Aristocrat Technologies Australia Pty Ltd v IGT
[2005] APO 13
•22 March 2005
OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application :No. 733599 in the name of IGT
Title: Method of Playing Game and Gaming Device with an Additional Payout Indicator
Action: Opposition by Aristocrat Technologies Australia Pty Ltd under Section 59 of the Patents Act 1990
Decision : Issued
Abstract
The invention relates to gaming machines and a method of gaming which offers players the attraction of a bonus win.
The opposition was partly successful, with the invention as defined by claims 1, 4, 7, 8, 10, 11, 14-16, 18-20, 25-34, 36, 37, 40 and 41 determined as being not novel and as defined by claims 1, 4, 7-11, 14-37, 40 and 41 determined as not involving an inventive step.
It was also determined that the invention is fully described in the patent specification and that the claims are clear and fairly based and define a manner of manufacture.
Applicant allowed sixty days in which to propose appropriate amendments.
Costs awarded against the applicant.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re: Patent Application No. 733599 by IGT and opposition thereto by Aristocrat Technologies Australia Pty Ltd under Section 59 of the Patents Act 1990.
BACKGROUND
Patent application 733599, now in the name of IGT, was filed on 26 March 1996 by Anchor Gaming without earlier priority claim. The application was advertised accepted on 17 May 2001. Anchor Gaming assigned the rights of the patent application to IGT.
Aristocrat Technologies Australia Pty Ltd (Aristocrat) filed notice of opposition on 16 August 2001 followed by a Statement of Grounds and Particulars on 16 November 2001.
Evidence in Support was completed on 16 May 2002. Evidence in Answer was completed on 18 November 2003. Evidence in Reply was completed on 10 September 2004.
The matter was set down for a hearing on 16 December 2004. The applicant is represented by Fraser Old and Sohn but was not represented at the Hearing. The opponent was represented by Mr Charles Berman, patent attorney of the firm F B Rice & Co, Sydney.
SPECIFICATION
The invention relates to gaming devices with a bonus feature. The patent specification has 4 independent claims defining the invention in slightly different terms and features:
"1. A gaming device, comprising:
a first gaming unit configured to randomly generate and display a first plurality of indicia, at least some combinations of indicia of said first plurality comprising winning combinations; and
a bonus indicator operably coupled to said first gaming unit and enabled by generation of at least one of said winning combinations of indicia of said first plurality by said first gaming unit, said bonus indicator configured to display a second plurality of indicia including at least some winning indicia associated with at least two different payout values and to randomly select one indicia of said plurality of indicia.
23. A gaming device comprising:
a primary gaming unit configured for displaying a randomly selected combination of indicia from a first plurality of indicia;
said primary gaming unit configured to generate at least one signal corresponding to at least one select display thereon of indicia from said first plurality, said at least one select display of indicia comprising a winning payout;
an electro-mechanical bonus indicator configured to display a second plurality of indicia, at least some indicia of said second plurality representing winning payouts, said bonus indicator configured to randomly select one indicia of the second plurality of displayed indicia, said bonus indicator being operably coupled to said primary gaming unit and configured to be operationally enabled in response to said at least one signal; and
a payout multiplier operably coupled to at least one of said primary gaming unit; and
said bonus indicator, said payout multiplier configured to display at least one of a plurality of values in response to a winning payout indicated by at least one of said primary gaming unit and said bonus indicator, at least two of said plurality of values being adapted to alter a winning payout indicated by at least one of said primary gaming unit and said bonus indicator.
25. A method of conducting a game of chance, comprising:
placing a wager to initiate play of a primary game;
in association with play of said primary game, selecting a randomly selected indicia combination from a plurality of available indicia associated with said primary game and displaying said selected indicia combination on a display structure selected from the group consisting of reels, a visually perceptible representation of reels, a visually perceptible representation of playing cards, and combinations thereof;
generating at least one signal corresponding to at least one select combination of indicia of said first plurality of available indicia;
responsive at least in part to said at least one signal, randomly selecting at least one discernible bonus indicia from a plurality of available bonus indicia associated with at least two different payout values and displaying said at least one discernible bonus indicia using a bonus indicator visually perceptible as a rotatable wheel or a rotatable reel.
31. A gaming device comprising:
a primary gaming unit configured to display a randomly selected combination of indicia on a display selected from the group consisting of reels, indicia of reels, indicia of playing cards, and combinations thereof;
said primary gaming unit configured to generate at least one signal corresponding to at least one randomly selected combination of indicia, said at least one randomly selected combination of indicia corresponding to a payout value;
a bonus indicator comprising a visually perceptible representation of a rotatable wheel operably linked to said primary gaming unit, said rotatable wheel configured to display a plurality of possible additional payout values, said bonus indicator configured to be actuated at least in part by said at least one signal to randomly select at least one additional payout value of said plurality of additional payout values, said bonus indicator configured to display the at least one additional payout value; and
a payout multiplier operably connected to at least one of said primary gaming unit and said secondary gaming unit, said payout multiplier configured to display a selected multiplier of a plurality of multipliers in response to a payout value indicated by at least one of said primary gaming unit and said bonus indicator, at least two of the plurality of multipliers adapted to alter said payout value indicated by at least one of said primary gaming unit and said bonus indicator. "
STATEMENT OF GROUNDS AND PARTICULARS
The Statement of Grounds and Particulars asserts that the invention as claimed in the specification is not a manner of manufacture, is not novel and does not involve an inventive step, that the invention is not fully described in the specification and that the claims are not clear and fairly based.
