Aristocrat Technologies Australia Pty Limited - [2018] APO 45

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Aristocrat Technologies Australia Pty Limited [2018] APO 45

Patent:2016101967, 2017101097, 2017101098 and 2017101629

Title:A System and Method for Providing a Feature Game

Patentee:  Aristocrat Technologies Australia Pty Limited
Delegate:  Xavier Gisz
Decision Date:  5 July 2018
Hearing Date:  Written submissions filed on 4 May 2018

Catchwords: PATENTS - section 101B – innovation patents – gaming machines – rules of a game – examiner’s objection – alleged inventions not a manner of manufacture – innovation patents revoked.

Representation: Patent attorney for the patentee: Griffith Hack

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent:2016101967, 2017101097, 2017101098 and 2017101629

Title:A System and Method for Providing a Feature Game

Patentee: Aristocrat Technologies Australia Pty Limited
Date of Decision: 5 July 2018
DECISION
The invention claimed in all of the claims of each of 2016101967, 2017101097, 2017101098 and 2017101629 is not a manner of manufacture. Having reviewed the specifications I do not consider it appropriate to provide an opportunity to amend as, in the circumstances of the case, it will serve no useful purpose. The patents are revoked.
REASONS FOR DECISION
Background

Innovation patent 2016101967 is a divisional application of 2015210489. It was filed on 10 November 2016. The innovation patent was granted on 24 November 2016. Examination was requested on 18 October 2017. An adverse examination report was issued on 7 December 2017. A hearing was requested on 2 March 2018. Written submissions were received on 4 May 2018.
Innovation patent 2017101097 is a divisional application of 2017200840. It was filed on 11 August 2017. The innovation patent was granted on 23 August 2017. Examination was requested on 18 October 2017. An adverse examination report was issued on 7 December 2017. A hearing was requested on 2 March 2018.
Innovation patent 2017101098 is a divisional application of 2017200840. It was filed on 11 August 2017. The innovation patent was granted on 23 August 2017. Examination was requested on 21 November 2017. An adverse examination report was issued on 7 December 2017. A hearing was requested on 2 March 2018.
Innovation patent 2017101629 is a divisional application of 2017204560. It was filed on 21 November 2017. The innovation patent was granted on 6 December 2017. Examination was requested on 21 November 2017. An adverse examination report was issued on 16 January 2018. A hearing was requested on 2 March 2018.
All four patents are ultimately divisional from 2015210489 which was filed on 10 August 2015. Thus all four patents have an effective filing date of 10 August 2015.
While the final date to gain certification of the innovation patents would have ordinarily been 7 June 2018 for 2016101967, 2017101097, 2017101098 and 16 July 2018 for 2017101629, since hearings have been requested on the examiner objections the date to gain acceptance has been delayed pursuant to sub-regulation 9A.4(f) pending the outcome of this decision.
A hearing was requested on 2 March 2018. Written submissions were received on 4 May 2018.
Family tree
I have illustrated a ‘family tree’ of the related applications and innovation patents, with the innovation patents presently under consideration enclosed in rectangles:
Section 28 material filed
On 22 June 2018 Shelston IP filed submissions under s 28 which asserted that innovation patents 2017101967 and 2017101098 were invalid for reasons of lacking novelty and innovative step. The submissions also asserted that the innovation patents were not a manner of manufacture, however I note that these submissions are not properly made under s 28(1) which is restricted to submissions on novelty and innovative step.
I have reviewed Shelston IP’s submissions and have determined that they would not affect the outcome of the present decision. Consequently, I have deemed it unnecessary to further discuss of these submissions. Given the outcome of this decision – the innovation patents are to be revoked, it is also unnecessary for these s 28 submissions to be considered by an examiner at a later stage.
APPLICABLE LAW
The patent applications have filing dates of 10 November 2016, 11 August 2017, and 21 November 2017. As a consequence, substantive amendments to the Patents Act brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 that came into effect on 15 April 2013 apply to the present patent.
Thus the standard of proof that applies in the present case is the balance of probabilities. I must accept the application if satisfied on the balance of probabilities that the application complies with the Act. If I am not so satisfied, then I can refuse the application.
