Aristocrat Technologies Australia Pty Limited v Bally Technologies ANZ Pty Ltd - [2015] APO 92

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Aristocrat Technologies Australia Pty Limited v Bally Technologies ANZ Pty Ltd [2015]
APO 92

Patent Application: 2011201004

Title:A method and system for gaming

Patent Applicant:                   Bally Technologies ANZ Pty Ltd
Opponent:  Aristocrat Technologies Australia Pty Limited
Delegate:  Xavier Gisz
Decision Date:  24 December 2015
Hearing Date:  Written submissions filed on 18 September 2015, 2 October 2015 and 9 October 2015

Catchwords: PATENTS - opposition to the allowance of amendments under subsections 102(1), 102(2)(a) and 102(2)(b) of the Patents Act 1990 – amended claims in-substance disclosed – amended claims in-substance fall within the scope of the granted claims – amended claims comply with subsections 40(2) and (3) – amendment allowed – cost in accordance with Schedule 8 awarded against the opponent.

Representation: Patent applicant: Franke Hyland
Opponent:Griffith Hack

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2011201004

Title:A method and system for gaming

Patent Applicant: Bally Technologies ANZ Pty Ltd
Date of Decision: 24 December 2015
DECISION
The opposition fails on all grounds relied on. The proposed amendments satisfy the requirements of subsections 102(1), 102(2)(a) and 102(2)(b) of the Patent Act 1990.
Subject to appeal I allow the amendments.
I award costs against Aristocrat Technologies Australia Pty Limited.
REASONS FOR DECISION
Background

Australian patent application 2011201004 (the Application) was made in the name of Shuffle Master Australasia Pty Limited which subsequently changed name to SHFL Entertainment (Australasia) Pty Limited and then to Bally Technologies ANZ Pty Ltd (the Applicant). Examination was requested on 22 December 2011 and the Application was advertised as accepted on 7 November 2013.
A Notice of Opposition was filed on 7 February 2014 by Aristocrat Technologies Australia Pty Limited. A Statement of Grounds and Particulars was filed on 6 May 2014. Evidence in Support was completed on 6 August 2014. Evidence in Answer was completed on 10 November 2014. Evidence in Reply was completed on 12 January 2015.
On 27 November 2014 the Applicant proposed amendments to the specification. Leave to amend the specification was advertised for opposition on 12 March 2015. The amendments were opposed on 12 May 2015 by Aristocrat Technologies Australia Pty Limited (the Opponent). A Statement of Grounds and Particulars was filed on 11 June 2015. Evidence in Support was filed on 14 August 2015. The hearing was on the basis of written submissions; submissions were filed by Opponent on 18 September 2015 and 9 October 2015 and by the Applicant on 2 October 2015.
Grounds of Opposition
The statement of grounds and particulars opposes the amendments under subsection 102(1) and paragraphs 102(2)(a) and 102(2)(b) of the Patents Act. Under paragraph 102(2)(b), it is asserted that the proposed amendments would not comply with subsections 40(2) or 40(3).
Evidence
The evidence in support comprises a declaration by Benjamin Ellis made on 13 August 2015 and accompanying Exhibits BE-1 to BE-5.
Allowability of amendments
As the request for examination of the patent application was filed before 15 April 2013, substantive amendments of the Patents Act brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 do not apply to the present patent application. This includes an amendment to subsection 102(1) which precludes the inclusion of subject matter extending beyond the original disclosure.
The relevant sections of the Patents Act in the current case are sections 102(1) and (2) as they existed prior to the introduction of the Raising the Bar Act. These are set out below:
(1) An amendment of a complete specification is not allowable if, as a result of the amendment, the specification would claim matter not in substance disclosed in the specification as filed.
(2) An amendment of a complete specification is not allowable after the relevant time if, as a result of the amendment:
(a) a claim of the specification would not in substance fall within the scope of the claims of the specification before amendment; or
(b) the specification would not comply with subsection 40(2) or (3).
The applicable parts of section 40 of the Patents Act 1990 as they apply to the present case are set out below:
(2) A complete specification must:
(a) describe the invention fully, including the best method known to the applicant of performing the invention; and
(b) where it relates to an application for a standard patent – end with a claim or claims defining the invention.
(3) The claim or claims must be clear and succinct and fairy based on the matter described in the specification.
It is plain from the wording of section 102 that the test provided by this section of the Patents Act is confined to matters which arise as a result of amendment (see Kornelis’ Kunsthars Producten Industrie BV v WR Grace& Co-Conn [1994] FCA 969; (1994) AIPC 91-056 at 38,204). Consequently any pre-existing deficiencies in the specification which are unaffected by amendment are not relevant to the present action.
Onus
The Opponent argues in their submissions:
“Although s 102 should be given a liberal interpretation, nevertheless it is clear that the applicant for amendment bears the onus for establishing that the requirements of s 102 have been satisfied.”
In oppositions proceedings the onus lies with the opponent. I am not persuaded by the Opponent’s arguments that there is an exception to this general principle for the oppositions to amendments. The standard of proof that applies to this opposition is the balance of probabilities.
