A Couple 'a Cowboys Pty Ltd v Antony John Fowler Ward

[1995] APO 12

official notice

decision of a delegate of the commissioner of patents

Application        :   No. 635879 in the name of A COUPLE 'A COWBOYS PTY LTD

Title:   Interactive Board-Video Game

Action: Opposition under section 59 (Patents Act 1990) by ANTONY JOHN FOWLER WARD.

Decision:   Issued            .

Abstract:   Invention is a board game played concurrently with (eg) a video tape which changes game rules periodically. Some evidence, for which leave to serve as further evidence had previously been refused, served as evidence-in-reply. Not admissible.  Objection to arguing fair basis on provisional since not given as a particular.  Allowed, as necessary preliminary to deciding novelty.  Found fairly based; examples of rule changes the same; principles to be applied.  Claims novel and inventive. Invention not in nature of printed ticket as no new arrangement of information and no mechanical purpose. Invention not patentable combination as no interaction among integers, and also not in useful arts producing something of economic value.  Invention claimed not for a manner of manufacture.  Minor section 40 defects.  Opportunity to amend.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No. 635879 by A COUPLE 'A COWBOYS PTY LTD and opposition thereto under section 59 of the Patents Act 1990 by ANTONY JOHN FOWLER WARD.

background

Patent application 635879 (the application) was filed on 17 June 1992 by A COUPLE 'A COWBOYS PTY LTD (the applicant) under the provisions of the Patent Cooperation Treaty as PCT/AU92/00291, claiming priority from Australian provisional application PK8062, which was filed on 30 August 1991.  The application was advertised accepted on 1 April 1993.

On 1 July 1993 a notice of opposition was served by ANTONY JOHN FOWLER WARD (the opponent), followed by a Statement of Grounds and Particulars (the Statement) on 1 October 1993.

On 26 October the applicant made an application to obtain further and better particulars, however this was withdrawn on 5 January 1994.  After an unopposed extension of time, the evidence-in- support was completed on 27 February 1994.

Before completion of the evidence-in-answer, the opponent made an application to serve further evidence and to correspondingly amend the Statement.  After a hearing, the delegate refused both applications; the amendment proposed to the Statement (he found) would be unduly prejudicial to the applicant, and the further evidence would not then relate to any of the existing particulars.

After an unopposed extension of time, service of the evidence-in-answer was completed on 28 June 1994, and of the evidence-in-reply on 28 September 1994.  The matter was heard in Canberra on 8 December 1994.

The applicant was represented at the hearing by Mr G McGowan of Counsel and Mr R Waters, patent attorney, of Phillips Ormonde & Fitzpatrick.  The opponent was represented by Mr D Catterns of Counsel, and Mr J Rodwell, solicitor, of Baker & McKenzie.

The grounds set out in the Statement which are to be relied on are sections 18(1)(a), 18(1)(b), 40(2), and 40(3), Patents Act 1990. That is, manner of manufacture, novelty, inventiveness, best method, definition, clarity, and fair basis.

THE SPECIFICATION

The invention is relatively simple, and can be understood from the following extracts selected from the specification.

"The invention lies in the field of board games. Some games of this type are Snakes and Ladders in which the object is to be the first player to reach a designated destination on the board, or Monopoly (registered trade mark) in which the object is to collect items while sequentially moving a playing piece from station to station on the board. In the latter type of game, some stations may reward a player whose playing piece lands at that station, other stations may offer a penalty or enable another player to grant a reward or impose a penalty.

The present invention provides a game for at least one player. The game has a set of game rules and comprises:
a playing surface having a multiplicity of stations indicated thereon so as to form a playing path;
at least one playing piece provided with identifying means adapted to distinguish it from other playing pieces, said playing piece being sequentially movable from station to station along the playing path in accordance with the set of game rules; and
scheduling means whereby the set of game rules is periodically altered at predetermined times during the course of the game.

Preferably, the playing surface is in the form of a board, and the scheduling means is a video-tape. Optionally, the game may comprise further elements such as cards, dice, coins and the like."
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"Alterations to the set of game rules by the scheduling means may include rewards or penalties for particular players. Players are selected for reward or penalty by the scheduling means at predetermined times after commencment of the game. The scheduling means may select players for reward or penalty by redesignating the game effect of a particular type of station on the board at a particular time. Thus, the game effect of a station which normally imposes a penalty upon players whose playing pieces land on that station under the set of game rules may be negated at predetermined times by the scheduling means altering the set of game rules. Alternatively, a station which provides a reward for players whose playing piece is positioned thereon may be redesignated as a penalty station at a predetermined time.