While the Statement of Grounds and Particulars particularised many cited patent specifications and instances of prior public use, the evidence and submissions were limited to particular of these.
EVIDENCE AND SUBMISSIONS
Aristocrat’s evidence in support includes
a statutory declaration by Ante Milic, who was employed by Vidco/Stargames Corporation Pty Ltd from 1995 to 2002, in respect of Vidco gaming machines marketed as ‘Snake Eyes’, ‘Lucky Dip’ and ‘Barrels of Fun’
a statutory declaration by Robert John Poynter, who had 30 years of experience in Australia in the gaming machine industry at the priority date of the instant application and is currently employed by Stargames Corporation Pty Ltd, also in respect of Vidco gaming machines marketed as ‘Snake Eyes’, ‘Lucky Dip’ and Barrels of Fun’, corroborating relevant aspects of Ante Milic’s declaration
a statutory declaration by Phillip Clive Crouch, now retired, who had 30 years of experience in Australia in the gaming machine industry at the priority date of the instant application and is a former employee of the predecessor in title of Aristocrat, in respect of instant application 733599, patent specifications AU 711501 (199716432), US 4871171, US 5342049, US 5344145, US 5259616, AU 630587 (79361/91), AU 631772 (80248/91), AU 543997 (75789/81), GB 2066991, gaming machines marketed as ‘Lucky Dip’ and ‘Suit Yourself’, and common general knowledge (standard practice) in the industry. Mr. Crouch has also declared that he was an inventor in respect of a number of inventions for which Aristocrat filed patent applications and obtained patents.
In answer, the applicant has filed
a statutory declaration by Keiran Daley, retired but contracted consultant to, and former office holder of, IGT (Australia) Pty Limited and former employee of Aristocrat, who had about 20 years experience in the industry at the priority date of the instant application,
a statutory declaration by Anthony Baerlocher, an employee of IGT in the United States of America also with experience with IGT in Australia, who declares that “my qualifications in the gaming industry in the United States and my various trips to Australia enable me to comment on the status of the gaming machine industry in Australia and overseas and what was commonly known in the field at about 26 March 1996” and that he agrees with the contents of the declaration by Mr. Daley.
10) In reply, the opponent has filed
a statutory declaration by Natalie Jane Bryant, who has worked in the industry from 1994 with “GTest” Centre of Techsearch Incorporated, a subsidiary of the University of South Australia, joining Aristocrat in 1997.
11) The declaratory and other evidence and submissions allow me to make an informed decision on the s.59 opposition to grant of a patent on instant patent application 733599. However, there are various other statements and corroborating documentation that purport to be relevant to my considerations under s.59 but which are obviously not relevant. While acknowledging that a party may feel obligated to identify and/or refute irrelevancies raised by another party, I consider that it adds no value for me to exacerbate this situation. Consequently, I have not provided a summary account of the evidence and submissions filed and will limit my comments and decision to only those considerations that warrant mentioning in dealing with s.59 of the Patents Act 1990.
DECISION
Section 40(3) Claims must be clear and fairly based.
12) There are various aspects of the description and claims that are awkwardly expressed and hence, prima facie, lack clarity. These have been particularised by the opponent. A salient example is the term ‘indicia’ which patently has two different meanings when interpreted from the specification as a whole so as to give practical meaning.
13) In a first context, ‘indicia’ means the markings, such as the individual numbers or playing cards, the combination of which on a selection of chance on a typical gaming machine determine the outcome as a win or loss.
14) In a second context, it means the representation or simulation of the selection of chance structure, such as a video representation of a gaming machine reel or wheel, that carries the individual markings or indicia. While it would have facilitated the smooth operation of the patent system had two different terms been used to reference these two different, but related, physical features, the description and claims are clearly interpretable according to the established rules of construction as to which meaning applies in each context. See, for example, Welch Perrin v Worrel (1961-62) 106 CLR 588, British Thomson-Houston Company Ld. v Corona Lamp Works Ld., (1922) 39 RPC 49, Rosedale Associated Manufacturers Ltd v Carlton Tyre Saving Co Ltd [1960] RPC 59 and Catnic Components Limited v Hill and Smith Limited, (1981) FSR 60. Similarly for example, ‘one indicia of said second plurality of indicia’ is plainly construed as ‘one indicium of said second plurality of indicia’.