Principles for construing a specification
The relevant principles of construction are usefully summarised by Bennett J in Sachtler GMBH & Co KG v RE Miller Pty Ltd (with Corrigendum dated 27 July 2005) [2005] FCA 788 (15 June 2005).
“Evidence can be given by experts on the meaning which those skilled in the art would give to technical or scientific terms and phrases and on unusual or special meanings given by such persons to words which might otherwise bear their ordinary meaning … Where the patent contains technical material, the Court must, by evidence, be put in a position of a person of the kind to whom the patent is addressed, a person acquainted with the surrounding circumstances of the state and the art and at the relevant time … However, if the evidence does not establish that such a technical meaning exists, words used in a patent specification should be given their ordinary meaning …
…[T]he evidence of the skilled reader is not determinative of the construction of the document. It is evidence of how a skilled reader would have read the document at the relevant time. It is then for the Court to construe the document, giving such weight to the evidence as it sees fit.
The construction of the specification is for the Court, not for the expert witness …”
Subsection 102(1): In-substance disclosed in the specification as filed
When determining whether a matter is in substance disclosed in the specification as filed, the courts have applied the test for fair basis. Thus for an amended claim to claim matter in substance disclosed in the specification as filed, the amended claim must be fairly based on the specification as filed (see United-Carr Incorporated's Application [1971] RPC 23, RGC Mineral Sands Pty Ltd v Wimmera Industrial Minerals Pty Ltd (1998) 42 IPR 353).
Under Section 40(3), fair basis is “concerned purely with the relationship between the body and claims of the one specification.” (Lockwood Security v Doric Products [2004] HCA 58; 217 CLR 274; 212 ALR 1; 79 ALJR 260). As was noted in Kimberly-Clark Australia Pty Ltd v Arico Trading International Pty Ltd [2001] HCA 8; 207 CLR 1; 177 ALR 460; 75 ALJR 518 “a comparison between the matter described in the specification and the claim which defines the scope of the monopoly”, following the reasoning of Barwick CJ in Olin Corporation v Super Cartridge Co Pty Ltd [1977] HCA 23; (1994) 180 CLR 236 when he said:
“The question whether the claim is fairly based is not to be resolved ... by considering whether a monopoly in the product would be an undue reward for the disclosure. Rather, the question is a narrow one, namely whether the claim to the product being new, useful, and inventive, that is to say, the claim as expressed, travels beyond the matter disclosed in the specification.”
As was noted in Lockwood (supra):
“the statutory test as expounded by Barwick CJ does not call for any evaluation of whether the breadth of the claims exceeds "the technical contribution to the art embodied in the invention", merely for an evaluation of whether the claims travel beyond the matter described in the specification”
I also note that it was said in Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd [1988] FCA 162 at [54]:
“The circumstance that something is a requirement for the best method of performing an invention does not make it necessarily a requirement for all claims; likewise, the circumstance that material is part of the description of the invention does not mean that it must be included as an integer of each claim. Rather, the question is whether there is a real and reasonably clear disclosure in the body of the specification of what is then claimed, so that the alleged invention as claimed is broadly, that is to say in a general sense, described in the body of the specification”
This was cited with approval in Lockwood (supra).
Paragraph 102(2)(a): In-substance Fall Within the Scope of the Claims Before Amendment
A useful test for considering the allowability of an amendment under paragraph 102(2)(a) is whether a proposed new claim would extend the patent monopoly in the sense that it would make something an infringement which is not an infringement already. This view was expressed in AMP Incorporated v Commissioner of Patents (1974) AOJP 3224 at page 3227 where the High Court stated:
“The amending claim must in-substance fall within the scope of the claims before amendment. The reference to substance imports the kind of test which is appropriate to a consideration of the question whether or not a particular act or a particular article is an infringement of the patent.”
I note that the allowability of an amendment under paragraph 102(2)(a) is determined by reference to the scope of the claims as a whole before the amendment. It is not that a proposed new claim must in-substance fall within the scope of every claim before amendment, rather it only need to in-substance fall within the scope of broadest claim(s) before amendment.
Paragraph 102(2)(b): Compliance with subsection 40(3), clarity and fair basis
I have already identified the relevant law with respect to fair basis. In relation to clarity, while the rules of construction for an Australian patent specification are well summarized in Decor Corp v Dart Industries 13 IPR 385, recently the correct application of these rules to the construction of claims was discussed by Bennett J in H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70; 81 IPR 228 at [118] – [120]:
"the words in a claim should be read through the eyes of the skilled addressee in the context in which they appear ... while the claims define the monopoly claimed in the words of the patentee's choosing, the specification should be read as a whole ... it is not permissible to read into a claim an additional integer or limitation to vary or qualify the claim by reference to the body of the specification ... terms in the claim which are unclear may be defined or clarified by reference to the body of the specification."
I also note that the requirement that the claims are clear is understood to be satisfied if a person could ascertain "whether or not what he proposes to do falls within the ambit of the claim" (Monsanto Co v Commissioner of Patents (1974) 48 ALJR 59).
