Aristocrat Technologies Australia Pty Ltd v Konami Australia Pty Ltd
[2004] APO 1
•23 January 2004
OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 723324 in the name of ARISTOCRAT TECHNOLOGIES AUSTRALIA PTY LTD
Title: Game Feature for a Gaming Machine
Action: Opposition under Section 59 of the Patents Act 1990 by Konami Australia Pty Ltd
Decision: Issued 23 January 2004.
Abstract
The opposition fails on all grounds.
The opponent has not established that the claims lack novelty or an inventive step, nor have they established that they do not relate to a manner of manufacture. The opponent has also not established that the claims are unclear, that they lack fair basis, that they do not define the invention, or that the invention is not described fully. I have found that the claims are entitled to the priority date of 3 December 1996.
Costs were awarded against the opponent.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 723324 by ARISTOCRAT TECHNOLOGIES AUSTRALIA PTY LTD and opposition thereto by KONAMI AUSTRALIA PTY LTD
BACKGROUND
Patent application 46824/97 was filed on 2 December 1997, in the name of Aristocrat Leisure Industries Pty Ltd, claiming priority from associated provisional application PO 3996, filed on 3 December 1996. Statements of proposed amendments were filed on 29 July 1997 and 16 June 2000, in anticipation of and in response to the first examination report respectively. The application was subsequently accepted in its amended form on 23 June 2000. On 20 July 2000, an amendment was proposed to change the applicant's name to Aristocrat Technologies Australia Pty Ltd, the present applicant. The application was advertised as accepted on 24 August 2000.
A notice of opposition was filed on 17 November 2000 by Konami Australia Pty Ltd. This was followed on 19 February 2001 by a statement of grounds and particulars. After several extensions, the opponent's evidence in support was finalised on 20 October 2001. After several further extensions, the applicant's evidence in answer was finalised on 20 August 2002. The opponent served a notice of intention to serve evidence in reply on 20 September 2002. No evidence in reply was served, and the matter was set for a hearing in Sydney on 22 August 2003. At the hearing, the applicant was represented by Mr Jeremy Dobbin of F B Rice & Co, and the opponent was represented by Mr Peter C Dummer of Wallington-Dummer.
STATEMENT OF GROUNDS AND PARTICULARS
The statement of grounds and particulars alleged the following:
· S 59(b) - that the invention is not for a manner of manufacture, that it is not novel, and that it does not involve an inventive step.
· S 59(c) - that the complete specification does not describe the invention fully (including a best method of performance), that the claims do not define the invention, that the claims are not clear and succinct, and that the claims are not fairly based on the description. The opponent reserved the right to challenge the priority date of the claims.
The statement itemised several pieces of prior art, listed several items of common general knowledge, and gave details relating to the section 40 issues.
EVIDENCE
The opponent's evidence in support consists of the following:
· A statutory declaration by Peter Lyall Chick;
· A statutory declaration by Toshiaki Shimizu, accompanied by exhibits TSC-01 (Australian patent application 76215/98) and TSC-02 (a marked-up copy of the opposed claims); and
· A statutory declaration by Glen Howard Gordon, accompanied by exhibits GHGC-01 - GHGC-08 (several prior art documents which are discussed below) and GHGC-09 - GHGC-11 (copies of provisional application PO 3996, and of the opposed application both prior to examination and after acceptance respectively).
The applicant's evidence in answer consists of the following:
· A statutory declaration by Philip Charles Bennett (accompanied by a curriculum vitae);
· A statutory declaration by Natalie Bryant dated 20 August 2002. This declaration refers to exhibits NB1 and NB2, which were not served in evidence, and on which Mr Dobbin at the hearing confirmed the applicant would not be relying; and
· A statutory declaration by Nicholas Luke Bennett, accompanied by exhibits NLB.1 and NLB.2 (copies of the opposed application both prior to examination and after acceptance).
THE SPECIFICATION
The specification addresses the problem of players tiring of a particular gaming machine, by the inclusion of a bonus feature to maintain their interest. Basically, in addition to the normal symbols that appear on the screen display of a gaming machine, the applicant's machine can display additional special symbols. If these are displayed on the screen when a winning combination is also displayed, the bonus is paid. The invention is summarised by a consistory statement, which replicates claim 1 of the application. The claims are reproduced in full below:
"1. A gaming machine having display means, and game control means arranged to control images displayed in a display window on the display means, the game control means being arranged to play a game wherein a plurality of indicia are randomly selected and displayed in a screen image on the display window and, if a winning combination occurs, the machine pays a prize, the game being characterised in that one or more particular symbols are provided which when those symbols appear at predetermined locations on the display window in a current screen display, the prize awarded for a winning combination arising in that current screen display is increased by the game control means by a predetermined factor, the increase being determined by the number of such symbols occurring at predetermined locations in the current screen display wherein the predetermined locations include any position on the display window of the display means, regardless of whether or not the special symbol forms part of the winning combination.
2. A gaming machine as claimed in claim 1 wherein each symbol occurrence repeats the win once.
3. A gaming machine as claimed in claim 1 or claim 2 wherein the occurrence of each symbol multiplies the win by a particular factor.