15) Another salient example are those claims that are only characterised over previous claims in that the ‘payout value may be multiplied’, the ‘payout value may be altered’ and ‘at least one bonus indicia may be altered’. In each instance, the claim is only characterised over the previous claim if the term ‘may be’ is interpreted to have a meaning of ‘is’, rejecting the inherent alternative of ‘is not’. Such inherently indefinite terminology in patent claims is an inconvenience to the patent system and hence, is to be discouraged. However, using the established rules of construction, these claims have unambiguously clear meaning. See , for example, Catnic Components Limited v Hill and Smith Limited (supra), Henriksen v Tallon (1965) RPC 434, EMI v Lissen, 56 RPC 23 and The Electric Construction Co. Ld. v The Imperial Tramways Co. Ld., and The British Thomson-Houston Co. Ld., (1900) 17 RPC 537.
16) Similarly, all other prima facie deficiencies of clarity do not result in failure to comply with s. 40(3) when the established rules of construction are applied.
17) Aristocrat has also submitted that all claims are not fairly based as they do not include the described ‘most preferred’ feature of the bonus indicator being ‘readily discernible’. Noting that, by the established rules of construction, the ‘bonus indicator’ necessarily ‘indicates’ to the player of the gaming machine, the timely decision of the High Court of Australia, Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [2004] HCA 58 (18 November 2004), determines that the claims are fairly based in this regard.
Section 40(2)(a) Specification must fully describe the invention.
18) The opponent has submitted that the specification does not describe the best method of performing the invention by not describing how the bonus indicator and payout multiplier are operatively connected to the first/primary gaming unit and/or bonus indicator, respectively. It is required, and adequate, that an embodiment of the invention can be performed by the skilled addressee primarily based on the information provided in the specification. See American Cyanamid Company v Ethicon Limited, (1979) RPC 215 and Ethyl Corporation v California Research Corp., (1970) AOJP 562.
19) The expert evidence from both parties agrees that a ‘double up’ feature is common general knowledge in the art. As subsequently dealt with in more detail, a traditional ‘double up’ feature is within the plain meaning of the general feature of a payout multiplier as described in the context of the instant invention. It is also apparent that modern gaming machines are generally controlled by microprocessor. Consequently, while not in evidence and while the applicant has not made submissions to the point, I consider that the technical requirements to operatively connect the bonus indicator and payout multiplier are no more complex than connecting an admittedly standard ‘double up’ feature and hence, require no invention beyond normal adaptation using common general knowledge in the art. It follows that the instant description does comply with s.40(2)(a) in this regard. See Universal Oil Products Co. v Monsanto Co., (1973) 46 ALJR 658 and Poseidon Industri A.B. v Cerosa Limited, (1982) FSR 209.
20) The opponent has also submitted that the specification does not describe the best method of performing the invention by not detailing the ‘complicated mathematical structure’ distinguished in the applicant’s evidence. Firstly, while a detailed explanation of the mathematical model(s) of the instant invention may need to be provided to the gaming machine regulatory bodies and be implemented in the machine’s microprocessor in order to satisfy the legislative requirements for gaming machine approval, that is not a requirement of s.40(2)(a) of the Patents Act 1990 which only requires that the invention can be performed by the skilled addressee. It is apparent from the specification, and confirmed by the absence of relevant submissions to the contrary, that the invention can be put to operative effect based on the instant description of the invention, without any awareness of its mathematical model.
21) While not relevant to s.59 of the Patents Act 1990, I also note that the mathematical model explained in the applicant’s evidence appears to be simply the ‘return to player’ formula, described as standard in the industry by both parties, applied successively to the first game and then independently to the bonus game. Consequently, its implementation is within the common general knowledge of the skilled addressee, while acknowledging that the cumulative mathematical model requires further mathematical derivation from the standard formulae applicable to the instant invention.
Construction of patent specification.
22) While dealing with matters of claim clarity and full description of the invention, it is convenient to determinatively construe some salient aspects of the specification that are of prime relevance to determination of novelty and inventive step of the instant claims. From the specification as a whole, it is necessary to determine the meanings of the following terms/features in the claims, ‘winning combination’, ‘winning indicia’, ‘winning payout’, ‘payout value(s)’, ‘bonus’, ‘payout multiplier’ and ‘selected’, either ambiguously or unambiguously.
23) At page 2, lines 4 to 10, the specification states that a winning combination results in monetary payment or credit to the player. The term ‘winning payout’ and ‘winning indicia’ is also used in the same context at page 2, lines 11 to 14 and page 7, lines 6 to 11, respectively. The remainder of the description and the claims use these terms in a consistent manner while broadening a ‘win’ to include receiving prizes of value, for example, page 9 line 25 to page 10 line 2. Consequently, by the established rules of construction, the terms/features ‘winning combination’, ‘winning indicia’ and ‘winning payout’ necessarily involve a monetary or valuable payment or credit to the player, as submitted by the applicant and contrary to the submissions of the opponent. See Interlego AG v Toltoys Pty Ltd (1973) 130 CLR 461, Electric & Musical Industries Ltd v Lissen Ltd (1939) 56 RPC 23 and British Thomson-Houston Company Ld. v Corona Lamp Works Ld., (1922) 39 RPC 49.
