Securency International Pty Ltd v De La Rue International Limited - [2012] APO 112

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Securency International Pty Ltd v De La Rue International Limited [2012] APO 112

Patent Application: 2005238699

Title:Arrays of microlenses and arrays of microimages on transparent security substrates

Patent Applicant:  De La Rue International Limited
Opponent:  Securency International Pty Ltd
Delegate:  Xavier Gisz
Decision Date:  24 October 2012
Hearing Date:  15 August 2012
Catchwords:  PATENTS - opposition to the grant of the patent under s 59 – opposed on the basis of novelty, inventive step, usefulness, clarity, fair basis and manner of manufacture – opposition is unsuccessful on all grounds – costs awarded against opponent

Representation: Patent Applicant: Davies Collison Cave, Melbourne
Opponent:Watermark, Melbourne

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2005238699

Title:Arrays of microlenses and arrays of microimages on transparent security substrates

Patent Applicant: De La Rue International Limited
Date of Decision: 24 October 2012
DECISION
The opposition is unsuccessful on all grounds. Subject to appeal, I direct the application to proceed to sealing.
Costs awarded according to Schedule 8 against Securency International Pty Ltd.
REASONS FOR DECISION
Background

The patent application 2005238699 in the name of De La Rue International Limited (the Applicant) is the national phase entry in Australia of PCT application WO 2005/106601 which was filed on 28 April 2005 with a priority date of 30 April 2004. The patent application was advertised as accepted on 20 November 2008. An opposition to the grant of the patent was filed by Securency International Pty Ltd (the Opponent) on 20 February 2009 and a Statement of Grounds and Particulars was served on 20 May 2009.
Evidence in Support was completed on 19 November 2010 comprising the following declarations:
Evidence in Answer was completed on 12 September 2011 which comprises a declaration by Neil Holland and Exhibits NWH-1 to 14.
Evidence in Reply was completed on 19 April 2012 which comprises a declaration by Bruce Hardwick and Exhibits BAH-1 to 9.
The hearing was held in Canberra on 15 August 2012. The Applicant was represented by counsel Tom Cordiner on behalf of Davies Collison Cave. The Opponent was represented by Ian Lindsay and Roger Green of Watermark.
Specification
The Application relates to a security device having a microlens array and corresponding microimages which are formed from an anti-reflection structure, a method of manufacturing such a security device and a document incorporating such a security device.

The microimages are formed on one side of a transparent substrate such that they correspond to the microlens array formed on the other side of the substrate. The anti-reflection structure is a “periodic array of identical structural elements”. A reflecting layer is present on the same side of the substrate as the anti-reflection structure; the reflective property of the reflecting layer is reduced by the anti-reflection structure.
The specification ends with 46 claims. Independent claim 1 is considered the claim with the broadest scope is reproduced below:
1. A security device comprising a substrate having an array of microlenses on one side and one or more corresponding arrays of microimages on the other side, the microimages being located at a distance from the microlenses substantially equal to the focal length of the microlenses, the substrate being sufficiently transparent to enable light to pass through the microlenses so as to reach the microimages characterized in that each microimage is defined by an anti-reflection structure on the substrate formed by a periodic array of identical structural elements and an at least partially reflecting layer on the same side of the substrate as the anti-reflection structure, the anti-reflection structure reducing the reflective property of the reflecting layer, wherein one or both of the anti-reflection structure and the at least partially reflecting layer is in the shape of a microimage, whereby light passing through the substrate and impinging on the microimages is reflected to a different extent than light which does not impinge on the microimages thereby rendering the microimages visible.
Features of the claims
For the purposes of the analysis of the claims, I have identified five features in the independent claim 1: (i) An array of microlenses, (ii) a corresponding array of microimages, (iii) an anti-reflection structure on the substrate formed by a (iv) periodic array of identical structural elements, and (v) a partially reflecting layer on the same side of the substrate as the anti-reflection structure.
Construction of terms
Array of microlenses
The term “array of microlenses” is given its plain meaning. An array means a systematic arrangement of objects. A microlens is a lens with a diameter less than 1mm.
Array of microimages
The term ‘microimage’ is given its plain meaning: an image with at least one dimension smaller than 1mm.
