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Aristocrat Technologies Australia Pty Limited

Aristocrat Technologies Australia Pty Limited

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Case Copied 22 July 2016 35 min read

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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…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2016] APO 49
Decision Date: 22 July 2016

CaseChat Overview and Summary

The present matter concerned two patent applications, one filed by Aristocrat Technologies Australia Pty Limited (Aristocrat) for a gaming machine, and the other for a method of gaming. The applications were subject to objections by the Commissioner of Patents, including that the claims did not define a manner of manufacture. The matter was heard on the basis of written submissions and the court accepted the patent request and complete specification relating to one application. The objection of manner of manufacture in relation to the second application was overcome, but Aristocrat had the remainder of the period to address the objections of lack of inventive step. The court found that the substance of the invention was the presentation of game information in a way that allowed the game and bet denomination to be selected in a single action. The court considered a range of matters, including the fact that there must be more than an abstract idea, mere scheme or mere intellectual information, and whether the invention required only generic computer implementation. The court found that the invention was 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. The court concluded that the invention was a manner of manufacture.

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