Amendments
A marked-up version of the amendments to the independent claims is provided below:
1. A method for operating an electronic gaming machine, including at least the
steps of:
providing a fixed number of reels having displayable symbol positions, wherein each displayable symbol position is capable of being populated and repopulated with a different game symbol;
providing a player interface, said interface requiring a player to select from a plurality of different game play options, wherein each game play option has an associated subset of game symbols from a set of game symbols, at least some of the subsets associated with game play options being different from each other; wherein each game play option is associated with a base wager; wherein among the different game play options there are at least three different base wagers corresponding to different game play options;
receiving a game play option selection from the player;
debiting a wager amount from the player's credit balance; wherein the wager amount debited cannot be less than the corresponding base wager for the selected game play option;
populating said displayable symbol positions with the subset of game symbols associated with the selected game play option; wherein any game symbol from said set of game symbols which does not form part of the subset of game symbols associated with the selected game play option consequently does not appear in any displayable symbol position; and
~~playing~~ initiating a game using the fixed number of reels with said populated displayable symbol positions; wherein a predetermined number of populated displayable symbol positions are caused to be displayed in game outcome positions on a game outcome display;
wherein non-scatter winning game outcomes are determined by whether any combinations of game symbols appear in any of a fixed number of predetermined combinations of game outcome positions displayed on the game outcome display; and
wherein whether the displayed game symbols on the game outcome display are determined to provide one or more non-scatter wining game outcomes is inherent in the selected game play option and said player interface does not permit a player to alter the number or particular combinations of the fixed number of predetermined combinations of game outcome positions.
1. 24An electronic gaming machine for providing a reel-type game, said reel-type game providing a fixed number of reels having displayable symbol positions, wherein each displayable symbol position is capable of being populated and repopulated with a different game symbol;
said gaming machine including a display, a player interface, and a processor adapted to control the game play and the display, said player interface requiring a player to select from a plurality of different game play options, wherein each game play option has an associated subset of game symbols from a set of game symbols, at least some of the subsets associated with game play options being different from each other;
wherein each game play option is associated with a base wager; wherein among the different game play options there are at least three different base wagers corresponding to different game play options; so that operatively, when a player selects a game play option via the player interface, a wager amount is debited from the player's credit balance;
wherein the wager amount debited cannot be less than the corresponding base wager for the selected game play; said processor populates said displayable symbol positions with the subset of game symbols associated with the selected game play option;
wherein any game symbol from said set of game symbols which does not form part of the subset of game symbols associated with the selected game play option consequently does not appear in any displayable symbol position; said processor operatively plays a game using the fixed number of reels with said populated displayable symbol positions and causes a predetermined number of populated symbol positions to be displayed in game outcome positions on said display;
wherein non-scatter winning game outcomes are determined by whether any predetermined combinations of game symbols appear in any of a fixed number of predetermined combinations of game outcome positions displayed on the display; and
wherein whether displayed game symbols on the display are determined to provide one or more non-scatter wining game outcomes is inherent in the selected game play option, and said player interface does not permit a player to alter the number or particular combinations of the fixed number of predetermined combinations of game outcome positions.
The Opponent has opposed the following aspects of the amendments in claim 1 (and also in claim 18 where there exists an equivalent amendment):
1.initiating a game using the fixed number of reels with said populated displayable symbol positions
2.wherein a predetermined number of populated displayable symbol positions are caused to be displayed in game outcome positions on a game outcome display
3.a) wherein non-scatter winning game outcomes are determined by whether      any combinations of game symbols appear in any of a
b) fixed number of predetermined combinations of game outcome positions      on the game outcome display
4.a) wherein whether the displayed game symbols on the game outcome      display are determined to provide one or more non-scatter winning game      outcomes is inherent in the selected game play option and
b) said player interface does not permit a player to alter the number or      particular combinations of the fixed number of predetermined      combinations of game outcome positions
These aspects of the amendments are considered below.
1. initiating a game using the fixed number of reels with said populated displayable symbol positions
The Opponent states in their submissions in relation to the allowability of amendments under s 102(1):
“The effect of the amendment is to replace “playing” with “initiating”.
The term “playing a game” appears to be a reference to playing a game to completion whereas the term “initiating a game” appears to be a reference to starting but not necessarily completing a game, for example the booting of the gaming machine and the loading of the game, making it available for play, such as shown at page 8, lines 21 to 27 of the Filed Bally Patent, which states: “The EGM 100 is configured so that...the player is permitted to select a game using a player input...if the EGM is designed to play one of multiple games that can be downloaded...”.
Accordingly, to the extent that this proposed amendment can be given meaning it travels beyond the disclosure in the Filed Bally Patent as it extends the scope of the claims to cover conduct not requiring completion of the game.”
The Opponent states in their submissions in relation to the allowability of amendments under s 102(2)(b):
“The effect of the amendment is to replace “playing” with “initiating”.
The use of the term “initiating” renders the claims unclear. An earlier step in the claim defines “debiting a wager amount from the player’s credit balance”. In gaming machines, a player’s credit balance is debited when a play of the game is initiated by the player and cannot, for regulatory reasons, be debited earlier.
Accordingly, the wording in claim1 prior to amendment, “debiting a wager amount from the player’s credit balance” indicates that the game has been initiated following the wager being placed by the player. This meaning is confirmed by the following step being “populating the displayable symbol positions...”; this being a conventional step of selecting the symbols and displaying them on the display which follows the placing of a wager and the initiation of a game in gaming machines.
