Pacific Secure Systems Pty. Limited v Pollard Banknote Limited and Spectron Security Print Limited

[2001] APO 57

OFFICIAL NOTICE

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Application:  No. 703019 in the name of Pacific Secure Systems Pty Ltd

Title:  Scratch Bingo Game

Action:  S.59 oppositions by Pollard Banknote Limited and Spectron Security Print Pty Limited.

Hearing.

Decision:  Issued            

Abstract:  One opposition successful.

The invention defined in claim 1 varied from that disclosed in a prior art specification by omission of a feature, but was found to be lacking in an inventive step when common general knowledge was added to the prior art specification. Omission of the feature was found to be the obvious solution to the problem. 

Grant of a patent refused.

Essential features in the citation considered: abstract & claim 1 of the US patent version of the citation did not refer to the feature at issue, but it was included in the embodiment.

Insufficient evidence in the second opposition.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application No. 703019 in the name of Pacific Secure Systems Pty Ltd and S.59 oppositions by Pollard Banknote Limited and Spectron Security Print Pty Limited

BACKGROUND

Patent application 13595/95 in the name of  Pacific Secure Systems Pty Ltd (PSS) was filed on 2 March 1995.  The application is a non-Convention application, based on Provisional PM4259 filed 4 March 1994. The application was advertised accepted on 11 March 1999 as No.703019.
Pollard Banknote Limited filed a notice of opposition to the grant of the patent on 9 June 1999, followed by Spectron Security Print Pty Limited on 10 June 1999. Service of the main evidence in both oppositions was completed on by 11 December 2000. The applicant filed an application to file further evidence on 14 May 2001.

The oppositions were heard in Canberra on 16 July 2001. The applicant was represented by Mr John Forster, patent attorney, and the first opponent, Pollard Banknote Limited, was represented by Mr Michael Grant, patent attorney.  The second opponent, Spectron Security Print Pty Limited, was not represented at the hearing but its patent attorneys filed written submissions on 10 July 2001.

The matter of the further evidence was not pursued at the hearing and it related to matters not relevant to the issues dealt with in the opposition, so I will make no further reference to this evidence.

The Specification

The specification indicates that the invention relates to a lottery game card. The background to the invention is set out as follows:

"Numerous types of instant lotteries or games are played by scratching an opaque, removable layer coated onto at least one area or panel of a card and matching the symbols or numbers revealed to those printed onto another area or panel of the card. In order to visually distinguish the different areas, it is desirable to coat each area of the game card with a different colour. This involves a costly process of manufacturing and coating a card with areas of multiple colours. In instances where an opaque scratch removable layer is used, this may entail printing a repeat of the underlying symbols over the opaque layer. This process is expensive and is error-prone in that the symbols printed on top of the opaque layer may not correspond with those under the layer.

This invention ameliorates one or more of the disadvantages discussed above and is directed to a cost-effective process of producing instant lottery or game cards such as, for example, instant scratch-Bingo games."

The claims defining the invention are as follows.

"1.       A card for playing a game comprising:-

(i)        a bleached or dyed substrate,

(ii)a plurality of indicia printed directly without any intervening coloured layer onto at least a first area and onto a second area of the substrate,

(iii)a scratch-removable, opaque coating applied over the indicia of at least the first area,

(iv)a scratch-removable, colour-tinted and translucent coating applied over the indicia of at least the second area and which allows

(a)  the indicia of the second area to be viewed therethrough and

(b) the substrate when viewed after removal of the coating to be visually distinct from the substrate with applied translucent coating.

2.        A card according to claim 1 wherein the substrate is a paperboard having bleached fibres.

3.        A card according to claim 1 wherein the substrate is a paperboard having dyed fibres.

4.        A card according to claim 1 for playing a game comprising a substrate other than paperboard.

5.        A card according to claim 1 wherein the indicia of the first area comprise of at least one set of lucky Bingo numbers or caller’s numbers.

6.        A card according to claim 5 wherein the indicia of the second area comprise of at least one set of Bingo game numbers.

7.        A card according to any one of claim 5 wherein game prize indicia are printed onto the substrate and covered with an opaque, scratch removable layer.

8.        A card according to any one of the preceding claims wherein the scratch removable opaque layer is coloured.

9.        A card according to claim 1, substantially as hereinbefore described, with reference to Figures 1 and 2."

The specification discusses the advantages of the invention on pages 3 and 4, viz:

"The application of a tinted, translucent and scratch removable coating obviates the need to print indicia twice, first onto the substrate and secondly, on top of an opaque, scratch-removable layer.  The use of a substrate without any intervening coloured layer covering the substrate and below the indicia or other printing has been found to provide a good contrast between scratched and unscratched portions of the scratch removable translucent coating of the game card.  This in turn reduces production costs by saving printing time, removing the need to apply multiple coats of colours and by reducing errors which are inevitable when indicia in a specific order or arrangement has to be printed twice.