Rewards in the game may consist of free turns, collectable elements, improved status, or negation of previously applied penalties. Improved status means that the player with this status has some advantage under the set of game rules in relation to other players. Penalties may consist of missed turns, loss of collectable elements or loss of improved status. Rewards or penalties may be awarded or imposed simply on the basis that a player has been selected, or the selected player may have to pass a test to obtain the reward or fail a test to incur the penalty."
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"In a preferred embodiment of the invention, the scheduling means comprises an imaging and/or audio storage means, such as a record, compact disc, tape cassette or video tape. Most preferably, a video tape is used. The video tape or other storage means is played throughout the course of the game and depending upon the information recorded thereon directly effects (sic) the play of the game in the various ways previously described at predetermined time intervals."
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"In a particularly preferred embodiment of the invention, the scheduling means comprises a video-tape having recorded thereon a time signal. The time signal may take the form of a visual digital display, which indicates elapsed time in minutes and seconds since commencement of the game. At predetermined times, the set of game rules is altered by spoken and/or visual cues recorded on the video-tape."

The specification concludes with nine claims, as follows:

"1. A game having a set of game rules, said game comprising:
a playing surface having a multiplicity of stations indicated thereon so as to form a playing path;
at least one playing piece provided with identifying means adapted to distinguish it from other playing pieces, said playing piece being sequentially movable from station to station along the playing path in accordance with the set of game rules; and
scheduling means whereby the set of game rules is periodically altered during the course of the game, wherein the scheduling means comprises imaging and/or audio storage means.

2. A game according to claim 1 wherein the scheduling means alters the set of game rules so that the effect of placing a playing piece at a predetermined station is changed.

3. A game according to either one of claims 1 or 2 wherein the scheduling means includes a time signal relating to the time elapsed since commencing play.

4. A game according to claim 3 wherein during the course of the game, players collect collectable elements in accordance with the set of game rules, said collectable elements being individually marked with various times elapsed since commencing play, each said collectable element having a predetermined effect on the course of the game according to the set of game rules, such that a player may initiate an effect when in possession of a collectable element at the time when the time signal corresponds to the time marked on the collectable element.

5. A game according to any one of claims 1 to 4, wherein each playing piece is provided with primary and secondary identifying means, the secondary identifying means being changeable independently of the primary identifying means.

6. A game according to any one of claims 1 to 5 wherein the imaging and/or audio storage means comprises a video-tape.

7. A game according to any one of claims 1 to 6 wherein according to the set of game rules, one or more stations allow a player whose playing piece lands thereon to deactivate the scheduling means, thereby winning the game.

8. A method of affecting the progress of at least one playing piece on a playing surface having stations indicated thereon to form a playing path, comprising;
(a) placing a playing piece at a station on the playing surface. (sic)
(b) sequentially manually moving the playing piece from station to station in accordance with a set of game rules;
(c) interrupting step (b) at predetermined times by scheduling means comprising imaging and/or audio storage means, which alter the set of game rules during a single move or sequence of moves of the playing piece; and
(d) manually moving the playing piece from station to station on the playing path in accordance with the altered set of game rules.

9. A game kit when used for carrying out the method of claim 8, comprising a playing surface in the form of a board, a set of game rules, at least one playing piece and scheduling means in the form of a pre-recorded video tape."

EVIDENCE

All declarations served in evidence are statutory.  The evidence-in-support consists of:

1. A first declaration by the opponent Ward, with exhibits AJFW-1 to AJFW-14, being mainly patent specifications relating to prior board games.

2. A declaration by Warren L Holland, with exhibits WLH-1 to WLH-3.  The declarant is the President of a games manufacturer located in the United States, and the exhibits relate to a number of games commercially available in the US before the priority date.

The evidence-in-answer consists of:

3. A declaration by Brett Clements, Director of the applicant company and inventor of the present invention.

4. A declaration by Richard Potter, Secretary of the company responsible for the distribution of the games known as Nightmare and Rap Rat, with some particulars of these games.