Section 18 of the Patents Act 1990 provides that:-
(1A) Subject to subsections (2) and (3), an invention is a patentable invention for the purposes of an innovation patent if the invention, so far as claimed in any claim:
(a) is a manner of manufacture within the meaning of section 6 of the Statute of Monopolies;
Manner of Manufacture
Case law
With respect to manner of manufacture, subsection 18(1) of the Patents Act 1990 states:
Subject to subsection (2), an invention is a patentable invention for the purposes of a standard patent if the invention, so far as claimed in any claim:
(a) is a manner of manufacture within the meaning of section 6 of the Statute of Monopolies;…
In National Research Development Corporation v Commissioner of Patents [1959] HCA 67, (1959) 102 CLR 252, the High Court provided a statement of the law in respect to manner of manufacture. At page 275, “… a process, to fall within the limits of patentability which the context of the Statute of Monopolies has supplied, must be one that offers some advantage which is material, in the sense that the process belongs to a useful art as distinct from a fine art …- that its value to the country is in the field of economic endeavour”. In discussing the “vendible product” proposition put forward by Morton J in Re G.E.C’s Application, (1942) 60 RPC 1, the High Court in NRDC upheld the validity of a patent for the use of previously unknown properties of a known chemical to effect a new purpose. At page 277:
“The effect produced by the appellant’s method exhibits the two essential qualities upon which ‘product’ and ‘vendible’ seem designed to insist. It is a ‘product’ because it consists in an artificially created state of affairs, discernible by observing over a period the growth of weeds and crops respectively on sown land on which the method has been put into practice. And the significance of the product is economic; for it provides a remarkable advantage … for one of the most elemental activities by which man has served his material needs, the cultivation of the soil for the production of its fruits.”
The High Court though was not laying down a precise formulation that can be applied unthinkingly. In D’Arcy v Myriad Genetics Inc [2015] HCA 35, at [23]:
“This Court in NRDC did not prescribe a well-defined pathway for the development of the concept of ‘manner of manufacture’ in its application to unimagined technologies with unimagined characteristics and implications. Rather, it authorised a case-by-case methodology.”
That case-by-case approach must have regard to the substance of the claimed invention, not simply the form of the claim. The point was made succinctly in the Myriad case by Gageler and Nettle JJ. At [144]:
“Whatever words have been used, the matter must be looked at as one of substance and effect must be given to the true nature of the claim.”
In Research Affiliates LLC v Commissioner of Patents [2013] FCA 71 Emmett J, in seeking to apply the NRDC test, stated at [22] that:
“For a method to be patentable, it must produce a product in which a new and useful effect may be observed. In the case of computer programs, it is necessary to look to the application of the program to produce a practical and useful result, so that more than mere information is involved. The method of a claimed invention will not be patentable if it does not produce an artificial state of affairs, in the sense of a concrete, tangible, physical or observable effect. Even if there is not a physically observable end result, in the sense of a tangible product, a claimed invention that is a method may nevertheless be patentable if it applies the method in a physical device. In such a case, an artificial state of affairs is produced in the physical device by the claimed method. Thus, a physical effect, in the sense of a concrete effect or phenomenon or manifestation or transformation, is required. It is sufficient if there is a component that was physically affected or a change in state or information in part of a machine. They can be regarded as physical effects. However, if the claimed invention is a mere scheme, an abstract idea or mere information, it will not be patentable as there is no physical consequence (Grant v Commissioner of Patents (2006) 154 FCR 62 at 70-71).”
In Grant v Commissioner of Patents [2006] FCAFC 120; 154 FCR 62 Justices Heerey, Kiefel and Bennet stated at [29] and [30]:
“NRDC emphasised the need for the adaptability of the law of patents to cover technological developments. In NRDC the High Court looked to the application of the claimed method. That is similar to the approach of courts in the United States. A product of a method is something in which a new and useful effect may be observed. For claimed computer programs, the courts looked to the application of the program to produce a practical and useful result, so that more than ‘intellectual information’ was involved. CCOM provides a useful analysis of the development of patent law in this context. The underlying principle, developed from the Statute of Monopolies, that business, commercial and financial schemes, which are ‘intellectual information’ are not themselves properly the subject of letters patent, was maintained. As Gyles J concluded in Arrow Pharmaceuticals Ltd v Merck & Co Inc (2004) 213 ALR 182 at [87], cited by the Full Court in Merck at [23], a method that is in the nature of directions for use does not constitute an invention or a manner of manufacture. Neither in Merck, nor here, has some previously unrecognised property of an aspect of the method been discovered.
Contrary to Mr Grant’s submission, the method of his patent does not produce any artificial state of affairs, in the sense of a concrete, tangible, physical, or observable effect. It is quite different from the invention in Catuity, which was a method involving components such as smart cards and point of sale terminals, and produced tangible results in the writing of new information to the Behaviour file and the printing of the coupon (at [128]). While there was not a physically observable end result in the sense of a tangible product, the invention involved an application of an inventive method where part of the invention was the application and operation of the method in a physical device. Within the concept of NRDC an artificial state of affairs was produced, a state of affairs created by the application or effect of the method.”
