Aristocrat Technologies Australia Pty Limited - [2017] APO 1

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Aristocrat Technologies Australia Pty Limited [2017] APO 1

Innovation Patent: 2014100124

Title:A Gaming System and a Method of Gaming

Patentee:  Aristocrat Technologies Australia Pty Limited
Delegate:  Dr V. Z. Kolev
Decision Date:  5 January 2017
Hearing Date:  Written submissions filed on 18 October 2016

Catchwords: PATENTS – hearing with respect to Examiner’s objection – whether claimed invention is a manner of manufacture – gaming machine with several playable games – touch screen player interface – selecting one of the several games – selecting one of several bet denominations associated with the selected game – the substance of the claimed invention is in the specific arrangement of playable games of a particular type and the corresponding associated sets of bet denominations – the claimed invention is not a manner of manufacture – subregulation 9A.4(f) – examination continued

Representation: Patent attorney for the Patentee: GRIFFITH HACK

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Innovation Patent: 2014100124

Title:A Gaming System and a Method of Gaming

Patentee: Aristocrat Technologies Australia Pty Limited
Date of Decision: 5 January 2017
DECISION
The invention claimed in all of the claims is not a manner of manufacture.
Under subregulation 9A.4(f), the period for examination runs until 3 (three) months from the date of this decision. Aristocrat Technologies Australia Pty Limited has the remainder of this period to overcome the outstanding ground(s) of revocation and gain certification.
REASONS FOR DECISION

Throughout this decision, unless explicitly stated otherwise, any reference to an Act or a section, subsection, etc. of an Act refers to the Patents Act 1990 (the Act), and any reference to Regulations or a specific regulation refers to the Patents Regulations 1991 (the Regulations).
Background
The matter relates to innovation patent 2014100124 (the Patent, now expired) in the name of Aristocrat Technologies Australia Pty Limited (the Patentee).
The application for the Patent was filed on 12 February 2014 as a divisional of patent application 2012203897 (now lapsed), which in turn is a divisional of patent application 2009251180 (now granted patent), which in turn is a divisional of patent application 2007249148 (now granted patent), which claims priority from provisional application 2007900083 filed on 09 January 2007. Therefore the Patent claims a priority date of 09 January 2007. The Patent was granted on 27 February 2014.
On 15 December 2015, the Patentee requested examination of the Patent and filed proposed amendments under section 104 in anticipation of the Examiner’s report. The Patent was examined as if amended by the proposed amendments and Innovation Patent Examination Report No. 1 (the First Report) was issued on 21 March 2016 with the sole ground of revocation being that “[t]he claims do not define a manner of manufacture”.
On 28 April 2016, the Patentee filed a response providing their reasons as to why the claimed invention is for a manner of manufacture without proposing further amendments. On 7 June 2016, Innovation Patent Examination Report No. 2 (the Second Report) was issued, in which the Examiner considered the Patentee’s arguments but maintained his findings with respect to the manner of manufacture from the previous report.
On 16 August 2016, the Patentee filed a further response providing again their reasons as to why the claimed invention is for a manner of manufacture without proposing further amendments. On 14 September 2016, Innovation Patent Examination Report No. 3 (the Third Report) was issued, in which the Examiner again considered the Patentee’s arguments but maintained his findings with respect to the manner of manufacture from the previous report. I note that, in compliance with IP Australia’s quality assurance practices, the Third Report was reviewed by the Supervising Examiner responsible for the examination section.
On 21 September 2016, the Patentee requested “to be heard by way of an Oral Hearing” with respect to the outstanding ground of revocation in the Third Report. On 28 September 2016, a Delegate wrote a letter to the Patentee in which she allowed “the patentee three (3) weeks from the date of [the] letter to file written submissions addressing the outstanding issues in the examiner’s third report” (emphasis removed). The Delegate also noted in the letter that:
“If the patentee wishes to pursue an oral hearing it should within one (1) week of the date of this letter provide reasons explaining why the matter cannot be adequately dealt with on the basis of written submissions.”
On 18 October 2016, the Patentee filed their written submissions (Patentee’s Submissions). With respect to the issue of oral hearing, the Patentee did not provide any reasons following the Delegate’s invitation, but submitted:
“We note that the Patentee's original request for an oral hearing was denied. However, if the Delegate believes it would assist, the undersigned attorneys are available to discuss any outstanding issues via a teleconference.”
I consider the Patentee’s Submissions sufficiently clear and understandable, hence I do not believe that a teleconference would be of any further assistance. Therefore I will decide on the validity of the sole ground of revocation in the Third Report, i.e. manner of manufacture, taking into consideration the Patentee’s Submissions and the specification on file as if amended by the proposed amendments.