5. A declaration by Stewart Wayne Robertson, a person with extensive experience in the toy and game industry, with exhibits SWR-1 to SWR-3, mainly responsive to the declaration by Ward.

The evidence in reply consists of:

6. A declaration by David Charles Peattie, also a person with extensive experience in the toy and game industry, with annexures A to D, which go to the sales and exhibition at a toy fair of some prior games.

7. A second declaration by the opponent Ward, with exhibits AJFW-15 to AJFW-19, being description of some prior games.

8. A declaration by George Allegos, businessman, with annexures A to C, relating to the prior sales demonstration, offer for sale, and delivery for retail sale, of the game Nightmare.

9. A declaration by David Graham Payne, a manager employed by a retail chain, with annexures A and B, also concerning the prior delivery for retail sale of Nightmare.

In fact the declarations by Allegos and Payne are copies of the declarations which made up the further evidence which the opponent had earlier sought leave to serve, and which the delegate in that matter refused.

Unsurprisingly, this led to some preliminary issues being raised at the hearing.

Preliminaries

Mr McGowan for the applicant objected to the admissibility of some of the evidence-in-reply as being not strictly evidence-in-reply, requested an immediate ruling, failing which that the hearing be adjourned so that the evidence could be responded to.

Objection was taken to the whole of the Allegos and Payne declarations, paragraphs 5, 7-11, and 13 of the second Ward declaration, and paragraph 7 of the Peattie declaration.

Mr Catterns for the opponent agreed that evidence not in reply was not admissible, and that paragraph 7 of Peattie was not in reply.

In the event, and after some discussion, I declined either to make an immediate ruling or to adjourn the hearing, which proceeded on the basis that I would hear submissions from both sides on all matters.  I would make an early decision on the admissibility of the material objected to, with reasons to be provided in my full decision.  If I decided that the material was admissible, the applicant would be given an opportunity to respond to it before I made a full decision, though this may have to be by way of an application to serve further evidence.  This would apply basically to the Allegos and Payne declarations, with which the applicant was most concerned.  On the other hand, if I decided that the evidence was not admissible, I would pay no further regard to it, though it could be considered in a later bar-to-sealing action.

I decided that the Allegos and Payne declarations, paragraph 7 of Peattie, and paragraphs 5 and 10 of Ward are not evidence-in-reply and are not admissible.  I admitted paragraphs 7,8,9,11 and 13 of Ward, and the parties were advised accordingly on 22 December 1994.

Reasons

Both the Allegos and Payne declarations are dated earlier than the service of any of the evidence-in-answer, and prima facie, could hardly be considered to be evidence-in-reply for that reason.  Perhaps however it could be regarded as evidence-in-reply if, albeit fortuitously, matters are addressed which are raised in the evidence-in-answer.  Thus the Ward declaration (evidence-in-reply) states in paragraph 5 (which is also objected to) that the Allegos and Payne declarations are in reply to the statement in the Potter declaration (evidence-in-answer) that reads:

"The 'NIGHTMARE' game was first retailed in September 1991."

But it seems to me that this statement is probably correct, and the declarations in dispute do not show it to be incorrect.  In its relevant parts Allegos shows that the game was supplied to a toy wholesaler on 9 September 1991, and Payne shows that it was supplied to a large retail store (Target) on 29 August 1991, in which it is unlikely to have been available for retail until some time next month, ie September 1991.  Therefore Allegos and Payne are not inconsistent with Potter's statement, they cannot then be evidence-in-reply to Potter, and consequently they are not admissible.

Even if these declarations were admissible they may not establish the opponent's case, as it seems questionable whether the evidence in total shows that the game which was supplied was necessarily a game with the features of claim 1.  However I do not need to consider this.

As to the other material objected to, paragraph 5 of Ward refers to the Allegos and Payne declarations, and if they are not admissible, then neither is this.

It was conceded that paragraph 7 of Peattie is not admissible.

Paragraph 10 of Ward introduces a game not mentioned in the evidence-in-answer, or elsewhere, and is clearly not evidence-in-reply.

I was prepared to admit paragraphs 7,8,9,11 and 13 of Ward as being further references to items considered in the evidence-in-answer.

SUBMISSIONS

Substantial submissions were made to all grounds raised in the Statement, and because of their extent, I will include them as part of my decision, under appropriate headings as follows.