4. A gaming machine as claimed in claim 3 wherein the factor is two times.
5. A gaming machine as claimed in any preceding claim and substantially as hereinbefore described with reference to and/or as shown in the accompanying drawings."
The specification includes three figures illustrating embodiments of the invention. Figure 2 illustrates a screen display for the gaming machine, consisting of three rows of "static reels" illustrating the outcome of a particular game play. The centre row displays a winning row of jacks, the top row includes two "particular symbols" or "special symbols" ("SS"), and the bottom row includes a single special symbol. At page 4, the specification states that:
"The occurrence of the special symbol anywhere in the display window in a current screen display, i.e. on any of the three pay lines, repeats any win by the number of special symbols in the window."
On page 5 of the specification, it is further stated:
"The special symbols may appear in the display window 59. They do not have to appear on a pay line. For example, if a player was only playing pay line number 1, a special symbol on line 2 could repeat the win."
The specification states that the invention can be performed on a mechanical gaming machine, or on a gaming machine having a video display means. On page 3a, it is asserted that "it is within the capabilities of the non-inventive skilled worker in the art to introduce the methodology on any standard microprocessor-based gaming machine by means of appropriate programming".
DECISION
Construction of the claims
The parties differed as to how the claims should be construed. In short, I favour the applicant's approach. I will explain how I have construed claim 1, and then comment on some of Mr Dummer's submissions. Claim 1 defines a gaming machine which includes a display means and a game control means. The game control means awards a prize if a set of winning indicia is selected and displayed on the current screen display. The prize is increased by a factor in some situations, providing for a bonus effect. This occurs when special symbols appear "at predetermined locations in the current screen display", those predetermined locations including "any position on the display window of the display means" (emphasis added). The phrase "any position" is important. This means that the prize is increased when the special symbols appear anywhere on the current screen display. This is emphasised in claim 1 by the text: "regardless of whether or not the special symbol forms part of the winning combination", reiterating that the symbols may appear at "any position", and that it is irrelevant ("regardless of") whether they occur as part of the winning combination.
The characteristic that the increase is "determined by the number of such symbols" (emphasis added) appears to limit the invention to one in which the number of special symbols alone is determinative of the amount of the bonus. In other words, the amount by which the win is increased cannot take any other factors into account. This construction of claim 1 is consistent with the description of the invention. For example, figure 2 and the supporting text (reproduced earlier) illustrates wins being increased when the special symbols appear anywhere on the screen, including on lines that are being played, as well as lines that are not being played. The increase in the win depends only on the number of special symbols, and not on any other factor.
At the hearing, Mr Dummer advanced a different construction of claim 1. He submitted that the phrase "whether or not" has a significantly different effect on the scope of the claim from what I have outlined above. He submitted that it implies that claim 1 claims two distinct alternatives, or two distinct types of gaming machines. In one of these, the win is increased only if the special symbols form part of the winning combination ("whether"). In the other, the win is increased only if the special symbols do not form part of the winning combination ("or not").
I have two problems with this construction. One is the presence of the phrase "regardless of" before the phrase "whether or not". This implies, to me at least, that it simply does not matter whether the special symbols form part of the winning combination, that the prize will be increased irrespectively of this. I cannot see how this "whether or not" clause can divide claim 1 into two distinct alternatives, when preceded by the phrase "regardless of". My second problem with this construction is the clear reference in claim 1 to the win being increased when the special symbols appear at "any position on the display window".
In support of his construction, Mr Dummer referred under section 116 to the claims prior to amendment, in particular, the original claim 2. Claim 2 as originally filed includes the limitation "wherein the predetermined locations include any position on a pay line of the display means". Mr Dummer submitted that the limitation defined by this original claim 2 must still persist in claim 1 as accepted. In response to this, Mr Dobbin pointed out that the amendments were made to narrow the claims in order to avoid prior art, that the original claim 2 had been deleted, and so consequently it does not affect the construction of claim 1 as accepted. I agree with Mr Dobbin that this claim was deleted by amendment, and I can see no reason for trying to use the claims prior to amendment to place a different construction on to the present claims, especially when this approach conflicts with the plain meaning of the claims after amendment.
Priority date of the accepted claims
The priority date of the claims is determined by sections 43 and 114, and the accompanying regulations. If the proposed amendments resulted in claiming matter that was in substance disclosed as a result of amending the specification, the priority date of the claims is the date of filing of the relevant statement of proposed amendments. The test for fair basis of a claim can be employed to determine whether matter was "in substance disclosed" (United-Carr Incorporated's Application (1971) RPC 23).
At the hearing, Mr Dummer alleged that the priority date of the accepted claims is their date of filing, 16 June 2000, rather than the claimed priority date of 3 December 1996. This is so, he alleges, as a result of the amendments introducing new matter. Consequently, he submits, the Golden Canaries game, exhibit GHGC-04, would by the applicant's own admission fall into the prior art base, as Mr Philip Bennett admits to having played this gaming machine in 1997 or 1998.
