Aristocrat Technologies Australia Pty Limited - [2016] APO 49

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Aristocrat Technologies Australia Pty Limited [2016] APO 49

Patent Applications: (1) 2013204646
(2) 2013204658

Titles:(1) Improved multi-game gaming machine
(2) Improved multi-game gaming machine

Patent Applicant:                   Aristocrat Technologies Australia Pty Limited
Delegate:  Dr S.D. Barker
Decision Date:  22 July 2016
Hearing Date:  Written submissions filed on 27 June 2016

Catchwords: PATENTS – examiner objection – manner of manufacture – gaming machine – substance of the invention is the presentation of game information in a way that allows the game and bet denomination to be selected in a single action – invention is a manner of manufacture

Representation: Patent attorney for the applicant: Griffith Hack

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Applications: (1) 2013204646
(2) 2013204658

Titles:(1) Improved multi-game gaming machine
(2) Improved multi-game gaming machine

Patent Applicant: Aristocrat Technologies Australia Pty Limited
Date of Decision: 22 July 2016
DECISION
The sole outstanding objection to application 2013204646 has been overcome. I accept the patent request and complete specification relating to that application.
The objection of manner of manufacture in relation to application 2013204658 has been overcome. Pursuant to regulation 13.4(1)(g), the application will not lapse for failure to gain acceptance until 3 months from the date of this decision. Aristocrat has the remainder of that period in order to address the objections of lack of inventive step.
REASONS FOR DECISION

The present matter relates to whether an invention is a manner of manufacture.
Background
Patent application number 2013204646 (the 646 application) was filed by Aristocrat Technologies Australia Pty Limited (Aristocrat) on 12 April 2013. The 646 application is a divisional application of 2012261706 (which itself is a divisional application of 2010246396, which is a divisional application of 2004203291). The earliest priority date for the 646 application is 6 August 2003.
Patent application number 2013204658 (the 658 application) was filed by Aristocrat on 12 April 2013. The 658 application is a divisional application of 2012261706 (which is also the parent of the 646 application).
Aristocrat requested examination of both applications on 12 April 2013, so the substantive amendments of the Patents Act (the Act) brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 do not apply to these applications.
Both applications received a first examination report issued on 5 November 2014, and a second report on 14 April 2016. A third report issued in relation to the 646 application on 2 June 2016. The sole outstanding objection in relation to the 646 application is that claims 1 – 26 are not a manner of manufacture. Aristocrat asked to be heard in relation to the examination report, and filed written submissions. The 658 application has an outstanding manner of manufacture objection in relation to claims 1 – 21, and inventive step objections in relation to claims 1 – 21. Aristocrat asked to be heard in relation to the manner of manufacture objection only, and asked that it be decided with the 646 application. Aristocrat made submissions in the context of the 646 application, but they apply equally to the 658 application. My decision will address the specification of the 646 application specifically, and on this basis I will decide the 658 matter.
The specification
The specification relates to gaming machines. Historically, gaming machines were mechanical devices with spinning reels (known commonly as poker machines). Modern gaming machines are electronic devices that simulate the appearance of mechanical devices, while some simulate other games such as card games and casino games. The appearance and mode of operation of the game depends on the programming and the rules of the game as embedded in that programming.
The specification explains the background to the invention as follows:
"Players who regularly play gaming machines quickly tire of particular games and therefore it is necessary for manufacturers of these machines to develop innovative game features which add interest to the games. In so doing, it is hoped to keep players amused and therefore willing to continue playing the game as well as to attract new players."[1]
[1] AU 2013204646 at page 1.
Additionally, there is intense competition between gaming machine manufacturers, making it necessary to develop new games:
"gaming machine manufacturers are keen to devise games and/or features which are popular with the players as a mechanism for improving sales, retaining customers and attracting new customers."[2]
[2] AU 2013204646 at page 1.
