Acres Gaming, Inc. and I.G.T. (Australia) Pty. Limited v Aristocrat Technologies Australia Pty Ltd
[2004] APO 22
•25 August 2004
OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application :No. 748263 in the name of I.G.T. (Australia) Pty. Limited and Acres Gaming, Inc.
Title: Operation of gaming machines in a linked bonus prize winning mode
Action: Opposition by Aristocrat Technologies Australia Pty. Ltd. under Section 59 of the Patents Act 1990
Decision : Issued 25 August 2004 .
Abstract
The invention relates to gaming machines which are linked in a network to provide a bonus prize winning mode of operation. The particular enhancement with which this invention is concerned resides in the manner in which a bonus pool is awarded.
The opposition was partly successful. It was held that claims 17 and 18 were not novel in light of AU 633469 (Ainsworth Nominees Pty Ltd), and that these claims did not possess an inventive step based on this citation.
The grounds that the specification did not comply with section 40 and that the application was not in respect of a manner of manufacture were not upheld.
Applicant allowed sixty days in which to propose appropriate amendments.
Costs awarded against the applicants.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re: Patent Application No. 748263 by I.G.T. (Australia) Pty. Limited and Acres Gaming, Inc. and opposition thereto by Aristocrat Technologies Australia Pty. Ltd. under Section 59 of the Patents Act 1990.
BACKGROUND
Patent application 748263 in the name of I.G.T. (Australia) Pty. Limited and Acres Gaming, Inc. (hereinafter referred to as IGT) was filed on 11 May 1998 and derives priority from provisional application PO6741 filed on 9 May 1997. The application was advertised accepted on 30 May 2002.
Aristocrat Technologies Australia Pty. Ltd. (Aristocrat) filed notice of opposition on 29 August 2002 followed by a Statement of Grounds and Particulars on 29 November 2002. During the evidentiary stage, Aristocrat filed two requests to amend the Statement of Grounds and Particulars, and these were allowed on 24 April 2003 and 23 June 2003.
Evidence in Support was completed on 28 May 2003 after one opposed extension of time. The applicant served their Evidence in Answer on 18 November 2003. Aristocrat did not serve Evidence in Reply.
The matter was set down for a hearing on 25 February 2003. The applicant was represented by Mr Robert Miller, assisted by Mr Gideon van Rensburg, patent attorneys of the firm Spruson & Ferguson, Sydney. The opponent was represented by Mr Charles Berman, patent attorney of the firm F B Rice & Co, Sydney.
SPECIFICATION
The invention relates to gaming machines which are linked in a network to provide a bonus prize winning mode of operation. As background art, the specification refers to linked gaming systems in which it is possible to automatically generate jackpot prizes on the basis of information received from the gaming machines being played. One common arrangement involves the creation of a bonus pool that accumulates in value with each play made on the gaming machines in the network. The bonus pool is awarded to the player of the machine whose play causes the bonus pool to reach some predetermined and (usually) random chosen value.
The object of the invention is “to develop improved methods of operating a prize winning mode to encourage greater machine usage, [and] also to provide enhanced enjoyment for the players”.
The particular enhancement with which this invention is concerned resides in the manner in which the bonus pool is awarded. When the bonus pool reaches its predetermined value, a separate prize awarding phase begins. A “win count” value is randomly selected at the start of this prize awarding phase. The bonus prize is awarded to the player of the machine whose play causes the “win count” to reach this randomly selected value.
The specification concludes with 21 claims, of which three are independent (disregarding omnibus claims). The claims read as follows:
"1. A method for awarding a bonus prize in the play of a plurality of gaming machines, the gaming machines being linked to a central processor having a data memory, the method comprising the steps of:
transmitting, on play of any one gaming machine, a play signal therefrom to said central processor, said play signal identifying the transmitting gaming machine;
registering each said play signal as an entry in said memory;
executing a prize accumulation phase during which a value is accumulated with an initial value for each said play signal up to a level where the accumulating value equals a prize value that will be awarded to one of the linked gaming machines; and
thereafter executing a prize awarding phase during which said accumulated value remains frozen, and subsequent plays of one or more of the gaming machines are separately counted for their occurrence, and a play of a gaming machine causing the count to equal a prize win count value results in that gaming machine be awarded said prize value.
2. A method as claimed in claim 1, whereby said play signals generated in the prize accumulation phase are based on any one or more of coin-in, coin-out, play duration and quantum of wagers for the respective gaming machine.
3. A method as claimed in either one of claim 1 or claim 2, whereby said play signals generated in the prize awarding phase are based on any one or more of coin-in, coin-out, play duration, number of game plays and quantum of wager for the respective gaming machines.