As a result of the amendment, it is not clear how a game can be initiated using the fixed number of reels with the populated displayable symbol positions after debiting a wager amount from the player’s credit balance and populating the displayable symbol positions. This cannot be resolved by reference to the specification, which discloses games where symbols are selected and displayed after a player initiates a game by placing a wager, for example at page 15, lines 18-20 of the Filed Bally Patent, which states: “The credit meter (not shown) is decremented by the total credits bet and the reel strips determined by accessing the table of reel strip lists 608 using the number of gold symbols n again as an index.” Furthermore, Figure 6B, shows that the game is “Idle” (“602”) until “Play Game” (“605”), which causes the choosing of reel stop positions “Close (sic) Random Stops” (“611”) and the spinning of the reels “Spin the Reels” (“617”). Playing of the game is therefore initiated by the placing of a wager, causing a random result to be generated and displayed to the player. The displayed symbols are then evaluated and are not described as being used to initiate a game as claim 1 as amended suggests.”

The Applicant states in their submissions:
“The opponent asserts that this extends beyond the scope of the disclosure as it covers a game which is initiated and never completed.
The point of the amendment is that at the specific step in the claim, it is more correct to describe what is happening as ‘initiating’. Later in the claim, ‘winning game outcomes’ are discussed. Initiating adds precision to the language. It was clear before that ‘playing’ must have included’ initiating’ as well as an outcome. Thus, the game has to be completed, as there is an outcome, so it is still claimed as being played, in the sense asserted by the opponent.
It is rather fanciful to suggest that somehow a game would be initiated and then never ended. This flies in the face of the clear thrust of the invention, and the CGK. It would also be pointless in this area of technology – no one would play or operate a gaming machine that never reaches an outcome. It can also hardly be argued that a game can be played on a gaming machine without it being initiated.
The opponent also asserts that this is unclear, in so far as, inter alia, once the wager amount is debited, the game has already been initiated. This line of reasoning is inconsistent with the reality of software in any system. Events and steps happen sequentially. Thus, game play indeed can only occur after the credit balance is debited. The processes within the machine that determine the outcome are then initiated. This is what is recited in the claim.
This amendment, we submit, is clearly allowable. The scope of the claim overall is not in any sense broadened, and the claim remains clear.”
Claim 1 is a method for operating an electronic gaming machine. The method is defined by a series of steps. The claim as accepted defined one of these steps to be ‘playing a game’. The amendments change this to ‘initiating a game’ and further define the winning game outcomes. I consider the words ‘playing a game’ encompass the combination of ‘initiating a game’ and defining winning game outcomes. Thus there is a real and reasonably clear disclosure of this feature in the accepted description and thus complies with s 102(1). Furthermore this aspect of the amendments does not fall outside of the scope of the claim and thus complies with s 102(2)(a).
The steps preceding the ‘initiating a game’ are the preliminary steps for setting up the game. Once the game parameters have been set – the game play option and the wager amount are selected – the game can be initiated. I consider this to be clear and fairly based on the description and thus complies with s 102(2)(b).
2. wherein a predetermined number of populated displayable symbol positions are caused to be displayed in game outcome positions on a game outcome display
The opponent states in their submissions in relation to the allowability of amendments under s 102(1):
“The proposed amendment to claim 1 introduces the term “wherein a predetermined number of populated displayable symbol positions are caused to be displayed in game outcome positions on a game outcome display” while the amendment to claim 18 adds the term “game outcome positions”. In claim 18, the term “populated symbol positions” appears to be the same as “populated displayable symbol positions” defined earlier in claim 18 and as used in claim 1. As a result of the amendment, the claims define that populated displayable symbol positions are displayed in game outcome positions. The term “game outcome position” was not used in the Filed Bally Patent or the Accepted Bally Patent.
To the extent that this new wording can be given meaning, if the game outcome positions are the positions which are to be evaluated to determine whether there is a winning outcome, the amendedment goes beyond what is described in the Filed Bally Patent. The reason for this is that it allows for a subset of the populated displayable symbol positions to be used in evaluating whether there is a winning outcomes. In contrast, the Filed Bally Patent describes that all of the populated displayable symbols positions (as shown, for example, in Figure 18 A) are used in evaluation of the game outcome.”
The Opponent states in their submissions in relation to the allowability of amendments under s 102(2)(b):
“The proposed amendment to claim 1 introduces the term “game outcome display” which is not used in the Filed Bally Patent or the Accepted Bally Patent.
The term “game outcome display” appears to refer to a state of the display at a particular time when the reels have stopped. It is not clear whether the game outcome display is only the display of the grid of selected symbols or something else such as the entirety of what is displayed on the electronic display.”
The Opponent further states:
“The amendment renders the claims unclear. Claim 1 as amended defines the game outcome positions as different to the displayable symbol positions. The specification provides no clarification as what game outcome positions are if they are different to displayable symbol positions.”
The Applicant states:
“We note at the outset that the terms ‘displayable symbol positions’ and ‘populated displayable symbol position’ were present in the accepted claims. These are not new additions.
The opponent’s argument, as best understood, is that ‘game outcome position’ and ’game outcome display’ are somehow a broadening from the previously claimed structure, and that their incorporation renders the claims unclear.