The specification then discusses multi-game gaming machines:
" 'Multi-game' gaming machines are gaming machines that are capable of playing a number of games and allow a player to select a game they wish to play from a range of available games. When the gaming machine is not being played, the gaining machine's video screen displays a game selection screen offering a range of available games that the player can choose from. The gaming machine's art work is generally generic and usually only indicates that the game machine is a multi-game gaming machine."[3]
[3] AU 2013204646 at page 1
Multi-game gaming machines suffer a disadvantage in terms of recognition by users:
"they have the disadvantage that the individual games played on the machine tend to lose their identity to the multi-game theme. Therefore, players cannot look at a bank of machines from across a club and see their favourite games. Instead, they see a multi-game theme and then have to look closely at the video screen to see what games are provided on that multi-game machine. Hence, operators are disadvantaged by not being able to advertise the games that the players may wish to play."[4]
[4] AU 2013204646 at page 2.
The specification then sets out a summary of the invention in general terms:
"According to the present invention, there is provided a gaming machine including a controller and a touch sensitive electronic display, the controller being arranged to cause a game selection image to be displayed on the electronic display, the game selection image including a plurality of separate image elements including: a) a name of a game that is available for play on the gaming machine; and b) a set of different bet denominations for the game, wherein at least one of the sets of bet denominations of at least one of the separate image elements is different to the set of bet denominations of at least one other of the separate image elements, the gaming machine being further arranged to allow a player to select a game and a denomination by touching the touch sensitive electronic display where a respective denomination is displayed."[5]
[5] AU 2013204646 at page 2 – 3.
A number of optional aspects and different embodiments are then described. Another aspect of the invention is a method of gaming using the gaming machine:
"According to another aspect of the present invention, there is provided a method of gaming including: causing a game selection image to be displayed on a touch sensitive electronic display, the game selection image including a plurality of separate image elements including: a) a name of a game that is available for play on the gaming machine and b) a set of different bet denominations for the game, wherein at least one of the sets of bet denominations of at least one of the separate image elements is different to the set of bet denominations of at least one other of the separate image elements; and wherein the player can select a game and a denomination by touching the touch sensitive electronic display where a respective denomination is displayed."[6]
[6] AU 2013204646 at page 4.
A further aspect is stated as a method of gaming by use of the gaming machine:
"According to yet another aspect of the present invention, there is provided a method of gaming including: displaying a game selection image on a touch sensitive electronic display, the game selection image including a plurality of the separate image elements including: a) a name of a game that is available for play on the gaming machine and b) a set of different bet denominations for the game, wherein at least one of the sets of bet denominations of at least one of the separate image elements is different to the set of bet denominations of at least one other of the separate image elements; detecting a player input corresponding to a player touching a region of the touch sensitive electronic display; identifying a bet denomination and a game associated with the touched region of the touch sensitive electronic display; and presenting said game configured with said bet denomination associated with the region to the player on the touch sensitive electronic display."[7]
[7] AU 2013204646 at page 5 – 6.
The specification contains 15 Figures that further illustrate various aspects of the invention. The nature of the invention is better understood by reference to Figure 4, and the description of that Figure. Figure 4 is reproduced here:
This is a representation of the main screen of the gaming machine. The means of operation of the screen is explained as follows:
"One example of a game selection screen 49 is shown in Figure 4 which offers four games, 'Queen of the Nile II', 'Fortuna', 'Wild Panther' and 'Indian Dreaming II' and for each game, discloses a series of denomination button icons 50 for each game, each denomination button icon indicating the value of a single credit for the applicable game. By touching one of the button icons, the player will be able to select the desired denomination of the game applicable to the associated game image."[8]
and
"Returning to Figure 4, when the player touches one of the denomination buttons 50 on the game selection screen, the main display will change to the game screen applicable to the selected game".[9]
[8] AU 2013204646 at page 10.
[9] AU 2013204646 at page 11.