24) The term ‘payout value(s)’ is present in the specification both with regard to the first/primary gaming unit and the bonus play. The plain meaning of ‘bonus’ suggests that the bonus play results in a ‘win’ (as now interpreted) or, given the context of gaming machines of chance, a ‘nil’ outcome. However, at page 11 line 22 to page 12 line 2, for example, the specification states that the bonus play may result in a win additional to a win from the first/primary game, no bonus win or loss/reduction of the first/primary game win. Consequently, the terms ‘bonus’, and ‘payout value(s)’ in the context of the bonus play, mean an additional win, no additional win or a loss outcome. See British Thomson-Houston Company Ld. v Corona Lamp Works Ld., supra.
25) In the context of the first gaming unit, there are portions of the specification which suggest that ‘payout value(s)’ necessarily involves a win. However, the specification consistently uses the term ‘winning payouts’ in respect of a win outcome from the first/primary gaming unit. If there was no need to distinguish the specific, ‘winning payout’, from the general, ‘payout value(s)’, different terminology wouldn’t be necessary and would act to confuse. Consequently, the different terminology is expected to have relevance, which it does in the context of the instant invention. It follows that, when interpreted from the specification as a whole, the plain meaning of the term ‘payout value(s)’, in the context of the first gaming unit, is that it includes both a winning payout and a nil payout, there being no basis for interpreting it to also include a losing payout.
26) It is explicit within the specification that ‘payout multiplier’ not only includes a non-zero multiplier but also a zero multiplier, the latter of which results in a nil payout from the first/primary gaming unit and/or in a ‘no additional win’ (as explained above) outcome from the bonus play.
27) Except for claim 31, the independent claims explicitly and exclusively refer to selection in the context of a play or game outcome as a ‘random selection’, or words to the same effect. In this regard, the description uses terminology consistent with the claims. In other words, the selection occurs as part of the play to determine the ‘chance’ outcome. Such is as specified in claim 31 in respect of the primary gaming unit and the bonus indicator. However, in respect of the payout multiplier, claim 31 specifies that the payout multiplier displays a ‘selected’ multiplier of a plurality of multipliers.
28) At page 12, lines 7 to 9, the payout multiplier is described as preferably randomly selecting the multiplier value. The description of the payout multiplier on pages 16 and 17 support the interpretation that the specification envisages the multiplier value being selected other than by random selection. Consequently, I consider that selection of the ‘selected’ payout multiplier of claim 31 includes both random and non-random selection. This is confirmed by claim 36 explicitly specifying ‘randomly display a said selected multiplier’ (sic).
Section 18(1)(b)(i) Novelty and Section 18(1)(b)(ii) Inventive Step
29) It is convenient to deal with novelty and inventive step by considering the independent claims, and their associated dependent claims, in turn.
30) The basic test for lack of novelty is the "reverse infringement" test. See General Tire & Rubber Co. v Firestone Tyre & Rubber Co. Limited [1972] RPC 457 and Meyers Taylor Pty. Ltd. v Vicarr Industries Ltd. (1977) 137 CLR 228. In applying this test, each and every one of the essential features of the claimed invention must be provided by the prior disclosure. See Rodi and Wienenberger AG v Henry Showell Ltd. [1969] RPC 367 and Flour Oxidising Co. Ltd. v Carr & Co. Ltd. (1908) 25 RPC 428.
31) I consider that every feature of the instant claims is essential. A feature is essential if the applicant for the patent has made it an essential feature by the terms of the claim, properly construed, and this seems to be the case here. See Catnic Components v Hill and Smith Ltd [1982] RPC 183. However, my deliberations will focus on those features that may distinguish the claimed invention from the prior art disclosures and on those prior art disclosures that are of particular relevance.
32) According to the governing legislation at the time, s.7 of the Patents Act 1990, as in force at 26 March 1996,
“(2) For the purposes of this Act, an invention is to be taken to involve an inventive step when compared with the prior art base unless the invention would have been obvious to a person skilled in the relevant art in the light of the common general knowledge as it existed in the patent area before the priority date of the relevant claim, whether that knowledge is considered separately or together with either of the kinds of information mentioned in subsection (3), each of which must be considered separately.
