Aristocrat Technologies Australia Pty Limited v IGT (Australia) Pty Ltd

Case •

[2009] APO 13

•

2 July 2009

ABSTRACTS OF DECISIONS

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Application  :          No. 684195 in the name of ARISTOCRAT TECHNOLOGIES AUSTRALIA PTY LTD.

Title:          Multi-line Gaming Machine.

Action:          Opposition by IGT (AUSTRALIA) PTY LTD to allowance of an amendment of the patent specification under Section 104 of the Patents Act.

Decision:          Issued 2 July 2009.

Abstract

The invention provided a gaming machine having multiple pay lines available where the pay lines may be horizontal lines across the display rows of the machine, vertical pay lines, diagonal pay lines over multiple rows and columns, and combinations of horizontal, vertical and diagonal line segments making up individual pay lines.  In this way, significantly more pay lines are available than the number of rows on a gaming machine. 

The proposed claims were significantly revised from those immediately prior to amendment in respect to the arrays of symbol locations making up the displays of a gaming machine and the pay line combinations that could be selected and wagered on.

Subsection 102(1)

As a result of the amendment, the proposed claims were found to be for matter in substance disclosed in the specification as filed.

Subsection 102(2)(a)

As a result of the amendment, several claims were found to not in substance fall within the scope of the claims before amendment.

Subsection 102(2)(b)

As a result of the amendment, it was found the specification would comply with subsections 40(2) and 40(3).

Summary

The proposed amendment contravened subsection 102(2)(a) and was consequently disallowed.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent application 684195 by ARISTOCRAT TECHNOLOGIES AUSTRALIA PTY LTD, and opposition by IGT (AUSTRALIA) PTY LTD to allowance of an amendment of the patent specification under Section 104.

BACKGROUND

  1. Aristocrat Technologies Australia Pty Ltd (“Aristocrat”) filed patent application 684195 on 18 August 1995.  The Patent Office advertised acceptance of the application on 4 December 1997.  The application proceeded to grant of a patent on 9 April 1998.

  2. On 11 April 2006 Aristocrat filed a request under Section 104 to amend the patent specification. After two adverse examination reports on the allowability of the amendment and consequent further requests to amend by Aristocrat, the Patent Office advertised the granting of leave to amend the specification on 14 September 2006. There was no opposition by any party within the required time and so this set of amendments was allowed on 13 March 2007 and notified in the Australian Official Journal of Patents on 19 April 2007.

  3. On 30 March 2007 Aristocrat filed a further request to amend the patent specification.  The Patent Office advertised the granting of leave to amend the specification on 6 September 2007.

  4. On 6 December 2007, IGT (Australia) Pty Ltd (“IGT’) filed a notice of opposition against this proposed amendment.  IGT followed up with a statement of grounds and particulars in support of the opposition on 6 March 2008.

  5. IGT obtained two extensions of time to serve evidence in support.  The final date for such service of evidence was 6 October 2008 which passed without IGT serving evidence in support.  Aristocrat consequently did not serve evidence in answer.

  6. A hearing was held in Canberra on 2 April 2009.  Mr John Dower and Mr Carl Harrap, patent attorneys of Freehills, represented Aristocrat.  Mr David Clark, patent attorney of Blake Dawson, represented IGT.  Both parties appeared by phone.

    THE SPECIFICATION

  7. The specification, as originally filed, describes the invention as relating to gaming machines and the need to provide innovative game features that add interest to the games on the machines to maintain player interest.  Strategies tried in the past to make games more enticing to players have aimed at increasing the maximum prize payable on a machine or creating at least the perception of more winning opportunities.  The specification states the present invention falls into the latter category.

  8. The specification also acknowledges that it has been possible to bet on more than one pay line of a slot machine simultaneously.  The present invention provides an arrangement where the number of pay lines can be increased without changing the display format on the machine.

  9. The specification further describes video displays being used on gaming machines to simulate spinning reels.  Further that some machines have matrices of pseudo-spinning reels, such as a 3x3 matrix of reels, whereby every single position on the display screen is essentially independently randomly achieved.  In such circumstances it is valid to pay on vertical line combinations as well as horizontal line combinations.

  10. The present invention provides a gaming machine having multiple pay lines available where the pay lines may be horizontal lines across the display rows of the machine, vertical pay lines, diagonal pay lines over multiple rows and columns, and combinations of horizontal, vertical and diagonal line segments making up individual pay lines.  In this way, significantly more pay lines are available than the number of rows on a gaming machine.