It is not clear to me how this arrangement overcomes the difficulty of the prior art that the user has to look closely at the screen to see what games are available. This is especially so when it is noted that while Figure 4 shows an arrangement in which four different games are available, in practice there are far more, "typically, at least ten".[10] With so many images on the screen, I would have thought that it would be difficult to identify them from a distance. However, the specification makes a clear assertion that the invention does achieve this advantage:
"although the machine is a multi-gaming machine, the games that are available on the gaming machine will still be clear to potential players, even from a distance."[11]
and
"The present invention provides significant advantages over existing multi-gaming machines. It allows individual games accessible within a multi-game gaming machine to be advertised in addition to the multi-game gaming machine itself so that the games do not lose their identity within the multi-game machine. At the same time, it provides players the ability to view game information whilst playing the game."[12]
[10] AU 2013204646 at page 10.
[11] AU 2013204646 at page 11.
[12] AU 2013204646 at page 14.
I accept that the arrangement on the screen makes it possible for a player to identify from a distance that games that can be played on the machine. The specification does not assert any other relevant advantages.
The claims
The specification of the 646 application as presently proposed to be amended ends with 26 claims. For present purposes claim 1 is the most relevant:
A gaming machine including a controller and a touch sensitive electronic display, the controller being arranged to cause a game selection image to be displayed on the electronic display, the game selection image including a plurality of separate image elements including:
a) a name of a game that is available for play on the gaming machine; and
b) a set of different bet denominations for the game, wherein at least one of the sets of denominations of at least one of the separate image elements is different to the set of bet denominations of at least one other of the separate image elements,
the gaming machine being further arranged to allow a player to select a game and a denomination by touching the touch sensitive electronic display where a respective denomination is displayed.
The claim is directed to a multi-game gaming machine. The machine is characterised by a game selection image for the games having two elements – the name of the game and a set of bet denominations. The screen is touch sensitive and the player selects the game and the bet denomination by touching the screen.
Claim 10 is an independent claim that is directed to a method of gaming that is essentially the use of the gaming machine of claim 1.
Claim 19 is an independent claim that is directed to a method of gaming that is similar to claim 10 but includes additional details that are not material to this decision.
Claim 1 of the 658 application reads:
A gaming machine including a controller and a touch sensitive electronic display, the controller being arranged to cause a game selection image to be displayed on the electronic display, the game selection image including a plurality of separate image elements including:
a) a name of a game that is available for play on the gaming machine; and
b) a set of different bet denominations for the game,
the gaming machine being further arranged to allow a player to select a game and a denomination by touching the touch sensitive electronic display where a respective denomination is displayed.
The 658 application includes claims directed to a method of gaming that are analogous to claims 10 and 19 of the 646 application.
It is clear that the difference between the claims of the 658 and 646 applications is that the 658 application does not contain the limitation "wherein at least one of the sets of denominations of at least one of the separate image elements is different to the set of bet denominations of at least one other of the separate image elements". As will be apparent, this limitation is not significant for the purposes of this decision.
The objection
The objection in the third adverse report in relation to the 646 application reads:
"Claims 1-26 do not define a manner of manufacture within the meaning of s 18(1)(a) of the Patents Act 1990.
The Applicant's submissions have been considered but found not persuasive for the reasons provided below.
I do not consider that the substance of the alleged invention can be read as relating to 'means for selecting a game configured with one of a plurality of denominations [nor that] the utility of the invention … [resides] in providing an improved interface by which the denomination and games can be selected in one action, and hence an improved gaming machine.'
Having regard to the context of the specification as a whole and the relevant common general knowledge, I maintain that the substance of the invention are games characterised by rules for the progress of game play and I maintain that the utility of the invention lies merely in the possibility of more interesting game play. The problem being overcome is not technical but rather is that 'players who regularly play gaming machines quickly tire of particular games' (page 1, lines 6-7 of the specification). The contribution of the invention is not technical in nature. The benefits of the invention set out in the specification (at pages 14, lines 15-36) do not arise from the particular claimed 'interface by which the denomination and games can be selected in one action'.
