opinions are actually addressing different questions. Mr Morris’ evidence demonstrates that the described method results in an optically variable effect generating structure. Mr Tierney’s evidence demonstrates that the claimed method will not necessarily result in an optically variable effect generating structure. However, the latter approach does not address the question of whether the specification describes the invention fully as required by section 40(2)(a).
34. For the purposes of section 40(2)(a), it is enough that there is a disclosure in the sense of enabling the addressee to produce something within each claim without new inventions or additions or prolonged study of matters presenting initial difficulty (Lockwood Security v Doric Products [2004] HCA 58 at [60]).
35. It is not necessary for a claim to be enabled over its full scope (Lockwood (supra) at [83]). Mr Tierney’s evidence goes no way towards demonstrating that the disclosure would not enable the addressee to produce something within the claims. Furthermore, the experiments conducted by Mr Tierney that did not yield optically variable effect generating structures would not, in accordance with the established principles of construction, be considered to fall within the scope of the claims.
36. The burden of proof lies with the opponent to show that the claims are clearly invalid. The Opponent has not provided any compelling evidence that the invention is not sufficiently described. Furthermore, the Applicant has provided evidence that the invention is sufficiently described. Therefore, I find the claims comply with s 40(2)(a).
Utility (s 18(1)(c))
37. The issue of utility was recently considered by the Full Court of the Federal Court in H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70 where Emmett J at 81 stated:
A claim is bad if it covers means that will not produce the desired result, even if a skilled person would know which means to avoid. That is to say, everything that is within the scope of a claim must be useful, otherwise the claim will fail for inutility.
38. Mr Tierney has demonstrated that a composition with the ingredients defined in claim 18 does not necessarily produce an optically variable generating effect. However, the claims are limited to a method – and a composition suitable for – creating optically variable generating structures. Thus any method that does not – or any composition this is not suitable for – creating an optically variable generating structure is not within the scope of the claims. Mr Morris has demonstrated that the described method does result in an optically variable effect generating structure.
39. The claims will lack utility if something that falls within the scope of the claims can be shown to not be useful. However, the evidence does not show that something that falls within the scope of the claims is not useful. Thus I accept that the claimed invention is useful and thus complies with section 18(1)(c).
Novelty (s 18(1)(b)(i))
40. The present invention has two aspects. The first aspect of the invention, defined in claim 1, is a method of forming an optically variable effect generating structure on a substrate. The second aspect of the invention, defined in claim 18, is a composition suitable for forming an optically variable effect generating structure on a substrate.
41. The Opponent argues that claim 18 lacks novelty in light of US 5,968,606 (hereinafter referred to as ‘Osuna’). Specifically, the Opponent argues that although the composition in Osuna is intended for a different purpose (heat dissipating structure) than the present invention, it would nonetheless be suitable for the present invention (optically variable effect generating structure).
42. The examples given in Osuna contain UV-curable vehicle, additional solvent and filler in the proportions 39.7%, 39.4% and 20.9% respectively. The filler in the Examples A‑D is boron nitride (column 4 line 51) and the size of filler is less than 40μm. The document states that “the composition can be easily rendered electrically conductive by adding conductive metals such as silver or gold” (column 4 lines 20 to 23). Thus, Osuna discloses a composition that contains the three ingredients of the composition of claim 18.
43. However, there is nothing to indicate that the composition disclosed in Osuna would be suitable for producing an optically variable effect generating structure. Indeed, the visual properties of the heat dissipation structure disclosed in Osuna are of no importance as to how the heat dissipating structure works.
44. The present application discloses examples with significantly different proportions of the three ingredients in the composition from those in Osuna. Example I of the present application has ingredients in the following proportions: 20% UV-curable vehicle, 10% added solvent and 70% tin.
45. To succeed in an opposition, the burden is on the Opponent to show that the claims, if granted, would be clearly invalid. I am simply not satisfied that the composition disclosed in Osuna would be clearly suitable for producing the optically variable generating structure. Therefore I consider the claims to be novel.