The Patent Specification
The body of the specification
The description starts with the section “Field of the Invention” which is reproduced below:
“The present invention relates to a gaming system and a method of gaming.” (page 1, lines 5-6)
The next section is “Background of the Invention” and it reads:
“It is known to provide a gaming system which comprises a game controller arranged to implement any one of a plurality of games, the game implemented by the gaming system being selectable by a player[.]
However, while such gaming systems provide users with enjoyment, a need exists for alternative gaming systems in order to maintain or increase player enjoyment.” (page 1, lines 10-17)
This is followed by the section “Summary of the Invention” which consists entirely of consistory statements corresponding to the 5 claims.
The Patent relates to a gaming system or a gaming machine (as claimed) of the type where a player can bet a certain amount of money and execute a game of chance with a certain probability of wining extra money or, alternatively, losing the betted amount. The gaming machine is capable of providing several different games and the player can select which one of the games they wish to play. The means for selecting the desired game by the player is known as a user interface or a player interface. The player interface is normally implemented by an electronic display to dynamically provide information to the player (e.g. about the available games, etc.) and specialised buttons or other input devices to capture the player’s choice (e.g. the selected game to play, etc.). The touch sensitive displays (commonly known as touch screens) are convenient devices which combine both functions of dynamically providing information and capturing the player’s choice when the player touches the screen. This combined functionality results in intuitive operation of the device, often making it the preferred design choice for a player interface.
Each game that can be played on the gaming machine has one or more possible bet denominations (i.e. amounts of money that can be betted when playing the game), which can be different for different games:
“The present gaming system 10 operates such that each selectable game has one or more associated bet denominations with at least one bet denomination of at least one of the games being different to at least one bet denomination of at least one of the other games.” (page 4, lines 21-25)
The specification provides with reference to Figures 1 to 5 some details regarding various possible implementations of the described gaming system (e.g. as a standalone gaming machine, client-server implementations or a networked gaming system as well as different components that may or may not be included in a particular implementation). I do not consider necessary to discuss these in detail as the claimed invention is specifically directed to a gaming machine and the different component options discussed in the description are not included in the claims.
I observe that the specification puts certain emphasis on the functionality of providing the player with the possibility to select a desired game and a desired one of the bet denominations associated with this game:
“…it is possible to provide a player with the option of selecting a game and selecting a bet denomination from specific denominations uniquely assigned to the game.
During use, the gaming system 10 operates such that a player is provided with the option of selecting a game, and where the selected game has more than one associated bet denomination, with the option of selecting the desired bet denomination for the game.” (page 4, line 29 to page 5, line 2)
“The gaming system 10 comprises a player interface 30 and a game controller 32. The player interface 30 is arranged to enable interaction between a player and the gaming system and for this purpose includes input/output components required for the player to enter instructions and play the game.” (page 5, lines 11-16)
“Components of the player interface 30 may vary but will typically include … one or more displays 36 which may comprise a touch screen…” (page 5, lines 18-21)
“The game controller 32 is in data communication with the player interface 30 and typically includes a processor 40 arranged to process game play instructions and output game player outcomes to the display 36.” (page 5, lines 25-28)
“The game controller 32 also comprises a game selector 24 arranged, in this example in association with the display 36 … to facilitate selection by a player of a game to be implemented by the gaming system 10, and a denomination selector 26 arranged, in this example in association with the display 36 … to facilitate selection by a player of a bet denomination to be used during implementation of the selected game.” (page 6, lines 25-33)
“In the embodiments described below, the game selector 24, the denomination selector 26, … are at least partly implemented using the processor 40 and associated software, although it will be understood that other implementations are envisaged.” (page 7, lines 4-8)
As described above, the player interface could be a touch screen and is used by the player to select their desired game (from the several possible games) and to choose the particular bet denomination they wish to use for the selected game (from the possible bet denominations associated with the selected game). The player interface is controlled by a game controller which could incorporate a digital processor. The functions of the game selector and the denomination selector can also be implemented by the processor.
The way in which the player interface operates for selecting games and bet denominations by the player is described with reference to Figures 6 and 7, both reproduced below.
I consider the diagram of Figure 6 self-explanatory. With respect to Figure 7 (which illustrates exemplary view of the touch screen implementing the player interface), the description explains:
“… Each of the games has an associated graphical identifier (not shown) including indicia representative of the game disposed in game regions 280, 282, 284, 286.
In this example, the display 48 is a touch screen display and a game is selectable by a player by touching a denomination identifier 290 associated with the desired denomination amount and the desired game.
The gaming system then implements the selected game using the selected bet denomination.
It will be understood that other variations are possible. For example, the gaming system may first require a player to select a desired game, then subsequently require a player to select a desired denomination, or alternatively the gaming system may first require a player to select a desired denomination, then subsequently require a player to select a desired game.