In the context of the role of the computer in the invention, the alleged 'technical improvement in the provision of an interface in a gaming machine' referred to by the Applicant amounts to a user interaction technique whereby the user can select two options via a single action. This is a technique that is common in the art (see e.g. D3, para 77, last sentence) and cannot be considered to be 'where the inventiveness or ingenuity is said to lie … the method does not include any steps that are outside the normal use of a computer' (Commissioner of Patents v RPL Central Pty Ltd [2015] FCAFC 177 (RPL) at 112). As such, I do not agree with the analogy drawn by the Applicant between this application and the invention in International Business Machines Corporation v Commissioner of Patents (1991) 33 FCR 218 which was held to involve steps that were foreign to the normal use of computers.
The arrangement of the claimed interface (the 'means for selecting a game configured with one of a plurality of denominations') is merely part of the computer acting as the intermediary to carry out the method (allowing a player to select a game and the desired denomination associated with the game) without adding anything to the substance of the invention of rules for the progress of game play.
The Commissioner does not consider that lower court authorities predating RPL, including Aristocrat Technologies Australia Pty Limited v Konami Australia Pty Limited [2015] FCA 735, justify special treatment of gaming machines. It is clear that the Commissioner must consider the substance of what is claimed and this is not altered merely by computer implementation even if described as a gaming machine. Something further is required. The suggestion by the Applicant that RPL 'is only of limited assistance' is not supported from a reading of the reasons of that decision and the principles relating to manner of manufacture set out in that decision. There is no suggestion in that decision that those principles should only be applied to computer-implemented business schemes as opposed to applying them to all schemes and abstract ideas such as the game involved in the present claims. Consequently, in light of these principles set out in RPL and applied above, the alleged invention is not a manner of manufacture."
The applicant's submissions
Aristocrat's patent attorney made several points in response to the examination reports, some of which are reflected in the examiner objection. Aristocrat provided written submissions for the hearing. The most relevant portion is:
31. The disclosure at page 1, lines 6-12 corresponds to part of the Background to the invention. The disclosure states:
"Players who regularly play gaming machines quickly tire of particular games and therefore it is necessary for manufacturers of these machines to develop innovative game features which add interest to the games. In so doing, it is hoped to keep players amused and therefore willing to continue playing the game as well as to attract new players."
32. This general statement provides very broad context for the specification, but is in any event not inconsistent with the invention as claimed having a technical substance or indeed with any game feature or source of amusement being technically implemented. An improved interface for accessing games on a multi-game gaming machine will assist in addressing the need for keeping players amused as it provides a low barrier to accessing a variety of games.
33. The disclosure at page 14, lines 15-36 relates to the advantages of an invention disclosed but not claimed in the specification. The relevant invention utilises a secondary display to provide advertising and other information that is not displayed on the primary display used for actual gameplay. The claimed invention relates to the interface that can be used on the primary display of such a gaming machine, and therefore complements this disclosed (but not claimed) invention.
34. Generally, the specification describes a gaming machine embodying several different inventions. The presently claimed invention is consistent with the specification as whole but should not be inappropriately conflated with other described inventions.
35. The Report identifies the substance as "games characterised by rules for the progress of game play and I maintain that the utility of the invention lies merely in the possibility of more interesting game play''. We submit that this cannot be the substance of the invention as the invention as claimed is in no way directed towards games. The gaming machine does allow a player to play games; however, this is not the substance of the invention as claimed. There is also no feature of the invention as claimed relating to "more interesting game play''.
36. We submit that the correct assessment of whether the claimed invention is for a manner of manufacture requires the following steps:
a) Identify an alleged invention by determining the invention as claimed in a particular claim.
b) Determine, with reference to the specification as a whole, the substance of the identified invention.
c) Examine whether the identified invention is properly the subject of letters patent, taking into account the claimed integers of the invention and the substance of the invention.
37. The above enquiry is reflected in the Full Court in Research Affiliates LLC v Commissioner of Patents [2014] FCAFC 150 at 117 (our emphasis added):
"However, in examining whether a claimed invention is properly the subject of letters patent, it is necessary to look not only at the integers of that claimed invention but also at the substance of that invention."