As this amendment is clearly to introduce an additional limitation to the claims, there is no extension of scope: the only possible argument by the opponent is that there is new matter added.
The term ‘game outcome position’ seems to be one to which the opponent has no difficulty ascribing a meaning, as outlined in the attorney’s ‘as best understood’ statement at 58.
To analyse the language, the term game can hardly be objectionable. Position in the context of a game display for a gaming machine is similarly commonplace – all such games rely on some combination of symbol identity and position to determine an outcome. Outcome is used at many points in the specification, for example at page 10 line 4 and page 13 line 18. The position after the game has been played, and in which the winning symbols are displayed and can be used to determine outcomes, fairly and simply described as a ‘game outcome position’. That there are game outcome positions in [sic] inherent in the entire description – how could there not be, in games of this general type?
It follows that the game outcome display is the display where the game outcome is displayed.
At 58 the opponent suggests that as this part of the claim on their interpretation admits the possibility that not all symbols are used to evaluate the outcome, ‘the amendment [sic] goes beyond what is described in the Filed Bally Patent’. Simply because an example works in a particular way is not in itself a reason to read down the scope of a claim.
This aspect of the amendment is clear and complies with s 102.”
The display of a typical gaming machine can be in three states: the initial state, the animated state, and the final state. The term ‘game outcome display’ corresponds to the final state of a typical gaming machine. The term ‘displayable symbol positions’ corresponds with the initial state of the symbols displayed on a gaming machine. The term ‘game outcome positions’ corresponds to the position of symbols displayed on the ‘game outcome display’. These terms only relate to the display of symbols and are independent of whether the game has been won or lost. Thus the Opponent’s argument that these terms “allows for a subset of the populated displayable symbol positions to be used in evaluating whether there is a winning outcomes” is not relevant in determining the scope of the claims.
I consider that there is a real and reasonably clear disclosure of this feature in the accepted description and thus complies with s 102(1). Furthermore this aspect of the amendments does not fall outside of the scope of the claim and thus complies with s 102(2)(a). I consider this aspect of the claims to be clear and fairly based and thus complies with s 102(2)(b).
3. wherein non-scatter winning game outcomes are determined by whether any combinations of game symbols appear in any of a fixed number of predetermined combinations of game outcome positions on the game outcome display [Claim 1]
3a. non-scatter
The Opponent states in their submissions in relation to the allowability of amendments under s 102(1):
“The proposed amendments introduce the term “non-scatter winning game outcomes” into claim 1, claim 18 and appended claims.
Although, as noted above, the term ‘scatter’ does have a known meaning within the industry, the term “winning non-scatter game outcomes” was not used in the Bally Patent prior to the proposed amendment. It is unusual wording and is not used as a term within the industry.
The plain meaning of ‘non-scatter’ is to encompass any game outcome that is not a scatter outcome. It would therefore encompass non pay-line based games such as reel power systems, and other game potential non pay-line based outcomes.
This meaning is confirmed by claim 2, which is appended to claim 1. Claim 2 limits claim 1 by requiring that winning non-scatter game outcomes is limited to… ‘paylines’. In light of this, the phrase “winning non-scatter game outcomes” in claim 1 must encompass methods of operating electronic gaming machines and gaming machines that do not rely on paylines.
This is further confirmed by Claim 19, which is appended to claim 18, and is
also limited to pay-line based games.”
The Opponent states in their submissions in relation to the allowability of amendments under s 102(2)(b):
“The proposed amendments introduce the phrase “wherein non-scatter winning game outcomes are determined by whether any combinations of game symbols appear in any of a fixed number of predetermined combinations of game outcome positions” This phrase was not used in the Filed Bally Patent.
The introduction of the term ‘any of a fixed number of predetermined combinations of game outcome positions’ in the proposed amendment renders the claims unclear.”
The Applicant states in their submissions:
“The opponent has objected to the term ‘winning non-scatter game outcome’ being introduced into claim 1. Contrary to the assertions of the opponent, this is a simple limitation to exclude scatter outcomes. The amendment is intended to put beyond doubt that the claims are not intended to cover scatter outcomes. Scatter is a term used widely in the art, and forms part of the CGK, as for example is agreed by Ellis and the opponent.
The present invention may be implemented with or without scatters. However, the particular features relating to game play options and outcomes as claimed now specifically exclude scatter winnings. Scatters as a game feature are also disclosed in the specification, for example at page 2 line 32 to page 3 line 7; page 17 line 23; page 20 lines 18 to 22.
The applicant is simply disclaiming part of what was previously claimed. The scope is of the claim is more limited than before amendment; the term used are disclosed; there is no possible valid objection here.”
The addition of the words ‘non-scatter’ only serves to narrow the scope of the claims. It is commonly accepted by the parties that the term ‘scatter’ as a winning game outcome is a term understood by a person skilled in the art. It logically follows that excluding ‘scatter’ as a winning game outcome would be understood by a person skilled in the art. Non-scatter winning game outcomes (such as ‘paylines’) were disclosed in the accepted specification. Thus there is a real and reasonably clear disclosure of this feature in the accepted description and thus complies with s 102(1).