In the present example, each game has multiple available bet denominations with the available denominations for two games being the same and the available denominations for the remaining two games also being the same.” (page 14, line 26 to page 15, line 13)
I note that with respect to selecting a desired game and a desired one of the bet denominations associated with this game, several possibilities (or “variations”) are described. These include a single-step selection (in which the player selects both the game and bet denomination by a single touch of the screen) as well as a two-step selection (in which the player touches the screen twice to select separately the game and the denomination). Although the latter possibility, in which the player selects the game and then the bet denomination, is claimed (see below), no particular preference or specific emphasis is apparent with respect to this (or indeed any other) possibility.
The claimed invention
The Patent includes 5 claims and they are reproduced below:
“1. A gaming machine comprising:
an electronic game controller; and
a touch sensitive display that is electrically coupled to the game controller,
wherein:
the game controller is arranged to facilitate a play of any one of a plurality of games available on the gaming machine, each of the plurality of games being a spinning reel game of chance;
a first set of a plurality of denominations is associated with at least a first two of the plurality of games, and a second set of a plurality of denominations is associated with at least a second two of the plurality of games, the second set of a plurality of denominations being different to the first set of plurality of denominations; and
the game controller is further arranged to:
cause a simultaneous display of a plurality of separate image elements on the touch sensitive display, wherein separate image elements identify each of the at least a first two of the plurality of games and separate image elements identify each of the at least a second two of the plurality of games;
enable a player to make an initial selection of one of the at least a first two of the plurality of games or one of the at least a second two of the plurality of games by touching the touch sensitive display; and
subsequent to the player making the initial selection of one of the at least a first two of the plurality of games or one of the at least a second two of the plurality of games, enable the player to select any one of the plurality of different bet denominations associated with the selected game by touching the touch sensitive display.
2. A gaming machine as claimed in claim 1, wherein a difference between the first set of a plurality of different bet denominations and the second set of a plurality of bet denominations is that the first and second sets do not have any bet denominations in common.
3. A gaming machine as claimed in claim 1 or claim 2, wherein a difference between the first set of a plurality of different bet denominations and the second set of a plurality of bet denominations is that each bet denomination of the first set has a value that is greater than the value of each bet denomination of the second set.
4. A gaming machine as claimed in any one of claims 1 to 3, wherein the at least a first two of the plurality of games is two games and the at least a second two of the plurality of games is two games.
5. A gaming machine as claimed in any one of claims 1 to 4, wherein a further game has one bet denomination.”
The claims do not present any construction difficulties and their interpretation is straightforward.
In summary, claim 1 defines a gaming machine with a controller and a touch sensitive display (i.e. a touch screen). A plurality of spinning reel games of chance can be played on the machine. Two groups of games, each group comprising at least two games are defined. Each game in the groups has an associated set of bet denominations which is identical for the games of the same group and different between the groups. Separate image elements corresponding to each game in the groups are displayed on the touch screen. By touching the screen, the player selects the game they wish to play. After this selection, again by touching the screen, the player selects one denomination from the set of bet denominations associated with the selected game.
Dependent claims 2-5 add further details related to the arrangement of the games into groups and the associated bet denominations.
The Objection in the Third Report
As already mentioned, the sole outstanding objection in the Third Report relates to the manner of manufacture, and it is reproduced below:
“The objection from the previous report is maintained. The Applicant's arguments have been carefully considered however they are not persuasive. As the Applicant refers to the Aristocrat Technologies Australia Pty Limited [2016] APO 49 (22 July 2016) decision, I direct them to paragraph 47 which considers the state of the art in 2003, keeping in mind a priority date of the instant application of 2007. It was considered standard practice in 2003 to have a two stage selection process of game and denomination. The alleged effects stated in the examination response do not constitute what is considered a material advantage in the useful arts. In other words I cannot see any technical improvement upon an already known two stage process through arguing about its already known benefits. The substance of the invention appears to be a particular scheme of associating bet denominations with certain games and allowing player selection of these in a two part process. As per the decision and the discussion above, this provides no technical contribution. The claims do not define a manner of manufacture.”
The Patentee’s Submissions
With respect to the way in which the present hearing was conducted, the Patentee states that:
“Although it was the preference of the Patentee to be heard by oral submissions, the Patentee has accepted the direction to proceed on the basis of Written Submissions. In view of this, should the Delegate determine that an outstanding ground of revocation remains, the Patentee requests that it be provided with time under regulation 9A.4(f) to make amendments to address the ground of revocation.” (Patentee’s Submissions at [8], emphasis added)
As I already discussed, in compliance with the principles of procedural fairness, the Patentee was provided an opportunity to explain “why the matter cannot be adequately dealt with on the basis of written submissions”. The Patentee chose not to utilise this opportunity. In addition, I do not consider that the application of subregulation 9A.4(f), quoted above by the Patentee, results in a different outcome for oral hearings and for hearings based on written submissions.