DECISION

Fair Basis on the Provisional

Mr McGowan first queried whether this issue could be considered at all, as it is not mentioned in the Statement.  Mr Catterns replied that the real issue is one of novelty, and "publication by sale of the applicant's game 'Nightmare' before 17 June 1992" (particular (y) under section 18(1)(b)(i)), since if the claims are not fairly based on the provisional application, then it is admitted that the invention claimed was published before the latest priority date.  Therefore it is a necessary preliminary in deciding on novelty to establish the true priority date, which in this case means, is claim 1 fairly based on the provisional?

In a serious opposition there is clearly a public interest in all matters being brought in (Kaiser Aluminium & Chemical Corp v The Reynolds Metal Co (1969) 120 CLR 136), and I am not inclined to rule out something of importance on too strict a reading of the Grounds and Particulars.

In making a decision I have had the benefit of further written submissions, received since the hearing.  I note that the applicant complains, inter alia, that the particular (given above) relating to the alleged prior sale of Nightmare, is inadequate in its details.  This was the subject of an earlier office decision, though I would have thought that a response could have been found from company records without great difficulty.

In any event, all things considered, I believe that the question of fair basis on the provisional is an issue that can be addressed, and I now turn to it.

The question comes about because of the different ways in which the scheduling/programming means is defined in the claim, and described (in part) in the provisional.

In the provisional it is described most specifically in the following terms:

"...programming means whereby specific events are initiated at predetermined times during the course of the game, according to the rules of the game."

In claim 1 it is defined as follows:

"...scheduling means whereby the set of game rules is periodically altered at predetermined times during the course of the game..."

No particular importance was attached to the "programming" means becoming "scheduling" means; the issue was the initiation of "specific events...according to the rules of the game", compared with alteration of the "set of game rules".  Considered alone, there is some merit in the attack on fair basis, since while the specific event which is initiated could be an alteration to the game rules, it could equally have nothing to do with the game rules at all.  For example, it could be that after a predetermined period players are instructed to take a coffee-break.  It seems to me that this would be a specific event initiated at a predetermined time in accordance with the game rules.  But that is to confine oneself to reading only this one passage of the provisional.  If it is read as a whole, as it should be, it can be seen that the more detailed description closely corresponds with that of the complete (I note that there was also an attack directed at fair basis on the complete which I will deal with later).

Thus the actual examples given in the provisional of "specific events" amount to changes in the rules of the game, and appear in almost identical words in both specifications, complete with "effect" when "affect" was intended.

Hence the provisional says at page 3 lines 9-21:

"The specific events initiated by the programming means may also include rewards or penalties for particular players. Players are selected for reward or penalty by the programming means at predetermined times after commencement of the game. The programming means selects players for reward or penalty by redesignating the game effect of a particular type of station on the board at a particular time. Thus, the game effect of a station which normally imposes a penalty upon players whose playing pieces land on that station may be negated at predetermined times by the programming means, or a station which provides a reward for players whose playing piece thereon (sic) may be redesignated as a penalty square at a predetermined time."

And the complete at page 2 line 34 to page 3 line 10:

"Alterations to the set of game rules by the scheduling means may include rewards or penalties for particular players. Players are selected for reward or penalty by the scheduling means at predetermined times after commencement of the game. The scheduling means may select players for reward or penalty by redesignating the game effect of a particular type of station on the board at a particular time. Thus, the game effect of a station which normally imposes a penalty upon players whose playing pieces land on that station under the set of game rules may be negated at predetermined times by the scheduling means altering the set of game rules. Alternatively, a station which provides a reward for players whose playing piece is positioned thereon may be redesignated as a penalty station at a predetermined time."

In my opinion the circumstances in this case substantially satisfy the three tests set out in Re Mond NickelCo Ltd's Application [1956] RPC 189 at 194, and I note that the test relating to "inconsistency" received some critical comment from the Full Bench in CCOM Pty Ltd v Jiejing Pty Ltd 122 ALR 417 at 436.

In reciting from this judgement, Gummow J in Sartas No1 Pty Ltd v Koukourou & Partners Pty Ltd and Nicola Leonardis (2 December 1994, unreported) says at page 38:

"the answer to an issue of "fair basing" is not resolved by application of an over meticulous verbal analysis; thus, where the issue concerns a provisional specification, the fundamental question is whether there has been a real and reasonably clear disclosure so that the claim was "plainly foreshadowed" by the disclosure relied upon;"

and at page 39:

"some generality of expression in the provisional application is accepted..."