The substrate is typically a paperboard or the like of which the fibres may be bleached, dyed, or of natural colour. Examples of such a substrate include a board comprising bleached white fibres; coated or uncoated paper or board as supplied by the manufacturer or the like."

The Evidence

The pertinent item of evidence discussed at the hearing was AU petty patent specification 641617 issued to Pollard Banknote Limited, published 23 September 1993, or the US equivalent specification US 5,193,815, published 16 March 1993. Both patents were published before the priority date of the present application. The Pollard patent is directed to an invention very similar to the present invention; the one important difference being that the former has a coloured layer on the substrate upon which the game symbols are printed.

The present invention specifically omits this layer: as is indicated in paragraph (ii) of claim 1 for example.

The first opponent's evidence-in-support is summarised as follows.

v  A declaration dated 8-6-2000 by Martin Gerard Earley, and exhibits MGE 1 - MGE 5. 

Mr Earley, a patent attorney with the firm representing the opponent, refers to patent specifications and other published documents relating to this case.

v  A declaration dated 1-3-2000 by Lyle H. Scrymgeour. 

Mr Scrymgeour is a vice president with the opponent company, based in Canada. Inter alia, he declares that:

• he has had 28 year's experience in the printing field including the printing of "secure" products such as lottery tickets,

• it is "standard practice" in the art that lottery ticket data can be printed directly onto a bleached or dyed paper or board substrate; and this was normal practice prior to the late 1980s,

• the basic concept of the Pollard patent relates to the translucent scratch-removable coating being a different colour from the substrate surface, and that the use of different coloured game areas on the substrate is merely an aesthetic enhancement and is not essential to the construction of the invention, and therefore there is no invention in omitting the coloured layers, and

• whilst his experience has been gained in Canada, the subject matter of this invention would be known to all persons involved in the printing field, including those in Australia.

v  A declaration dated 7-3-2000 by Noel G. Hill. 

Mr Hill is general manager of Spectron Security Print Pty Limited, the second opponent, and an Australian company active in the field of the invention. Inter alia, he declares that:

• he has had experience with the installation of printing equipment and systems for manufacturing instant scratch lottery and promotional games,

• most promotional games are printed on plain board or paper which can be either coated or un-coated.

• Pollard's specification described an advance in the art in using the translucent scratch-removable latex layer, and

• present specification 703019 appears to be directed to, apart from the new feature introduced by Pollard, "nothing which is not completely in common use in the printing and the secure and scratch ticket industry".

The second opponent's evidence-in-support consists of another copy of the said declaration of Mr Hill dated 7-3-2000 (this copy was filed earlier than the above-mentioned copy filed in the first opposition).

The applicant's evidence-in-answer to both oppositions comprises a declaration dated 6-12-2000 by Kevin Downes. 

Mr Downes, the inventor in this case, is a manager of Oberthur Gaming Technologies Pty Ltd, a company formerly in the name of the present patent applicant. Mr Downes declares that he has had 24 years' experience in the printing industry, and in the declaration he discusses scratch lottery ticket technology and the development of the present invention, which relates to a more advanced "Bingo" game.

In paragraphs 12 and 13 he discusses the problem of the prior art (existing Bingo games required a second indicia print layer on top of the opaque scratch-off layer; this required an additional printing pass and it was difficult to superimpose the indicia layers) and how his company developed the "breakthrough" in the industry which alleviated the problem (use of a coloured translucent latex).

In paragraphs 15 and 33 he discusses the issue of coloured layers directly on the substrate:

"15.   I did not wish to print a coloured layer beneath the play indicia which was to be covered by the translucent latex. To do so would have introduced additional costs through more extensive preparation work, longer make ready time on the press and a significant increase in the risk that the coloured layer would create and/or exacerbate potential chipping problems when the ticket was scratched."

"33.   … I do not deny that game indicia has previously been printed directly onto a substrate without an intervening coloured layer. However, this conventional technique had not been applied to scratch lottery tickets of the type including a translucent latex layer before 4 March 1994, the filing date of my company's patent application."

Mr Downes also declares that:

• the present inventive concept relates to using a scratch-removable translucent latex over indicia printed directly onto the substrate,

• the opponents have provided no "evidence that it would be obvious to an expert, when reading Pollard's specification, to remove the coloured layer and thereby arrive at the present invention" and

• on reading the Pollard specification, he understands that the coloured layer is essential to the working of the invention.