4. A method as claimed in claim 3, whereby, in the prize awarding phase, the gaming machines contributing to the separate count includes any one of:
(i) all the gaming machines,
(ii) only the gaming machines playing during the prize accumulation phase, or
(iii) only the gaming machines playing during a short time period reckoned from commencement of the prize awarding phase.
5. A method as claimed in any one of the preceding claims, including the further step of displaying said accumulated value on an indicator means linked to said central processor.
6. A method as claimed in claim 5, comprising the further step of displaying the awarding of the prize value on the indicator means and/or the respective gaming machine.
7. A method as claimed in any one of the preceding claims, further comprising the step of displaying the prize value during at least a portion of the prize awarding phase.
8. A method as claimed in any one of the preceding claims, further comprising the steps of:
continuing to add value for each play signal during the prize awarding phase;
accumulating the added value during the prize awarding phase into an excess pool;
initiating a second prize accumulation phase after the prize awarding phase; and
using the excess pool as at least a portion of an initial value during the second prize accumulation phase.9. A gaming machine system having a bonus prize awarding mode in the play of gaming machines, the system comprising:
plurality of gaming machines for playing games thereon;
plurality of interface units each coupled with a respective gaming machine to receive a play signal therefrom including the identity of the respective gaming machine;
a central processor having a data memory and being linked to said interface units to receive said play signals;
and wherein said system is operable by said central processor executing a first prize accumulation phase during which a value is accumulated with an initial value for each said play signal up to a level where the accumulating value equals a prize value that will be awarded to one of the linked gaming machines, and thereafter executing a second prize awarding phase during which said accumulated value remains frozen, and subsequent plays of the gaming machines are separately counted for their occurrence, and a play of a gaming machine causing the count to equal a prize win count value results in that gaming machine be awarded said prize value.10. A system as claimed in claim 9, wherein said play signals generated in the prize accumulation phase are based on any one or more of coin-in, coin-out, play duration and quantum of wagers for the respective gaming machine.
11. A system as claimed in either one of claim 9 or claim 10, wherein said play signals generated in the prize awarding phase are based on any one or more of coin-in, coin-out, play duration, number of game plays and quantum of wager for the respective gaming machines.
12. A system as claimed in claim 11, wherein, in the prize awarding phase, the gaming machines contributing to the separate count includes any one of:
(i)all the gaming machines,
(ii) only the gaming machines playing during the prize accumulation phase, or
(iii) only the gaming machines playing during a short time period reckoned from commencement of the prize awarding phase.
13. A system as claimed in either one of claims 9 or 10, further comprising display means linked to said central processor on which said accumulating value is displayed.
14. A system as claimed in claim 13, wherein the awarding of a prize value is displayed on the indicator means and/or the respective gaming machine.
15. A system as claimed in claim 13, wherein the prize amount is displayed on said display means during at least a portion of the prize awarding phase.
16. A system as claimed in any one of claims 9 to 15, further operable to continue to add a value for each play signal during the prize awarding phase, accumulate the added value during the prize awarding phase into an excess pool, initiate a second prize accumulation phase after the prize awarding phase, and use the excess pool as at least a portion of an initial value during the second prize accumulation phase.
17. A method of operating gaming devices interconnected by a network to a central processor, comprising the steps of:
determining a prize amount;
transmitting an identifying signal from each gaming device to the central processor responsive to play of the gaming devices;
using the processor to track the amount of money played on the gaming devices;
allocating aportion [sic] of the money played on the gaming devices to a bonus pool during a prize accumulation phase;
thereafter continuing to transmit an identifying signal from each gaming device to the central processor responsive to play of the gaming devices during a prize awarding phase;
comparing gaming device play during the prize awarding phase to a predefined level of gaming device play; and
awarding the prize amount to a selected gaming device after the gaming device play during the prize awarding phase equals the predefined level of gaming device play.18. A method as claimed in claim 17, wherein said method further comprises the step of displaying the prize amount during at least a portion of the prize awarding phase.
19. A method as claimed in either one of claims 17 or 18, wherein said method further comprises the steps of:
continuing to use the processor to track the amount of money played on the gaming devices during the prized awarding phase;
allocating a portion of the money played on the gaming devices to an excess pool during the prize awarding phase; and
adding the excess pool to the bonus pool after the prize awarding phase.
20. A method of awarding a bonus prize substantially as herein described and as shown in the accompanying drawings.
21. A gaming machine system substantially as herein described and as shown in the accompanying drawings."
STATEMENT OF GROUNDS AND PARTICULARS
The Statement of Grounds and Particulars asserts that the claims of the specification are not clear, succinct or fairly based, and that the claimed invention is not a manner of manufacture, is not novel and does not involve an inventive step.