Regarding the Patent, the Patentee submits “…that the invention as claimed is for a manner of manufacture and therefore satisfies sub-section 18(1A)(a), and thus there are no grounds for revoking the Patent”, and based on this requests “…that a Certificate of Examination be issued in accordance with the provisions of section 101E” (Patentee’s Submissions at [7]).
In support of their submission, the Patentee provides a summary of the statutory requirements and the relevant case law. While I will not comment in detail on the Patentee’s interpretation of the law on manner of manufacture, I note the Patentee’s emphasis that:
“When determining the substance of the invention, reference may be made to the specification as a whole. However, it is incorrect to refer to disclosure outside of the specification, such as specific items of prior art.” (Patentee’s Submissions at [26])

As a consequence, the patentee submits “that the ground of revocation of manner of manufacture raised in the Third Report is based on erroneous reasoning” (Patentee’s Submissions at [49]), because:
“The Second and Third Reports clearly import into their reasons consideration of prior art documents as the state of the art … As discussed, it is improper to import into the analysis of manner of manufacture specific prior art disclosures as the state of the art.” (Patentee’s Submissions at [51])
In support of their statement that the claimed invention is for a manner of manufacture, the Patentee further submits that:
“The invention is directed towards a gaming machine having novel and innovative features….
…The controller and display are defined in terms of the inter-working relationship between them – the controller is arranged to cause the display to operate in a particular manner, and the display is arranged to receive player inputs from which the controller can take certain defined actions.” (Patentee’s Submissions at [10-11])
The Patentee also expresses their views on the substance of the claimed invention as well as on the advantages brought by the invention, both of which I will discuss later in this decision.
The Law
On 15 April 2013, the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 commenced which resulted in significant amendments to the Act and Regulations. The request to examine the Patent was filed on 15 December 2015 which is after the above mentioned commencement date. As a consequence, the Patent was examined under the Act and Regulations as amended by the Raising the Bar Act.
With respect to the manner of manufacture, subsection 18(1A) states:
“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; …”
A detailed analysis of the relevant case law was provided by the Delegate in Aristocrat Technologies Australia Pty Limited [2016] APO 49 (Aristocrat) at [28-34] (the decision mentioned in the Third Report as quoted above). I do not consider it necessary to reiterate the Delegate’s analysis, however I will emphasise the importance placed on considering the claimed invention as a matter of substance on a case-by-case basis:
“… the High Court [in National Research Development Corporation v Commissioner of Patents [1959] HCA 67 (NRDC)] was not laying down a precise formulation that can be applied unthinkingly:
‘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 is made most succinctly by Gageler and Nettle JJ in the Myriad case [D'Arcy v Myriad Genetics Inc [2015] HCA 35]:
‘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 Commissioner of Patents v RPL Central Pty Ltd [[2015] FCAFC 177] (RPL) the Full Court of the Federal Court said the same thing in the context of an invention that was in substance a scheme:
‘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. Where the claimed invention is to a computerised business method, the invention must lie in that computerisation. It is not a patentable invention simply to “put” a business method “into” a computer to implement the business method using the computer for its well-known and understood functions.
Is the mere implementation of an abstract idea in a well-known machine sufficient to render patentable subject matter? Is the artificial effect that arises, because information is stored in RAM and there is communication over the Internet or wifi, sufficient? Does any physical effect give rise to a manner of manufacture? Are the mere presence of an artificial effect and economic utility, without more, sufficient to determine manner of manufacture?
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.’” (Aristocrat at [30-32], emphasis in the original, references removed)
Following his detailed analysis of the relevant case law, the Delegate helpfully provided at [35] of the Aristocrat decision a summary of the matters to be considered in determining whether the invention is a manner of manufacture:
“I conclude that it is relevant to consider a range of matters. Without seeking to be exhaustive, these include:
• there must be more than an abstract idea, mere scheme or mere intellectual information;
• is the contribution of the claimed invention technical in nature;
• does the invention solve a technical problem within the computer or outside the computer;
• does the invention result in improvement in the functioning of the computer, irrespective of the data being processed;
• does the application of the method produce a practical and useful result;
• can it be broadly described as an improvement in computer technology;
• does the method merely require generic computer implementation;
• is the computer merely an intermediary or tool for performing the method while adding nothing of substance to the idea;
• is there ingenuity in the way in which the computer is utilised;
• does the invention involve steps that are foreign to the normal use of computers; and
• does the invention lie in the generation, presentation or arrangement of intellectual information.”