  11. The proposed amendment of 30 March 2007, the subject of the present opposition, amends some parts of the description to correct typographical errors and clarify some expressions.  The proposed claims though are significantly revised from those allowed under the first set of amendments on 13 March 2007.

  12. The claims recited below are the independent claims of the proposed amendment of 30 March 2007 with changes indicated as compared to the claims allowed on 13 March 2007.

    1.A gaming machine having display means arranged to display a plurality of symbols in an array of at least three n rows and at least three m columns of symbol locations, wherein n is at least three, m is at least five and an odd number, and n does not equal m, and game control means arranged to control images displayed on the display means, wherein the game control means being is arranged to pay a prize when a predetermined combination of symbols is displayed on a predetermined line payline of symbol locations of the array on which a player has wagered a bet, and wherein the number of paylines on which a player can select to wager a bet is variable for each play of the gaming machine, characterised in that the number of possible predetermined  lines (x lines) recognised by the control means selectable paylines is greater than the number of rows plus a number of diagonals of the array, there being are at n+1 lines paylines that use no symbols in at least 1 row, where n is the number of rows, and wherein there are an odd number of columns of symbol locations and at least one of the x lines paylines is asymmetric relative to a centre column of the array of symbols.

    23.  A gaming machine having display means arranged to display a plurality of symbols in an array of at least three n rows and at least three m columns of symbol locations, wherein n is at least three, m is at least four, and n does not equal m, and game control means arranged to control images displayed on the display means, wherein the game control means being is arranged to pay a prize when a predetermined combination of symbols is displayed on a predetermined line payline of symbol locations of the array on which a player has wagered a bet, and wherein the number of paylines on which a player can select to wager a bet is variable for each play of the gaming machine, characterised in that the number of possible predetermined lines (x lines) recognised by the control means selectable paylines is greater than the number of rows plus a number of diagonals of the array, there being are at least n+1 lines paylines that use no symbols in at least 1 row, where n is the number of rows, and wherein at least one of the x lines paylines has no axis of symmetry.

    45.  A gaming machine having display means arranged to display images including a plurality of symbols in an array of at least three n rows and at least three m columns of symbol locations, wherein n and m are at least three, and game control means arranged to control images displayed on the display means, wherein the game control means being is arranged to pay a prize when a predetermined combination of symbols is displayed on a predetermined line payline of symbol locations of the array on which a player has wagered a bet, and wherein the number of paylines on which a player can select to wager a bet is variable for each play of the gaming machine, characterised in that the number of possible predetermined lines (x lines) recognised by the control means selectable paylines is greater than the number of rows plus a number of diagonals of the array and less than nm, and there being are at least n+8 lines paylines that use no symbols in at least 1 one row, where n is the number of rows.

    56.  A gaming machine having display means arranged to display a plurality of symbols in an array of a predetermined number of n rows and m columns of symbol locations, where n is at least three and m is at least four and game control means arranged to control images displayed on the display means, wherein the game control means being is arranged to pay a prize when a predetermined combination of symbols is displayed on a predetermined line payline of symbol locations of the array on which a player has wagered a bet, and wherein the number of paylines on which a player can select to wager a bet is variable for each play of the gaming machine, wherein the number of possible predetermined lines recognised by the control means as a said predetermined line of symbol locations is characterised in that the player can cause the gaming machine to operate in a first mode of operation in which all possible combinations comprising one symbol position in each display column are selected to provide nm lines paylines, and cause the gaming machine to operate in a second mode of operation in which x lines paylines are provided, where n is the number of rows in the array of symbols, m is the number of columns in the array of symbols and x is greater than or equal to one and less than nm, and wherein the gaming machine is operable in both said first mode of operation and said second mode of operation, the mode of operation being dependent on an action of a player of the gaming machine using a means for selecting the mode of operation.

    1819.  A gaming machine having display means arranged to display a plurality of symbols in an array having at least three rows and at least three columns of symbol locations, game control means arranged to control images displayed on the display means, the game control means being arranged to, in direct response to the tendering of a certain wager by a player, pay a prize when a predetermined combination of symbols is displayed in any combination of symbol positions comprising one symbol position in each display column to provide nm combinations, where n is the number of rows in the array of symbols and m is the number of columns in the array of symbols.