Inventive step (s 18(b)(ii))
The Opponent asserts that claims 1-17 lack an inventive step in light of WO 98/18635, US 5,981,040 and US 5,961,706 while claims 18-25 lacks an inventive step in light of US 5,968,606.
Criteria for assessing inventive step
47. There are two stages for assessing inventiveness. Firstly, to determine whether a person skilled in the art would have ascertained, understood and regarded as relevant a prior art document. Secondly, if the first criterion is fulfilled, determine what a person skilled in the art would have done with the information provided in the document.
Who is the person skilled in the art?
48. The person skilled in the art in the present application would be a printer with knowledge of printing security documents. The evidence was prepared by four printing experts; each of these experts could be considered representative of a person skilled in the art. Although none of the experts stated that they searched patent databases, I believe they could reasonably be expected to do so.
What problem was the person skilled in the art was attempting to solve?
49. The specification states on page 2 that:
Contrary to the teaching in WO-A-9818635, the present Applicant has found it difficult to achieve a level of emboss sufficient for a good holographic image using solvent-based inks containing aluminium plate particles. It would therefore, be desirable to provide alternative metallic inks to those disclosed in WO-A-9818635 which are not subject to this problem.
50. From this excerpt, I believe the problem that the person skilled in the art was attempting to solve was to create a metallic ink that allowed for better embossing to produce optically variable effect generating structures than the prior art.
WO 98/18635 and US 5,981,040 (Rich)
51. WO 98/18635 and US 5,981,040 are equivalent disclosures and will therefore be collectively referred to as Rich who is one of the inventors listed on these patents.
52. Rich discloses a holographic image produced by the impression of a shim onto a metallic ink coating comprising a plurality of metallic particles suspended in a resinous binder. Rich differs from claim 1 in that it does not disclose the use of a radiation curable vehicle in which the metallic particles are dispersed.
53. Turning first to whether a person skilled in the art could have been reasonably expected to have ascertained, understood and regarded as relevant this document. There is no evidence to establish whether a person skilled in the art would have ascertained, understood and regarded as relevant this document. However, I note that this document is acknowledged as relevant prior art in the opposed application and thus I think it is reasonable to assume that a person skilled in the art would have ascertained, understood and regarded as relevant this document.
54. Having found the Rich patent, a person skilled in the art could be expected to make small variations to the invention disclosed in this document to achieve the desired outcome of a better holographic image. However, I cannot see any reason why the non-inventive skilled person would add a UV curable vehicle to the composition. Indeed, adding a UV curable vehicle would add a prima facie redundant step to the process because it requires the curing of the printed article with radiation in addition to drying the printed article.
The advantage for the first curing step is given in Mr Cole’s declaration of 18 December 2007 at paragraph 61:
In other words, the presence of solvent allows the composition, on drying and curing, to shrink back or contract, leaving metal particles exposed at the surface. Without the presence of solvent, there would likely be no so-called “shrink-back” of the composition, with the result that the majority of the metallic particles would remain within the body of the composition when printed rather than standing proud of its surface, thus rending the embossing step less effective.
56. Thus, in Mr Morris’s opinion, drying the composition before radiation curing the composition enables better embossing. This seems to be an insight that a person skilled in the art would not have arrived at through a non-inventive process. Therefore, claim 1 and claim 18 are inventive in light of Rich. It follows that all other claims which are dependent on either claim 1 or 18 are also inventive.
US 5,961,706 (Bechly)
57. US 5,961,706 will be hereafter referred to as Bechly who is the inventor listed on the patent. The document provides an invention directed to the same technical effect as the present invention – printing a metallic finish onto a substrate. There is no evidence to establish whether a person skilled in the art would have ascertained, understood and regarded as relevant this document. However, since this document is directed to the same technical effect as the present invention I conclude that a person skilled in the art could have been reasonably expected to have ascertained, understood and regarded as relevant this document.
58. Bechly discloses a process of forming a metallic effect on a surface by printing a metallic dispersion in a solvent-based ink onto a substrate. Bechly discloses that UV curing ink is widely utilised in printed articles because of the speed at which it is cured, but it is not suited to applying metallic ink composition onto plastic substrates.