EVIDENCE
10) Aristocrat’s evidence in support consists of a statutory declaration by Mr Leslie Gerald Gosden. Since 1977, he has worked in the gaming machine industry in a variety of capacities and for a variety of employers, including Aristocrat's predecessor companies, as well as Atlas Leisure, IGT (the applicant of the presently opposed application), Pacific Gaming and Atronic. At the time of making the declaration, Mr Gosden was not in the employ of either the applicant or the opponent companies.
11) Mr Gosden states that he has “…in depth experience in the operation of networked gaming machines”, and that his work has involved providing advice to clubs, hotels and casinos on ways to maximise revenues from their linked bonus gaming systems. Appended to his declaration is a selection of patent and non-patent literature on which the opponent's case relies. These exhibits are referred to as LGG-1 to LGG-10.
12) The applicant's evidence in answer consists of a statutory declaration by Mr Keiran Daley, who since 1980 has worked for Fortune Coin, Ainsworth (a predecessor to the opponent) and IGT. Mr Daley states that he has “…recently completed a 12 months consulting agreement with IGT (Australia) Pty Limited relating to game development.”
13) The opponent did not file evidence in reply. More details of what is stated in the evidence, where relevant, will be given later in the decision.
SUBMISSIONS
14) The submissions made were extensive and I will refer to them where necessary in my decision. However it became clear during the hearing that, so far as the grounds of novelty and inventive step were concerned, the opponents were relying on only three of the cited particulars, namely exhibits LGG-3, LGG-7 and LGG-9, and the most relevant submissions went to the content of these disclosures and the construction of the claims.
DECISION
Novelty
15) The basic test for anticipation and lack of novelty is the "reverse infringement" test - see General Tire & Rubber Co. v Firestone Tyre & Rubber Co. Limited [1972] RPC 457 and Meyers Taylor Pty. Ltd. v Vicarr Industries Ltd. (1977) 137 CLR 228 at 235. In applying this test I must ascertain whether each and every one of the essential features of the claimed invention is provided by the prior disclosure (Rodi and Wienenberger AG v Henry Showell Ltd. [1969] RPC 367, Flour Oxidising Co. Ltd. v Carr & Co. Ltd. (1908) 25 RPC 428).
16) I do not think there is any doubt that every feature of each claim should be considered essential. A feature is essential if the applicant for the patent has made it an essential feature by the terms of the claim, properly construed (Catnic Components v Hill and Smith Ltd [1982] RPC 183), and this seems to me to be the case here.
17) I will discuss each of the exhibits in order of relevance.
Australian Patent Specification 633469 (Ainsworth Nominees Pty Ltd)
28 January 1993 (exhibit LGG-7)
18) The citation discloses several video gaming machines linked to a central controller. The central controller includes a microprocessor or computer operating under program control. A percentage of the gambling bet made on each gaming machine is used to fill a jackpot. Upon reaching a predetermined sum for payment as a bonus prize, the controller acts to suspend any game being played on any of the machines.
19) The description at page 2, lines 32 to 34, states that after any games have been suspended, the controller acts to “…impose a new game common to all machines and to award a bonus prize to the player of any machine first to achieve a predetermined objective…”. The “predetermined objective” consists of a nominated line-up of cards, and the only example provided of this is the first machine to display the combination of three jacks.
20) It is clear that Ainsworth is concerned with a linked gaming machine system having a prize accumulation phase and a prize awarding phase. It cannot be said, however, that the citation discloses “plays of one or more of the gaming machines [being] separately counted for their occurrence…” (my emphasis), as required by claim 1 of the present invention.
21) In Ainsworth, the bonus prize is awarded to the first player who achieves the “predetermined result”. Play signals from the other linked gaming machines have no influence during this prize awarding phase. The play signals are not accumulated in any fashion, and the likelihood of any one player achieving the predetermined result is independent of all the other players. This is unlike the situation in the instant application, in which play signals from every player are counted towards the “prize win count value”. This strikes me as a significant difference. Furthermore, to characterise the occurrence of a particular line-up of cards as a “count” is to impose a construction beyond the fair meaning of the language used, and I see no reason to depart from the plain meaning of the word.
22) The distinction of plays being “separately counted for their occurrence” is, I believe, sufficient to confer novelty on the presently claimed invention over what is disclosed by Ainsworth, particularly bearing in mind where the benefit of the doubt lies in opposition actions, as expressed by the High Court in Microcell Ltd.'s Application 102 CLR 232:
"it is well settled that the Commissioner ought not to refuse acceptance of an application and specification unless it appears practically certain that letters patent granted on the specification would be held invalid."
23) Accordingly, I find that claim 1, and dependent claims 2 to 8, are novel in light of this citation. Claims 9 to 16, which are directed to “A system”, are the equivalent of method claims 1 to 8, and I conclude that these are also novel. It follows that omnibus claims 20 and 21 must also be found novel.