(3) For the purposes of subsection (2), the kinds of information are:
(a) prior art information made publicly available in a single document or through doing a single act; and
(b) prior art information made publicly available in 2 or more related documents, or through doing 2 or more related acts, if the relationship between the documents or acts is such that a person skilled in the relevant art in the patent area would treat them as a single source of that information; being information that the skilled person mentioned in subsection (2) could before the priority date of the relevant claim, be reasonably expected to have ascertained, understood and regarded as relevant to work in the relevant art in the patent area.“
33) A well accepted definition of common general knowledge is that provided by Aickin J in Minnesota Mining and Manufacturing Company and Another v Beiersdorf (Australia) Limited 144 CLR 253 at 292:
"The notion of common general knowledge itself involves the use of that which is known or used by those in the relevant trade. It forms the background knowledge and experience which is available to all in the trade in considering the making of new products, or the making of improvements in old, and it must be treated as being used by an individual as a general body of knowledge."
which is consistent with the test for inventive step of whether a person skilled in that field, and faced with the same problem, would have taken as a matter of routine, whatever steps might have led from the prior art to the invention. See Wellcome Foundation Ltd v VR Laboratories (Aust.) Pty Ltd (1981) 148 CLR 262.
34) Claim 1 specifies that the bonus indicator is enabled by a winning combination (as now interpreted) on the first gaming unit. There are many prior art disclosures that enable a bonus play as a consolation play following a nil payout from the first game. It is apparent from the evidence that gaming machine technology is a very close art where game designers are continually seeking the fine developments that make one gaming machine more attractive to the player than another gaming machine, for significant commercial benefit. In such an art, ex post facto analysis may question whether a particular fine development was obvious. However, that is not a proper test of inventive step. See Palmer v Dunlop Perdriau Rubber Co Ltd (1937) 59 CLR 30. I consider that, in the gaming machine industry as I understand it from the declared expert and other evidence, a bonus win following a first game win would be clearly distinguished as novel and inventive over prior art consolation plays following a nil payout from the first game, in the absence of any other relevant considerations.
35) However, expert evidence of both parties agrees that a ‘double or nothing’ or ‘double up’ feature has long been known in the gaming machine industry. A ‘double up’ feature is, obviously, only enabled from a winning combination on the first game, to either double the win or lose the win. Such ‘double up’ features are clearly within the general ambit of ‘bonus indicator’ as envisaged by the instant specification and hence, have to be carefully considered in determining whether the invention as claimed is novel and involves an inventive step over the prior disclosures having due regard to the ‘double up’ feature as common general knowledge.
36) The bonus indicator of claim 1 displays a second plurality of indicia including ‘at least some winning indicia associated with at least two different payout values’. By association with the ‘winning’ indicia, the two different payout values must necessarily be two different ‘winning’ payout values. Consequently, the bonus indicator of claim 1 is distinguished from the ‘double up’ feature well known in the industry, which has one winning payout value and one losing payout value.
37) However, paragraph 32 of the statutory declaration by Mr. Daley, for the applicant, raises a related serious question. Mr. Daley declares that Australian petty patent 630587, and the related gaming machine marketed as ‘Suit Yourself’, does not anticipate the instant invention because the bonus play disclosed thereby, that has two different winning payout values and one losing payout value (that is, 3 payout multiplier values), is ‘nothing more than a variation of’ or ‘is likewise merely analogous to’ the standard ‘double up’ feature which Mr. Daley has previously declared as not anticipating the instant invention. From Mr. Daley’s declaration, it could be inferred that refining the standard ‘double up’ feature to include two (or more) different winning payout values is obvious, at least to Mr. Daley if not to the uninventive person skilled in the art. AU 631772, which discloses a very similar payout multiplier to AU 630587 as a ‘quadruple or nothing’ feature, and US 5259616 add some weight to this inference, but noting that US 5259616 only discloses non-zero payout multipliers and hence, is not a mere refinement or variation of the standard ‘double up’ feature.
38) At paragraph 17 of his statutory declaration as part of evidence in support, Mr. Crouch declares that ‘payout multipliers’ are, in his personal experience, ‘almost routine in the field of gaming machines’. However, I note that, at paragraph 23, Mr. Crouch uses the term ‘payout multiplier’ in referring to AU 543997 (75789/91), which discloses a ‘double up’ bonus game.
39) Against this background, I now fully assess claim 1 for novelty and inventive step over the prior art.
40) Aristocrat has provided evidence, which I accept, of prior public use of a gaming machine marketed as ‘Snake Eyes’. From a ‘scattered dice’ win on the first gaming unit, a bonus indicator is enabled with the two different winning payout values of the bonus play being available from the free spin of the reels. All features of claim 1 are present in this aspect of ‘Snake Eyes’ rendering claim 1 not novel and lacking in inventive step. It directly follows that this aspect of ‘Snake Eyes’ also renders claims 4, 14 and 20 not novel and lacking in inventive step.
41) ‘Snake Eyes’ also has a standard ‘double up’ feature on the primary game. As previously mentioned, it could be inferred from paragraph 32 of Mr. Daley’s declaration that the invention defined by claim 1 is obvious in the light of this aspect of ‘Snake Eyes’ and hence, lacks an inventive step. However, I consider that claim 1 is inventive over this aspect of ‘Snake Eyes’ when the relevant considerations are fully detailed.