The amendment to the claims to only non-scatter winning outcomes is only narrowing and thus this aspect of the amendments does not fall outside of the scope of the claim and complies with s 102(2)(a). I consider this aspect of the claims to be clear and fairly based and thus complies with s 102(2)(b).
3b. Any of a fixed number of predetermined winning symbol combinations and positions
The Opponent states in their submissions:
“The Filed Bally Patent only discloses and exemplifies games that use payline and scatter outcomes, as those terms are normally used in the industry. It does not disclose other pay structures, such as the Reel Power system.
The Abstract of the Filed Bally Patent at lines 21-22, states: “The same paytable (Figs 11, 16) is used for all of the play options and a maximum number of paylines is used for each play.”
Page 3, lines 5-8 of the Filed Bally Patent states that: “In order to increase betting opportunities available to the player, some games have been developed that adopt up to 40 or more paylines. In these and other arrangements, nonlinear paylines and “scatter” pays are also known.” (emphasis added). The specification then goes on to further discussion on paylines.
The term ‘non-linear’ as used in the above cited passage and the Filed Bally Patent would be understood by the skilled addressee as referring to paylines that are not in a “straight line”, i.e.: not across the symbols in a single horizontal line. It would not be understood by the skilled addressee as referring to other systems such as the Reel Power-style systems, even though these were known at the time.
Page 17, lines 20-21 of the Filed Bally Patent states: “In this embodiment…A traditional set of 25 paylines are used and are fixedly activated automatically for each play.” …the EGM 100 is specifically configured so that the player can then select one of a number of different play options…”
The passages on page 3 at lines 1-21; page 4 lines 1-14 and 25; page 6 lines 3-4; page 17 lines 1-8 and 20; page 18 lines 14-18; page 21 lines 20-23; page 22 lines 20-22 and page 23 lines 25-27 in the Filed Bally Patent reinforce that the Filed Bally Patent does not contemplate or disclose any games other than payline and scatter games. In particular, page 18, lines 14-18 of the Filed Bally Patent, states: “...instead of the concept of “credits bet per line”, which applies to a line selective based game, the present arrangement would connote a concept of “credits bet per play”, where the number of credits bet would be automatically extended across all paylines in operation.” This highlights that the invention disclosed is designed to use a standard payline structure, and simply incrementally multiply payline-based prizes by the credits bet per play option.
The examples in the Filed Bally Patent also all disclose payline games. For example, Figure 9 illustrates pay lines. Figure 8 sets out game rules for an example game that uses the system of the Filed Bally Patent, and includes the following rules:
(i) “All wins left to right only except scatters which pay any”;
(ii) “All wins on lines only except scatters”;
(iii) “All 25 lines are activated during game”.
Finally, all of the examples in the Filed Bally Patent have the same number of paylines across each game play option.
The single reference to non linear pay lines in the specification must be understood in the context of the various (linear and non linear) paylines illustrated in Figure 9 – none of which remotely suggest a reel power game or any other non pay line based game. To suggest that this single sentence could provide a basis for a disclosure of games based on an entirely different premise to pay lines is simply not sustainable.
The uncontroverted evidence of Mr Ellis28 is that Reel Power does not function in a normal payline sense. That is, it is clear that the skilled person does not regard the evaluation techniques used in Reel Power as a “non-linear” payline.
The effect of the proposed amendments is to extend the scope of the claims to cover non pay lined based games, including the reel power system. Consequently, the proposed amendments introduce new subject matter.
Furthermore, to the extent that meaning can be given to this proposed new wording, the word ‘positions’ in the phrase “any of a fixed number of predetermined combinations of game outcome positions” would appear to refer to positions of symbols within the array of symbols that winning game symbol combinations may appear on. It would encompass “linear and non-linear paylines”, which may appear as a pattern across the grid of symbols. It would also encompass non-payline based games. For example, the term could cover winning symbols in the first two columns in a five or more column grid, without reference to the other columns (for example, vertical pays down a column). An illustration of such an outcome is set out below:
The use of “any of a fixed number of predetermined combinations of game outcome positions” merely requires that the winning combinations be predefined, for example in the game rules, and the positions (for example on a grid) be similarly predefined. The broadness of such language allows for application of pay systems and grid positions that are not contemplated or exemplified in the Filed Bally Patent. Further, the use of language such as “nonscatter” does not adequately define the possibilities that are contemplated and would encompass potentially any number of pay systems, whether currently implemented or yet to be invented.
As noted above, the Filed Bally Patent was directed solely to gaming machines that have paylines, and pay for payline and scatter symbol combinations. Non pay-line games are not disclosed in the Filed Bally Patent. Nor are they covered by the claims immediately prior to the proposed amendments. Furthermore, there was no disclosure of a non pay-line game in the Bally Patent immediately prior to the amendment or in the body of the Amended Bally Patent.”
The Applicant states:
“It is noted that the opponent goes to some lengths, both in their own submissions and in the argumentative evidence from Ellis, to assert that the patent as filed only included conventional, payline based reel type game. The argument is based on Ellis’ flawed analysis of the original disclosure, and his non-expert view of the claim scope before amendment, and of the proposed amended claim scope.