Anti-reflection structure
The plain meaning of the term ‘antireflection structure’ is any structure that prevents the reflection of light. It is typically a material’s properties (e.g. its colour) rather than its structure (e.g. whether the surface is rough or smooth) which predominantly determines whether a surface will reflect light. However, the specification provides a different definition; at page 16 lines 20 to 24 the term is defined as follows:
“An anti-reflection structure of the type utilised in the described embodiments of the current invention, is any periodic structure that is finer than the wavelength of light and provides a surface layer in which the refractive index varies gradually from unity to the index of the bulk material, and thereby minimises reflections that are associated with sudden changes in refractive index.”
The Opponent argued at paragraph 27 and 28 of their submissions that:
“If we were to take only the specific definition quoted above, claim 16 of the Application is redundant, as the definition of anti-reflection structure includes the features of claim 16.
Accordingly, “anti-reflection structure” must be the wider definition provided in the claim, of any structure which reduces the reflective property of a reflecting layer.”
Claim 16 is directed to:
“A device according to anyone of the preceding claims, wherein the anti-reflection structure comprises a surface layer in which the refractive index varies gradually from unity to the refractive index of the substrate.”
The Opponent is essentially arguing that a ‘presumption against redundancy’ should be used to construe the term ‘anti-reflection structure’. At the hearing the Applicant argued that the term ‘anti-reflection structure’ should be construed by its plain meaning, i.e. to include any structure that prevents reflection.
The definition provided at page 16 lines 20 to 24 suggests that the term ‘anti-reflection structure’ should be given its special meaning. It is noted that the limitation in this passage that the ‘anti-reflection structure of the type utilised in the described embodiments’ was added by amendment and is thus tempered by the meaning originally provided (as per s 116). Typically, the dictionary definition will be preferred over the plain meaning if the special meaning is clearly expressed in the description (see for example British Thomson-Houston Company Ld. v Corona Lamp Works Ld., (1922) 39 RPC 49 at page 67).
The term ‘anti-reflection structure’ thus has two potential interpretations. On one hand, the plain meaning of the term, both the Applicant’s and Opponent’s opinion of the term and the ‘presumption against redundancy’ are in favour of the broad definition of the term ‘anti-reflection structure’. On the other hand, the ‘dictionary principle’ suggests the term ‘anti-reflection structure’ should be construed narrowly to be limited to a structure with a refractive index gradient.
On balance, I consider the fact that the description contains a dictionary definition of the term ‘anti-reflection structure’ outweighs the arguments in favour of the broader interpretation of this term. Consequently, the term ‘anti-reflection structure’ is construed to be limited to structures that provide a refractive index gradient.
Periodic array
The term ‘periodic array’ is given its plain meaning. The word ‘periodic’ means repeating at equal intervals. The term periodic array means a repeating arrangement of identical structures at equal intervals.
The Opponent suggested two alternative interpretations to the term “periodic array of identical structural elements”. Firstly, they proposed that the anti-reflection structure is formed by a periodic array of structural elements. Secondly, they proposed that the anti-reflection structures (i.e. the microimages) were positioned periodically, thus forming a periodic array.
The claims states “each microimage is defined by an anti-reflection structure on the substrate formed by a periodic array of identical structural elements”, thus it is the structural elements that are positioned periodically, not the microimages. Consequently I consider the claims are only directed to the first interpretation.
Partially reflecting layer
The Opponent argued that the term ‘layer’ can include within its scope a mere ‘surface’.
The Applicant argued (at paragraph 5.11 of the submissions) that the term layer should be construed as follows:
“The word “layer” is relevantly defined in the Macquarie Dictionary as “1. a thickness of some material laid on or spread over a surface; a stratum”. Lest there be any doubt, a “stratum” is relevantly defined in that dictionary as “1. a layer of material, formed either naturally or artificially, often one of a number of parallel layers placed one upon another…”. Nothing in claim 1 or the dependent claims suggests that layer should be taken to mean or include a mere “surface”.”

I concur with the Applicant that a surface alone is not a layer; a layer must have some thickness.
OPPOSITION UNDER SECTION 59
Onus of proof
The onus of proof in opposition proceedings lies with the opponent, who must establish that it is clear that a valid patent cannot be granted (F.Hoffman-La Roche AG v New England Biolabs Inc[2000] FCA 283 at [29], [67]; (2001) 50 IPR 305 at 311 [29], 319 [67]; Commissioner of Patents v Sherman [2008] FCAFC 182 at [18], [22]; (2009) 79 IPR 426 at 430 [18], 432 [22]).