42) Firstly, claim 1 specifies that the two different payout values are associated with ‘some winning indicia’ of the ‘second plurality of indicia’. In other words, the payout value is determined by the indicia. This is fundamentally distinguished from AU 631772 and AU 630587, where the payout value is primarily determined by the player’s wager, by selecting high or low, suit, etc.
43) Secondly, I consider that Mr. Daley’s admission in paragraph 32 of his statutory declaration falls short of an admission that a variation of the standard ‘double up’ feature with two different winning payout values is common general knowledge. The filed evidence, including AU 631772 and AU 630587, also does not establish such variation of the standard ‘double up’ feature as meeting Aickin J’s definition of common general knowledge in Minnesota Mining and Manufacturing Company and Another v Beiersdorf (Australia) Limited (supra). To the contrary, I consider that AU 631772/AU 630587 and US 5259616 are likely to be exemplary of the fine developments in the industry that, prima facie, appear to be obvious of each other, but which, on closer analysis, are fundamental, and hence significant, variations from each other; development of one not leading, by obvious routine step, to the other.
44) Finally, I also consider that the person skilled in the art would not consider ‘Snake Eyes’ and AU 630587/‘Suit Yourself’ or AU 630587 as a single source of information, there being no association between the disclosures and quite apparent differences. Consequently, I conclude that claim 1 involves an inventive step over the ‘double up’ feature aspect of ‘Snake Eyes’.
45) I consider that claim 1 is novel over the prior public disclosures of gaming machines marketed as ‘Lucky Dip’ and ‘Barrels of Fun’ and over patent specifications AU 711501, US 4871171, US 5342049 and US 5344145, none of which disclose the bonus indicator being enabled by a winning combination of the first gaming unit. I briefly note that, in my opinion, the mere coincidence of some winning combinations on ‘Lucky Dip’ and ‘Barrels of Fun’ with trigger combinations for the consolation play clearly does not meet the requirement of positive disclosure of each essential claimed feature necessary to render the claim not novel. See, for example, General Tire & Rubber Co. v Firestone Tyre & Rubber Co. Limited (supra):
"To anticipate the patentee's claim, the prior publication must contain clear and unmistakable directions to do what the patentee claims to have invented ... A signpost, however clear, upon the road to the patentee's invention will not suffice. The prior inventor must be clearly shown to have planted his flag at the precise destination before the patentee."
46) Claims 2 and 3 define the invention of claim 1 with the bonus indicator comprising a wheel. ‘Snake Eyes’ uses the conventional gaming machine reels for the bonus play. While a chance selection wheel is quite obviously common general knowledge of the general populace, there is no basis for believing that the uninventive person skilled in the art would proceed, via routine steps, from ‘Snake Eyes’ to the gaming device of claims 2 and 3 having a bonus play wheel in addition to the conventional reels. There is also no basis for considering ‘Snake Eyes’ and the bonus wheel of each of ‘Lucky Dip’ and ‘Barrels of Fun’ as constituting a single disclosure. Consequently, I consider that claims 2 and 3 are both novel and involve an inventive step. It directly follows that claims 5 and 6 are also novel and involve an inventive step.
47) Claims 7, 8, 10, 11, 15, 16, 18 and 19 further define a payout multiplier which includes the standard ‘double up’ feature of ‘Snake Eyes’. The bonus play of ‘Snake Eyes’ also includes the right die being a bonus payout multiplier. Consequently, I consider that claims 7, 8, 10, 11, 15, 16, 18 and 19 are not novel and lack an inventive step in the light of prior public use of both the ‘double up’ feature and the bonus play dice feature of ‘Snake Eyes’.
48) Claims 9 and 17 further define the payout multiplier being configured for messaging. Using a device of primary function and purpose also for messaging as a secondary or incidental function has been pervasive in industry and society for decades. Popular examples are promotional offers on product packaging and text notifications on television show broadcasts. Consequently, claim 9 includes within its scope the ‘Snake Eyes’ gaming machine in association with the common general knowledge of the general populace. So, I consider that claims 9 and 17 clearly lack an inventive step, being plainly obvious.
49) Claims 12 and 13 further define the payout multiplier involving shooting of projectiles. While the opponent has identified prior patent specifications disclosing gaming machines involving projectiles, the patent specifications are neither common general knowledge in the art nor have any relationship to ‘Snake Eyes’. Consequently, I consider claims 12 and 13 are novel and involve an inventive step.
50) Claims 21 and 22 specify that the bonus indicator comprises an audio speaker. I accept Mr. Crouch’s declaration that the use of audio speakers in gaming machines is long standing practice. I also consider it to be common general knowledge of the general populace to supplement visual indication with aural indication. Consequently, I consider that claims 21 and 22 clearly lack an inventive step over ‘Snake Eyes’, being plainly obvious.