38. The integers of claim 1 are:
1.1 A gaming machine including a controller and a touch sensitive electronic display,
1.2 the controller being arranged to cause a game selection image to be displayed on the electronic display,
1.3 the game selection image including a plurality of separate image elements including:
1.4 a name of a game that is available for play on the gaming machine; and
1.5 a set of different bet denominations for the game, wherein at least one of the sets of bet denominations of at least one of the separate image elements is different to the set of bet denominations of at least one other of the separate image elements,
1. 6 the gaming machine being further arranged to allow a player to select a game and a denomination by touching the touch sensitive electronic display where a respective denomination is displayed.
39. Thus, in light of the above, it is submitted that the invention as claimed is a gaming machine having an improved interface through which the player of the gaming machine can interact with the gaming machine. The interface comprises a touch sensitive electronic display which allows both an output (i.e. displaying of the game selection image) and an input (i.e. receiving a touch from the player). The game selection image is defined in a specific way (integers 1.3-1.5) and the interaction of the player with the screen is also defined in a specific way (integers 1.2 and 1.6) such that a player can "select a game and a denomination by touching the touch sensitive electronic display where a respective denomination is displayed".
40. We submit that it is immediately apparent from the integers of claim 1 that the invention as claimed is for more than mere intellectual information, as the invention does not claim a scheme. Instead, the invention as claimed is for a new interface through which a player may interact with the gaming machine and provides a mechanism for reducing the number of steps required to begin playing a game on a gaming machine.
41. As to the 'interface' claimed, the gaming machine is a "multi-game" gaming machine, that is, it is capable of allowing a number of unique games to be played by a player. As shown in Figure 4 and described at page 10, lines 6 to 20 (both reproduced below), each of the games may be played in one of several denominations.
The gaming machine 10 is configured to be able to play a plurality of games, typically, at least ten. A flow chart setting out the operation of the game is set out in Figure 15. The player chooses the game (box 102} that they wish to play on the gaming machine from a menu, displayed on a game selection screen on the main display 14. One example of a game selection screen 49 is shown in Figure 4 which offers four games, "Queen of the Nile 11", "Fortuna", Wild Panther" and "Indian Dreaming II" and for each game, discloses a series of denomination button icons 50 for each game, each denomination button icon indicating the value of a single credit for the applicable game. By touching one of the button icons, the player will be able to select the desired denomination of the game applicable to the associated game image.
42. A player must be able to select a game and a denomination in order to begin playing on the gaming machine. Functionality to enable this selection is provided through the touch sensitive electronic display of integers 1.1, 1.2, and 1.6. The player need only touch the touch sensitive electronic display on a denomination button 50 in order to both select the game for play and the denomination with which it will be played. This is stated at page 11, lines 14-17:
Returning to Figure 4, when the player touches one of the denomination buttons 50 on the game selection screen, the main display will change to the game screen applicable to the selected game
43. In the context of the claims, the substance of the invention is therefore a user interface with particular features, namely a touch sensitive electronic display that presents an option for selecting both a game (from a plurality of games) and a denomination (from a plurality of denominations associated with the game) with one action by the player. The substance is not a mere scheme or intellectual information, as was the case in Research Affiliates and RPL Central. The computer is not merely incidental to the claimed invention; the gaming machine as improved by the essential integers of the claims is the invention.
44. We note that the Patent Manual of Practice and Procedure at 2.8.2.9 states that "if the invention lies in an improvement to the operation of the computer or in the application of the computer to the playing of a game, then it may be eligible, for example, the application of networking features to improve communication between games machines". We submit that the invention as claimed, for the reasons presented above, is for such an improvement and is therefore patentable.
The law

Section 18(1) of the Act relevantly reads:
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:
The classic definition of "manner of manufacture" is set out in National Research Development Corporation v Commissioner of Patents[13] (NRDC):
"The right question is: 'Is this a proper subject of letters patent according to the principles which have been developed for the application of s. 6 of the Statute of Monopolies?' "[14]
[13] [1959] HCA 67; 102 CLR 252.
[14] NRDC at 269, [14].