    221.   A gaming machine having display means arranged to display a plurality of symbols in an array of at least three n rows and at least three m columns of symbol locations, wherein n is at least three, m is at least three and n does not equal m, and game control means arranged to control images displayed on the display means and the game control means being arranged to pay a prize when a predetermined combination of symbols is displayed on in one of a plurality of predetermined lines of symbol locations of the array, characterised in that wherein each of the plurality of predetermined lines includes one and only one symbol location in each column of the array, and wherein the number of possible the plurality of predetermined lines (x lines) recognised by for which the control means will pay a prize is greater than the number of rows plus a number of diagonals of in the array, there being at least n+1 lines that use no symbols in at least 1 row of the array, where n is the number of rows the gaming machine further including means for selecting a plurality of predetermined arrangements of symbol locations, but not all, by making one of a plurality of possible initial wager options, and wherein at least one of the x predetermined lines of symbol locations has no axis of symmetry.

    222.   A gaming machine having display means arranged to display a plurality of symbols in an array of at least three n rows and at least three m columns of symbol locations, wherein n is at least three, m is at least four, and n does not equal m, and game control means arranged to control images displayed on the display means, wherein the game control means being is arranged to pay a prize when a predetermined combination of symbols is displayed on a predetermined line payline of symbol locations of the array on which a player has wagered a bet, and wherein the number of paylines on which a player can select to wager a bet is variable for each play of the gaming machine, characterised in that the number of possible predetermined lines (x lines) recognised by the control means selectable paylines is at least nine and is greater than the number of rows plus a number of diagonals of the array, there being at least n+1 lines that use no symbols in at least 1 row, where n is the number of rows and wherein at least one of the x lines paylines has no axis of symmetry and a maximum of four of the paylines share the same three positions in the three leftmost columns of the array with another one of the paylines.

    124.   A gaming machine having display means arranged to display a plurality of symbols in an array of at least three n rows and at least three m columns of symbol locations, wherein n is at least three, m is at least five and an odd number, and n does not equal m, and game control means arranged to control images displayed on the display means, wherein the game control means being is arranged to pay a prize when a predetermined combination of symbols is displayed on a predetermined line of symbol locations of the array characterised in that the number of possible predetermined lines (x lines) recognised by the control means is greater than the number of rows plus a number of diagonals of the array and less than nm, wherein there being are at least n+1 lines that use no symbols in at least 1 row, where n is the number of rows, and wherein there are an odd number of columns of symbol locations and at least one of the x lines is asymmetric relative to a centre column of the array of symbols, and the number of the lines passing through each symbol location is in the range (.7)l/n to (1.5)l/n where l is the total number of lines.

    APPLICABLE LAW

  13. Section 102 of the Patents Act covers the allowability of amendments. The pertinent sub-sections in this case are sub-sections 102(1), (2) and (2A)(a).

    (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:

    (a)in relation to an amendment proposed to a complete specification relating to a standard patent---after the specification has been accepted; …….

    STATEMENT OF GROUNDS AND PARTICULARS

  14. IGT’s grounds and particulars of opposition are that, as a result of the amendment, the specification claims matter not in substance disclosed in the specification as filed,  the claims would not in substance fall within the scope of the claims before amendment, and that the specification does not comply with sub-sections 40(2) or (3).  The objections under sub-sections 40(2) and (3) are that, as a result of the amendment, the specification does not describe the invention fully or does not end with claims defining the invention, and that the claims are not clear and succinct and fairly based on the matter described in the specification.

  15. Under particular 1 (matter not in substance disclosed), IGT listed seven items.  Under particular 2 (not in substance within scope of claims before amendment), IGT also listed seven items.  Under particular 3, IGT listed seven items for non-compliance with sub-section 40(2) and nine items for non-compliance with sub-section 40(3).

    DISCUSSION

    PRELIMINARY MATTERS

  16. At the hearing IGT significantly reduced the number of items of particulars it was pressing.  Mr Clark indicated that IGT was only pressing items 1(a), 1(b), 1(c), 1(d), 1(g), and 2(a) and 2(g), and under particular 3, only (d) and (f) from the first group and (a), (b), (d), (f) and (i) from the second group.  I will deal with these items below.