I note that the Aristocrat decision was concerned with a technology area similar to that of the instant Patent, hence I consider the Delegate’s analysis highly relevant to the present decision.
As I already mentioned, the Patentee submits that in deciding the issue of manner of manufacture, “it is incorrect to refer to disclosure outside of the specification, such as specific items of prior art”. Consequently, the Patentee notes that the recent Court decisions on manner of manufacture must be interpreted accordingly:
“RPL Central at 96 does make the observation that: ‘[i]t is not a patentable invention simply to “put” a business method “into” a computer to implement the business method using the computer for its well-known and understood functions’. However, given the decision in Ramset, this statement clearly cannot be intended as being supportive of an analysis including reference to prior art disclosures.” (Patentee’s Submissions at [30], emphasis in the original)
“We submit the reference to using a ‘computer for its well- known and understood functions’ in RPL Central must be read as an analysis that looks at the claimed invention within the context of the specification as a whole only; this is not a statement supporting the proposition that reference may be made to specific prior art disclosures.” (Patentee’s Submissions at [32], emphasis in the original)
Notwithstanding the relevant Authorities, I must emphasise that the specification is to be read through to eyes of the skilled addressee which involves analysing the text in light of the knowledge of the art that the skilled addressee would have. To the extent that the Patentee might appear to suggest that the specification is to be read in complete isolation, I disagree.
A patent specification would seldom directly admit in a clear and unambiguous terms that the computer implementation relies solely on known uses of the computer. Hence in most cases, it is the knowledge that the skilled addressee would bring to the specification that will allow a determination to be made of whether the described computer utilisation is merely relying on known uses of the computer or not. Furthermore, I consider that the concept of “well-known and understood functions” of the computer (as per RPL Central as quoted by the Patentee) in itself implies a degree of knowledge and understanding extending beyond any disclosure in the specification when read in isolation. In other words, for the purpose of deciding the issue of manner of manufacture, the claimed invention is to be considered as a matter of substance as determined through the eyes of the skilled addressee. If the specification were to be read in complete isolation, the outcome becomes dependent on the form of the specification or the specific style of drafting, which may point towards a fictional “substance” with the true substance of the invention remaining concealed.
As to the Second and Third Reports importing “consideration of prior art documents as the state of the art”, as asserted by the Patentee, I note that the manner of manufacture objection in both reports do not refer explicitly to any prior art documents. With respect to “the state of the art”, I consider this to be closely related to the knowledge of the skilled addressee, in light of which, as I already mentioned, the specification is to be read. This is distinct from any “specific prior art disclosures”.
The Third Report makes a reference to the Aristocrat decision in which the Delegate did refer to a couple of prior art documents. In that respect, the Patentee comments:
“… Particularly, the Examiner refers to paragraph 47 of Aristocrat, reproduced below:
‘The specification does not direct any attention to the aspect of a single action to select both the game and the bet denomination. It was known to select a game from a list of options on a gaming machine (this is mentioned in the document D3 in the examination report in relation to the 658 application). It was also known to select the bet denomination on a gaming machine (this is mentioned in the document D5 in the examination report in relation to the 658 application). Combining the two into a single action is not mentioned in the prior art referenced by the examiner. Combining two choices into a single action would seem to represent an advance, but one that is not highlighted in the words of the specification but has to be inferred by the reader from their general understanding of the art.’
…
… we submit that, although reference is made in this paragraph to specific prior art, this is done so to assist with establishing the context of the invention. This can be inferred from the underlined [sic] portion, which notes that the specification did not ‘direct any attention to the aspect of a single action to select both the game and the bet denomination’. Thus, the Delegate appears to make reference to the prior art in order to assist with identifying the context in which the invention was made. The Delegate was not referring to the prior art to establish identify [sic] the inventive ‘merits’ of the invention.” (Patentee’s Submissions at [52-54], emphasis in the original)
While not entirely sure of the exact meaning the Patentee ascribes to “the context in which the invention was made”, I consider that the Delegate made these references in order to exemplify the knowledge of the art that the skilled reader would have. This is supported by the last sentence of the above quoted paragraph [47] of Aristocrat (emphasis added): “[c]ombining two choices into a single action would seem to represent an advance, but one that is not highlighted in the words of the specification but has to be inferred by the reader from their general understanding of the art”. Therefore the advance of “[c]ombining two choices into a single action” is not identifiable if the specification were to be read in complete isolation, but becomes apparent when the “general understanding of the art” possessed by the skilled addressee is considered.
The Patentee summarises their view on the way of determining whether an invention is a manner of manufacture in the following statement:
“Therefore, we submit, the correct analysis of manner of manufacture (in the context of computer implemented inventions) requires the determination of the substance of the invention, where necessary with reference to the specification as a whole but not with reference to prior art disclosures. Once the substance is determined, a claimed invention is for a manner of manufacture if it is for more than mere intellectual information.” (Patentee’s Submissions at [34], emphasis in the original)
I have already discussed the law on manner of manufacture. In light of that discussion, I find that the Patentee’s conclusion above does not appear to account for the full complexity of the issue.