The court then went on to set out a test in terms relevant to the facts of that case:
"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."[15]
and
"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, indeed to the lay mind a sensational 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."[16]
[15] NRDC at 275, [22].
[16] NRDC at 277, [25].
However, the High Court 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."[17]
[17] D'Arcy v Myriad Genetics Inc [2015] HCA 35(Myriad) at [23].
That case-by-case approach must have regard to the substance of the claimed invention, not simply the form of the claim.[18] The point is made most succinctly by Gageler and Nettle JJ in the Myriad case:
"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."[19]
[18] Myriad at [6] and [88].
[19] Myriad at [144].
In Commissioner of Patents v RPL Central Pty Ltd[20] (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."[21]
[20] [2015] FCAFC 177.
[21] RPL at [96] – [98].
The Court then set out the considerations that are relevant to the determination, summarising the important principles coming out of the earlier decisions of the Court:
"To reiterate some of the matters discussed in Research Affiliates:
o    It is necessary to ascertain whether the contribution to the claimed invention is technical in nature. In Aerotel Ltd v Telco Holdings Ltd; Macrossan’s Application [2006] EWCA Civ 1371; [2007] 1 All ER 225, the subject matter was an interactive system whereby questions were asked, the answers incorporated in a draft and, depending on some particular answers, further questions were asked. It was held that, apart from the fact of running a computer program, there was nothing technical about the contribution and the method was for the business of advising upon and creating appropriate company documents.
o    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.
o    Does the claimed method merely require generic computer implementation?
o    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? In Alice Corporation, the method was for exchanging financial obligations in which the computer was used to create records, track multiple transactions and issue simultaneous instructions. The majority in the Supreme Court of the United States concluded that the use of the computer added nothing to the substance of the abstract idea of reducing settlement risk in exchanging financial obligations.
Relevantly, the Full Court in Research Affiliates said (at [94]) that the distinction to be drawn was between the employment of an abstract idea or law of nature and the idea or law itself and that there is a distinction between a technological innovation which is patentable and a business innovation which is not. Their Honours repeated an observation from Grant (at [29]) '[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.' A technological innovation is patentable; a business innovation is not, although a business method may be the subject of letters patent. However, '[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' (Research Affiliates at [95]).
The Full Court in Research Affiliates, at [104], drew a distinction 'between, on the one hand, a method involving components of a computer or machine and an application of an inventive method where part of the invention is the application and operation of the method in a physical device and, on the other, an abstract, intangible situation which is a mere scheme, an abstract idea and mere intellectual information'. Their Honours cited the words of Lourie J of the United States Court of Appeal for the Federal Circuit in Bancorp, where his Honour said that '[a]t its most basic ... a "computer" is "an automatic electronic device for performing mathematical or logical operations"... solving a problem by doing arithmetic as a person would do it by head and hand'. Their Honours emphasised a further comment by Lourie J, that to be patentable, ‘a computer must be integral to the claimed invention, facilitating the process in a way that a person making calculations or computations could not'.
In Research Affiliates, looking at the claimed method as a matter of substance, the Full Court concluded that, in that case, the computer was merely the means by which the analyst accessed data to generate an index, that being the work of the analyst rather than a technical generation by the computer. There was no suggestion of the utilisation of an unusual technical effect. The inventors made changes to the computer program to cause the program to gather and process data and perform data manipulations and calculations, including macros to manipulate and refine data. Such use of algorithms was not 'foreign' to the normal use of computers.
There, the invention described in the specification was directed to the index itself and was a method of implementing a scheme which happens to use a computer to effect that implementation (Research Affiliates at [115]). There was no technical contribution to the invention or artificial effect of the invention by reason of the intervention of the inventors; the ingenuity was in the scheme not in the physical phenomenon in which the effect may be observed and which has the requisite economic utility or artificial effect.