The first opponent's evidence-in-reply comprises a second declaration by Lyle H. Scrymgeour, dated 7-3-2001. Inter alia, he declares that:

• whilst Pollard's Australian patent has claims limited to the use of the coloured layer, the corresponding United States patent does not, and so does provide protection for an arrangement which does not include the coloured layer",

• it is not relevant whether PSS and Pollard independently developed the same concept of using a translucent scratch-off coating; the facts are that Pollard were the first in obtaining patent protection for that feature, and

• re paragraph 15 in Mr Downes' declaration, there would be no difference in the make ready time on the press, and there would be no chipping because of the coloured layer being screened (ie. applied in dots) and the top sealing coat.

The second opponent did not serve any evidence-in-reply.

DECISION

I shall first deal with the first opposition by Pollard Banknote Limited. The main grounds of opposition dealt with at the hearing were lack of novelty and inventive step in the light of the Pollard citation and the common general knowledge in the field of the invention.

With regard to the evidence, I think it is appropriate to take account of the declarations of all the experts who have given evidence, including that of Mr Scrymgeour, a Canadian, because the evidence suggests that there is a consistent field of knowledge across the countries in the world involved in this technology. Mr Downes for example declares:

"The nature of the lottery industry is such that the lotteries freely share their product ideas and samples with each other …"

The declarants make similar comments about the common general knowledge. In summary I think the evidence shows that it was common general knowledge from about the mid-1980's (and therefore at the date of publication of both the AU and US Pollard specifications, and at the priority date of the present specification) that:

• plain bleached or dyed substrates were used for lottery-type game cards, and

• game data/indicia were printed directly onto these substrates.

Novelty

Mr Grant submitted that when the US version of the Pollard specification is read in the light of the common general knowledge all the features of the present claims were anticipated. The US citation is pertinent because it includes an abstract of the invention as part of the specification, and the abstract refers to the numbers being printed on the substrate "in conventional manner". Neither the abstract nor claim 1 of the citation specifically refers to printing the game indicia directly onto the substrate without an intervening coloured layer, but Mr Grant submitted that when either the abstract or claim 1 of the citation was read in the light of the common general knowledge that it was "normal" to print directly on the substrate, then all the features of present claim 1 are disclosed.

Mr Forster submitted for the applicant that:

• the abstract and claim 1 should not be read out of context: because the description of the invention in the US specification indicates that there is a coloured layer between the substrate and the indicia, then when read as a whole, the specification does not disclose the omission of this layer,

• the abstract and claim 1 of the citation simply make no reference to either an intervening coloured layer or the absence thereof; so this cannot be construed as a teaching of a specific omission as claimed in paragraph (ii) of present claim 1,

• the omission of the coloured layer is an essential feature of the present invention, and

• the presence of a coloured layer is an essential feature of the Pollard invention.

I am generally sympathetic to the applicant's submissions in this matter. Whilst I have some doubts whether the presence of a coloured layer is an essential feature of the Pollard specification, and I am of the view that the citation does not "teach away" from the present invention, I nevertheless do agree with the applicant's submissions that the omission of the coloured layer is an essential feature of the present invention, and that there is no disclosure in the citation of specifically omitting a coloured layer between the substrate and the indicia. The disclosure fails the test set out in General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd, (1972) RPC 457 at page 486:

"To anticipate the patentees claim, the prior publication must contain clear and unmistakable directions to do what the patentee claims to have invented ... A signpost, however clear, upon the road to the patentee's invention will not suffice. The prior inventor must be clearly shown to have planted his flag at the precise destination before the patentee."

Inventive step

A common approach to the determination of inventive step used by the courts and by the Patent Office, which I think is appropriate to the present case, is the problem/solution approach. See HPM Industries Pty Ltd v Gerard Industries Ltd, 98 CLR 424 at page 437, where Williams J said:

"If the invention were novel it would nevertheless fail for want of subject matter if in the light of what was common general knowledge in the particular art, it lacked inventive ingenuity because the solution would have been obvious to any person of ordinary skill in the art who set out to solve the problem."

The present specification indicates that the problems of the prior art addressed by the invention are:

(i) a costly manufacturing process was used to coat different areas of the game card with multiple colours to create visually distinguishable areas on the card, and

(ii) opaque scratch-removable layers entailed expensive and error-prone printing of a repeat of the underlying symbols over the opaque layer.

The similarities of the present invention and of the invention in the Pollard specification indicate that the second problem was addressed in the Pollard invention, and solved in the same manner as in the present invention- by the use of a translucent latex layer. This was the main thrust in both specifications; however most of the submissions at the hearing related to the first problem because this is where the inventions differ.