In Research Affiliates LLC v Commissioner of Patents [2014] FCAFC 150 it was stated at [94]:
“When the authorities in Australia prior to and including Grant are considered, a consistent approach emerges as to the relevance of:
·a distinction between a claim to a business scheme and claims to methods which in practice result in a new machine or process or an old machine giving a new and improved result – that is, a distinction between mere intellectual information and a method that affects the operation of an apparatus in a physical form (Grant at [18]);
·the fact that the claimed steps are foreign to the normal use of computers, such as the production of an improved curve image (IBM 2 at 225-226);
·the particular mode or manner of achieving an end result which is an artificially created state of affairs, such as the storage of data as to Chinese characters and retrieval of graphic representations to enable word processing (CCOM at 295);
·whether part of the invention is an inventive method which includes the application and operation in a physical device (Grant at [30]);
·the distinction drawn in Catuity, as explained in Grant (at [24]), between ‘a technological innovation which is patentable and a business innovation which is not’. In Catuity, Heerey J did not accept that a physically observable effect was necessarily required (at [128]) but the Full Court in Grant expressed the opinion that a physical effect in the sense of a concrete effect or phenomenon, or manifestation or transformation is required (at [32]).
·the fact that a physical effect is required does not make it sufficient to confer patentability;
·the fact that a method may be called a business method does not prevent it being properly the subject of letters patent (Grant at [26] citing Catuity at [125]-[126]);
·the fact that for claimed computer programs, the courts look to the application of the program to produce a practical and useful result, so that more than ‘intellectual information’ is involved (Grant at [29]). A method that is in the nature of directions for use does not constitute an invention or a manner of manufacture in the absence of some previously unrecognised property of an aspect of the method (Grant at [29]).”
In Commissioner of Patents v RPL Central Pty Ltd [2015] FCAFC 177 (“RPL”), the Full Court of the Federal Court stated at [96] and [98]:
“A claimed invention must be examined to ascertain whether it is in substance a scheme or plan or whether it can broadly be described as an improvement in computer technology. The basis for the analysis starts with the fact that a business method, or mere scheme, is not, per se, patentable. The fact that it is a scheme or business method does not exclude it from properly being the subject of letters patent, but it must be more than that. There must be more than an abstract idea; it must involve the creation of an artificial state of affairs where the computer is integral to the invention, rather than a mere tool in which the invention is performed.
…
It is not a question of stating precise guidelines but of deciding, in each case, whether the claimed invention, as a matter of substance not form, is properly the subject of a patent”.
The Full Court of the Federal Court in RPL then detailed a number of considerations relevant to the determination and coming from earlier decisions of the Court. Summarising from [99] of RPL:
- It is necessary to ascertain whether the contribution to the claimed invention is technical in nature.
- One consideration is whether the invention solves a “technical” problem within the computer or outside the computer, or whether it results in an improvement in the functioning of the computer, irrespective of the data being processed.
- Does the claimed method merely require generic computer implementation?
- Is the computer merely the intermediary, configured to carry out the method using a computer readable medium containing program code for performing the method, but adding nothing to the substance of the idea?
Examiner objection
The examiner objection in the first adverse report of 2016101967, 2017101097, 2017101098 state:

“The invention as defined in Claims 1-5 does not involve a manner of manufacture within the meaning of s 18(1)(a) of the Patents Act because the inventive concept is in substance directed towards a gaming procedure whereby configurable symbols are retained while non-configurable symbols are removed during a feature game. In essence, the claims are directed to selecting some symbols for display in a base game, and if a feature game is triggered, retaining configurable symbols while non-configurable symbols are removed during a feature game and replaced with symbols from a second set of reels. Furthermore, the mere use of a computer, random number generator, monetary input mechanisms, screens and database to implement this, adds nothing of substance to the inventive concept, which does not lie in the way the method is carried out by the computer or processor (Research Affiliates LLC v Commissioner of Patents [2014] FCAFC 150 and Commissioner of Patents v RPL Central Pty Ltd [2015] FCAFC 177). The appended claims only add further features on the manner in which the gameplay and rules can be changed, and as such, cannot remedy the manner of manufacture issues.”

The examiner objection in the first adverse report of 2017101629 states:
“Claims 1 – 5 do not define a manner of manufacture within the meaning of Section 18(1)(a) of the Patents Act 1990. From reading your application as a whole I believe the substance of the alleged invention is a game characterised by the rules which enable particular symbol to be selected and retained for future games, while non-selected symbols are randomly changed in future games. However, a game per se is a scheme or abstract idea and is not patentable subject matter.
From reading your specification as a whole, the following areas appear to define your contribution to the art:
i. In random number generation. However, the specification at p6 L31-34 merely states that “A random number generator module 113 generates random numbers for use by the processor 102.” Other areas of the specification that deal with random number generation (p8 L34-p9 L1, p10 L6-8, p11 L8-10) contain similar levels of detail. On this basis, the level of generality does not appear sufficient to constitute patentable subject matter.
ii. In the use of a display. However, the specification at p6 L13-16, p6 L36 – p7 L9, p10 L12-19 (and elsewhere in the specification) merely detail well known displays performing their usual functions. No details are present which indicate that an improvement has been made. As such, the display appears to be merely for the presentation of intellectual information.
iii. In the user’s interactions with the gaming machine. However, the specification at p15 L6-8 (and elsewhere) merely state that “The player makes a selection through the game play mechanism”. It is not apparent how these interactions result in an improvement to the gaming machine. As such, the interactions appear to define no more than the rules of the game - which is not patentable subject matter.