24) Claim 17 is directed to a method, but is couched in different terms to claim 1. Rather than plays of the gaming machines being separately counted for their occurrence, the claim stipulates that a comparison of gaming device play during the prize awarding phase to a predefined level of gaming device play is made. The term “level”, in this context, suggests a position in a scale or rank. In my opinion, a predetermined winning combination of symbols may be considered one example of a predefined level of play, and I conclude that the citation anticipates this claim.
25) The citation discloses that once a sufficient sum is credited in the controller from the video gaming machines the controller causes a message to be displayed on each machine giving particulars of the bonus prize and the combination required to win it. On this basis, I conclude that the invention of claim 18 is anticipated.
26) With regard to claim 19, I was directed by the opponent to paragraph 52 of the Gosden declaration, in which he states:
“Bennett specifies that, after the bonus prize has been awarded, all the gaming machines revert to independent games. This is a commencement of a second prize accumulation phase and there is no difficulty in comprehending that the initial seed value for a bonus prize to be awarded in a prize awarding phase following the second prize accumulating phase could be based on money paid by the players during the common games during the preceding prize awarding phase.”
27) In my opinion, this argument may be rejected fairly readily. The authorities have clearly stated that to render a claim not novel the prior art must positively disclose each essential claimed feature, usually citing the well known quote from General Tire & Rubber Co. v Firestone Tyre & Rubber Co. Limited (supra) that:
"To anticipate the patentee's 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."
28) By its very nature, Mr Gosden’s analysis, which appears to rely on the addition of common general knowledge to the alleged anticipation, must fail. Even though a reader of the citation may conceive that the initial seed value for a bonus prize could be based on money paid by the players during the common games, I note that there is no explicit disclosure of such a feature in the citation, or of its operation. The citation does not specify what happens to the bets made by the players during the prize awarding phase. Accordingly, I find that claim 19 is not deprived of novelty.
Australian Patent Specification 716299 (Atronic Casino Technology Distribution GmbH)
8 January 1998 (exhibit LGG-3)
29) Both parties noted that this document was published after the priority date of the claims, but has an earlier priority date. There was no dispute that the document forms part of the "prior art base" as defined in Schedule 1 of the Patents Act 1990, and may be considered in respect of a "whole of contents" novelty objection.
30) The citation discloses a gambling network comprising several coin-operated gambling machines, any one of which can function as a master gaming machine to which the other gambling machines are linked. Each gambling machine includes a central processor and data memory. A predetermined amount of the gambling bet of each gambling machine is used to fill a jackpot. Upon reaching a predetermined jackpot trigger value, the jackpot is frozen and a jackpot payout sequence is initiated on all linked machines. Each player is given the opportunity to qualify for winning a share of the jackpot by achieving a predetermined winning symbol combination in an allocated time. Those players who qualify can participate in a final game.
31) This final game takes the form of a virtual horse race, in which the jackpot is initially distributed equally amongst the participating horses. The amount which, at the end of a betting phase, is allocated to each of the horses is dependent on the bets made by the players. All players win a share of the jackpot, with the share being determined by the place the horse betted on achieved in the race.
32) I note that there is no disclosure in Atronic of a single gaming machine being awarded the jackpot, a point which was conceded by the opponent at the hearing. As the feature of a “prize value that will be awarded to one of the linked gaming machines” is an essential feature of claim 1, Atronic would seemingly fail the "reverse infringement test".
33) However, the opponent asserted that “The mere fact that in Atronic a prize is shared between a number of machines rather than the prize being paid on one machine is entirely irrelevant and makes no effective difference to the operation of the systems of the opposed application and Atronic.”
34) This argument, which suggests that the awarding of a prize to a single machine is a mere workshop variation, appears somewhat unsound. I note that the requirement that each essential feature be disclosed holds, in so far as novelty is concerned, even where the additional matter defined by the claim is common general knowledge or a workshop variation, provided it is an essential feature of the claim in question - Nicaro Holdings v Martin Engineering 16 IPR 545 and RD Werner & Co Inc v Bailey Aluminium Products 13 IPR 513. On the basis of the foregoing, I reject the submissions put to me that claim 1 is anticipated.
35) For similar reasons, I conclude that claims 2 to 16, and omnibus claims 20 and 21 are also not anticipated. Claim 17 requires that the prize amount is awarded to a “selected gaming device”. In the context of the specification, it is clear that the prize is awarded to one of the linked gaming machines. I therefore conclude that claims 17 to 19 are novel over this citation.