Mr Grant suggested generally that the present invention is merely a workshop variation of the invention disclosed in the Pollard specification. In particular he submitted that, in relation to the omission of the coloured layer:

• the present invention fails the test set out in Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd, (1981) 148 CLR 262 at page 286, viz: "… 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 …",

• the inventor has not overcome any "practical difficulties" in applying the common general knowledge,

• the elimination of the coloured layer is the "only solution to the problem", and

• the Pollard specification is not teaching away from the present invention because the extra coloured layer is only to make the game card aesthetically appealing.

Mr Forster suggested generally that the present invention is a new, inventive combination of features including omitting a coloured layer directly on the substrate, and using a scratch-removable translucent coating over the game indicia. In particular he submitted that:

• the applicant's and Pollard's inventions were developed simultaneously and independently,

• the common general knowledge referred to above relates only to the general game card field of technology, whereas the present invention is in the field of game cards using translucent scratch-removable layers, and in this latter field the common general knowledge is that coloured layers on the substrate were known and essential,

• the notional skilled addressee of the present invention is a person skilled in the art (PSA) of game cards using translucent scratch-removable layers,

• the advantages of the invention insofar as the first problem is concerned are set out in paragraph 15 of Mr Downes' declaration,

• there is no evidence that there is only one solution to the first problem, and this problem is not contemplated or acknowledged in the prior art, and

• there is no enabling disclosure in the citation of printing directly onto the substrate.

Re the issue of the field of the invention. I am not sympathetic to the applicant's argument that the appropriate field is that which is directed to translucent scratch-removable coatings. Firstly, I notice that such a field is not contemplated by Mr Downes, and secondly, such a field would prima facie comprise nothing more than the Pollard invention. This in my view is too narrow and not a "field of technology" at all. All the experts in this case seem to be comfortable in discussing both general game card technology and translucent-layer game cards, and I think it is all one field.

Thus a person skilled in the art would be somebody technically qualified or experienced in the field of manufacture and printing of game cards, lottery tickets and the like with so-called "security features". Also, I think this PSA could be reasonably expected to have ascertained the Pollard citation and understood and regarded it as relevant, thus complying with the requirements of  S.7(3). The Pollard specification addresses the same problem as the second problem in the present invention and is therefore definitely relevant because it solves that problem.

However a single document should not be read in isolation, and, noting that it is permissable under subsections 7(2) and (3) of the Act to combine common general knowledge with the disclosure in a citation, it seems appropriate in this case to combine the Pollard citation with the common general knowledge for the purpose of determining inventive step.

In this case the common general knowledge is that plain bleached or dyed substrates were used for lottery-type game cards, and that indicia were printed directly onto these substrates. The balance of the experts' evidence before me suggests that the PSA would use this knowledge to solve the first problem set out in the present specification; ie. the costly manufacturing process which was used to coat different areas of the game card with multiple colours could be eliminated by simply printing indicia directly onto the substrate surface. To me this is a case where there are no practical difficulties associated with implementing the solution or applying the common general knowledge; there seems to be no practical difficulties associated with omitting to do something which was done before.

The following precedent is of some relevance in this aspect of inventive step:

Allsop Inc & Another v Bintang Ltd & Ors, (1989) AIPC 90-615 at page 39,332:

"[the invention] was so obvious that it would at once occur to anyone acquainted with the subject, and desirous of accomplishing the end" and

Olin Mathieson v Biorex, (1970) RPC 157 at page 187:

"would the notional research group at the relevant date in all the circumstances ... directly be led as a matter of course to try [the invention claimed] in the expectation that it might well produce [a useful desired result]."

Also, I don't think the Pollard specification teaches away from the solution to the present applicant's first problem. Even though the embodiment of the invention in the Pollard specification includes coloured layers, there is nothing in that specification as a whole to suggest that the coloured layers are essential to achieve the object of that invention, or that the invention would not work without the coloured layers. Also, a PSA would find the disclosure in the citation to be sufficiently enabling of the present invention by calling on the PSA's common general knowledge; ie. the coloured layer would simply be omitted.

The applicant submits that the present invention is a new and inventive combination of features which include the omission of the coloured layer on the substrate and the use of a translucent scratch-removable layer; and the advantages of the invention are reduced manufacturing costs due to (i) omission of the coloured layer and (ii) not having to re-print the game data on top of the scratch-removable layer.