Further, the combination of the above features amounts to no more than the standard use of such a gaming machine.
As such, the contribution of the claimed invention is neither in an improvement to the operation of the machine nor how it is applied in the playing of the game. The utility of the invention lies merely in the rules of the game and the possibility of more interesting game play. Consequently, as per Research Affiliates LLC v Commissioner of Patents [2014] FCAFC 150 and Commissioner of Patents v RPL Central Pty Ltd [2015] FCAFC 177 the alleged invention is not a manner of manufacture.”
The submissions
The patentee submissions states at paragraph 28:
“The Subject Patents further describe the following aspects of the feature game of the preferred embodiment:
(a)    the gaming machine holds the configurable symbols that triggered the feature game (original configurable symbols), during the rounds of the feature game ("the feature game initiates by first holding the configurable symbols in their respective display positions 824, at step 711");
(b)    the gaming machine awards the player with a predefined number of rounds of the feature game ("control moves to step 714 which sets free game counter 812 to the predefined number of free games");
(c)    the gaming machine selects via the symbol selector and displays symbols for the display positions that do not currently hold a configurable symbol ("the symbol selector 622A selects symbols from symbol data 642 to be displayed in the other display positions 824 not already displaying a configurable symbol");
(d)    if the gaming machine selects via the symbol selector and displays additional configurable symbols (i.e., additional to the original configurable symbols) during a round of the feature game, the machine holds them during further rounds of the feature game ("Returning to step 718, if outcome evaluator 623 determines that at least one configurable symbol is displayed on reels 814-822, then that symbol is held on the reel");
(e)    for each round of the feature game where an additional configurable symbol is selected and displayed, the gaming machine resets the number of rounds to the default number and so the feature game continues ("each time a configurable symbol is displayed and the jackpot is not won, free game counter 812 is reset to the default position by returning control to step 714");
(f)     vice versa, for every round of the feature game where an additional configurable symbol is not selected and displayed, the gaming machine decrements the number of rounds of the feature game ("if a configurable symbol is not displayed, free game counter 812 is decremented by a predefined amount at step 720"). If the number of rounds of the feature game reaches zero, the machine reverts to the base game ("when the free game counter 812 reaches zero, the feature game ends and control returns to step 702");
(g)   the gaming machine's outcome evaluator checks whether the number of configurable symbols displayed (i.e., original configurable symbols plus additional configurable symbols) has reached a predefined number to trigger a jackpot ("outcome evaluator 623 then checks whether a predefined number of configurable symbols has been displayed on reels 814-822 at step 726 and, if the predefined number has been reached, a jackpot is paid at step 728"); and
(h)    at the end of the feature game, the gaming machine pays the total value of all configurable symbols selected and displayed to the player ("the accumulated value of all the individual prizes as indicated by the variable components of the collected configurable symbol[s} is paid at step 728").”

The patentee states at paragraph 93:
“To reiterate paras 37-40 above:
(a) The substance of the inventions of the Subject Patents is gaming machines with specific technical arrangements that provide for improved feature games through the provision of additional functionality within the gaming machine, including, the use of configurable symbols.
(b) The essential integers of the claimed inventions include, and are limited by reference to, physical articles or components, which themselves are the product of manufacture.
(c) The configurable symbols are useful and versatile in that they perform multiple functions:
(i) They can be used to trigger a feature game, either from a base game or another feature game;
(ii) They can be used to award prizes of different types and values, depending on, for example, the game design and the amount wagered in the base game;
(iii) They can be used as a visual indicator of the values of prizes that are guaranteed to be awarded to the player during both the base game (when a feature game is triggered) and in the feature game;
(iv) They can be used to award additional prizes to the player during the feature game;
(v) They can be used to determine whether the feature game continues or ends;
(vi) They can be used to trigger a jackpot prize.
(d) The substance of the invention in claim 3 of 967 and 097 Patents also includes the independent reels feature (para 31 above);
(e) The substance of the inventions in the claims of 097 Patent further includes a feature game triggered using Aristocrat's HYPERLINK system, wherein the feature game trigger event has a probability related to desired average turnover between successive occurrences of the trigger events on the gaming machine.”