    WHETHER CLAIMS ARE FOR MATTER IN SUBSTANCE DISCLOSED:  SUBSECTION 102(1)

  17. Mr Clark referred to the RGC Mineral Sands Pty Ltd v Wimmera Industrial Minerals Pty Ltd decision, (1999) 42 IPR 353. He outlined the two stage process from that decision for considering amendments. The first stage requires a comparison between the specification as it stands immediately before the amendment and how it would stand after amendment to identify what matter results from the amendment. The second stage involves that matter being compared with the specification as filed to determine whether the specification would claim matter not in substance disclosed in the specification as filed. Mr Clark further indicated the test for what is in substance disclosed in a specification as filed is closely related to the test for fair basis. Furthermore there must be a real and reasonably clear disclosure in the specification as filed of the claimed matter.

  18. As there are three versions of the specification to consider in this opposition, that is, the specification as filed, the specification as it currently stands before the proposed amendment, and the specification as proposed to be amended, references hereafter to passages in the body of the specification are to the specification as filed unless otherwise indicated.

  19. Mr Clark’s opening submissions on the particulars of this case largely concerned an absence of clear disclosure of player selectivity of pay lines and player selectivity of wager options for placing a bet on selected pay lines.

  20. Mr Dower submitted the person skilled in the art would have regarded the selection of pay lines and selection of wager options on selected pay lines by a player as so trite that such aspects may not be explicitly mentioned in the specification.  For example, Mr Dower submitted a person skilled in the art would have regarded it as unavailable and impossible for a gaming machine to pay a prize on a pay line for which no bet was placed or which was not selected. 

  21. This may appear to be an attractive conclusion and it appears trite.  On the other hand, neither party submitted evidence in this opposition.  Consequently it seems there is little to work from in terms of establishing who the appropriate person skilled in the art may be, what background knowledge such person would have brought to bear, and what such a person would have construed from the specification. 

  22. The words of a specification should be given their ordinary meaning (Interlego AG v Toltoys Pty Ltd, (1973) 130 CLR 461 at 478), with the exception being where a word has a special meaning in the relevant art (Electric & Musical Industries Ltd v Lissen Ltd, (1939) 56 RPC 23 at 41). That follows from the presumption that the specification is read by a person skilled in the relevant art. This is brought out in many cases, such as the quote from Patent Exploitation Ltd v Siemens Brothers & Co. Ltd, 21 RPC 541 at 549.

    “…a specification like any other document should be construed by the Court according to the fair meaning of the language used after being informed by evidence of the nature of the subject matter, the state of knowledge at the [priority] date of the patent, and the meaning of any scientific or technical words that are found in it.”

  1. In the absence of evidence in the present case from any persons skilled in the art, it appears the appropriate course of action for construing the present specification is to take a plain, ordinary reading of the specification.

  2. Item 1(a) of IGT’s particulars takes issue with the phrase “on which a player has wagered a bet” introduced into independent claims 1, 3, 5, 6 and 22.  Mr Clark submitted this did not preclude paying a prize on a pay line when no bet was placed nor was the claim restricted to a player betting only on the selected pay lines but on others too.  Mr Clark suggested none of this was disclosed in the specification as filed.

  3. Mr Dower submitted the specification as filed provided the necessary substance for item 1(a) at pages 3, 16 and 17.  Mr Harrap specifically referred also to page 6 line 30 to page 7 line 20, and to page 18 line 1 onwards to submit that player selection of pay lines and player selection to wager for winning combinations on the selected lines was regarded as normal.  Furthermore, Mr Dower said it was inherent in the art that prizes would only be paid on pay lines on which a player had wagered a bet.

  4. It appears Mr Clark was introducing interpretations beyond the amendment made under item 1(a).  Such interpretations, if correct, would then also appear to have pertained prior to this amendment.  As a result of this amendment, the phrase of item 1(a) does no more than refer to the game control means being arranged to pay a prize on a winning combination on a pay line on which a player has wagered a bet. 

  5. Page 3 lines 4-11 of the specification as filed, in 1995, describes the background art that for quite a few years it has been possible to bet on more than one pay line of a slot machine simultaneously.  The placing of a bet on more than one pay line requires a player’s participation in the action.  Page 7 lines 13-20 and page 16 line 27 to page 17 line 9 describe players wagering tokens on selected lines, and a player having the ability to select pay lines through push button switches, respectively.  I conclude there is a real and reasonably clear disclosure in the specification as filed of arrangements to pay a prize on a winning combination on a pay line on which a player has wagered a bet.