I think that is the case here.  The claimed alteration of game rules is narrower than the statement in the provisional regarding the initiation of specific events, and in my opinion is a more accurate expression for what is broadly disclosed in the provisional as a whole.  If the invention was claimed in the terms set out in this passage in the provisional it would probably be objectionable under section 40.

Accordingly, I consider that claim 1 is fairly based on the provisional and is entitled to the earlier priority date.

In the event of this finding, Mr Catterns had some section 40 issues to raise, which I will deal with under that heading.

Novelty

The only particulars relied on at the hearing were a GB patent specification (GB 2155796), two US patents (US 4572513 and 5011156), and three commercial games (Carmen Sandiego, America's Funniest Home Videos, and Let's Go To The Races), described by advertising material and instructions for play.

There is no evidence that these games or the documentation were published in Australia, and there was some discussion about whether, as a consequence, they were part of the "prior art base" for the purpose of section 7(1).  It appears to me that they are covered by item (a)(iii) via (b)(i) of the definition of "prior art base" in Schedule 1 of the Act.

The test for want of novelty is the "reverse infringement test", and the question is, does a single piece of the prior art (section 7(1)(b) is not an issue here) disclose "each and every one of the essential features of the claim"?  See Meyers Taylor Pty Ltd v Vicarr Industries (1977) CLR 228, Rodi & Weinenberger AG v Henry Showell Ltd (1969) RPC 367, and Nicaro Holdings v Martin Engineering Pty Ltd 16 IPR 545.

In my opinion all the integers of claim 1 are essential.  That is, a game made up of a playing surface with stations marked on it, one or more playing pieces which is/are moved through the stations according to a set of game rules, and a video and/or audio storage device which runs concurrently and continuously with gameplay, and at predetermined times alters the game rules.

I think that the evidence fails to show that any one of the commercial games has all these features.  As far as I know, and the evidence does not show otherwise, the Carmen Sandiego series were (and are) all screen-based, and the game is not a simulation of a board game.  Also, while elapsed time is part of the gameplay, I understand the result to be the application of a handicap if tasks are not completed by certain times.  This is part of the basic game rules, not an alteration of them.

As far as I can tell from the evidence, the game Let's Go To The Races does not use a playing surface in conjunction with playing pieces, and while the running of a video tape is part of gameplay, it does not run continuously and does not alter the rules.  Although America's Funniest Home Videos does use a playing surface and playing pieces, similar comments apply to the game's video tape; it is run intermittently and does not alter game rules.

US 4572513

This is an educational board game in which the player moves a piece along a segmented path, according to his or her ability to correctly answer questions posed by the playing of an audio tape, which runs continuously.  After a question has been asked, the tape is blank for a period, during which the player must answer the question, then the tape gives the answer.  If correctly answered the player moves the piece along, the tape proceeds to the next question, and so on.

It is clear that the tape does not change the game rules, and consequently this document does not anticipate claim 1.

US 5011156

This game uses the combination of a board with stations marked on it, playing pieces, and a multi-track audio CD.  In its simplest form of play, when a playing piece lands on a station, that station identifies a track on the CD, which the player then plays.  The CD will instruct the player on what must be done next, or if that is the player's situation, determine the outcome of an encounter the player is facing.  I am not sure that this is changing the game rules; it seems rather to be defining the rules that apply to specific circumstances.  But even if it is changing the rules, it is in response to player input according to the circumstances, and not at predetermined times during the course of play.

I think that the experience of playing this game would be quite different to the experience of playing a game according to claim 1, and I consider that this document does not anticipate the claim.

GB 2155796

This game is also a board game with marked stations and playing pieces, and is played in part, under the control of a home computer.  In the preferred form described, the game is soccer, and the computer may be programmed to perform a number of functions.  As described these are:

1. selection of the match venue;
        (ii)  play some part in deciding a match result;
        (iii) calculate a league table from player input;
        (iv)  randomly choose a factor affecting match result, eg
             weather;

2. at particular positions on the board the player
              presses a key and the computer randomly selects a
             factor affecting only a single team, eg player injury;
        (vi)  selection on a random time basis of a factor affecting
             all teams, eg pay for home ground repair;
        (vii) allocate income to teams depending on table position.