Claims
The claims of 2016101967 were proposed to be amended on 18 October 2017. Claim 1 states:
A gaming machine comprising:
a display;
a credit input mechanism operable to establish credits on the gaming machine,
the credit input mechanism including at least one of a coin input chute, a bill collector, a card reader and a ticket reader;
meters configured for monitoring credits established via the credit input mechanism and changes to the established credits due to play of the gaming machine, the meters including a credit meter to which credit input via the credit input mechanism is added and a win meter;
a random number generator;
a game play mechanism including a plurality of buttons configured for operation by a player to input a wager from the established credits and to initiate a play of a game; and
a game controller comprising a processor and memory storing (i) game program code, and (ii) symbol data defining reels, and wherein the game controller is operable to assign prize values to configurable symbols as required during play of the game,
the game controller executing the game program code stored in the memory and responsive to initiation of the play of the game with the game play mechanism to:
select a plurality of symbols from a first set of reels defined by the symbol data using the random number generator;
control the display to display the selected symbols in a plurality of columns of display positions during play of a base game;
monitor play of the base game and trigger a feature game comprising free games in response to a trigger event occurring in play of the base game,
conduct the free games on the display by, for each free game, retaining configurable symbols on the display, replacing non-configurable symbols by selecting, using the random number generator, symbols from a second set of reels defined by the symbol data for symbol positions not occupied by configurable symbols, and controlling the display to display the symbols selected from the second set of reels, each of the second reels comprising a plurality of non-configurable symbols and a plurality of configurable symbols, and
when the free games end, make an award of credits to the win meter or the credit meter based on a total of prize values assigned to collected configurable symbols.
The claims of 2017101097 were proposed to be amended on 18 October 2017. Claim 1 states:
A gaming machine comprising:
a display;
a credit input mechanism operable to establish credits on the gaming machine, the credit input mechanism including at least one of a coin input chute, a bill collector, a card reader and a ticket reader;
meters configured for monitoring credits established via the credit input mechanism and changes to the established credits due to play of the gaming machine, the meters including a credit meter to which credit input via the credit input mechanism is added and a win meter;
a random number generator;
a game play mechanism including a plurality of buttons configured for operation by a player to input a wager from the established credits and to initiate a play of a game; and
a game controller comprising a processor and memory storing (i) game program code, and (ii) symbol data defining reels, and wherein the game controller is operable to assign prize values to configurable symbols as required during play of the game,
the game controller executing the game program code stored in the memory and responsive to initiation of the play of the game with the game play mechanism to:
select a plurality of symbols from a first set of reels defined by the symbol data using the random number generator;
control the display to display the selected symbols in a plurality of columns of display positions during play of a base game;
monitor play of the base game and trigger a feature game comprising free games in response to a trigger event using a Hyperlink system wherein the trigger event has a probability related to desired average turnover between successive occurrences of the trigger events on the gaming machine,
conduct the free games on the display by, for each free game, retaining configurable symbols on the display, replacing non-configurable symbols by selecting, using the random number generator, symbols from a second set of reels defined by the symbol data for symbol positions not occupied by configurable symbols, and controlling the display to display the symbols selected from the second set of reels, each of the second reels comprising a plurality of non-configurable symbols and a plurality of configurable symbols, and
when the free games end, make an award of credits to the win meter or the credit meter based on a total of prize values assigned to collected configurable symbols.
The claims of 2017101098 were proposed to be amended on 21 November 2017. Claim 1 states:
A gaming machine comprising:
a credit input mechanism configured to receive a physical item representing a monetary value for establishing a credit balance, the credit balance being increasable and decreasable based at least on wagering activity;
a credit meter configured to monitor the credit balance;
a manually operable player interface configured to, in accord with the wagering activity, initiate play of a base game;
an electronic display having a display area, said display area having a plurality of display positions;
a memory storing data indicative of a set of symbols including a plurality of symbols having a particular characteristic;
an evaluator configured to monitor the occurrence of a trigger event, and to trigger a feature game in response to the occurrence of a trigger event, said feature game comprising a variable number of free games;
a free game counter configured to generate a count representing a number of free games remaining to be played;
and wherein said evaluator is configured to revise said free game counter upon the occurrence of a defined outcome of a free game and to end the feature game when said count reaches a predetermined end count;
wherein, during the feature game, the symbol selector is configured for each free game to:
1) hold at least some of the displayed symbols having the particular characteristic appearing on the display;
2) remove at least one of the displayed symbols without the particular characteristic from the display;
3) select randomly a replacement symbol from the set of symbols to replace a removed symbol without the particular characteristic; and
4) replace the removed said one of the displayed symbols without the particular characteristic with the selected replacement symbol, and
wherein the outcome evaluator is configured to revise the count of the free game counter based on the selected replacement symbol in the outcome of a free game having said particular characteristic and including resetting the count of the free game counter.