51) Claim 23 is the second independent claim and has many, but not all, of the features of claim 7 and also specifies that the bonus indicator is electro-mechanical. It is very well known to the general populace that electromechanical technology was the technology of gaming machines prior to the prevalence of video representation or simulation of reels. Following from my reasoning in respect of claim 7, claim 23 consequently includes within its scope the ‘Snake Eyes’ gaming machine in association with the common general knowledge of the general populace. So, I consider that claim 23 clearly lacks an inventive step, being plainly obvious. It directly follows that claim 24 also lacks an inventive step.
52) Unlike independent claims 1 and 23, the method of independent claim 25 does not specify that the bonus play is triggered by a winning combination outcome from the first/primary game nor that the two different bonus payout values are ‘winning’ payout values. Consequently, these features do not respectively distinguish claim 25, as they did claims 1 and 23, over the consolation plays and ‘double up’ features well known in the prior art. It follows that not only do both the bonus dice and ‘double up’ aspects of ‘Snake Eyes’ separately render claims 25 and 26 not novel and lacking in inventive step, but I consider that the bonus wheel and ‘double up’ aspects of the ‘Lucky Dip’ and ‘Barrels of Fun’ gaming machines and patent specification AU 543997 do so as well. In the same manner, claims 25 and 26 are not novel in the light of AU 711501.
53) US 4871171 discloses a lottery ball bonus play. I have previously commented on the fine developments in the industry that, prima facie, appear to be obvious of each other, but which, on closer analysis, are fundamental, and hence significant, variations from each other. Once it became public knowledge through US 4871171 to have a bonus play in the form of a well known chance selection device other than conventional gaming machine reels, viz. a lottery cage, I do not consider that merely replacing that well known chance selection device with another well known chance selection device, viz. a wheel as per claim 25, is one of the inventive fine developments previously referred to. In other words, claims 25 and 26 include within their scope the disclosure of US 4871171 in association with the common general knowledge of the general populace and hence, clearly lacks an inventive step, being obvious to the uninventive skilled person in the art.
54) It directly follows that claims 27 and 28 are not novel and lack an inventive step in the light of the bonus wheel aspects of ‘Lucky Dip’ and ‘Barrels of Fun’ and do not involve an inventive step over US 4871171.
55) Claims 29 and 30 include within their scope the standard ‘double up’ feature. Consequently, claims 29 and 30 are not novel and lack an inventive step in the light of ‘Snake Eyes’, ‘Lucky Dip’ and ‘Barrels of Fun’ and do not involve an inventive step over AU 543997 and US 4871171.
56) Claim 31 is an independent claim, similar to claim 23 but different in several relevant aspects. Claim 31 does not specify that the bonus play is triggered by a winning combination outcome from the first/primary game nor that the additional bonus payout values include two ‘winning’ payout values. Consequently, these features do not respectively distinguish claim 31 over the consolation plays and ‘double up’ features well known in the prior art. Claim 31 specifies a payout multiplier which includes the standard ‘double up’ feature well known in the prior art. Claim 31 also specifies that the bonus game, or ‘said secondary gaming unit’, comprises a ‘wheel’.
57) For the same reasoning given above in respect of claims 2 and 3, I consider that claim 31, by specifying a ‘wheel’ bonus play, is both novel and involves an inventive step over ‘Snake Eyes’.
58) I consider that claim 31 is not novel and lacks an inventive step in the light of the prior public use of each of the ‘Lucky Dip’ and ‘Barrels of Fun’ gaming machines, each of which includes a bonus play wheel as well as a ‘payout multiplier’ in the form of a standard ‘double up’ feature.
59) I consider that claim 31 is also not novel in the light of AU 711501 which discloses all features of the claimed combination. While most features of claim 31, as construed from the specification as a whole, are apparent in AU 711501, I point out that the description of the first, second and third bonus play wheels on pages 12 and 13 discloses the claimed bonus indicator and payout multiplier features. The second bonus wheel having values preferably twice those of the first wheel and the third bonus wheel having values preferably ten times those of the first wheel is within the broad scope of the claimed ‘selected’ multiplier value, as construed from the specification as a whole.
60) For the same reasoning given above in respect of claim 25, I consider that claim 31 does not involve an inventive step over US 4871171. Claim 31 includes within its scope the disclosure of US 4871171 in association with the common general knowledge of the general populace of the wheel replacing the lottery cage and with the common general knowledge of the industry of a payout multiplier in the form of a standard ‘double up’ feature. Hence, I consider that claim 31 clearly lacks an inventive step, being obvious to the uninventive skilled person in the art.
61) For the same reasoning that claims 2 and 3 involves an inventive step over ‘Snake Eyes’, claim 31 involves an inventive step over AU 543997. There is no basis for believing that the uninventive person skilled in the art would proceed, via routine steps, from AU 543997 to the gaming device of claim 31 having a bonus play wheel in addition to the conventional reels. There is also no basis for considering AU 543997 and the bonus wheel (and ‘double up’ feature) of each of ‘Lucky Dip’ and ‘Barrels of Fun’ as constituting a single disclosure.
