Aristocrat Technologies Australia Pty Limited v Bally Technologies ANZ Pty Ltd - [2015] APO 68

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Aristocrat Technologies Australia Pty Limited v Bally Technologies ANZ Pty Ltd [2015] APO 68

Patent:2011101675

Title:A method and system for gaming

Patentee:  Bally Technologies ANZ Pty Ltd
Opponent:  Aristocrat Technologies Australia Pty Limited
Delegate:  Xavier Gisz
Decision Date:  26 October 2015
Hearing Date:  Written submissions filed on 14 July 2015, 29 July 2015 and 4 August 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 and 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:2011101675

Title:A method and system for gaming

Patentee: Bally Technologies ANZ Pty Ltd
Date of Decision: 26 October 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.
I allow the amendments.
I award costs against Aristocrat Technologies Australia Pty Limited.
REASONS FOR DECISION
Background

Australian Innovation Patent 2011101675 (the Patent) in the name of SHFL Entertainment (Australasia) Pty Limited (which subsequently changed name to Bally Technologies ANZ Pty Ltd (the Patentee)) was filed on 21 December 2011 as a divisional of 2011201004 which in turn claims priority from Australian provisional applications 2010903536 and 2010903538, filed on 7 August 2010 and 8 August 2010 respectively.
The patent was advertised as certified on 16 August 2012. On 27 May 2014 a re-examination report was issued. Amendments were proposed on 28 July 2014. Another re-examination report was issued on 30 September 2014. Amendments were proposed on 28 November 2014. Another re-examination report was issued on 15 January 2015 noting that, once allowed, the amendments would overcome the objections raised in the previous re-examination report. The amendments were advertised for opposition on 29 January 2015.
The amendments were opposed by Aristocrat Technologies Australia Pty Limited (the Opponent) on 27 March 2015. A Statement of Grounds and Particulars was filed on 27 April 2015. Evidence in support in the form of a declaration by Benjamin Ellis was filed on 22 June 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).
Preliminary matter
On 4 September 2015 the Opponent filed another statutory declaration of Benjamin Ellis made on 13 August 2015. The letter accompanying the declaration stated:
“We draw the Commissioner's attention to the Statutory Declaration of Benjamin Ellis (copy without annexures attached) filed in the related opposition to the amendment of Australian patent application 2011201004. In reaching a decision in this matter, the Commissioner may wish to consult this document under Regulation 5.23.
In particular, the Commissioner may wish to consider whether the evidence given by Mr Ellis at paragraph 44 is relevant to the submissions made by Bally Technologies ANZ Pty Ltd in paragraphs 38 and 39 of the submission filed on 29 July 2015.”
Paragraph 44 of the new Benjamin Ellis declaration states:
“I was asked to consider whether the passage at page [8], lines 16- 18 ··· "In other modes, the EGM may impose a limitation on the activity of frames ... By means other than a reel" disclosed anything other than payline based games. This passage hints at different ways to select symbols for display in a grid of symbols but does not relate to how those symbols are evaluated. For example, rather than choosing one stop location on a fixed red strip layout, in order to determine the given symbols on a reel, a system may be adopted to generate each symbol independently, even where displayed using a virtual reel spin. In the context of the specification, I would expect that once the symbols had been selected in a different way to form a grid, they would be evaluated using paylines. Accordingly, I do not consider that this passage, or any passage in the Filed Bally Patent, discloses or suggests anything other than payline based games.”
I do not consider the new Ellis declaration, and in particular paragraph 44, to be of such relevance that it would have any significant effect on the outcome of the opposition (which is consistent with the test proposed in Merial Limited v Bayer Intellectual Property GmbH [2015] APO 16 (14 April 2015) at paragraph 24). The previously filed Ellis declaration already provided information on ‘payline’ based games. The new Ellis declaration does not significantly change my understanding about ‘payline’ based games. Consequently I do not intend to rely on the new Ellis declaration under Reg 5.23.
Evidence
The evidence in support comprised a declaration by Benjamin Ellis made on 22 June 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).
(2A) For the purposes of subsection (2), relevant time means:
(b) in relation to an amendment proposed to a complete specification relating to an innovation patent – after the Commissioner has made decisions under paragraphs 101E(a) and (aa) in respect of the patent.
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) 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.
The innovation patent was certified on 30 July 2012, thus satisfying the criteria of s 102(2A).
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 basically 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 on 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).
Principles for construing the claims of 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 …”
The person skilled in the art
The Applicant notes in their submissions at paragraph 7:
“It is notable that we are not here concerned with highly technical features within, say, the internal workings of complex jackpot selecting algorithms, or the internal structure of a processor chip. These are terms that would, in the case of scatter, base wager and payline, be familiar to an ordinary member of the public playing a poker machine at their local club or hotel. They, or equivalent terms, are used in the instructions for play of most such machines, and in their paytables. Because of their widespread use and role in this context in the industry, it is difficult to see how they could have any alternative or special meaning.”
The invention resides in the rules and operation of the game, thus the person skilled in the art must have experience in playing gaming machines. This person would have knowledge of both the games themselves and the terminology used to describe features of the games.
The invention described
The invention relates to a gaming machine wherein the player can choose from various ‘game play options’. Each game play option is associated with winning symbol combinations and positions.
Amendments
The amendments were proposed on 28 July 2014 and 28 November 2014 in response to the re‑examination reports of 27 May 2014 and 30 September 2014. A marked-up version of the amendments is provided below:
1. A method for operating an electronic gaming machine, including at least the steps of:
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; and
after receiving said game play option selection, initiating a game in accordance with the selected game play option; wherein, following game initiation, a game controller selects a predetermined number of game symbols from the subset of game symbols associated with the selected game play option and causes a display of the selected predetermined number of game symbols on a game outcome display;
wherein winning non-scatter game outcomes are determined by whether the game symbols displayed on the game outcome display correspond with any of a fixed number of predetermined winning symbol combinations and positions associated with the selected game play option;
wherein said game controller is prevented from selecting and causing the display on said game outcome display of any game symbols from said set of game symbols which are not part of the subset of game symbols associated with the selected game play option; and
wherein the winning symbol combinations and positions are 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.
2. The method according to claim 1 wherein the subsets associated with different game play options vary in one or more of the relative frequency of occurrence of one or more game symbols and the selection of game symbols are present in that subset.
2. A method according to claim 1, wherein the positions along which winning symbol combinations may occur are the same for each game play option.
3. A method according to ~~any of the preceding claims~~ claim 2, wherein the game is a reel-type game with a fixed number of reels, said positions occur along paylines, and each game play option provides ~~the same~~ a fixed and unalterable number of paylines.
4. The method according to claim 3, wherein after receiving said game play option selection, said game controller causes the subset of game symbols associated with the selected game play option to be arranged in symbol positions on the reels.
4. A method according to any one of the preceding claims, wherein the different game play options have different base wagers, and higher value base wager games incorporate into the subset of symbols additional enhanced game play symbols which replace other specific symbols in the lower base wager value options, wherein the subset of game symbols for each game play option incorporates all the enhanced game play symbols of all the game play options having a lower value base wager.
5. The method according to any one of the preceding claims, wherein at least some of the game symbols within the set of game symbols form groups, each group being formed such that is one game symbol from a particular group is selected for use in a game play option, the other game symbols in that group are not selected in that game play option.
5. A method according to any one of the preceding claims, wherein the same winning combinations of symbols are winning combinations in all game play options, and wherein the amount won for each such combination in each game play option is the same, if a minimum wager is made.
The amendments added and/or clarified the following features to overcome the novelty and innovative step objections raised in the re-examination reports:
·excluding winning on the basis of a ‘scatter’ of symbols
·excluding the player’s ability to select different winning symbol combinations and positions (similar to paylines); and
·increasing the minimum number of base wagers to at least 3 (i.e. excluding having only 1 or 2 base wagers)
·defining that each game play option has an associated base wager (i.e. different game play options cannot have the same base wager)
Non-scatter
The Opponent states in their submissions:
“38. At the earliest possible Priority Date, the vast majority of games used in Australia also provided payouts for ‘scatter’ symbols occurring anywhere on the grid. A ‘scatter game outcome’ awards a prize by reference to a magnitude of a particular symbol appearing anywhere in the grid. If a certain number of ‘scatter symbols’ appeared anywhere on the screen, the player would receive some type of award.
39. An example of a scatter outcome game is illustrated at paragraph 41 of the Ellis declaration.
[The example game from the Ellis declaration is reproduced below:
]
40. One key difference between payline games and scatter outcome games is that a scatter game outcome pays a prize based on the player’s total wager. In contrast, a payline game outcome pays a prize based on the wager made in relation to the payline. For example, a player may play 100 different paylines with a wager of 1 cent per line. A scatter outcome win would pay based on the total wager of $1 (100 x 1 cent) whereas a payline game outcome would pay based on the per payline wager of 1 cent.
…
46. 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.”