Grounds of opposition
In the submissions the Opponent summarised the grounds of opposition given in the Statement of Grounds and Particulars as follows:
“(i)      Section 18(1)(a): not a manner of manufacture;
(ii)      Section 18(i)(b)(i): lack of novelty;
(iii)      Section 18(1)(b)(ii): lack of inventive step;
(iv)      Section 18(1)(c): lack of utility;
(v) Section 40(2): does not describe the invention fully, including the best method known to the Applicant to perform the invention; and
(vi) Section 40(3): claims not clear or succinct or fairly based on matters described in the specification.”
Novelty [s 18(1)(b)(i)]
A claimed invention is deprived of novelty if it has been given to the public before the priority date, either by prior use of a product or process, or by publication of information that equates to the claimed invention (Justice Bennett in Danisco A/S v Novozymes A/S (No 2) [2011] FCA 282 at [248]; (2011) 91 IPR 209 at [248]). It is well established that the general test for anticipation is the reverse infringement test. The classic formulation of this test is that given by Aickin J in Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19 at [20]; (1977) 137 CLR 228 at 235:
“The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement.”
This test is satisfied if the alleged anticipation discloses all of the essential features of the invention as claimed (Nicaro Holdings Pty Ltd v Martin Engineering Co [1990] FCA 40 at [19]; (1990) 16 IPR 545 at 549). To meet this requirement, the prior art must contain “clear and unmistakable directions” to the claimed invention (Pfizer Overseas Pharmaceuticals v Eli Lilly and Co [2005] FCAFC 224 at [314]; (2006) 68 IPR 1 at 67 [314]). However, if the prior publication contains a direction which is capable of being carried out in a manner which would infringe the patentee’s claim, but would be at least as likely to be carried out in such a way that would not do so, the patentee’s claim will not be anticipated (General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd (1971) 1A IPR 121 at 138). Where a prior publication does not explicitly disclose all of the integers of the claimed invention, it would still deprive the claimed invention of novelty if (i) the skilled reader understands the disclosures of the prior publication to include a missing integer, and (ii) if the document contains a direction to use a process that inevitably or inexorably results in something within the claim (Justice Bennett in Danisco (No 2) [2011] FCA 282 at [248]; (2011) 91 IPR 209 at [248]).
The Opponent argued the following documents anticipate the claimed invention:
·    D1: US 2002/0051866 (Mullen) published 2 May 2002
·    D2: US 2003/0179364 (Steenblik) published 25 September 2003
·    D5: AU 591934 (Becker et al) published 16 April 1984
·    D6: AU 560077 (Hockert) 16 August 1984
D1: US 2002/0051866 (Mullen)
The Opponent submitted that D1 disclosed each of the claimed features as follows: A lens array (paragraphs 5 and 36), an array of microimages (implicitly disclosed from figure 3), an anti-reflection structure (paragraph 26) formed by period array of structural elements (the moth-eye structure), and a partially reflecting layer (lower surface of structure 16).
Lens array and anti-reflective structure comprising a periodic array of identical structures
The Applicant argued that the disclosure of a lens array in D1 was in a different embodiment to the anti-reflective structure of D1, i.e. D1 discloses two distinct ways of forming the images viewable by the viewer.
Embodiment 1 of D1: Embodiment 1 is disclosed at paragraph 49 and figure 3 wherein an image is formed on the moth-eye structure, i.e. an anti‑reflection structure comprising a periodic array of identical structures.
Embodiment 2 of D1: Embodiment 2 is disclosed at paragraphs 34 to 36 and figure 5 wherein the image is formed by a pattern formed on the top of the microlens array.
I concur with the Applicant; there is no embodiment with both microlenses and an anti-reflection structure, and no reason why the different embodiments would be read as a single embodiment.
Microimage
The Applicant argued that neither embodiment of D1 discloses microimages. The first embodiment exemplified in figure 3 comprises an array of prisms and an anti-reflection structure. In this embodiment a curing radiation source (14) irradiates a masking layer (10) shining through the prism array (16) and forming an image on the opposite side of the substrate (12). The Opponent argued that, in the process of the light refracting through the prism array, microimages would be formed on the opposite side of the substrate. Although I accept that the light travelling from the mask layer would be distorted as it is refracted through the prisms, this would not necessarily result in microimages.
In the second embodiment of D1, given in paragraphs 34 to 36 and figure 5, the image is formed by defects on the surface of the microlenses. I do not consider images formed by defects on the surface of the microlenses to be a disclosure of microimages. In summary, I find that neither of the embodiments of D1 discloses microimages.