59. In his declaration of 18 December 2007 Mr Cole notes at paragraph 34:
Although the ‘706 patent makes reference to UV curable vehicles at column 3, lines 55 to 59, it does so in the context of indicating that UV curing certain metallic ink compositions could not readily obtain the desired metallic appearance and that evaporative curing was necessary.
60. Thus, in Mr Cole’s opinion, Bechly does not disclose or obviously suggest to a person skilled in the art combining a UV-curable vehicle with the solvent based ink. I accept that a person skilled in the art would not have, as a matter of routine, added a UV-curable vehicle to the solvent based metallic ink in Bechly. Therefore, claim 1 and claim 18 are inventive in light of Bechly. It follows that all other claims which are dependent on either claim 1 or 18 are also inventive.
US 5,968,606 (Osuna)
61. Unlike the other documents considered for the purpose of inventive step, Osuna is from a significantly different field of technology – that of applying a heat dissipation structure onto the surface of an electronic component. It is therefore necessary to more thoroughly consider whether a person skilled in the art would have ascertained, understood and regarded as relevant this document.
Ascertained
62. When searching for a solution to the problem of better methods of applying a metallic optically variable effect generating structure, it would be reasonable to expect a person skilled in the art to perform a prior art search on the patent databases. A simple keyword search of the patent database with terms such as: ‘print’, ‘UV-curable’, ‘metal’ would readily reveal Osuna. Therefore, Osuna would have been ascertained by the person skilled in the art.
Understood
63. The Osuna document pertains to printing a UV-curable composition onto a substrate. Although the purpose of printing the UV-curable composition onto the substrate in Osuna differs from the present invention, it is reasonable to assume a person skilled in the art would still understand the contents of this document.
Regarded as relevant
64. Osuna relates to printing a composition onto an electronic component for the purposes of heat dissipation. This differs considerably from printing an ink onto a substrate to produce an optically variable effect.
65. A general test that has been used to establish relevance is given in Beecham Groups Limited's (Amoxycillin) Application (1980) RPC 261 at page 282
The test in my judgement is whether it can be expected that the skilled man will be likely to recognize the document in question as being particularly pertinent to, though it may not specifically solve the problem before him.
66. In his declaration of 13 May 2009 Mr Cole states at paragraph 8:
I therefore do not consider that the ‘606 patent discloses all of the features of any of the claims of the Further Amended Application. I also consider that it would be an extremely unlikely reference source for anyone researching the application of optically variable generating structures and presents as irrelevant as a piece of prior art in this context.
67. I accept that a person skilled in the art would not regard Osuna as relevant to the problem which the person skilled in the art was seeking to address; that is, a method for applying an optically variable effect generating device to a surface. Indeed, the appearance of the printed article disclosed in Osuna is irrelevant to its operation, whereas the appearance of the present invention is vital.
68. Since this document would not have been regarded as relevant to a person skilled in the art, the first of the two stages of assessing the inventiveness of a claim is not fulfilled and therefore the inventive step analysis cannot proceed to the second stage. Thus I find that all claims involve an inventive step in light of Osuna.
Conclusion
69. The Opponent has opposed the application on the grounds of clarity, that claims do not define the invention, utility, fair basis, insufficiency, novelty and inventive step. I have not found any of the claims to be invalid on any of these grounds. Consequently the opposition fails on all grounds.
Costs
70. Costs usually follow the event. However, since the Applicant amended the specification during the opposition, it is appropriate that the costs are varied. By amending the specification during the opposition the Applicant essentially concedes that the application was not valid before that amendment. Thus the Opponent was correct to oppose the application up until the point in time when an application is deemed valid, i.e. when the last amendments were allowed.
71. Thus, I awards costs against the Applicant up to the day when the last amendments to the specification were allowed (17 July 2009) and I award costs against the Opponent from the day after the allowance of the amendments (18 July 2009).
Xavier Gisz
Delegate of the Commissioner of Patents
0
1
0