  6. Item 1(b) takes issue with the phrase “and wherein the number of paylines on which a player can select to wager a bet is variable for each play of the gaming machine” introduced into claims 1, 3, 5, 6 and 22.  Mr Clark submitted the specification as filed does not teach selecting a variable number of pay lines to wager a bet for each play nor wagering a bet on each selected pay line.

  7. The above quoted passage from page 7 of the specification as filed, lines 13-20, appears to cover this point.  The player may choose to wager on one or more pay lines selected by the player.  It is inherent that for each play of the game, the player may have chosen a different number of pay lines to wager a bet, and that selection of any pay line denotes a desire to wager a bet on that line.  I am satisfied there is a real and reasonably clear disclosure in the specification as filed of the feature of item 1(b).

  8. Item 1(c) takes issue with the phrase “the player can cause the gaming machine to operate in” a first mode and a second mode, introduced into claim 6.  Mr Clark submitted the specification as filed, particularly page 16 lines 13-18 and lines 23-26, describes a gaming machine that merely offers all possible combinations of pay lines in a first mode or a gaming machine that offers less than all possible combinations in a second mode.  He asserted there is no clear disclosure of a gaming machine that operates in both modes.  Furthermore Mr Clark submitted there is no clear disclosure that a player can cause the gaming machine to operate in such first or second mode.

  9. Mr Dower referred to the upward counting and downward counting functions of switches 61 and 62 respectively (page 17 lines 13-27 with respect to Figure 20) when selecting numbers of pay lines.

  10. Clearly switches 61 and 62 are operable by a player.  While the passage on page 17 does not categorically indicate that a player can increment the counter all the way to the maximum number of possible combinations of pay lines, the passage does state that holding down switch 61 for a period of time will cause continuous incrementing.  This would suggest the maximum possible number of combinations is available for selection in line with the discussion at page 16 lines 13-23 and consequently the player can cause the machine to operate in the first mode.  Since the player may also stop the upward or downward counter at any point, or use other switches to select particular pay lines, it is also clear that the player can cause the machine to operate in the second mode where a subset of the maximum number of pay lines is selected.  The specification seems to adequately describe that the player can cause the same machine to operate in the first mode and the second mode.  I am satisfied there is a real and reasonably clear disclosure in the specification as filed of the feature of item 1(c).

  11. Item 1(d) takes issue with the limitation introduced into claim 6 where, in the first mode of operation, all possible line combinations are selected to provide nm paylines (my emphasis).  The selection capability of the player in choosing all possible combinations has been addressed in discussing item 1(c).  I find there is similarly a real and reasonably clear disclosure of item 1(d) in the specification as filed.

  12. Item 1(g) takes issue with the phrase “means for selecting a plurality of predetermined arrangements of symbol locations, but not all, by making one of a plurality of possible initial wager options” introduced into claim 21.  Mr Clark submitted there is no disclosure in the specification as filed of making a selection by way of a wager.

  13. Mr Dower referred to page 16 line 27 onwards of the specification as filed.  He stated, in one embodiment, there are 15 switches that enable selection of 15 lines.  Further, that for more than 15 lines, those lines may be grouped such that a switch selects multiple lines (page 17).  Mr Dower indicated the selections implied that wagering took place.

  14. The discussion on pages 16 and 17 of the specification as filed does not mention any associated wagering when selecting pay lines.  On the other hand, similar to the discussion under item 1(b), page 7 lines 13-20 states it is normal, for machines of the type having multiple pay lines available, that the player would purchase the option of playing for a win on selected multiple lines.  It seems from this passage that the selection of lines is driven by making a wager option on those lines.  I am satisfied there is a real and reasonably clear disclosure of item 1(g) in the specification as filed.

  15. In summary, I conclude none of the points raised under item 1 offend against subsection 102(1).

    WHETHER CLAIMS IN SUBSTANCE WITHIN SCOPE OF CLAIMS BEFORE AMENDMENT:  SUBSECTION 102(2)(a)

  16. Mr Clark maintained that a couple of items made the claims as proposed to be amended fall foul of the requirement that the claims be within the scope of the claims before amendment.  He referred to the process of considering amendments outlined in RGC (supra).  Mr Clark also referred to the AMP Incorporated v Commissioner of Patents decision, (1974) 3 ALR 383. From that decision Mr Clark submitted that nothing should become an infringement by amendment if that thing did not cause infringement before amendment.