Partially reflective layer
The Opponent argued at paragraph 57 of their submissions that:
“Since any substance must be “at least partially reflecting”, the lower surface of the structure 16 of Figure 3 forms an “at least partially reflecting layer”. The at least partially reflecting layer is on the same side of the substrate as the antireflection structure, which by definition, reduces the reflective property of the reflecting layer.”
The Opponent’s arguments with regard to the reflective layer can be divided into four component arguments: (a) the items numbered 16 and 18 shown in figure 3 are in fact distinct layers; (b) the interface between items numbered 16 and 18 in figure 3 is reflective; (c) the reflective layer is on the same side of the substrate as the antireflection structure; and (d) the antireflective structure reduces the reflective property of the reflective layer.
Paragraph 49 of D1 is the embodiment of the invention generally described in figure 3. This embodiment describes the device being made of a single material (polycarbonate) with top and bottom surface structures (prisms and moth-eye structure respectively) being cured sequentially. Although it is possible that the sequential curing of top and bottom surfaces results in two distinct layers with a resultant reflective interface, this is not necessarily the case. Overall I am not satisfied that D1 discloses a reflective layer.
Conclusion on novelty with respect to D1
D1 discloses three of the claimed features, however these features reside in two distinct embodiments. The first embodiment has only two of the claimed features – that of the anti-reflection structures comprising a periodic array of structural elements. The second embodiment has only one of the claimed features – that of the microlenses. Consequently D1 does not anticipate the claimed invention.
D2: US2003/0179364 (Steenblik)
The Opponent argued that D2 disclosed each of the claimed features as follows: A microlens array (35), an array of microimages (patterned zones 33 and 34), an anti-reflection structure (67) formed by period array of structural elements (“a field of cones or other geometric patterns in the substrate 68 which have the function of ‘capturing’ incident light” – paragraph 87), and a partially reflecting layer (metallic layer 68).
Microimages and lens array
The Applicant argued at paragraph 6.12 of their submissions:
“In D2, the image elements are not defined by the anti-reflection structure (33, 34) but instead by image elements (41-43) as explained in paragraph 0077. As paragraph 0077 goes on to explain, those elements can be placed “either above the focusing optics 31 as shown in FIG. 1, in between the focusing optics 31 and the light control optics 32, or below the light control optics 32.” That is, the light control optics do not comprise microimages but instead control light.”
In my opinion D2 discloses image elements above and below the microlens array. That the image elements are present in more than one location does not obviate the fact that there are indeed microimages corresponding to the lens array as claimed. In D2, the microimages are simply vertical lines which are magnified by, and thus correspond to, the lenses. I find the feature of a lens array with corresponding microimages to be disclosed in D2.
Anti-reflective structure
I have construed the term ‘anti-reflective structure’ to be limited to structures that provide a refractive index gradient. D2 discloses the microimages made by ‘light traps’.
The mechanism by which the light traps act to prevent reflection is given at paragraphs 95 and 156 of D2:
“In their preferred form the cones in the dark zones have an aspect ratio of their height being 4 times their width or greater. In this manner light entering the dark zones does not reflect back out of the dark zones.
…
Each time light which enters the micro-optics containing tapered shapes describe herein is reflected, approximately 10% of the light may be absorbed. Due to the shape of the structures, light is reflected many times before there is a chance for the light to be reflected back out of the light trap. Since approximately 10% of the light may be absorbed each time the light is incident upon the structures, virtually all of the light that enters the light trap is absorbed. FIG. 32 illustrates how the light trap works. As light 170 enters the light trap, it is reflected by the tapered structures 169 until all of the light has been absorbed. Approximately 40% of the light may be absorbed on initial impact. Therefore, it takes very few reflections before substantially all of the light has been absorbed.”

The ‘light traps’ thus operate on a different principle to the refractive index gradient used by the anti-reflection structure claimed. Consequently I consider that D2 does not disclose the anti-reflection structure as claimed.
Periodic array of identical structural elements
The shape of the light trap is described at paragraph 87 as a “field of cones or other geometric patterns in the substrate 68 which have the function of ‘capturing’ incident light”. The Opponent argued that the term “field” implies some sort of periodicity. However, I note that the method of manufacturing the ‘field of cones’ is with reactive ion etching (see paragraph 102 of D2) which necessarily produces an irregular pattern of non-identical structural elements. I consider the feature of a periodic array of identical structural elements is not disclosed in D2.