The Applicant states at paragraph 25:
“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.”
The Opponent states at paragraph 47:
“47. The plain meaning of ‘non-scatter’ is to encompass any game outcome that is not a scatter outcome. It would therefore encompass non-payline based games such as reel power systems, and other potential non-payline based game outcomes.”
The Opponent states at paragraph 26 and 27 of the further submissions:
“…Aristocrat notes that the reliance on the amendment being a ‘limitation’ and a
‘disclaimer’ is misconceived.
Moreover, as noted in Aristocrat’s primary submissions, the amendment does more than disclaim “scatter outcomes”. It was not used in the specification as filed and introduces the concept of winning game outcomes which are determined based on whether the game symbols displayed on the game outcome display correspond with any of a fixed number of predetermined winning symbol combinations and positions.”
I agree with the Applicant. 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. Therefore this feature is clear and fairly based and complies with s 102(2)(b) and was in substance disclosed thus complying with s 102(1).
I consider that both scatter (explicitly mentioned throughout the specification) and non-scatter winning game outcomes (such as ‘paylines’) were disclosed in the specification of the certified innovation patent. The amendment to the claims to only non-scatter winning outcomes is only narrowing. Consequently, this feature is within the scope of the claims as they existed before the amendment thus complying with s 102(2)(a).
Any of a fixed number of predetermined winning symbol combinations and positions
The Opponent states in their submissions:
“49. The proposed amendments introduce the term “any of a fixed number of predetermined” into the claims to qualify the words “winning symbol combinations and positions”. The term ‘fixed number of predetermined winning symbol combinations and positions’ was not used in the Filed Bally Patent.
…
51. The uncontroverted evidence of Mr Ellis is that “any of a fixed number of predetermined winning symbol combinations and positions” encompasses games that 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.”
Mr Ellis states at paragraph 67:
“67. In my opinion, the use of "any of a fixed number of predetermined winning symbol combinations and 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.”
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:
“35. 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 states at paragraph 66:
“66. 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 symbol combinations" may appear on. It would encompass "linear and nonlinear paylines'', which may appear as a pattern across the grid of symbols. It would also encompass non-payline based games. For example, if the grid was fixed, 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:”
Mr Ellis states at paragraph 67:
“In my opinion, the use of "any of a fixed number of predetermined winning symbol combinations and 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.”
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 fair basis disclosure of ‘predetermined winning symbol combinations’.
Mr Ellis’ opinion that the “language allows for application of pay systems and grid positions that are not contemplated or exemplified in the Filed Bally Patent” is tangential to the question of fair basis. Fair basis does not require every possible embodiment falling within the scope of the claim to be explicitly disclosed; rather it requires only that there is a ‘real and reasonably clear’ disclosure of the invention.
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).
Base wagers
The following feature was added in the amendments:
“…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”
The Opponent states:
“57. There is no commentary within the body of the Filed or Certified Bally Patent that provides an express definition on the meaning of the term ‘base wager’. The term does not appear to be used at all in the Filed Bally Patent, the Certified Bally Patent or the Bally Patent immediately prior to the proposed amendment.”
Mr Ellis states at paragraph 24:
“24. To the extent that I can give meaning to the term 'base wager ' in the context of the Bally Innovation Patent, in my view the Filed Bally Patent does not refer to a "base wager" in terms of supplementary wagering such as from an Ante Bet. Rather, the term "base wager" appears to accord with the use of the minimum 'credits bet per play' as exemplified at page 17 lines 3-12 and Table 7.2 of Figure 7 in the Filed Bally Patent, being the different minimum wagering amounts for each of the 5 different play options, each of these being a 'base wager' . The 'credits bet per play' examples show that the player is presented with these 5 different play options, corresponding to the use of up to 5 'bonus symbols'.”
The description at page 17 lines 3 to 9 states:
“In addition, the game will have the same "credit options" as is usual for most other kinds of spinning reel games. However, 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.
An example of this implementation is shown below:
”
Table 7.2 of Figure 7 is reproduced below:

1^st PLAY
OPTION
[10]

[1 credit]

2^nd PLAY OPTION
[10]+[J]

[5 credits]

3^rd PLAY OPTION
[10]+[J]+[Q]

[15 credits]
4^th PLAY OPTION
[10]+[J]+[Q]+[K]
[30 credits] 5^th PLAY OPTION
[10]+[J]+[Q]+[K]+[A]
[60 credits]

The Applicant states:
“19. The opponent has objected to the inclusion of the term ‘base wager’, and to the limitation of the claims from ‘a plurality of game play options’ to ‘at least three different base wagers’.
20. As noted by the opponent, at paragraph 58, the term base wager is equivalent to the term ‘minimum wager’. It is the basic amount which a player has to wager in order to operate the particular selected game option. Larger wagers can be made if desired. The term is clear and properly based on, for example, the examples in the description.
21. The claims as certified require ‘a plurality of different game play options’. The amendments introduce a new limitation, that there are ‘at least three different base wagers corresponding to different game play options’. There is no limitation at all relating to wagers being associated with game play options in the certified claims.”
The specification provides an embodiment of the invention with five different game options that each have a different wager amount at page 13 line 27 to page 14 line 8. I consider each of these ‘gold symbol play cost’ amounts fall within the scope of a ‘base wager’. This base wager can be multiplied by ‘credits bet per play’ to calculate the ‘total credits bet’ as explained in the description at page 14 lines 6 to 8:
“The total credits bet calculation in the reel game win calculator process is then set up according to the formula:
Total credits bet = gold symbol play cost x credits bet per play”
Mr Ellis is of the opinion that “the term "base wager" appears to accord with the use of the minimum 'credits bet per play'”. I understand this to mean Mr Ellis believes that the ‘base wager’ means the minimum ‘total bet’.
The minimum ‘total bet’ is the ‘play option’ multiplied by the minimum ‘credits per play’. If the minimum credits per play is 1 (as is disclosed in the specification), the minimum ‘total bet’ is equal to the ‘play option’. Consequently I consider my interpretation of the term ‘base wager’ to be to equivalent to Mr Ellis’ interpretation.
I am satisfied that its meaning is clear and fairly based on the description and complies with s 102(2)(b) and 102(1). I consider that a ‘base wager’ was disclosed in the specification of the certified innovation patent.
The term ‘base wager’ is used to define the feature that there are at least three base wagers corresponding with game play options. 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.
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