  17. Item 2(a) states that the proposed independent claims 1 and 3 define the number of possible selectable paylines are greater than the “number of rows of the array” whereas before amendment the number of possible lines was greater than “the number of rows plus a number of diagonals”.  Mr Clark submitted the absence of the number of diagonals from the proposed claims broadened the scope of the proposed claims compared with the claims before amendment.

  18. The counterparts to the above-mentioned proposed claims 1 and 3 are claims 1 and 2 respectively of the specification before amendment.  Both of the latter claims before amendment define the number of possible lines being greater than the number of rows plus a number of diagonals of the array.  Some discussion took place at the hearing on what was meant by diagonals of the array.

  19. Mr Clark submitted that, in line with the AMP (supra) principle that nothing should become an infringement after amendment if there was no infringement beforehand, the proposed claims should be given their broadest interpretation.  He suggested the term “diagonals” included not only straight diagonal lines but also lines with diagonal components or diagonal portions.  Mr Clark submitted if that was wrong then the ordinary dictionary meaning and purposive construction (Catnic Components Ltd v Hill & Smith Ltd, [1982] RPC 183) of “diagonal” would mean any slanted line.

  20. Mr Dower relied on Décor Corporation Pty Ltd v Dart Industries Inc, 13 IPR 385 at 400. In particular, from that page, Mr Dower stated that rule of construction item (3) required the specification to be read as a whole and that item (6) required the specification to be given a purposive construction. He distinguished diagonals of an array from diagonal components. Mr Dower submitted the specification discusses diagonals only in reference to a square array of symbol locations such as a 3x3 matrix. He referred to page 6, line 27 to page 7 line 12 for example.

  21. At lines 9-11 on page 7 in particular, the point is further made that, for a 3x3 symbol matrix display, winning combinations could be achieved on two diagonals, amongst other horizontal and vertical paylines.  Further, at page 7 lines 24-29, it is also stated that an arrangement of diagonal pay lines as conventionally used in 3x3 symbol matrix machines is not appropriate to the 3x5 format.  The above passages suggest that where diagonals are discussed, it is in respect to square arrays.  Furthermore, since the latter passage states that diagonal pay lines are inappropriate in a 3x5 format, one should conclude that the discussion of diagonal lines is not in respect to any physical line from one vertex to the opposite corner vertex of any rectangular array.  Rather the diagonal lines as discussed in the specification traverse precisely through the symbol locations of the array so as to form diagonal pay lines.  Such is only possible with a square array. 

  22. For non-square arrays, pay lines that traverse more than one row are described as having a “diagonal portion” (e.g. page 9 line 6) or “diagonal components” (e.g. page 9 line 33).  Such lines are further said to be “zig-zag lines occupying two rows of the display and alternating between those rows for each column of the display” (page 9 lines 29-31), or “two diagonal components” each traversing all the rows of the array (page 9 line 33 to page 10 line 2), or a combination of horizontal and diagonal components.

  23. It is also noteworthy that square arrays with pay lines, each with horizontal portions and diagonal portions are also illustrated in the specification.  See for example lines 5, 6 and 7 of Figure 8.  On the other hand, as far as I can tell, references to “diagonals of the array” and “diagonals” and “diagonal paylines” appear in no other context in the specification than for square arrays.

  24. There is also the case of providing the full complement of nm pay lines.  Some of these lines will be “discontinuous in that symbol positions in adjacent columns will not be horizontally or diagonally adjacent” (page 4 lines 23-25).  That is, in two adjacent columns, the symbol positions are separated by more than one row.  While a line drawn between such two positions could perhaps be said to be a steep diagonal, the specification makes it clear at the above reference that such positions are not diagonally adjacent.  From this, it also seems apparent that, as such a line does not traverse precisely through the intermediate symbol locations, it cannot be fairly said to be a “diagonal line” in the context suggested by the specification.

  25. I conclude the expression “diagonals of the array” as used in the specification refers to diagonal pay lines of a square array from one vertex to the opposite corner.

  26. I am satisfied there is a clear distinction in the specification as filed of “diagonals of the array”, “diagonals” and “diagonal paylines” applying only to square arrays, while “diagonal components” or “diagonal portions” of pay lines may apply to both non-square and square arrays.