Partially reflective layer
D2 discloses at paragraph 86:
“In one preferred embodiment, the dark zones 34 are formed by applying an opaque material 67 onto those areas of a reflective surface 68 that are to absorb incident light. The opaque material 67 preferably comprises pigmented ink, but any light absorbing optical structure or light dispersing optical structure can also be used.
…
A preferred layer 68 consists of a layer of highly reflective metal, preferably aluminium.”
I am satisfied that the reflective layer 68 of D2 anticipates the at least partially reflective layer of the claimed invention.
Conclusion of novelty with respect to D2
D2 lacks two of the five essential features of the claims – that of an anti-reflection structure and the periodic array of identical structures. Consequently D2 does not disclose the claimed invention.
D5: AU 591934 (Becker et al) and D6: AU 560077 (Hockert)
The Opponent argued that if the second interpretation of “periodic array of identical structures” were adopted, i.e. that a periodic array of images constitutes a periodic array of identical structures, then each of D5 and D6 disclosed the claimed invention. As I have indicated above, I have adopted the first interpretation of a “periodic array of structures” and so D5 and D6 do not disclose this feature. Furthermore D5 and D6 do not disclose an antireflective structure. Consequently D5 and D6 lack at least two claimed features and thus neither D5 nor D6 discloses the claimed invention.
Inventive step [s 18(1)(b)(ii)]
The relevant portions of Section 7 state:
(2) For the purposes of this Act, an invention is to be taken to involve an inventive step when compared with the prior art base unless the invention would have been obvious to a person skilled in the relevant art in the light of the common general knowledge as it existed in the patent area before the priority date of the relevant claim, whether that knowledge is considered separately or together with the information mentioned in subsection (3).
(3) The information for the purposes of subsection (2) is:
...
being information that the skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood, regarded as relevant ...
The test for obviousness is whether it would have been a matter of routine to proceed to the claimed invention. In Wellcome Foundation Ltd v V.R. Laboratories (Aust.) Pty Ltd [1981] HCA 12 Justice Aickin stated:
“The test is whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not.”
Prior Art
In the hearing the Opponent argued that the claimed invention lacks an inventive step in light of any of the documents D1, D2, D5 or D6 when considered together with common general knowledge.
Person skilled in the art
The Opponent states at paragraph 35 of their submissions:
“…[T]he skilled addressee must be a person who understands the development and construction of security devices having microimages and microlenses.”
The Applicant was in general agreement about the skills possessed by the person skilled in the art. I consider this to be a reasonable understanding of the skills possessed by a person skilled in the art.
The Problem
The Opponent states at paragraph 33:
“Problems identified in the background to the application include: the thickness of lenticular devices restrict their use on flexible security documents (pg 2, lines 9-22); creating microimages at a sufficiently small scale for a flexible device (pg 4, lines 15 – 19); the exact structure of light traps created by reactive ion etching cannot be specified and is not reproducible which could lead to variability in the final image (page 5, lines 8 to 10); and creating high resolution images with high contrast that can be replicated with high fidelity in a commercially cost effective process (pg 5, lines 25 – 27).”
I consider that Opponent’s statement accurately reflects the problems which the present invention sought to overcome. In summary, the problem the present invention sought to overcome was reducing the thickness of lenticular devices by using a printing method that is more reproducible and provides for better resolution, contrast and fidelity that conventional methods such as gravure, lithography and intaglio.
Ascertained, understood, regarded as relevant
I will now consider whether the person skilled in the art could have been reasonably expected to have ascertained, understood, regarded as relevant each of the prior art documents D1, D2, D5 and D6 as required by s 7(3).
One of the experts, Neil Holland states at paragraph 33 of his declaration:
“Although I had conducted patent searches in the past relevant to various case assignments, the most recent search I had conducted was many years before the priority date, and at the priority date I would not have known how to conduct a patent search. Accordingly, and in view of the resources described above, I consider it unlikely that I would have personally conducted a search for relevant patents.”
Bruce Hardwick states at paragraph 43 of his declaration:
“I am firmly of the opinion that a skilled person working to develop security devices in the security document industry in Australia would have considered a patent search. They may not have done it themselves and may have, for example, approached a firm of patent attorneys to perform the search, but they would have at least considered the body of knowledge in patent documents.”