It is stated in the specification, and was accepted by the primary Judge, that the method could not be carried out without the use of a computer. This alone cannot render the claimed invention patentable if it involves simply the speed of processing and the creation of information for which computers are routinely used. In those circumstances, the claimed invention is still to the business method itself. A computer-implemented business method can be patentable where the invention lies in the way in which the method is carried out in the computer. This necessitates some ingenuity in the way in which the computer is utilised (Research Affiliates).
Care must be taken to consider the circumstances of the claimed invention, beyond the form of words used. In both IBM 2 and CCOM, the invention as claimed was patentable. However, the method in IBM 2 could have been characterised simply to involve 'drawing a curve on a computer'; in CCOM, the claimed invention could have been characterised as 'to convert a word into Chinese characters'.
The Commissioner urges rejection of the concept that the test is whether a person could implement the scheme without a computer or not. The fact that a scheme could not be practically carried out by the user does not, she says, take it out of the category of a 'mere' scheme. It is a question of what the computer 'brings to the scheme'. RPL Central characterises the invention as an improvement in the effect of the use of a computer by applying it, not merely to gather information but to solve a problem in the educational field. RPL Central says that this represents more than a 'mere' scheme and is, indeed, a new use of a computer involving the new use of a computer to 'negotiate ...the RPL maze'.
Simply putting a business method or scheme into a computer is not patentable unless there is an invention in the way in which the computer carries out the scheme or method. Is the fact that the scheme cannot practically be implemented without a computer, that is, that the computer is integral to the working of the scheme, sufficient to make it patentable? The answer is not straightforward because this is not a case where the computer simply processes the information entered by the user, for example by using an algorithm, or retrieves information from the Internet in response to a user’s question."[22]
[22] RPL at [99] – [107].
Some other matters raised in Research Affiliates LLC v Commissioner of Patents[23] (Research Affiliates) are:
[23] [2014] FCAFC 150.
"When the authorities in Australia prior to and including Grant are considered, a consistent approach emerges as to the relevance of:
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.
Aristocrat's summary of the law is not significantly at variance with this. Aristocrat formulated the effect of the law as follows:
"In view of these authorities, for computer implemented inventions, it is necessary to identify the claimed invention ('that invention'), the substance of that invention and to determine, based on this, whether the invention is for mere intellectual information or is for a method that affects the operation of an apparatus in a physical form"
Where they disagree with the examiner is in the way that this law should be applied to the facts of the case.
Consideration
The subject matter of the claims
Claim 1 of the 646 application is directed to a device. The device is a gaming machine having physical components:
· a controller, and
· a touch sensitive display.
As the device is a gaming machine, it would also include standard components such as a means for players to insert money and for winnings to be returned. The device is characterised by the images that appear on the display. The images have two aspects:
· the name of the game, and
· a set of bet denominations.
A player selects the game and a denomination by touching the appropriate part of the display.
The substance of the claims
The examiner identified the substance of the invention as games characterised by the rules of the games:
"Having regard to the context of the specification as a whole and the relevant common general knowledge, I maintain that the substance of the invention are [sic] games characterised by rules for the progress of game play and I maintain that the utility of the invention lies merely in the possibility of more interesting game play."[25]
[25] Examination report no 3 dated 2 June 2016.
Aristocrat submitted that the substance of the invention lies in the interface, not the rules of the game:
"In the context of the claims, the substance of the invention is therefore a user interface with particular features, namely a touch sensitive electronic display that presents an option for selecting both a game (from a plurality of games) and a denomination (from a plurality of denominations associated with the game) with one action by the player. The substance is not a mere scheme or intellectual information, as was the case in Research Affiliates and RPL Central. The computer is not merely incidental to the claimed invention; the gaming machine as improved by the essential integers of the claims is the invention."[26]
[26] Aristocrat submissions at [43].
The examiner's report indicated that he considered this was not the substance of the invention for the following reasons:
"The arrangement of the claimed interface (the 'means for selecting a game configured with one of a plurality of denominations') is merely part of the computer acting as the intermediary to carry out the method (allowing a player to select a game and the desired denomination associated with the game) without adding anything to the substance of the invention of rules for the progress of game play."[27]
[27] Examination report no 3 dated 2 June 2016.