  27. Claims 1 and 2 prior to the proposed amendment define the number of possible pay lines to be greater than the number of rows plus a number of diagonals of the array.  Both claims also state at the beginning that the size of the array is at least three rows and three columns.  If all words in a claim are to be given a meaning then the words “diagonals of the array” would mean that claims 1 and 2 both define square arrays, that is, 3x3, 4x4, 5x5, etc, arrays.

  28. The corresponding proposed amended claims 1 and 3 delete the expression “diagonals of the array”.  Further, the size of the array in claim 1 is at least three rows, and at least five and an odd number of columns, and the number of rows does not equal the number of columns.  The size of the array in claim 3 is at least three rows and at least four columns, and the number of rows does not equal the number of columns.  Clearly the proposed amended claims 1 and 3 now cover non-square arrays as opposed to square arrays in the corresponding claims 1 and 2 before amendment.  The proposed amended claims 1 and 3 are broader in scope than their counterpart claims 1 and 2 before amendment. 

  29. Similarly dependent proposed claims 2 and 4 define non-square arrays.  Consequently these claims also do not in substance fall within the scope of the existing claims 1 and 2 before amendment.

  30. The case law though is replete with views that “fall within the scope of the claims” (Sub-section 102(2)(a)) means the scope of the claims as a whole.  See for instance AMP (supra).  It is therefore also necessary to look at the other claims prior to amendment to determine whether the scope of proposed claims 1 and 3 is broader than the other claims prior to amendment.  The remaining independent claims prior to amendment are considered below.

  31. Both proposed claims 1 and 3 define that the number of selectable pay lines is now only greater than the number of rows of the array.  Claim 5 prior to amendment covers square and non-square arrays and that the number of pay lines in the second mode is from 1 to nm-1.  On array types and numbers of pay lines alone, proposed claims 1 and 3 fall within the scope of the existing claim 5 prior to amendment.  That claim 5 defines the further feature of operability of a gaming machine in the two modes defined.  Such is not defined in proposed claims 1 and 3.  Consequently proposed claims 1 and 3 do not in substance fall within the scope of the existing claim 5 prior to amendment.

  32. Dependent proposed claims 2 and 4 are also silent on the two modes.  Consequently these claims also do not in substance fall within the scope of claim 5 prior to amendment.

  33. Claim 18 prior to amendment covers square and non-square arrays.  On array types alone, proposed claims 1 and 3 fall within the scope of claim 18 prior to amendment.  On the other hand, the gaming machine of claim 18 is operable, in direct response to a certain wager by a player, to pay a prize on predetermined combinations of symbols in any combination of all possible nm combinations of lines.  Proposed claims 1 and 3 are restricted merely to the number of pay lines being greater than the number of rows of the display.  These claims clearly do not in substance fall within the scope of claim 18 prior to amendment.

  34. Dependent proposed claims 2 and 4 are also silent on nm combinations of pay lines.  Consequently these claims also do not in substance fall within the scope of claim 18 prior to amendment.

  35. Claim 4 prior to amendment also defines the number of possible pay lines to be greater than the number of rows plus a number of diagonals of the array.  On this point, the existing claim 4 before amendment is like claims 1 and 2 before amendment.  Claim 4 before amendment is consequently also restricted to square arrays.  As discussed above, proposed claims 1 and 3 define non-square arrays and so these claims do not in substance fall within the scope of the existing claim 4 before amendment.

  36. Similarly dependent proposed claims 2 and 4 define non-square arrays.  Consequently these claims also do not in substance fall within the scope of the existing claim 4 before amendment.

  37. I conclude proposed claims 1, 2, 3 and 4 do not in substance fall within the scope of the claims as a whole before amendment.

  38. Item 2(g) covers the same point as item 2(a) in respect of newly introduced claims 21 and 22.  For the reasons indicated above, I conclude claims 21 and 22 do not in substance fall within the scope of the claims as a whole before amendment.

  39. Dependent proposed claim 23 is appended to the above-mentioned proposed claims 3, 21 and 22, amongst others.  Claim 23 merely adds the dimensions of the array to be 3x5.  Proposed claim 23 also does not in substance fall within the scope of the claims prior to amendment.

  40. In summary, proposed claims 1, 2, 3, 4, 21, 22 and 23 do not in substance fall within the scope of the claims as whole before amendment.