Australian Patent Specification 707687 (Aristocrat Leisure Industries Pty Ltd)
24 April 1997 (exhibit LGG-9)
36) The citation discloses a plurality of gaming machines linked to a mystery jackpot controller, which receives signals on each occurrence of an operation of any of the linked gaming machines. In one embodiment, the controller sets up a random number allocation pool and chooses a number to be a prize winning number. Each time a game is played on one of the linked gaming machines the controller allocates a contribution to the prize pool, allocates a random number from the pool to that game and deletes that number from the pool. The number allocated to that game is tested and if this number matches the prize winning number the prize pool is awarded. It is clear that this embodiment does not disclose a game in which the prize accumulating phase is separate to the prize awarding phase.
37) An alternative method for awarding a prize is also disclosed, in which, once the controller decides that it is time for a prize to be awarded, the m-th game to be played from that instant becomes the winner. The prize can be a fixed or random amount. It is this embodiment which is most relevant to the opposed application.
38) Mr Gosden discusses this embodiment at paragraph 64 of his declaration in the following manner:
“As shown at step 31 in the flow chart of Figure 3 of the drawings, a first period is comprised of n random prize intervals. Upon the expiry of the relevant period, the controller decides that a prize is to be awarded (page 5, lines 24-25). The players are notified that a prize is to be awarded as described at page 5, lines 24-28 and page 6, lines 28-31. Thus, a prize accumulating phase is followed by a prize awarding phase in this embodiment of Harlick.”
39) The applicant rebutted this analysis, and referred me to the declaration of Mr Daley who notes at paragraph 28 that “during the so-called prize accumulation phase of Harlick, no contributions are made to a prize amount”.
40) In my opinion, this is a critical point of difference. Whilst I am satisfied that the citation does disclose a prize awarding phase wherein plays of each gaming machine are separately counted for their occurrence, I agree with the applicant that there has been no disclosure of a prize accumulation phase as claimed. The citation is wholly silent in respect of a “value which is accumulated…for each play signal up to…a prize value”.
41) Accordingly, I find that claims 1 to 16, 20 and 21 are novel in light of this citation. Claim 17 also defines that a portion of the money played during the prize accumulation phase is allocated to a bonus pool. I therefore conclude that claims 17 to 19 are novel over this citation.
Conclusion on Novelty
42) I have found that claims 17 and 18 are not novel in light of AU 633469 (Ainsworth Nominees Pty Ltd). The remaining claims are not anticipated by this or any other document in evidence.
Inventive Step
43) An appropriate test for inventive step is whether a person skilled in that field, and 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 – see Wellcome Foundation Ltd v VR Laboratories (Aust.) Pty Ltd, (1981) 148 CLR 262 at page 286.
The Person Skilled in the Art
44) At the hearing the parties expressed different views on the appropriate person skilled in the art of the alleged invention. Mr Miller argued that the appropriate person would be a “game designer”, and noted that Mr Gosden “…has small, if any, direct experience of designing games.” Mr Berman submitted that the specification deals not “…with the design of games, but with the design of gaming systems and methods of awarding bonus prizes”.
45) Even if there is an emphasis on game design in the specification, this does not necessarily imply that the person skilled in the art must be a programmer to understand the terms of the specification. The specification does not appear to be beyond the understanding of people from non-computing backgrounds. Furthermore, the specification is at least equally directed to the enhancement of player interest with modified or new game features. In my view, a person with either a games development background, sales experience or marketing experience in gaming would be an appropriate person skilled in the art.
46) I note that the background of the opponent’s declarant, Mr Gosden, and the applicant’s declarant, Mr Daley are broadly similar. I believe that both declarants demonstrate an adequate technical background and understanding of game design. For example, Mr Gosden’s experience with the R&D department of IGT demonstrates a sufficient understanding of the way in which gaming machines, their operating systems and networked systems worked. Similarly, Mr Daley’s experience as Product Research Manager for Ainsworth clearly demonstrates his hardware and game design expertise.
47) This would appear to negate the opponent's challenge of Mr Gosden's ability to provide evidence in the opposition due to his focus on the business development, sales and marketing of gaming machines. I note that if I were to reject the evidence of Mr Gosden, I would have a similar basis on which to reject the evidence of Mr Daley.
The Common General Knowledge
48) Subsections 7(2) and 7(3) of the Patents Act indicate that a claimed invention will lack an inventive step if it is obvious to a person skilled in the relevant art in the light of:
(a)common general knowledge, or
(b) common general knowledge considered together with information in a single document or through doing a single act, provided that the document or act could reasonably be expected to have been ascertained, understood and regarded as relevant to work in the relevant art in the patent area by the person skilled in the art.
49) With regard to the first criterion, a widely accepted definition of common general knowledge is that provided by Aickin J in Minnesota Mining and Manufacturing Company and Another v Beiersdorf (Australia) Limited 144 CLR 253 at 292:
"The notion of common general knowledge itself involves the use of that which is known or used by those in the relevant trade. It forms the background knowledge and experience which is available to all in the 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."