Mr McGowan submitted that what is shown does not constitute a change to the rules, does not occur at predetermined times, sometimes requires player input, and there is no imaging and/or audio storage means.  I am inclined to agree.  Some of the computer functions will not affect the competition result at all, and for those that do, it is not, in my opinion, by changing the underlying rules.  But if I am wrong in this and the rules are changed, it is on the basis of random selection, random time, or player input, and is in no case at predetermined times.

Also, while it would clearly be possible to program a computer to perform the same function as the claimed "imaging and/or audio storage means", I think it would be stretching matters to say that the computer arrangement disclosed is such a means.  Nor do I think that this is a case of a "mechanical equivalent".

Consequently I conclude that the claims do not fail for want of novelty.

Inventive Step

It is clear from section 7(2) of the Patents Act 1990 that the question of inventive step has to be considered against the background of the common general knowledge (cgk) in the art, in the patent area, at the priority date. In doing this I have regard to what was said by Aickin J in Minnesota Mining and Manufacturing Co v Beiersdorf (Aust) Ltd 144 CLR 253 at 292:

"The notion of common general knowledge involves the use of that which is known or used by those in the relevant trade in considering the making of new products, or the making of improvements in old, and it must be treated as being used by an individual as a general body of knowledge."

It was conceded at the hearing that there was no evidence that any of the patent specifications relied on were part of cgk, and I think the same must be said of the commercial games, though I would be inclined to doubt the statements of Clements and Robertson regarding the Carmen Sandiego games.  To my certain knowledge a number of this series of games on a number of platforms were widely sold in Australia from around the mid to late 1980's, and certainly well before August 1991.  However I must rely on what the evidence shows, and as it does not show publication in Australia, these games could not then possibly be cgk in the "patent area" as defined in the Act.

I also note that of the two declarants supporting the opposition who could be persons skilled in the art, one (Peattie) makes no mention of cgk, and the other (Holland) lives in the United States and would be unable to say anything of cgk in Australia.

As to what does constitute cgk in Australia, the evidence and submissions are not very conclusive.  Of course I can assume that board games with stations, playing pieces, dice, cards, and the like are cgk.  Further, much of the evidence-in-support, including that not addressed at the hearing, shows such games in which gameplay is partly controlled or enhanced by the use of a variety of electronic devices, usually a microprocessor or some kind of video or audio playback means.

I would hesitate to conclude from this that the use of such devices in affecting play of a board game is, in general terms, part of cgk.  But even if I did, I do not think that the opponent's case is established.

Mr Catterns submitted, and I accept, that the disclosure of a single prior document can be taken together with the cgk, so long as the person skilled in the art could be reasonably expected to have ascertained, understood, and regarded it as relevant.

Let me take as the prior document GB 2155796, which is the opponent's most favoured citation.  Supposing that it was ascertained (and I have no evidence for this), that it was understood (no doubt it would be), and that it was considered relevant (most likely since it also concerns enhanced play of a board game), then would the present invention be obvious to a person with the assumed cgk of board games and associated audio/video playback devices or processors?

I think the answer to this question must be no, because the underpinning notion by means of which gameplay is enhanced is different in each case.  The citation randomly generates hazards and handicaps by selection from a list or at random times, and the invention periodically and at predetermined times alters the basic rules.  I think that they are conceptually different.  Also, of course, the hardware requirements are different, and are likely to be more readily met in the home, which is the relevant environment, in the case of the present invention.

Finally, there is uncontested evidence of commercial success.  The courts have often considered this to be indicative (but not conclusive) of inventiveness (General Tyre & Rubber Co v Firestone Tyre and Rubber Co Ltd (1972) RPC 457).

In my opinion the claims define an inventive step.

Section 40

A number of issues were raised under this heading, some of them, in my opinion, fairly minor, and I will only deal with the more substantial ones here.

It was argued that the expression "scheduling means" in claim 1 is not clear, and it may be true that this is not the most appropriate term, though it is perhaps better than "programming means" as used in the provisional.  However it is not immediately apparent to me what better words could be used, and I cannot agree that it is ambiguous when read as part of the whole paragraph in which it appears.  The rest of this paragraph defines the function of this means, and qualifies its physical form, and in my view this renders the expression clear.