I consider that security document technology to be relatively ‘high tech’, thus requiring a person skilled in the art to have good research skills. Even if a person with skill in the art was unable to perform prior art searching in patent databases by themselves (such as Mr Holland), it is reasonable to expect the person to seek help – from a patent attorney or other specialist researcher – as suggested by Mr Hardwick. Overall I am satisfied that a person skilled in the art would have searched the patent databases (by themselves or with help from others) for pre-existing solutions to the problems that the person skilled in the art faced in this case.
Having performed a search for prior art relating to lens arrays with corresponding high resolution and high contrast printing techniques, a person skilled in the art could be reasonably expected to find documents D1, D2, D5 and D6, since they all relate to this field of technology. These documents are expressed clearly and relate to the same technology as the identified problem, and thus would be reasonably expected to be understood and regarded as relevant by a person skilled in the art.
Obviousness
I have determined that prior art documents D1, D2, D5 and D6 would have been ascertained, understood and regarded as relevant by a person skilled in the art. I must now determine whether the claimed invention would be considered a matter of routine to a person skilled in the art.
D1: US 2002/0051866 (Mullen)
I found in the novelty analysis above that D1 discloses two different embodiments. One embodiment also has only two of the claimed features – that of the antireflection structures and the periodic array of structural elements. The other has only one of the five features claimed – that of the microlenses. Neither of the embodiments of D1 has a partially reflective layer or microimages.
The Opponent’s submissions about inventive step are made on the assumption that four of the five claimed features were disclosed in D1, with the only feature missing being the partially reflective layer. However, I have found that only three of the five claimed features are disclosed in D1, and even then these three features are divided between two different embodiments.
The Opponent made no submissions on why the features from two different embodiments could be read together as a single invention, or as to why a person skilled in the art would obviously ‘mosaic’ the two disclosures together. Furthermore, I can see no reason why a person skilled in the art would find it obvious to combine the embodiments since each embodiment achieves the result of an optical effect through two very different mechanisms.
Whether or not a person would add a partially reflective layer and include microimages to either or both of the inventions disclosed in D1 is moot, since it would still not result in a device with all the claimed features. Consequently the claimed invention does not lack an inventive step in light of D1.
D2: US2003/0179364 (Steenblik)
I have found in the novelty analysis that D2 does not disclose an anti-reflection structure or a periodic array of structural elements. The question is whether a person skilled in the art would, as a matter of routine, modify the teaching of D2 to include an anti-reflection structure and a periodic array of structural elements.
Paragraph 102 of D2 states:
“The dark zones 34 are preferably comprised of a field of tapered elements. The tapered elements are formed by using reactive ion etching with oxygen as the reactive gas to create a non-uniform etch in a photopolymer. The result is a light trap comprised of stalagtite shaped structures which have large height-to-width ratios.”
At the hearing the Opponent argued that it would be a matter of routine for a person skilled in the art in possession of D2 to substitute the reactive ion etching process with another process such as UV embossing to produce a regular array of identical structural elements. The Opponent argued (at paragraphs 99 and 100 of their submissions) that the person skilled in the art would be motivated to make such a change for the two reasons of reproducibility and contrast:
“An issue with the light traps of the prior art is lack of reproducibility and contrast, due to the reactive ion etching process that creates them and the high aspect ratio, which is difficult to recreate in polymeric film.
The problem is, therefore, to provide an alternative light trap / anti-reflection structure for the microimages of a microlens security device, which does not suffer from on [sic] or more of the issues surrounding light traps created by reactive ion etching.”
The Opponent argued at paragraph 102 of their submissions that the knowledge needed to create the invention was available before the priority date:
“Mr Hutley, who is specifically referenced in the background to the Application due to his article “The moire magnifier”, is clearly as [sic] person who is well versed in the area of the invention. Moreover, Dr Hardwick provides evidence that he would, if asked about a problem with a microlens based security device, would consider contacting Mr Hutley. Mr Hutley’s evidence is that, in 2003, he was well versed in anti-reflection structures and “moth-eye” structures, in particular. Moreover, Dr Hardwick himself was aware of anti-reflection structures before the priority date and, when he had a chance to view claim 1, recalled the mention of anti-reflection structures in “Optical Document Security” by van Renesse. In addition, Dr Hardwick would have considered approaching CSIRO to gather further information on anti-reflection structures, which shows that Mr Hedegus’ evidence that moth eye structures were well known prior to 2001 is also relevant.”