50) The state of the common general knowledge is a question of fact which must, in general, be determined on the basis of evidence from persons whose background enables them to testify authoritatively as to the common general knowledge in the particular art. Indirect evidence such as widespread publication or admissions made in patent specifications may also serve to indicate something is common general knowledge.
51) The opponent also referred to Bristol-Myers Squibb Co v F H Faulding & Co Ltd (2000) 46 IPR 553 at 564:
"If a patent application, lodged in Australia, refers to information derived from a number of prior publications referred to in the specification or, generally, to matters which are known, in our view the court - or the commissioner - would ordinarily proceed upon the basis that the knowledge thus described is, in the language of s 7(2) of the 1990 Act, part of 'the common general knowledge as it existed in the patent area'. In other words, what is disclosed in such terms may be taken as an admission to that effect."
52) The opponent relied on this decision to support their contention that the following items were common general knowledge in Australia at the priority date of the present application as each of these items had been referred to in the specification as known:
(i)Implementing bonus prize winning modes apart from the normal games available for play on a gaming machine;
(ii)Systems typically comprising a bank of gaming machines each having an interface providing communication with a central controlling computer or data processor;
(iii)The controlling computer receiving from each connected gaming machine an indication of each play;
(iv)A bonus prize pool forming and accumulating with each play of the gaming machines;
(v)Displaying the accumulating total on a visual display unit;
(vi)Awarding the bonus pool when it reaches a randomly chosen value, the bonus pool being won by the player of the machine whose play causes the total to be reached;
(vii)The teachings of Australian Patent 589158;
(viii)The teachings of Australian Patent 655801;
(ix)The teachings of Australian Patent 707687;
53) The applicant did not seriously dispute the status of (i) to (vi), but vigorously denied that the 3 above mentioned patents formed part of the common general knowledge. I believe that the applicant’s reservations are well founded. The decision of the Federal Court in Bristol-Meyers Squibb (supra) was discussed by the delegate in Novo Nordisk A/S v Eli Lilly And Company, [2000] APO 67 in the following terms:
"The assessment is based on the common general knowledge as it is presented on the face of the specification. If information is stated to be common general knowledge or can reasonably be inferred to be common general knowledge, then the Commissioner can accept that conclusion without any further evidence. It is not correct to say that every piece of prior art referred to in the specification is part of the common general knowledge."
In the present case the specification merely states that Australian Patents 589158, 655801 and 707687 are examples of prior art arrangements, and I can identify no reasonable basis to infer that they were common general knowledge in the art. I also note that patent specifications do not normally form part of the common general knowledge (General Tire & Rubber Company v Firestone Tyre and Rubber Company Ltd (supra)). The evidence does not satisfactorily establish that the above patent specifications, or the teachings therein, are common general knowledge.
54) In addition, the opponent further submitted that the following formed part of the common general knowledge:
(x)Brochures of the type included as Exhibit LGG-2 of the statutory declaration of Gosden;
(xi)Information made available at the various expos as referred to in paragraphs 124-129 of the statutory declaration of Gosden;
(xii)Patent specifications in the field of gaming in general;
55) I note that none of this material is in evidence. I also consider expressions such as “brochures of the type”, “information made available” and “patent specifications in the field” to be unclear and unhelpful, and that they do little to define the exact nature of the evidence to be adduced. Items (x) to (xii) fail to establish exactly what brochures, information and patent specifications were common general knowledge at the priority date.
56) The opponent submitted that the invention as claimed in any claim lacks an inventive step in light of items (i) to (xii). I am not persuaded by this assertion, as I consider that the opponent has not provided sufficient evidence as to what a non-inventive person skilled in the art would do with this information. When considering the question of obviousness in relation to a combination it is the inventiveness of the combination as a whole that must be looked at rather than that apparent from examining each integer in turn (Minnesota Mining & Manufacturing Co v Beiersdorf (supra)). What is claimed appears to be a new combination of integers and it is the selection of the integers of that combination out of perhaps many possibilities that must be shown to be obvious. To look at the invention in any other way would, in my view, be to fall into the trap of ex post facto analysis so often warned against.
I will therefore turn to the prior art to assess inventive step.
Inventiveness over the Prior Art
57) It is clear from the evidence that the design, development and supply of gaming products for the gaming industry is a competitive business, and one in which it is reasonable to conclude that participants would have a real interest in keeping abreast of their competitors' developments, both to maintain competitiveness and to avoid infringement. Thus, I consider that patent documents could have been reasonably expected to have been ascertained by the skilled person. Given this, I do not think there is any doubt that the various documents which the opponent has established as being in the public domain before the priority date of the claims would be ascertained, understood and regarded as relevant by the person skilled in the art. The applicant did not challenge this reasoning.