For the purpose of clarity, we will address one specific aspect of the opponent’s objections, relating to Reel Power. It is the applicant’s submission that a Reel Power type implementation of the present invention would clearly and squarely fall within the claims as accepted and as proposed to be amended. The word ‘payline’ (however defined is only introduced only in claim 5. Consequently, the claims as accepted must have extended to implementations other than paylines, and specifically other than the kind of limited characterisation of payline used by the opponent.
This was the clear intent and thrust of the disclosure as filed. For example, see page 9, lines 16 to 18, ‘ In other modes, the EGM may impose a limitation on the activity of frames, spaces or symbols within a fixed array by means other than a reel’. If there are no reels, then the description cannot be limited to paylines, however described.
The term payline is explained in the specification, in the context of reel type games, at page 3 lines 1 to 4 :
‘A payline identifies the particular combination of positions that symbols are located within the matrix, extending logically across the columns and through rows, that is considered for determining whether a bonus trigger symbol occurrence arises from a play or not.’
The text at page 3 goes on to state at line 10 that ‘ ..some games have been developed that adopt up to 40 or more paylines. In these and other arrangements, non-linear paylines and ‘scatter’ pays are also known’.
In order to have 40 paylines, some lines must not be straight lines, but meander over the display position. The disclosure talks about non-linear paylines in addition to such meander arrangements. Reel Power is, on any reasonable reading, an example of non-linear paylines. Clearly, Reel Power and similar systems were in the contemplation of the applicant. They were, as asserted by the opponent, part of the common general knowledge. Further, there is no reason why the invention could not be applied to such arrangements.
At page 24, lines 5 to 10, the description as filed states that ‘The embodiments and examples are to be considered in all respects as illustrative and not restrictive’. This would seem to mitigate fairly directly against his arguments that the claims should be read down to the examples.
Further, it states that ‘..it will be evident to those skilled in the art that the invention may be embodied in other specific forms without departing from the essential characteristics thereof’. This also makes it clear that it is contemplated that implementations of the invention may be different to the examples disclosed. The description clearly and directly teaches that the invention is not limited to the example To further confirm this, Ellis and the opponent both state that the Reel Power type of game was well known at the time of filing. It is and was apparent to the skilled worker in the art that the present invention is applicable to Reel Power type implementations. Why would be claims be read, all things being equal, so as to exclude a range of known games produced by a competitor?
Accordingly, the claims before and after amendment would be infringed by a Reel Power type game adopting the claimed features. It is accordingly not tenable to argue that this outcome is illustrative of situation where the amended claims ‘would not in substance fall within the scope of the claims of the specification before amendment’.”

It appears that the term ‘predetermined winning symbol combinations’ is similar to the term ‘paylines’ which is commonly used in the art. The term ‘payline’ is explained in the Ellis declaration:
“At the earliest possible Priority Date, the vast majority of games used in Australia provided a fixed grid of symbols (often comprised of 5 reels each with 3 rows, making 15 symbols in total). Most symbols in a typical game of this type pay a prize based on achieving a predefined combination in a particular pattern on the grid. These patterns are referred to as "paylines" or "lines", and run across the 5 reels, with one position on each reel. For example, payline 1 is most typically the centre row on the grid (the middle position on each reel). Achieving, for example, 3 or more of the same symbol in order, starting with the leftmost reel, may pay a prize. An example of such a typical fixed grid of symbols (taken from Figure 9 of the Filed Bally Patent) is illustrated below:
Mr Ellis further states:
“The meaning of the term 'any of a fixed number of predetermined combinations of game outcome positions' in the proposed amendment is unclear to me.
To the extent that I can give this phrase meaning, the word 'positions' in the above phrase would appear to refer to positions of symbols within the array of symbols that winning game symbol combinations may appear on. It would encompass "linear and non-linear paylines", which may appear as a pattern across the grid of symbols. It would also encompass non-payline based games. For example, the term could cover winning symbols in the first two columns in a five or more column grid, without reference to the other columns (for example, vertical pays down a column). An illustration of such an outcome is set out below:
“In my opinion, the use of "any of a fixed number of predetermined combinations of game outcome positions" merely requires that the winning combinations be predefined, for example in the game rules, and the positions (for example on a grid) be similarly predefined. In my opinion, the broadness of such language allows for application of pay systems and grid positions that are not contemplated or exemplified in the Filed Bally Patent. Further, in my opinion the use of language such as "non-scatter" does not adequately define the possibilities that are contemplated and would encompass potentially any number of pay systems, whether currently implemented or yet to be invented.”
I consider that the term ‘predetermined winning symbol combinations’ encompasses (but is broader than) the term ‘payline’, in that a payline allows for only a single winning symbol position in each column (reel), whereas ‘predetermined winning symbol combinations’ can include multiple winning symbol positions in each column (reel). There is ample disclosure of ‘paylines’ which falls within the scope of, and thus provides fair basis to, the ‘predetermined winning symbol combinations’.
The description also contains the following at page 2 lines 15 to 19:
“Each reel has a prescribed number of positions that correspond to positions in an array whereby the position and sequence in the array may be represented by a symbol bearing some distinctive value in a sequence of symbols in paylines or generally distributed on the display screen of the same or predefined type.”