These submissions only go so far as to establish the commonly understood feature of anti‑reflection or “moth-eye structures” were known before the priority date. There is far less information about the crucial feature of the invention – using an anti-reflection structure as a light absorber. Addressing this point the expert opinion of Neil William Holland stated at paragraph 52:
“Although I was generally aware of anti-reflection coatings at the priority date, my awareness was of their use in relation to televisions and computer monitors. I was also aware of anti-reflection coatings for conventional (medium- to large scale) optical lenses. I was not aware of any suggestion that anti-reflection coatings could be used to enhance microimage resolution to facilitate the use of a combination of microimages and microarrays on documents to be secured. I have not seen any suggestion or hint of this as an area of research or investigation in any of the materials to which I would have referred (including the proceedings of the SPI papers and the Van Renesse books).”
Although Mr Holland was unaware of the use of anti-reflection coatings to enhance microimage resolution, it appears that this was publicly disclosed before the priority date. The description states at page 8:
“Although the substrate and anti-reflection structure alone could generate the required microimages in some cases, in preferred embodiments the present invention utilizes the fact that periodic anti-reflection structures appear black when metallised. This was described in "Artificial Media Optical Properties - Subwavelength Scale" published in the Encyclopaedia of Optical Engineering (ISBN 0-8247-4258-3), 09/09/2003, pages 62-71. This property enables the creation of high-resolution images using conventional replication and metallising technologies.”
Thus using metallised anti-reflection structures (i.e. antireflection structures coated in a layer of reflective material) was known as a means of creating light absorbing structures (from the above quoted passage from page 8), however it does not necessarily follow that it would be a matter of routine to substitute metallised anti-reflection structures for the ‘light trap’ microimages disclosed in D2.
Periodic anti-reflection structures are formed by a different process to forming light traps; UV embossing and reactive ion etching respectively. The Opponent argued at the hearing that a person skilled in the art would readily substitute UV embossing for the reactive ion etching process disclosed in D2 and would consequently arrive at the claimed invention as a matter of routine, however there was no evidence to support this assertion. The lack of evidence about the crucial point of the inventive step argument – why the person skilled in the art would be motivated to substitute an anti-reflection structure comprising a periodic array of identical structures for the light trap disclosed in D2 – makes an inventive step argument on this basis difficult to sustain.
Overall I am not satisfied that a person skilled in the art would as a matter of routine modify the disclosure of D2 such that it fell within the scope of the claimed invention. The claimed invention does not lack an inventive step in light of D2.
D5: AU 591934 (Becker et al) and D6: AU 560077 (Hockert)
I have found in the novelty analysis that each of D5 and D6 do not disclose an anti-refelction structure comprising a periodic array of identical structures.
The Opponent provided no reasons why D5 or D6 would be modified by a person skilled in the art to utilise anti-reflection structure formed from a periodic array of structural elements instead of the darkened areas disclosed in D5 and D6. I am not satisfied that the person skilled in the art would modify the disclosure of D5 or D6 as a matter of routine to arrive at the claimed invention. Consequently the claimed invention does not lack an invention step in light of D5 or D6.
Clarity [s 40(3)]
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). I note that in the construction of the claims I have found no ambiguity or uncertainty of terms. Furthermore, none of the experts who provided evidence found any difficulty with the terminology used in the claims.
The Opponent argued at paragraphs 136 and 137 of their submissions:
“In the event that the term “anti-reflection structure” is not given a broad definition, as discussed in paragraphs 23 to 28 above, the term is not clear and, therefore the claims lack clarity.
Particularly, it is not clear what parameters applied to the periodic structure are sufficient to provide an anti-reflection structure. On one hand, the periodic structure requires to be “finer than the wavelength of light” but in another, should be “sub-micron”. Furthermore, if a narrower interpretation is given, the definition provided on page 16 also requires that the “refractive index varies gradually from unity to the index of the bulk material”. Yet, claim 16 also defines these features, which suggests that the actual definition is broader. Accordingly, the term “anti-reflection” structure is unclear.”
I have found that the term ‘anti-reflection structure’ is defined with reference to the ‘dictionary definition’ found at page 16 lines 20 to 24 of the description. Although this definition may make a dependent claim redundant, this does not affect the clarity of the claims – each claim is clear.