58) As noted previously, AU 633469 (Ainsworth Nominees Pty Ltd) is silent on the features of plays of the gaming machines being separately counted for their occurrence, and of a play causing the count to equal a prize win count value resulting in that gaming machine being awarded the prize value. The opponent argued that these features were well known to the person skilled in the art and merely reflected “routine design choice”. The evidence does not support this view. The common general knowledge does not cover these differences, and the evidence falls short of establishing that a non-inventive skilled worker would, as a matter of routine, have come up with this solution. It is not sufficient for a finding of obviousness that the skilled person "could" have done what has been claimed. I conclude the invention as claimed in claims 1 to 16, 20 and 21 has an inventive step over Ainsworth when combined with the common general knowledge.
59) Having determined that claims 17 and 18 are not novel by virtue of the disclosure in Ainsworth, I am also prepared to find that these claims lack an inventive step in light of this citation. However, claim 19 refers to an “excess pool”, and I consider that there is insufficient declaratory evidence before me to conclude that this item is common general knowledge. Accordingly, I find that claim 19 is inventive.
60) AU 716299 (Atronic Casino Technology Distribution GmbH) was published after the priority date of the present application. In accordance with sub-paragraph (b)(ii) of the definition of “prior art base” in Schedule 1 of the Patents Act, Atronic cannot be used to argue that there is a lack of inventive step.
61) AU 707687 (Aristocrat Leisure Industries Pty Ltd) does not disclose a prize accumulating phase as claimed. The inventive concept of the invention as defined by claims 1 and 9 involves the creation of a two-phase game in a manner which cannot be said to be common general knowledge in the art, and in my view requires some exertion of the inventive faculty to have achieved. Insufficient evidence has been provided to show that these claims fail for lack of inventiveness, and I therefore find that claims 1 to 21 involve an inventive step in light of Aristocrat when combined with the common general knowledge.
Section 40
62) I find that the many of the matters raised by the opponent under the heading of section 40 are minor and can be readily dismissed when the normal rules of construction are applied. One of these rules is that a patent specification is to be read as a whole - see Welch Perrin v Worrel (1961-62) 106 CLR 588 at 610, Rosedale Associated Manufacturers Ltd v Carlton Tyre Saving Co Ltd [1960] RPC 59 at 69. For example, the opponent alleged that claims 1 and 9 were unclear due to the use of the phrase “a value is accumulated”. The opponent explained that “value” has a dictionary definition of “an assigned or calculated numerical quantity”, and that it was therefore unclear how a “value” could be “accumulated”.
63) A fair reading of the specification as a whole finds no support for this allegation. I note from the description that the terms “bonus pool”, “bonus prize”, “prize pool”, “prize amount” and “value” appear to be used interchangeably in reference to the same feature. Based on this understanding, I consider it entirely reasonable to discuss the invention in terms of a “value” that “accumulates”. Whilst I agree with Mr Berman that the use of several terms to describe the same integer does create some uncertainty, any confusion can be easily resolved by reference to the specification as a whole, and I therefore conclude that claim 17 is clear. Furthermore, if I am to accept Mr Gosden's evidence as being truly reflective of the skilled addressee, it would be rather difficult to say the description and claims are unclear when, as a person skilled in the art, he clearly has had little difficulty in ascribing meaning to it.
64) Similar objections to the remaining claims are also easily resolved, especially when one reads the specification liberally and is "willing and wishing" to understand the specification (Philpot v Hanbury (1885) 2 RPC 33).
Thus I will limit my consideration to the only substantial objection, which concerns the fair basis of claim 17.
Fair Basis
65) The opponent argued that the claim 17 was not fairly based on the matter described in the specification because “there is no basis in the specification for the step of determining a prize amount separately and apart from generating a bonus pool during the prize accumulation phase.”
66) Whether a claim is fairly based on the matter disclosed in the specification depends upon whether there is a "real and reasonably clear disclosure" of the matter claimed: Leonardis v Sartas (No 1) Pty Ltd 35 IPR 23. In Olin Corporation v Super Cartridge Co Pty Ltd (1977) 180 CLR 236 at 240 Barwick CJ said:
"The question whether the claim is fairly based is not to be resolved, in my opinion, by considering whether a monopoly in the product would be an undue reward for the disclosure. Rather, the question is a narrow one, namely whether the claim to the product ... as expressed, travels beyond the matter disclosed in the specification."
67) That formulation was recently approved by the High Court in Kimberly-Clark (Australia) Pty Ltd v Arico Trading International Pty Ltd (2001) 177 ALR 460. In ICI Chemicals & Polymers v Lubrizol Corp Inc (2000) 106 FCR 214 the Full Court said that ordinarily at least, what will deprive a claim of fair basis in a complete specification is that the claim is broader than the invention as described in the specification.