However it was also argued that the function of the scheduling means was in itself ambiguous.  In a rather circular argument, if I have understood it correctly, it was said that if it is a rule of the game that the game rules are changed, then this is part of the game rules, and any changes that occur are also part of the game rules, and therefore there has been no change to the game rules.

I cannot agree with this either.  It seems to me quite clear what the scheduling means does; the game commences with an initial set of rules, at some time some aspect of these rules is changed, and the changed rules are then the rules of the game, until the next change, or until the game concludes.  I think this is clear on a fair reading of the claim, and certainly when read in the light of the whole specification, as the cases allow.  See for example Decor Corp v Dart Industries 13 IPR 385.

These were the main issues argued under this heading; some other matters relating to lack of definition and fair basis were also considered.

It was said that the game should be restricted to a board game, that the imaging and/or audio storage means should be restricted to a pre-recorded video tape, and that claims 2, 4, and 7 are defective as they relate to game rules rather than game hardware.

I must disagree with these also.  No doubt when implemented the playing surface of claim 1 is almost certainly going to take the form of a board, as usually understood in the games industry, but it could, for example, be a table surface.

There is no basis for requiring that the imaging and/or audio storage means be restricted as sought; it is clear that a pre-recorded video tape is merely the preferred medium, of a number of possibilities.

Neither can I see any difficulty with claims 2,4, or 7.  These claims simply set out some of the particulars of the "set of game rules" (claim 1 line 1), either directly (claim 7), or through the scheduling means (claims 2 and 4).

I conclude that none of the section 40 matters raised have been established.  However I have noticed some minor things that should be corrected.  Pages 1 and 3, at about lines 22 and 34 respectively, fail to reflect the fact that the scheduling means necessarily comprises an imaging and/or audio storage means, as is claimed in claim 1.  Also, in claim 8 at line 5 the full-stop should be a semi-colon.

Manner of Manufacture

Section 18(1)(a) of the 1990 Act states:

"...a patentable invention is an invention, that so far as claimed in any claim is a manner of manufacture within the meaning of section 6 of the Statute of Monopolies..."

The Dictionary in Schedule 1 of the Act defines an "invention" as:

"...any manner of new manufacture the subject of letters patent and grant of privilege within section 6 of the Statute of Monopolies..."

and this Statute is defined to be the Imperial Act so known, and section 6 of it refers to:

"...the sole working or making of any manner of new manufacture..."

Therefore, as held by the majority in NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd 26 IPR 513, there is no difference between the 1990 Act and the 1952 Act in this matter.

Reciting from the case of Compagnies Reunies et Verres (1931) 48 RPC 185, Graham and Whitford JJ say in L'Oreal's Application [1970] RPC 565 at 569:

"In cases relating to the objection that the subject of a claim is not a manner of new manufacture..(that case)..shows that two basic questions are involved.  Is there a manufacture, and, if so, is it new?"

I have decided that the invention claimed is "new"; I must now decide whether it is a "manufacture".  In deciding this I may have regard only to the specification and the principles set out in the decided cases.

In considering the question of manner of manufacture, the invention in suit is often placed into some class of invention, which has been identified by previously decided cases, and for which principles have been developed.  Thus in the present case the matter is argued mainly in terms of the so-called "printed ticket" cases and the "patentable combination" cases, so far as the apparatus claims are concerned.  I will deal with the method claim separately.

I was taken to a number of the well-known ticket cases, including the applications by Kessler, Rhodes, Cobianchi, and Littlewood (respectively [1973] RPC 413, [1973] RPC 243, (1953) 70 RPC 199, and (1954) 71 RPC 185). These cases show that where the only alleged invention is a new arrangement of words or other information on a ticket (or analogous article), then the invention may be patentable if the arrangement serves a mechanical purpose.

I doubt that the present invention belongs in this class of inventions.  It may be possible to say that the stations indicated on the playing surface have a mechanical purpose; they indicate and provide a position where the playing piece is to be placed, and conversely for the playing piece.  See Ariel Productions Ltd Application (1957) 27 AOJP 28 at 1642.  However there is nothing new in this.  Also, even if the scheduling means could be regarded as analogous to a printed ticket, in this case there is no new arrangement of information, and neither, in my opinion, does it serve a mechanical purpose.