I consider that this disclosure suggests that the concept of paylines can be broadened to include a more general distribution of winning combinations and provides a further basis for ‘predetermined winning symbol combinations’.
Although the term ‘fixed number of predetermined winning symbol combinations and positions’ is not used in the filed specification, as discussed above I am satisfied that its meaning is clear and fairly based on the description and complies with s 102(2)(b) and was in substance disclosed thus complying with s 102(1).
I consider that this is a narrowing amendment. Whereas previously the claim included the possibility of selecting the number of winning symbol combinations and positions, the claim now provides that the winning symbol combinations must be a fixed number. Thus I consider that this aspect of the amendments complies with 102(2)(a).
4. wherein whether the displayed game symbols on the game outcome display are determined to provide one or more non-scatter winning game outcomes is inherent in the selected game play option and said player interface does not permit a player to alter the number or particular combinations of the fixed number of predetermined combinations of game outcome positions
The Opponent states in their submissions in relation to the allowability of amendments under s 102(1):
“To that extent that this new wording can be given meaning, as noted above, without wording to limit the term fixed number of predetermined combinations of game outcome positions to “positions in the grid which form linear and nonlinear paylines”, the effect of the amendment is that proposed amended claim goes beyond the scope of what is described in the Filed Bally Patent as it would encompass at least Reel Power style systems, which do not operate in the same manner as payline-based systems.”
The Opponent states in their submissions in relation to the allowability of amendments under s 102(2)(b):
“The effect of this proposed amendment renders the claims unclear.
The claim as amended suggests that whether the player achieves a winning outcome is inherent in the game play option. In other words, the mere selection of the game option determines a win. This would be nonsensical as the player’s selection of the game option would be the only factor in whether they would win or not.
Even if the claim is not intended to have this meaning and is intended to refer to the evaluation of the game symbols, the use of ‘inherent’ in the claim still introduces ambiguity. It is not clear whether ‘inherent’ has a different meaning to subsequent use of ‘fixed’ and, if so, what that meaning is. That is, if the evaluation of the displayed symbols is inherent, then the requirement for a fixed number of combinations of game outcomes would appear to be redundant. As the terms “inherent” and “fixed” are currently used in the claims, it is not clear what the effect of the different meaning of these terms has on the scope of the claim.
It is also not clear how a “fixed number” could be altered by a player. Further, it is not clear when the player interface does not permit a player to alter the number or particular combinations of the fixed number of predetermined combinations of game outcome positions or how this is related to the selection of a game play option.”
The Applicant states in their submissions:
“As best understood, the opponent asserts that this is unclear, because it asserts that whether the player wins or not is an automatic outcome of the game play option selected. This is clearly not a fair reading of this phrase in its context. This would clearly be a non-viable, impractical and indeed illegal implementation for any gaming machine.
This phrase means that whether the game symbols displayed are determined to provide a winning outcome is dependent upon the potentially winning symbols and positions (which are described earlier in the claim) associated with the game play option, and which are inherent in the game play option selected. The player cannot select, for example, to add more or less paylines or make more or less symbols active within a particular game play option.
This phrase does not stand alone. The preceding phrase explains how a winning outcome is determined.”
4a. winning game outcomes is inherent in the selected game play option
The opponent is correct when they state:
“The claim as amended suggests that whether the player achieves a winning outcome is inherent in the game play option. In other words, the mere selection of the game option determines a win. This would be nonsensical as the player’s selection of the game option would be the only factor in whether they would win or not.”
This interpretation can thus be eliminated as it leads to an absurd outcome. Consequently, the use of the words “is inherent in” can instead only mean “is dependent upon” as suggested in the Applicant’s submissions.
Thus the only sensible interpretation is as follows: whether the symbols result in a winning outcome is dependent upon the game play option which was selected by the player.
4b. fixed number of predetermined combinations of game outcome positions
The Opponent states:
“It is also not clear how a “fixed number” could be altered by a player. Further, it is not clear when the player interface does not permit a player to alter the number or particular combinations of the fixed number of predetermined combinations of game outcome positions or how this is related to the selection of a game play option.”
The Applicant explains this aspect of the claim as follows:
“The player cannot select, for example, to add more or less paylines or make more or less symbols active within a particular game play option.”
Each game play option has a set number of “predetermined combinations of game outcome positions”, e.g. paylines. Once a game play option is chosen, the player cannot alter the “predetermined combinations of game outcome positions”, e.g. paylines. I am satisfied that its meaning is clear and fairly based on the description and complies with s 102(2)(b) and was in substance disclosed thus complying with s 102(1). This aspect of the amendments serves only to narrow the scope of the claim which previously did not have this limitation and consequently complies with s 102(2)(a).
Conclusion
The opposition fails on all grounds relied on. The proposed amendments satisfy the requirements of subsections 102(1), 102(2)(a) and 102(2)(b) of the Patent Act 1990. I allow the amendments.
Costs
Ordinarily in proceedings such as these, costs follow the event. There appears to be no special circumstances which warrant varying that approach. Therefore, I award costs in accordance with Schedule 8 of the Patents Regulations against Aristocrat Technologies Australia Pty Limited.
Xavier Gisz
Delegate of the Commissioner of Patents