The definition of ‘anti-reflection structure’ imports the feature of the structures being “finer than the wavelength of light”. I find this aspect of the claims to be clear. The fact that the description uses the term ‘sub-micron’ to describe the anti-reflection structure does not alter the clarity of the claims. Furthermore, I consider terms “finer than the wavelength of light” and “sub-micron” to be entirely consistent, since the light spectrum extends beyond the visible range of 700nm up to (and beyond) 1µm. I therefore find all claims to be clear, thus satisfying the clarity requirement of s 40(3).
Usefulness [18(1)(c)]
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.”
The claims will lack utility if something that falls within the scope of the claims can be shown to not be useful.
It is noted that no evidence or particulars were made with regard to the usefulness of the invention. However, the Opponent made submissions that since the claims include within their scope “sub-micron” anti‑reflection structures which could operate outside the visible spectrum, i.e. 750nm to 1µm, a potential embodiment of the invention lacks utility. I am not persuaded by this argument for two reasons. Firstly, the Opponent has not shown that a structure falling within the scope of the claims could have anti-reflection properties only outside the range of visible light. Secondly, even if the anti-reflection structure was only functional outside the visible spectrum, I can see no reason why it would not still be considered a security device as claimed. For example, if light outside the visible spectrum were used, the security features would still presumably perform their desired function with the appropriate equipment, e.g. infra-red camera. Consequently I am not satisfied that the claimed invention is not useful.
Fair basis [s 40(3)]
The Opponent argued at paragraphs 131 and 132 of their submissions:
“It is apparent from the specification that the invention is primarily directed to the provision of an improved moiré magnifier. This can be seen from the statements at page 6A, lines 6-7: “[a] new security device is disclosed which combines a microlens and microimage array” and page 7, lines 5-7: “[t]he optically variable device is based on the interaction between an analysing array of microlenses and a corresponding set of identical microimages, as described in US 5712731”. At page 9, lines 1-5 the incorporation of demetallised indicia is described as a further improvement in the anti-counterfeit nature of the device (a thin moiré magnifier – page 9, line 4).
There is no feature in any claim which defines the working relationship between the microlenses and the microimages, nor is it specified in any claim that the microimages are identical or substantially identical. Claims 1-46 are therefore inconsistent with the invention described in the specification and, therefore, do not define the invention as well as lacking lack fair basis.”

The Applicant’s submissions respond to these argument as follows:
“First, the relationship between the array of microimages and array of microlenses is clear – they must “correspond”. Secondly, it need not be claimed that the microimages are identical or substantially identical – an embodiment describing non-identical micro images is described on page 35 of the specification under the heading “image morphing” in particular at lines 31-33.”
I concur with the Applicant and consider the verb ‘corresponding’ does indeed provide a working relationship between the microlens and the microimages. In light of the “image morphing” embodiment disclosed in the description I consider that the application is not limited to moiré magnifiers and thus this ground of opposition is obviated. Consequently I am not satisfied that the claims lack fair basis.
Manner of manufacture [s 18(1)(a)]
Section 18(1)(a) of the Act imports the newness threshold requirement of manner of manufacture from the previous Act; see NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd [1995] HCA 15; (1995) 32 IPR 449.
The Particulars with regard to this ground are as follows:
“The invention as claimed in any claim is a mere collocation of known integers. The combination of a microlens array and a microimage array to produce a magnified image is well-known, as are the anti-reflective properties of periodic sub-wavelength structures. Combining these integers does not result in a new working inter-relationship, nor does it produce any unexpected result.
The specification and claims do not on their face disclose a manner of manufacture. All of the features were known at the priority date and what is claimed is at best an arbitrary selection.”
The specification acknowledges each of the features are known in the art, though not necessarily well known. However, the specification does not suggest that the combination of these features is known. The invention resides not merely in the individual features themselves, but in how those features are combined and interrelate. I have found that the combination of the features, and the interrelationship between the features, results in a novel, inventive and useful result and thus it follows that the invention satisfies the newness threshold requirement implicit in s 18(1)(a).
Conclusion
The Opponent has opposed the application on the grounds of novelty, inventive step, clarity, usefulness, fair basis, and manner of manufacture. I have not found any of the claims to be invalid on any of these grounds. Consequently the opposition fails on all grounds.
Costs
The Opponent has been unsuccessful on all grounds. Accordingly I award costs in accordance with Schedule 8 of the Patents Regulations 1991 against the Opponent, Securency International Pty Ltd.
Xavier Gisz
Delegate of the Commissioner of Patents