Claim 1 of 2017101629 states:
A gaming machine comprising:
a credit input mechanism configured to receive a physical item representing a monetary value for establishing a credit balance, the credit balance being increasable and decreasable based at least on wagering activity;
a manually operable player interface configured to, in accord with the wagering activity, initiate play of a base game;
a credit meter configured to monitor the credit balance;
an electronic display having a display area, said display area having a plurality of display positions;
a memory storing data indicative of a set of symbols including a plurality of special symbols and a plurality of normal symbols;
a symbol selector configured to randomly select, via said data from the memory, and in accord with the wagering activity and the initiated play of a base game, a plurality of symbols from the set of symbols for display via said electronic display during play of the base game;
a display controller configured to cause the display to display the selected symbols; an outcome evaluator configured to monitor play of the base game, and to trigger a feature game in response to a first count of the special symbols being displayed having reached a predefined number of the special symbols during the base game, said feature game comprising a variable number of free games;
a free game counter configured to generate a different second count representing a number of free games remaining to be played;
and wherein said outcome evaluator is configured to end the feature game when said different second count reaches a predetermined end count;
wherein, during the feature game, the symbol selector is configured for each free game to via the electronic display and the display controller:
1) hold at least some of the displayed special symbols appearing on the display;
2) remove at least one of the displayed normal symbols from the display;
3) select randomly a replacement symbol from the set of symbols to replace a removed normal symbol; and
4) replace the removed normal symbol with the selected replacement symbol, and wherein the outcome evaluator is configured to revise the different second count of the free game counter and increment the first count of the special symbols being displayed if the selected replacement symbol is a special symbol; and
a payout mechanism configured to provide a payout associated with the credit balance.
Common aspect of the inventions of 2016101967, 2017101097, 2017101098 and 2017101629
One feature of the invention 967 and 097 is the following:
“conduct the free games on the display by, for each free game, retaining configurable symbols on the display, replacing non-configurable symbols by selecting, using the random number generator, symbols from a second set of reels defined by the symbol data for symbol positions not occupied by configurable symbols, and controlling the display to display the symbols selected from the second set of reels, each of the second reels comprising a plurality of non-configurable symbols and a plurality of configurable symbols, and
when the free games end, make an award of credits to the win meter or the credit meter based on a total of prize values assigned to collected configurable symbols.”
One feature of 098 is the following:
“wherein, during the feature game, the symbol selector is configured for each free game to:
1) hold at least some of the displayed symbols having the particular characteristic appearing on the display;
2) remove at least one of the displayed symbols without the particular characteristic from the display;
3) select randomly a replacement symbol from the set of symbols to replace a removed symbol without the particular characteristic; and
4) replace the removed said one of the displayed symbols without the particular characteristic with the selected replacement symbol, and
wherein the outcome evaluator is configured to revise the count of the free game counter based on the selected replacement symbol in the outcome of a free game having said particular characteristic and including resetting the count of the free game counter.”
One feature of 629 is the following:
“wherein, during the feature game, the symbol selector is configured for each free game to via the electronic display and the display controller:
1) hold at least some of the displayed special symbols appearing on the display;
2) remove at least one of the displayed normal symbols from the display;
3) select randomly a replacement symbol from the set of symbols to replace a removed normal symbol; and
4) replace the removed normal symbol with the selected replacement symbol, and wherein the outcome evaluator is configured to revise the different second count of the free game counter and increment the first count of the special symbols being displayed if the selected replacement symbol is a special symbol;”
The above identified features in all four innovation patents are all directed to essentially the same feature – a “hold and spin” game. The “hold and spin” game of the invention is identified at paragraph 28 of their submissions as one of the aspects of the invention:
“(c) the gaming machine selects via the symbol selector and displays symbols for the display positions that do not currently hold a configurable symbol ("the symbol selector 622A selects symbols from symbol data 642 to be displayed in the other display positions 824 not already displaying a configurable symbol");”
The 967 patent appears to define the “hold and spin” game in its most basic form. The other patents have further aspects which are discussed below.
Further aspect of 967
I cannot find a further characterising feature or aspect of 967 beyond the ‘hold and spin’ game.
Further aspect of 097
The invention of 097 is further characterised by the following feature of the claim:
monitor play of the base game and trigger a feature game comprising free games in response to a trigger event using a Hyperlink system wherein the trigger event has a probability related to desired average turnover between successive occurrences of the trigger events on the gaming machine,
The patentee states at paragraph 29 of their submissions:
The invention may be triggered by any means known in the art, including Aristocrat's HYPERLINK system. The HYPERLINK system, the commercial embodiment of Aristocrat's standard patent no. 754689, provides for a trigger event having a probability related to desired average turnover between successive occurrences of the trigger events on the gaming machine.
Further aspect of 098
The invention of 098 is further characterised by the following feature of the claim:
“wherein the outcome evaluator is configured to revise the count of the free game counter based on the selected replacement symbol in the outcome of a free game having said particular characteristic and including resetting the count of the free game counter.”