    WHETHER THE SPECIFICATION DOES NOT COMPLY WITH SUBSECTION 40(2) OR 40(3):  SUBSECTION 102(2)(b)

  41. At the hearing IGT only pursued items 3(d) and (f) from the first group of items (non-compliance with sub-section 40(2)) under particular 3 of the statement of grounds and particulars.

  42. Items 3(d) and (f) take issues with features in proposed claims 6 and 21 of player causation to operate the gaming machine in two modes, and selectivity of paylines by way of possible initial wager options, respectively. As these items take issue with the proposed claims, the challenge under sub-section 40(2) seems to be that the specification does not end with claims defining the invention. This issue closely relates with the discussion under sub-section 102(1) above, that is whether the claims are for matter in substance disclosed in the specification as filed.

  43. Furthermore, neither Mr Clark nor Mr Dower advanced any further substantial arguments for or against items 3(d) or (f) over those already raised under item 1.  I conclude the points made in items 3(d) and (f) do not offend against sub-section 40(2).

  44. In respect to the second group of items (non-compliance with sub-section 40(3)) under particular 3, IGT only pursued items 3(a), (b), (d), (f) and (i) at the hearing.

  45. Mr Clark stated the first four of these points objected to a lack of fair basis on the basis there was no real and reasonably clear disclosure of the itemised features in the specification.  He indicated the issues here are similar to those raised under item 1. 

  46. Items 3(a), (b), (d) and (f) of this second group essentially repeat items 1(a), (b), (c) and (g) discussed above.  On the basis of such earlier discussion where Mr Clark also indicated the test for what is in substance disclosed in a specification as filed is closely related to the test for fair basis, I conclude the points made in items 3(a), (b), (d) and (f) of the second group do not offend against sub-section 40(3).

  47. Item 3(i) from the second group states the inclusion in new claim 22 of the feature wherein paylines share “the same three positions in the three leftmost columns of the array with another one of the paylines” means the claim is not clear insofar as counting of the paylines captured by this phrase.

  48. Mr Clark referred to Figure 12 of the specification, for example, to ask the question whether just lines 5 and 6 in the figure are counted by this phrase, or whether all the lines that mutually share the same locations in the three leftmost columns are counted, that being lines 5, 6, 2, and 3.

  1. I think Mr Clark has made more of this than is really the case.  He appeared to have interpreted the requirement to be that the pay lines span horizontally the same row in the three leftmost columns.  From the example he cited, Mr Clark’s question further appeared to be one of whether exactly the three leftmost columns are meant or at least the three leftmost columns are meant.

  2. I think claim 22 reads differently.  It states a maximum of four pay lines share the same three positions in the three leftmost columns with another pay line.  This does not necessarily mean they have to span horizontally for the first three columns.  For instance, consider lines 14 and 20 of Figure 4.  They share positions AX, BY, CZ in common in the three leftmost columns and run diagonally in this sector of the array.  I consider the claim clearly states there are no more than four pay lines running concurrently the same way in the first three columns of an array as any other pay line.  To me this is quite plain from the claim.  I regard claim 22 as clear.

  3. In summary, I conclude none of the points raised under particular 3, in either the first group or second group of items, offend against subsection 102(2)(b).

    DECISION

  4. The proposed amendment is not allowable under subsection 102(2)(a).  Proposed claims 1, 2, 3, 4, 21, 22 and 23 do not in substance fall within the scope of the claims of the specification before amendment.

  5. I disallow the amendment. 

    COSTS

  6. Both parties generally submitted that costs follow the event.  Mr Dower further suggested that account be taken of the number of particulars that IGT dropped at the hearing. 

  7. It may be the case that some preparatory work could have been avoided prior to the hearing if IGT had indicated earlier which particulars would not be pursued.  On the other hand, IGT was under no obligation to indicate as such.  Furthermore, it seemed Aristocrat clearly understood the case to answer and the relative strengths of the various particulars.

  8. I see no reason to depart from the normal practice that costs follow the event.  IGT has been successful in this opposition.  I award costs against Aristocrat.

    M. G. Kraefft
    Delegate of the Commissioner of Patents

    2 July 2009

    Patent attorneys for the applicant           :  Freehills, Sydney

    Patent attorneys for the opponent :  Blake Dawson, Sydney

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