The examiner's characterisation of the substance of the invention cannot be correct. Despite what the specification says, the invention is independent of the game that is being played, and precedes the playing of the game. Both the claims and the description are silent in relation to the rules of any game that might be played.
Turning to the specification, there is an assertion that the invention allows individual games accessible on the machine to be advertised so that those games do not lose their individual identity. This is achieved by showing the name of the individual games on the display. In this situation, the substance of the invention is the placement of game names on the display screen so that they can be seen by passers-by. The presentation of the game information in this way is for advertising the games, rather than to achieve a practical or useful effect. This type of advertising is not a technical effect.
Aristocrat have drawn attention to a different aspect of the way in which the information is presented. That is, the information is displayed in such a way that a player may select both the game and the bet denomination in a single action:[28]
"The invention reduces the number of steps between a player deciding to play a 'multi-game' gaming machine with plural denominations and beginning gameplay, by minimising the number of interaction steps that must be undertaken by the player. Given that it has been found that the invention satisfies the requirements for novelty and inventive step, the invention is clearly for a 'new machine or process' as meant by the Full Court in Research Affiliates.
For completeness, we note that D3 at the cited paragraph includes no disclosure of selecting both a game and a denomination in one action, let alone one touch of a touch sensitive electronic display."
[28] Aristocrat submissions at [56] – [57].

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.
It is reasonable to view the substance of the invention as the presentation of game information in a way that allows the game and bet denomination to be selected in a single action. It is apparent that this would achieve a practical and useful result by simplifying the use of the gaming machine by the player. Looking at the relevant considerations, the invention appears to require only generic computer implementation. However, it does not appear that it was normal (at the priority date) to configure a gaming machine interface in this particular way. Here information is located in a particular position and functionality is generated by the use of this positional location to improve the gaming machine. The contribution is technical in nature, and achieves a practical and useful result. On balance, I am satisfied that the claimed invention is a manner of manufacture.[29]
[29] This outcome is similar to that in Rhodes' Application [1973] RPC 243, where the presentation of information on a speedometer achieved a technical advantage.
Aristocrat have also referred to the substance of the invention as an interface:
"We submit that it is immediately apparent from the integers of claim 1 that the invention as claimed is for more than mere intellectual information, as the invention does not claim a scheme. Instead, the invention as claimed is for a new interface through which a player may interact with the gaming machine and provides a mechanism for reducing the number of steps required to begin playing a game on a gaming machine."[30]
and
"In the context of the claims, the substance of the invention is therefore a user interface with particular features, namely a touch sensitive electronic display that presents an option for selecting both a game (from a plurality of games) and a denomination (from a plurality of denominations associated with the game) with one action by the player. The substance is not a mere scheme or intellectual information, as was the case in Research Affiliates and RPL Central. The computer is not merely incidental to the claimed invention; the gaming machine as improved by the essential integers of the claims is the invention."[31]
[30] Aristocrat submissions at [40].
[31] Aristocrat submissions at [43].
In this case, the interface is a physical integer which embodies the substance of the claimed invention. I do not consider that anything is gained by looking at the invention in this way.
Aristocrat also argued that the computer is not merely an intermediary.[32] I agree.
[32] Aristocrat submissions at [58] and [59].
While the drafting of the specification has obscured the nature of the invention, and surprisingly it is silent on the advantage of the single action, it remains the case that the invention defined by the claims of the 646 application are directed to a manner of manufacture. The same conclusion applies to the invention defined by the claims of the 658 application.
Conclusion
I conclude that the sole outstanding objection to the 646 application has been overcome. I will accept the patent request and complete specification relating to that application.
I conclude that the objection of manner of manufacture in relation to the 658 application has been overcome. Pursuant to regulation 13.4(1)(g), the application will not lapse for failure to gain acceptance until 3 months from the date of this decision. Aristocrat will have the remainder of that period in order to address the objections of lack of inventive step. These objections will be considered by an examiner in the normal way.
Dr S.D. Barker
Delegate of the Commissioner of Patents