68) A fair reading of the specification finds no support for this allegation. There is nothing in the claim which travels beyond what is disclosed by the description. I do not believe that the use of the terms “prize amount” and “bonus pool” in claim 17 renders the exact scope unclear, as I have already decided that the terms “bonus pool”, “bonus prize”, “prize pool”, “prize amount” and “value” appear to be used interchangeably in reference to the same feature. I must conclude that claim 17 is fairly based.
Manner of Manufacture
69) The opponent also submitted that the claimed invention was no more than the new use of a known contrivance. In Harwood v. Great Northern Railway Co., 35 LJQB 27 at page 38 it was stated:
"You cannot have a patent for a well known mechanical contrivance merely because it is applied in a manner or to a purpose which is analogous to the manner, or for the purpose in or to which it has been hitherto notoriously used."
70) There are three prerequisites in establishing analogous use. Pope Appliance Corp v Spanish River Pulp & Paper Mills (1929) 46 RPC 23, says at page 56:
"The doctrine of analogous user only applies as to things in actual use."
71) Morgan v Windover (1890) 7 RPC 131, at page 137 says:
"...the mere adaption to a new purpose...if that purpose be analogous to which it has already been applied...and no invention is displayed in the manner in which it is applied, is not the subject for a patent."
72) In British Liquid Air v British Oxygen (1909) 26 RPC 509 at page 532:
"It is of course well-settled law that the application of a known device to its ordinary purpose under analogous circumstances is not good subject- matter for Letters Patent, because it does not involve invention. But this principle does not apply when the circumstances are not analogous, or when invention is required to adapt the device to the new circumstances."
73) In my opinion, the facts of the present case do not satisfy all of these principles, so as to establish analogous use. Whilst linked gaming machine systems are known, I do not consider that the evidence establishes the prior use of the linked gaming machine system as claimed. Also, I do not consider that the present use is really analogous and consequently without invention, since the operation of the machines during the prize accumulating and prize awarding phases seem significantly different. Even if I am wrong in my analysis, I find that the argument could not succeed, as it would be erroneous in the absence of the lack of an inventive step being shown on the face of the specification, to consider matters that could be raised on grounds of obviousness or lack of novelty in a case under the Act. This is in accordance with the High Court's decision in Advanced Building Systems Pty Ltd v Ramset Fasteners (Aust) Pty Ltd (1998) 194 CLR 171 at 188-190.
74) The opponent also asserted that the claimed invention is not a patentable invention according to s 18(1)(a) because the claimed invention is not, on the face of the specification, a proper subject for a letters patent.
75) In the decision of the High Court in NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd, 32 IPR 449 (which was confirmed by Advanced Building Systems Pty Ltd and Anor v Ramset Fasteners (Aust) Pty Ltd, (1998) 152 ALR 604, (1998) AIPC 91-401), the majority of the High Court concluded that "newness" was imported into sec 18(1)(a) to the extent that that s 18(1)(a) should be interpreted as retaining the threshold requirement of "an invention" as excluding from a "patentable invention" any claimed process, method or use which was not, on the face of the specification, a proper subject of letters patent according to traditional principles.
76) I am satisfied that this ground is not made out. To me the very existence of other patents for similar devices indicates that patentable subject matter may be present. The specification refers to some prior art, observes its disadvantages, and sets out objects for the invention which are directed at overcoming those disadvantages. Whilst individual features may be well known, there is nothing on the face of the specification that suggests that the combination claimed is not new. In my view the question of whether such subject matter is new is best dealt with under the headings of novelty and inventive step.
I conclude that all of the claims define a manner of manufacture.
CONCLUSION
77) I have determined that the invention defined by claims 17 and 18 of the present application lacks novelty in light of AU 633469 (Ainsworth Nominees Pty Ltd). I have also found that these claims do not possess an inventive step based on this citation. However, the specification was found to comply with s 40 and was for a manner of manufacture.
As there is clearly patentable subject matter within the specification I allow the applicant 60 days from the date of this decision in which to file proposed amendments overcoming the problems noted above.
COSTS
78) It is a general principle in matters such as these that costs follow the event, and I see no reason to depart from this practice. I have found that the opponent has been partly successful in respect of the novelty and obviousness of the claims. I therefore award costs against the applicants, I.G.T. (Australia) Pty. Limited and Acres Gaming, Inc.
R W J Finzi
Delegate of the Commissioner of Patents
Patent attorneys for the applicant : Spruson & Ferguson, Sydney
Patent attorneys for the opponent : F B Rice & Co., Sydney
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