62) It directly follows that claims 32 to 34 and 37 are not novel and lack an inventive step in the light of gaming machines, ‘Lucky Dip’ and ‘Barrels of Fun’, and do not involve an inventive step over US 4871171. In the same manner, claims 32 to 34 and 37 are not novel in the light of AU 711501. It also directly follows that claim 36 is not novel and lacks an inventive step in the light of ‘Lucky Dip’ and ‘Barrels of Fun’ and does not involve an inventive step over US 4871171. I also consider claim 36 to be not novel in the light of AU 711501 because, in my opinion, random selection of the bonus or bankrupt indicium on the first, second and third wheels together with the preferred multiplicative factors between the first, second and third wheels is within the broad scope of ‘randomly display a said selected multiplier’ as construed from the specification as a whole.
63) For the same reasoning given above in respect of claims 9 and 17, claim 35 further defining the payout multiplier being configured for messaging does not involve an inventive step over each of ‘Lucky Dip’, ‘Barrels of Fun’ and US 4871171.
64) For the same reasoning given above in respect of claims 12 and 13 compared to ‘Snake Eyes’, I consider that claims 38 and 39 further defining projectiles involve an inventive step over each of ‘Lucky Dip’, ‘Barrels of Fun’ and US 4871171
65) From the overall reasoning above, I consider that the gaming device of claim 40 is not novel and lacks an inventive step in the light of gaming machines, ‘Lucky Dip’ and ‘Barrels of Fun’, and does not involve an inventive step over US 4871171.
66) From the overall reasoning above, I consider that the gaming method of claim 41 is not novel and lacks an inventive step in the light of gaming machines, ‘Lucky Dip’ and ‘Barrels of Fun’, and does not involve an inventive step over US 4871171. In the same manner, claim 41 is not novel in the light of AU 711501.
67) Pursuant to the above, I consider the invention as defined by claims 1, 4, 7, 8, 10, 11, 14-16, 18-20, 25-34, 36, 37, 40 and 41 to be not novel in the light of, and as defined by claims 1, 4, 7-11, 14-37, 40 and 41 to not involve an inventive step over, the prior art cited above.
Manner of Manufacture
68) The opponent has submitted that
"The invention as claimed in any one of claims 1-41 of the opposed patent application represents mere new use of a known apparatus or methods for an old purpose, is in respect of technical equivalents of what has gone before and relates to mere workshop improvements of what has gone before."
referring to Harwood v. Great Northern Railway Co. (1865) 11 HLC 654; 11 ER 1488 and National Starch and Chemical Investment Holding Corporation v. Goodman Fielder Limited [1999] APO 41 (9 July 1999), and that
“What is claimed in claims 1, 23, 25 and 31 is nothing but a mere workshop variation of that which is known.”
referring to N V Philips Gloeilampenfabrieken v. Mirabella International Pty Ltd (1995) 183 CLR 655.
69) I have explained the distinctions between the public disclosures of the prior art and the instant claimed invention above in considering novelty and inventive step in the light of common general knowledge in the industry. In some instances, I have determined that there is no inventive step over the prior art whereas, in other instances, I have determined that there is an inventive step with the prior art disclosure not leading, by routine step by the uninventive skilled person in the art, to the claimed invention. Based on my previous explanation, I consider that all claims are in respect of a manner of manufacture. However, as determined above, many of those claims are not novel or do not involve an inventive step.
CONCLUSION
70) I have determined that the invention as defined by claims 1, 4, 7, 8, 10, 11, 14-16, 18-20, 25-34, 36, 37, 40 and 41 is not novel and as defined by claims 1, 4, 7-11, 14-37, 40 and 41 does not involve an inventive step. I have also determined that the invention is fully described in the patent specification and that the claims are clear and fairly based and define a manner of manufacture.
71) As I consider there to be patentable subject matter within the specification, I allow the applicant 60 days from the date of this decision in which to file proposed amendments overcoming the lack of compliance with the Patents Act 1990 noted above.
72) It is appropriate that I note that, while I have determined that the instant invention defined by independent claims 1, 23, 25 and 31 has been fully described in the patent specification, including its best method of performance, there is a serious question of, were the invention to be defined by amendment to being that of claims 12, 13, 38 or 39, whether the patent specification provides a description of the best method of performance of that embodiment. While there is no expert evidence to the point, it appears from the filed evidence that the projectile embodiment has very little precedent in the gaming machine industry and hence, the limited description of this embodiment may not be sufficient to allow that embodiment to be performed without the exercise of further inventive ingenuity.
COSTS
73) It is usual practice in these proceedings that costs follow the event. I see no reason to depart from this practice in this instance. I have found that the opponent has been partly successful in their opposition and therefore award costs against the applicant, IGT.
Bill Major
Delegate of the Commissioner of Patents
Patent attorneys for the applicant : Fraser Old and Sohn, Sydney
Patent attorneys for the opponent : F B Rice & Co., Sydney
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