The Substance of the Claimed Invention
In order to identify the substance of the invention, I will analyse the claims and the body of the specification. As discussed earlier, the specification is to be read through to eyes of the skilled addressee which involves analysing the text in light of the knowledge of the art that the skilled addressee would have.
Interpretation of the invention as claimed
The Patent ends with 5 claims which were already reproduced above. Initially, I will restrict my discussion to the features of claim 1 which is the only independent claim.
Defined is a gaming machine with a controller and a touch sensitive display (i.e. a touch screen). A plurality of spinning reel games of chance can be played on the machine. Except for the specific limitation to only particular types of games, I consider this type of gaming machines well known in the art (see also the section “Background of the Invention” as quoted at paragraph [11] of this decision).
The plurality of games that can be played on the machine are arranged such that at least four games of the plurality are divided into two groups of at least two games each, wherein all games of either one of the groups have identical associated sets of denominations and the games of different groups have different associated sets of denominations. This means that there are two different sets of denominations, one for each group of games. This arrangement appears rather specific and, on balance, I consider that it may well be contributing to the art.
Separate image elements are displayed on the touch sensitive display, wherein each one of the games in the two groups is identified by a corresponding image element. By touching the screen, the player selects one of the games (i.e. the game the player wishes to play), the selected game belonging to either of the two groups. I consider that presenting the player with a plurality of separate image elements each one identifying a playable game and providing the opportunity to select a game by touching the screen is the normal way of operation for known gaming machines with a plurality of playable games (see also the section “Background of the Invention” as quoted at paragraph [11] of this decision).
After this selection, again by touching the screen, the player selects one denomination from the set of denominations associated with the selected game. I note that this feature is more generic in that it does not define the way in which the player is informed of the available options (i.e. the set of denominations) so that the player could select one of them. In addition, I consider gaming machines with games having sets of possible bet denominations, wherein the player can select a bet denomination from the set, to be well known in the art.
Furthermore, in the above quoted paragraph [47] of the Aristocrat decision, the Delegate found that “[i]t was known to select a game from a list of options on a gaming machine” and that “[i]t was also known to select the bet denomination on a gaming machine” at the priority date of the applications subject to the Aristocrat decision. As mentioned in the Third Report, the Patent has a later priority date, and I agree with the Examiner that this knowledge about selecting games and denominations would also form part of the knowledge of the art possessed by the skilled addressee at that later date.
The Patentee does not appear to disagree with the Delegate’s findings, however the Patentee asserts that there is more to the claimed invention than the consecutive selection by the player of the game and the bet denomination:
“Furthermore, the substance of the claimed invention is not merely directed towards a known two-step process. As discussed at paragraphs 35-48, the invention provides a new interface defined by an inter-working relationship between the claimed display of information and the claimed manner by which the player interacts with the gaming machine. It is improper to consider these components independently from one another without regard to the specific inter-working relationship between them. We submit that the substance of the invention constitutes more than a ‘conventional’ two-step selection process–the specific inter-working relationship is not known in the prior art.” (Patentee’s Submissions at [55]).
I note that, by design, a touch screen is an interface device providing information to a user and receiving the user’s input, based at least in part on the provided information. Any implementation of the “‘conventional’ two-step selection process” would also require some form of “an inter-working relationship between the … display of information and the … manner by which the player interacts with the gaming machine”. With respect to the “new interface defined by an inter-working relationship between the claimed display of information and the claimed manner by which the player interacts with the gaming machine” (emphasis added), I cannot see anything extending beyond the normal operation of a touch screen. Indeed, the controller causes the touch screen to present options to the player by displaying indicia (i.e. “separate image elements”) each corresponding to one of the playable games, the player makes their selection by touching the touch screen, and then the player is enabled “to select any one of the plurality of different bet denominations associated with the selected game by touching the touch sensitive display”, the player’s knowledge of the available denominations necessary for making the selection being implied.
Based on the interpretation of claim 1 alone, I conclude that the only features going beyond the normal operation of known gaming machines are related to the fact that all games are spinning reel games of chance and to the specific way in which the games are divided into groups with group-specific associated sets of bet denominations as discussed above.
Having considered claim 1, I will now turn to dependent claims 2-5. I note that these claims do not relate to the way in which the player selects the game and the bet denomination, but indeed add only features that generally introduce further details of the specific way in which the games are divided into groups with group-specific associated sets of bet denominations. I consider this fact a useful indicator supporting the view I formed while analysing claim 1 with respect to the features potentially contributing to the art.