The corresponding description states at page 2 lines 13 to 18:
“In an embodiment, the free game counter maintains the count of free games to be awarded in the feature game, and wherein a predefined number of free games is initially awarded when the feature game is triggered.
In an embodiment, said outcome evaluator is configured to reset the count of the free game counter based on said another symbol having said particular characteristic.”
Another corresponding part of the description states:
“Moving on to Figure 9B, the player has spun an additional 4 pearls 902. Accordingly, counter 810 is incremented from 6 to 10 and feature games counter 812 is reset to default, which is 3 feature games in this embodiment. As compared to Figure 9A, the additional pearls 902 are selected for display at display positions C2R3, C3R1, C4R3 and C5R2, and are also held at those positions for the subsequent games.”
The patentee explains in their submissions:
“(e) for each round of the feature game where an additional configurable symbol is selected and displayed, the gaming machine resets the number of rounds to the default number and so the feature game continues ("each time a configurable symbol is displayed and the jackpot is not won, free game counter 812 is reset to the default position by returning control to step 714");”
Further aspect of 629
The invention of 629 is further characterised by the following feature of the claim:
“replace the removed normal symbol with the selected replacement symbol, and wherein the outcome evaluator is configured to revise the different second count of the free game counter and increment the first count of the special symbols being displayed if the selected replacement symbol is a special symbol;”
The corresponding description states at page 12 lines 6 to 10:
“Returning to step 718, if outcome evaluator 623 determines that at least one configurable symbol is displayed on reels 814-822, then that symbol is held on the reel and the configurable symbol counter 810 is incremented at step 724. Outcome evaluator 623 then checks whether a defined number of configurable symbols has been displayed on reels 814-822 at step 726 and, if the defined number has been reached, a jackpot is paid at step 728.”
The patentee explains in their submissions:
“(g) the gaming machine's outcome evaluator checks whether the number of configurable symbols displayed (i.e., original configurable symbols plus additional configurable symbols) has reached a predefined number to trigger a jackpot ("outcome evaluator 623 then checks whether a predefined number of configurable symbols has been displayed on reels 814-822 at step 726 and, if the predefined number has been reached, a jackpot is paid at step 728")”
Contribution to the art
The “hold and spin” game
The aspect of the invention common to all four patents is a feature game known as “hold and spin”. That is, the configurable symbols from the main game are retained (hold) in place while the other symbols are removed and the symbols replaced (spin).
The ‘hold and spin’ aspect of the invention is a game rule. A game rule which is not an artificially created state of affairs in the sense that it does not provide a technical effect. The game that arises as a consequence of the game rules being applied is similarly intangible and thus not a manner of manufacture. Ultimately the game will generate prize money for the winner and revenue for the gaming machine owner – the generation of prize money and revenue is considered a scheme for making money. Schemes for making money are not considered a manner of manufacture.
Consequently I find that the aspect common to all four patents is not a technical contribution to the art.
I also note that the ‘hold and spin’ feature appears to be disclosed in US 2010/0075737 (BLUEMEL). This document was cited in the examination of the grand-parent application 2015210489. This provides another reason why the ‘hold and spin’ game is not considered a technical contribution to the art.
Other aspects of the invention found in 097, 098 and 629
097 - HYPERLINK system
The HYPERLINK system provides for a trigger event having a probability related to desired average turnover between successive occurrences of the trigger events on the gaming machine. This is acknowledged in the description as previously being disclosed in the standard Australian patent no. 754689.
A method for determining a trigger event on a gaming machine is not a technical effect. It is merely an algorithm that facilitates the game. As I have found above, a game does not provide a technical contribution to the art; an algorithm that facilitates the game similarly does not involve a manner of manufacture.
098 – Revising the number of free games based on a characteristic of the special symbol

Revising the number of free games to be awarded based on a characteristic of the special symbol in the feature game is merely an aspect of a game. As I have found above, a game does not provide a technical contribution to the art.
629 – Revising the number of free games if replacement symbol is a special symbol
Revising the number of free games if the selected replacement symbol is a special symbol and incrementing the count of the special symbols is merely an aspect of a game. As I have found above, a game does not provide a technical contribution to the art.
Summary on whether the games provide a contribution to the art
I have found that the ‘hold and spin’ and the additional aspects of the game defined in the claims of the innovation patents do not provide a technical contribution to the art.