In the application by Ariel Productions Ltd (supra) the invention was game apparatus comprising a set of dice each marked with numerals, and "grading devices" distributed among players.  The Hearing Officer said:

"In the present case I have to decide whether the functional relationship of the grading devices (which are cards bearing printed information) with the dice constitutes a mechanical purpose.
It appears to me that the only function of these cards is to supply information whereby the indicia of the dice may be revalued, and in my opinion this is not a mechanical purpose."

This is not dissimilar to the scheduling means changing the game rules.  In Ariel the Hearing Officer then procedes to consider whether the invention is a patentable combination, and I think that is the question to be asked here.  In my opinion the present invention is not really a ticket case at all, it is a combination.  Accordingly, it must be tested for patentability against the principles set out in the relevant decided cases, while remembering that the question always remains - is this proper subject matter for letters patent according to the principles which have been developed for the application of section 6 of the Statute of Monoplies?  See National Research Development Corp's Application [1961] RPC 134.

In British Celanese Ltd v Courtaulds Ltd (52 RPC 171 at 193) Lord Tomlin said:

"It is accepted as sound law that a mere placing side by side of old integers so that each performs its own proper function independently of any of the others is not a patentable combination, but that where the old integers when placed together have some working interrelation producing a new or improved result then there is patentable subject matter in the idea of the working interrelation brought by the collocation of the integers."

And in Minnesota Mining & Manufacturing Co v Beiersdorf (Aust) Ltd (supra) at 266 Aickin J said:

"The...(invention claimed)...is a combination patent in the proper sense of the term, ie it combines a number of elements which interact with each other to produce a new result or product.  Such a combination may be one constituted by integers each of which is old, or by integers some of which are new, the interaction being the essential requirement."

If it is correct, as I have found, that the novelty and non-obviousness of this invention depends on the presence and function of the scheduling means, then I think that there must be an interaction in the relevant sense which involves this means.

Also, as the cases which consider the general question of patentability make clear, including the NRDC case (supra), the exercise as claimed must be in the useful arts and not the fine or intellectual arts, and should produce something of economic value or a commercially useful effect.

I think that this invention fails to satisfy these requirements.  It appears to me that the scheduling means does not really interact with any other integer at all; its only influence is on the state of mind of the player.  The "set of game rules" with which the game commences, considered as an integer of a combination, is not changed in any way.  I think another indication that the claim is not for a true combination is that the game could be played, using its standard rules, entirely without the scheduling means.  This conclusion is perhaps a likely consequence of my finding earlier that the scheduling means does not serve a mechanical purpose.

This was also the case in Ariel's Application (supra).  Having decided that the functional relationship between the grading devices and the dice did not serve a mechanical purpose, the Hearing Officer then says:

"As there is no mechanical interrelationship between the grading devices and the dice I am further of the opinion that the claims do not define a combination and are not directed to a manner of manufacture..."

Also, it seems to me that at its best, the game might produce enhanced satisfaction in the player's mind, but I doubt that the requirements relating to useful arts and economic value are met.

In my opinion Claim 1 does not define a patentable combination and is not for a manner of manufacture, and by the same reasoning, neither are dependent claims 2-7 and 9.

I turn now to method claim 8.  This claim defines a method for affecting the progress of a playing piece  by sequentially moving the piece through stations marked on a playing surface in accordance with a set of game rules, in which the rules are changed periodically by a scheduling means.  It is therefore in similar terms to claim 1, and while the combination issue does not arise, that relating generally to patentability does, and specifically to the patentability of methods and processes.

In my opinion this claim fails the test formulated by Morton J in GEC's Application (1943) 60 RPC 1, concerning whether a method or process is a manner of manufacture, and as further explained in the NRDC case (supra).  These rules are expressed in terms of a "vendible product".

For reasons similar to those set out in relation to claim 1, I consider that claim 8 does not result in the production or improvement of a "product", in the relevant sense of a physical existence or entity, and neither does it result in something which is "vendible", in the sense of having an economic value.

Conclusion

I have decided that none of the claims are directed to a manner of manufacture.  While I have doubts that the specification discloses patentable subject matter, I nevertheless allow the applicant 60 days from the date of this decision in which to propose amendments directed toward overcoming my findings, else I will refuse the application.  Subject of course to any appeal.

Costs

The opposition having been successful, and there being no special circumstances, I award costs against the applicant.

R G Tolhurst
Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :  Phillips Ormonde & Fitzpatrick, Melbourne

Patent attorneys for the opponent   :  Griffith Hack & Co, Melbourne

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