Having interpreted the claims, I will now consider the body of the specification to identify any disclosure that could be of further assistance in identifying the substance of the claimed invention.
Analysis of the body of the specification
I have already discussed the body of the specification and noted that the specification puts certain emphasis on the functionality of providing the player with a possibility to select a desired game and a desired one of the bet denominations associated with this game. However, I also found that with respect to selecting the game and bet denomination, several possibilities (or “variations”) are described, including a single-step selecting as well as the claimed two-step selecting, with no particular preference or specific emphasis apparent with respect to any of these possibilities.

I also quoted the section “Background of the Invention”, which states that “a need exists for alternative gaming systems in order to maintain or increase player enjoyment”. I do not consider this in itself a technical problem, and this statement only adds further weight to the view that the invention does not appear to aim at providing a technical contribution to the art.
In summary, I do not consider that the disclosure in the body of the specification provides any further insights that warrant re-consideration of my understanding of the nature of the Inventor’s contribution to the art gained by analysing the claims.
The substance of the claimed invention – conclusion
Based on my analysis of the claims and the body of the specification, I concluded that the only features that appear to be a potential contribution to the art are related to the fact that all games are spinning reel games of chance and to the specific way in which the games are divided into groups with group-specific associated sets of bet denominations.
These features are the only ones that are defined with any specificity in the claims. These features are also apparent in the description, but there is no particular emphasis on them or any other features.
With respect to the substance of the invention, the Patentee submits that:
“… it is the novel interface that allows selection of one of these games to which the invention is directed and which is properly understood as the substance of the invention.” (Patentee’s Submissions at [14])
“… the substance of the claimed invention is a gaming machine comprising an interface comprising a specific inter-working relationship between a controller (1.1) and a display (1.2), where the display also acts as means for receiving a player input through touch sensitivity. The invention defines a specific presentation of information and controlling interaction with that presentation in a specific manner, in order to facilitate selection of a game to play.” (Patentee’s Submissions at [35], emphasis added)
“The substance of the invention is therefore a new and innovative interface (defined by the inter-working relationship between the controller and the display). The display, as operated by the controller, provides a useful means for both presenting information to the player and receiving input from the player.” (Patentee’s Submissions at [42])
“In summary, we submit that the invention as claimed is a gaming machine comprising a new and innovative interface. When reading the specification as a whole, the substance of the invention is a new machine and not mere intellectual information. Therefore, we submit that the invention is for a manner of manufacture.” (Patentee’s Submissions at [48])
It is clear that the Patentee regards the player interface as part of the substance of the claimed invention. However, I consider that the “specific inter-working relationship” between the controller and the touch screen merely utilises in a normal way the known properties of known gaming machines with controllers and touch screens. Any specificity or uniqueness (e.g. in the programming required to implement the interface) is a mere consequence of the specific arrangement of playable games of a particular type and associated denominations as mentioned above. In addition, the specification does not appear to suggest that anything beyond known routine programming techniques is required to realise this specific arrangement of playable games and associated denominations when implementing the player interface.
The Patentee also submits that:
“The display defined by the inter-relationship of integers … provide the player of the gaming machine with useful information in a concise and clear manner. That is, the player knows both the games available to play and the denominations in which it can be played.” (Patentee’s Submissions at [40], emphasis added)
I disagree with the above statement and note that the claims are not limited to the situation (e.g. as illustrated on Figure 7) where the denominations associated with each selectable game are displayed and available to the player at the step of selecting the game. Indeed, claim 1 does not define at all the display of information regarding the available denominations. The relevant parts of claim 1 are reproduced below (emphasis added):
“… the game controller is further arranged to:
cause a simultaneous display of a plurality of separate image elements on the touch sensitive display, wherein separate image elements identify each of the at least a first two of the plurality of games and separate image elements identify each of the at least a second two of the plurality of games;
enable a player to make an initial selection of one of the at least a first two of the plurality of games or one of the at least a second two of the plurality of games by touching the touch sensitive display; and
subsequent to the player making the initial selection of one of the at least a first two of the plurality of games or one of the at least a second two of the plurality of games, enable the player to select any one of the plurality of different bet denominations associated with the selected game by touching the touch sensitive display.”
Similar arguments, not relevant to the claimed invention, are further provided by the Patentee:
“This interface as claimed provides a technical solution providing a number of tangible advantages to the player. The player is made aware of the different games and associated denominations through the improved display, and then selects a game. Before gameplay begins, the claimed invention requires that the player undertakes a second selection action. This second interaction by the player provides additional advantages to the player experience.” (Patentee’s Submissions at [43], emphasis added)
“In the present case, for example, the two-step selection process provides a solution to the risk of selecting an undesired game or denomination. This is achieved by providing the player with an opportunity to correct their selection before entering the game–that is, a two-step selection process affords the player an opportunity to reassess and change their mind. This feature is combined with the claimed display of information, which in the ordinary course of events should allow the player to make the selection correctly based on the initial display of information. That is, the player is provided with a visual representation of all of the game/denomination options and upon making a selection also has the benefit of potentially correcting an incorrect selection.