Other potential aspects of the invention that could be a technical contribution to the art
The patentee states at paragraph 94:
“To the extent that it is necessary to identify a "technical contribution", "technical effect", solution of a "technical problem" or "improvement in computer technology", the inventions of the Subject Patents confer at least the following technical advantages:
(a) A gaming machine incorporating a specific physical arrangement of components and providing a new feature game;
(b) The feature game of the invention may be triggered from any base game and other feature game and initiated across a range of gaming machines and systems. This flexibility confers substantial technical and non-technical advantages for game designers and operators (i.e., licensed venues), including cost savings and design efficiencies;
(c) The configurable symbols, having the multiple functions described, confer substantial technical advantage, in that they allow those functions to be achieved with a smaller set of symbols;
(d) The ability to award prizes of different types and values using the configurable symbols confers substantial technical advantage, in that the game designer can more readily implement the desired features of the gaming machine including achieving the theoretical return to player (RTP). This also has the benefit of not affecting the underlying base game pay structure;
(e) The visual indication of guaranteed prize values to players confers substantial technical and non-technical advantages, in that players are instantly notified of the winnings in the feature game, and they achieve satisfaction from that knowledge, including by visually informing the player of potential winnings;
(f) The independent reels feature (para 31 above) confers substantial technical advantage, in that the game designer can implement with greater precision the required theoretical RTP. Further, it allows the invention to be overlaid and applied across existing base games;
(g) The HYPERLINK feature confers substantial technical advantages described in Aristocrat '15 at [55].”
I will address each of these points below.
(a) A gaming machine incorporating a specific physical arrangement of components and providing a new feature game
I consider the physical components of the game to be generic. The specific arrangement of the components results in gaming machines with specific games. As discussed above, the specific games of the four patents do not provide a technical contribution to the art.
(b) The feature game of the invention may be triggered from any base game
A feature game is not considered a technical contribution to the art, as discussed above. That the feature game can be triggered from any base game or initiated across a range of gaming machines and systems does make it any more of a technical contribution to the art. I note that I cannot find support for the Patentee’s assertion of ‘design efficiencies’ or cost savings that result from the potential multipurpose use of the feature game. Furthermore, ‘design efficiencies’ or cost savings in the field of game design are not considered technical contributions to the art.
(c) The configurable symbols, having the multiple functions
A smaller set of symbols used in a game is considered either an aesthetic choice or rules of a game. Whether the multiple functions are achieved by a ‘configurable symbol’ or some other means, this is not considered a technical contribution to the art.
(d) The ability to award prizes of different types and values using the configurable symbols
The Patentee argues that the configurable symbols allow the game to be designed to awards prizes of different types and values. As noted above, the assertion of ‘design efficiencies’ is not supported by the description. Furthermore, ‘design efficiencies’ in the field of game design are not considered a technical contribution to the art.
(e) The visual indication of guaranteed prize values
The visual indication of guaranteed prize values is an aesthetic choice or a mere presentation of information and is not considered a technical contribution to the art.
(f) The independent reels feature
The patentee states at paragraph 31:
In one embodiment, during the feature game, each of the display positions has its own individual reel. Further, each of these reels is different from the reels used in the base game ("In another example ... the game controller initiates a feature game using different reels to those used in the base game . [I]ndividual reels are associated with each of the symbol display positions")." In other words, for a 3 x 5 display screen matrix, 15 independent reels are in play with each displaying one symbol in a stop position on the screen rather than the conventional 5 independent vertical reels each displaying 3 symbols from its reel in 3 vertical stop positions on the screen.
The patentee states at paragraph 94:
(f) The independent reels feature (para 31 above) confers substantial technical advantage, in that the game designer can implement with greater precision the required theoretical RTP. Further, it allows the invention to be overlaid and applied across existing base games;
As noted above, the assertion of ‘design efficiencies’ such as “implement[ing] with greater precision the required theoretical RTP” is not supported by the description. Furthermore, ‘design efficiencies’ in the field of game design are not considered a technical contribution to the art.
(g) The HYPERLINK feature
The HYPERLINK feature is already known in the prior art and considered rules of a game. Consequently this aspect is not a technical contribution to the art.
Summary of potential technical contributions
In summary, none of the potential technical contributions to the art listed by the Patentee have been found to be technical contributions to the art.
Substance of the invention
By assessing the potential technical contributions to the art, I have tried to find if the substance of the invention is anything beyond the games and game rules of the gaming machine in each innovation patent. Since I have not found any technical contribution to the art in any of these innovation patents, I conclude that the substance of the invention in each of the innovation patents is indeed games and game rules. Games and game rules are considered a scheme and are not a manner of manufacture.
Is there anything in the descriptions that could form the basis of patentable claims?
I have reviewed the descriptions of each innovation patent and cannot find anything that would provide a technical contribution to the art.
Conclusion
The invention claimed in each of 2016101967, 2017101097, 2017101098 and 2017101629 are not a manner of manufacture.
Furthermore, I can find nothing in the descriptions that could be considered a manner of manufacture. Consequently, I can see no purpose in providing the patentee an opportunity to amend the specification.
Innovation patents 2016101967, 2017101097, 2017101098 and 2017101629 are revoked.
Xavier Gisz
Delegate of the Commissioner of Patents