An appropriate test for this aspect of inventive step is set out in Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Ltd, (1979-80) 144 CLR 253 at page 293:

"In the case of a combination patent the invention will lie in the selection of integers, a process which will necessarily involve rejection of other possible integers. The prior existence of publications revealing those integers, as separate items, and other possible integers does not of itself make an alleged invention obvious. It is the selection of the integers out of, perhaps many possibilities, which must be shown to be obvious."

In this case however, the evidence does not suggest that any integers or solutions were considered to achieve the objects of the invention other than those in the Pollard specification and the said common general knowledge. Also, I do not agree with the applicant's submission that it is necessary for the citation to address the same problems as those identified in the present specification; as far as I am aware there is no legal precedent to support this submission.

Generally I find it difficult to construe the present invention as a new and inventive combination, ie. in the sense of a true combination of integers (cf. an "improvement" type of invention), since the difference between the present invention and the Pollard invention is that in the former there is one less actual feature (ie. one feature has been omitted).  Also, I note that each of the advantages of the present invention, referred to above, is separately known to be associated with each of the respective features; ie. it is known that manufacturing costs are minimised by not having a coloured layer on the substrate and it is known that only one printing of the game data is necessary if a translucent scratch-removable covering layer is used.  One would expect an inventive combination to have some advantage over the prior art which is a new advantage resulting from the new combination, but in this case that new advantage is not apparent.

The following precedent is of some relevance in this aspect of inventive step:

Elconnex Pty Ltd v Gerard Industries, (1993) AIPC 90-984, at page 39,326:

"This is not a case of a new combination, although of old integers, but of an old combination which has been, at most, subjected to slight variations. The question must be asked whether those variations are other than obvious."

May v Higgins, (1916) 21 CLR 119 at page 123:

"It appears to me that it is a mere improvement of one previously existing integer. It is not a new integer giving a better result, nor the substitution of a totally different integer, the presence of which is such as to make the whole machine an essentially different machine, a new unit. It is, I think, at best an improvement upon a prior integer not altering the essential character of the machine."

Taking all these matters into account I conclude that the invention defined by present claim 1 is lacking an inventive step in the light of the Pollard specification and the common general knowledge in the art.

I will now consider the other claims in the present specification. The opponent's declarants suggest that claims 2-4 are directed to matters of common general knowledge and that claims 5-8 are disclosed in the Pollard specification, and Mr Downes's declaration contains no comments in response to the opponent's declarants' comments, so I conclude the subject matter of these claims is either disclosed in, or a mere workshop variation of the combination of the Pollard specification and the common general knowledge. Also, in my view, omnibus claim 9 is directed to features which are very similar to those shown in the drawings of the Pollard specification, so claim 9 is also directed to a mere workshop variation.

Re the second opposition by Spectron Security Print Pty Limited, I am of the view that the opponent's evidence and submissions are insufficient for a successful opposition. The combined weight of Mr Earley's, Mr Scrymgeour's and Mr Hill's evidence has clearly established the state of the common general knowledge in the art; whereas the latter by itself I think leaves some doubt in the matter. Also, Mr Scrymgeour's two declarations have been significant in my decision that the present invention lacks an inventive step; particularly in regard to my finding that there appears to be no difficulties overcome in the application of the common general knowledge. These two declarations are not included in the evidence in the second opposition.

Conclusion

I have found all the claims in the applicant's specification to be lacking in an inventive step. Also because of the similarities between the present invention and the invention disclosed in the Pollard specification, it seems to me that there is no feature disclosed in the present specification which could be incorporated in the claims to distinguish the invention (if the applicant was given a further opportunity to amend) and which was not already disclosed in the Pollard specification.  I am of the opinion that to offer the applicant another opportunity to amend its specification would be a fruitless exercise and would cause further delay in the resolution of the oppositions and resultant uncertainty in the marketplace.  Therefore it is appropriate that I refuse to seal a patent on the application.

All parties sought costs. The usual practice in oppositions is to award costs against the losing party; I see no reason to change that practice in the first opposition in this case so I award costs relating to the first opposition, in accordance with Schedule 8, and against Pacific Secure Systems Pty Ltd.

Re the second opposition, the usual practice would lead me to award costs against the opponent, but I note that the applicant made no submissions specifically on the evidence in the second opposition and the applicant's correspondence and evidence suggests that it was dealing with the two oppositions as one case. Thus I think it is appropriate not to award costs in the second opposition.

John Welsh
Delegate of the Commissioner of Patents

Patent attorneys for the applicant:  Baldwin Shelston Waters, Sydney

Patent attorneys for the first opponent:  Patent Attorney Services,  Melbourne

Patent attorneys for the second opponent:  A Tatlock & Associates,  Melbourne