Accordingly, these components work together to improve the prospects of a player making a desired selection by being able to view the available options upfront, and subsequently providing a two-step selection process that further reduces the risk of making an undesired selection, thereby improving the overall user experience. This improvement is due to the inter-working relationship of the controller and information displayed on the display, and is clearly not a result of ‘mere intellectual information’.” (Patentee’s Submissions at [46-47], emphasis added)
In addition to my disagreement with the Patentee’s apparent assertion that the highlighted features in the above quoted paragraphs are present in the claimed invention, I note that despite using expressions like “provides a technical solution providing a number of tangible advantages” and “the two-step selection process provides a solution to the risk of selecting an undesired game or denomination” (emphasis added), the Patentee does not provide a detailed discussion of the exact problem(s) to which the claimed invention provides a solution. If “the risk of selecting an undesired game or denomination” is one of the problems, this does not appear in the specification and the Patentee does not provide a convincing explanation with respect to how this risk is overcome by the claimed invention.
In that respect, I do not see how the “two-step selection process affords the player an opportunity to reassess and change their mind” and how the player is provided “with an opportunity to correct their selection before entering the game”. Nothing in the claimed invention suggests that the player is indeed provided with this opportunity. The mere fact that the selection process requires two steps does not provide this opportunity unless the player has options of re-selecting a game or going back after the selection, neither of which is present in the claims. It is even less convincing to state that the claimed invention “provides a solution to the risk of selecting an undesired … denomination”, given that the selection of denomination is the second (last) step of “the two-step selection process”, after which presumably the selected game begins (or, in other words, is implemented as shown on Figure 6).
As discussed above, I note that some of the Patentee’s submissions are based on reading into the claimed invention features that are not present in the claims. I do not find these submissions helpful. Furthermore, even if the features in question were included in the claims, it does not appear that they would have the potential to alter the substance of the claimed invention.
I conclude that the substance of the claimed invention is in the specific arrangement of playable games of a particular type (i.e. only spinning reel games of chance) and their respective sets of bet denominations in which the playable games form two groups of at least two games each, wherein all games of either one of the groups have identical associated sets of bet denominations and games of different groups have different associated sets of bet denominations.
Is the Invention a Manner of Manufacture under Paragraph 18(1A)(a)
I must emphasise that the requirement for the claimed invention to be a manner of manufacture under paragraph 18(1A)(a) is independent from the requirement for it to be novel and to involve an innovative step under paragraph 18(1A)(b). The fact that the claimed invention was considered novel and innovative is not relevant to the consideration of manner of manufacture.
Having determined that the substance of the claimed invention is within the specific arrangement of playable games of a particular type and the corresponding associated sets of bet denominations, I now return to the range of matters to be considered in determining whether the invention is a manner of manufacture as provided by the Delegate in the Aristocrat decision and quoted at paragraph [36] of this decision.
I do not consider that the substance of the claimed invention is more than an abstract idea. Further considering the claimed invention as a matter of substance, I find that its contribution is not technical, it does not solve a technical problem, and although it might “maintain or increase player enjoyment” it does not result in improved functioning of the gaming machine. The claimed invention does not produce a practical and useful result, and it cannot be described as an improvement in computer (or computer-based gaming machine) technology. The computer implementation is generic without any ingenuity or steps foreign to the normal use of the computer or the player interface.
The specific arrangements of games and bet denominations as defined in the claims appear novel and innovative, since no objections were raised by the Examiner in that respect; however I consider these arrangements to be of abstract nature. They relate to a scheme of organising the playable games in a known gaming machine capable of implementing a plurality of games each having a set of bet denominations. In light of the above analysis, I do not consider this a manner of manufacture under paragraph 18(1A)(a).
Conclusion
I found that the invention as claimed in all of the claims is not a manner of manufacture, hence this ground of revocation remains outstanding.
I consider that the body of the specification provides sufficient support for amendments that could potentially overcome this ground of revocation. For example, disclosed but not claimed is an interface operating in a very similar way to that subject to the Aristocrat decision in which the Delegate found that the invention was a manner of manufacture. However I remind the Patentee that the applications subject to the Aristocrat decision have earlier priority than the Patent and, in proposing amendments to the Patent, the Patentee should take into account the disclosure of these earlier applications to avoid potential novelty and/or innovative step objections.
Dr V. Z. Kolev
Delegate of the Commissioner of Patents