To illustrate the effect of the amendments, accepted claim 1 is reproduced below, with the text added by the amendments being underlined and deleted text being bracketed:
"1. A gaming machine having display means, and game control means arranged to control images displayed in a display window on the display means, the game control means being arranged to play a game wherein a plurality of indicia are randomly selected and displayed in a screen image on the display window [means] and, if a winning combination occurs, the machine pays a prize, the game being characterised in that one or more particular symbols are provided which when those symbols appear at predetermined locations on the display window in a current screen display [means], the prize awarded for a winning combination arising in that current screen display is increased by the game control means by a predetermined factor, the increase being determined by the number of such symbols occurring at predetermined locations [on the display means] in the current screen display wherein the predetermined locations include any position on the display window of the display means, regardless of whether or not the special symbol forms part of the winning combination."
The major changes introduced by amendment are the inclusion of the "current screen display" feature, and the final clause referring to the predetermined locations. Mr Dummer submitted that the inclusion of the phrase "current screen display" introduced an important material addition that could not have been gleaned from the specification prior to amendment. His argument ran along the lines that, prior to the introduction of this feature, the gaming machine could have included special symbols on other display devices such as top-boxes, on other screens, or bonus games on the same machine that were not part of the main game. However, with the introduction of this feature, the bonus is worked out solely by looking at the screen of the main game, and not at any of the other possible display devices that fell within the scope of claim 1 prior to amendment. Mr Dobbin, on the other hand, regarded this amendment as nothing more than a minor clarification.
I acknowledge that the actual phrase "current screen display" was first disclosed as a result of the amendments. However, there is no indication in the specification prior to amendment that any of these alternatives raised by Mr Dummer could have been associated with determining the outcome of the game. Figure 1 illustrates a top-box panel 38, but this only displays the various winning combinations for which a prize is paid on the machine. There is no disclosure of this box displaying special symbols during game play. The only illustration of the game that is disclosed uses a single display screen, and the amount of the bonus is based on the number of special symbols appearing on that screen. Hence I am of the opinion that the concept of the restriction to the "current screen display" was implicitly present in the specification prior to amendment. The amendment is simply limiting the claim to the described embodiment more closely, and disclaiming any of these other alternatives to which Mr Dummer referred which may have fallen within the scope of the claims but which were not disclosed or illustrated.
I similarly feel that the inclusion of the final clause of claim 1 did not add new matter. Mr Dummer's written submissions appear to support this conclusion, where he appears to agree that this limitation was implicitly present in claim 1 prior to amendment. In the original claim 1, there was no restriction as to where the predetermined locations could have been, so they could in fact have been at any location on the display means. This is also clear from the description prior to amendment. This amendment merely clarifies that this is the case. Therefore I conclude that the accepted claims are entitled to the claimed priority date.
NOVELTY
The test for lack of novelty is the "reverse infringement" test. Essentially, if a piece of prior art information discloses each and every essential feature of a claim, then that claim will not be novel. The prior art information relied on by the opponent is discussed below.
Exhibits CHGC-01, CHGC-02 and CHGC-03 consist of US patents 4721307 (Okada), 5332219 (Marnell) and 5205555 (Hamano) respectively. Both sides conceded that Okada discloses a gaming machine in which a bonus is paid only when a special symbol occurs on a winning line. Mr Dummer submitted that this machine falls within the scope of claim 1, based on the construction that he advanced at the hearing. As I have already rejected this construction, I am not swayed by this argument.
Mr Dummer further submitted that when the Okada gaming machine and the machine defined by the present claims were placed side by side, and both machines produced a display in which a special symbol appeared in the winning combination, then both the Okada machine and the claimed machine would increase the prize. Therefore, he submitted, Okada falls within the scope of the present claim 1. Mr Dobbin responded to this submission by agreeing that if the special symbol of Okada forms part of the winning combination, then the game pays a bonus; but noting that if it does not then there would not be a bonus, unlike claim 1. He submitted that Okada does not specifically state what happens if the special symbol does not fall on winning line, but that it must state this explicitly in order to anticipate the present claims. He also submitted that the present claims are not directed towards particular outcomes of plays of the gaming machine, but that they are talking about the gaming machine itself. In response to this, Mr Dummer submitted that the rules of the gaming machine of claim 1 are specified on a game by game basis, so that claim 1 is defining a series of outcomes of single game plays. Therefore the issue of whether some outcomes of Okada may sometimes not infringe claim 1 was not relevant.
In applying the reverse infringement test, the opponent must establish that Okada discloses each and every essential feature of the present claims. I have outlined how I have construed the claims, and therefore the features of the claims, earlier. The opponent must establish that Okada discloses a gaming machine having a display means and game control means as claimed. The opponent has not established that Okada discloses a game control means arranged to play a game which is characterised in that the game control means increases the prize when the special symbol appears at any location on the current screen display. What has been established is that Okada discloses is a gaming machine in which a bonus is paid when a special symbol appears as part of a winning combination. When placed next to the gaming machine of claim 1, it will sometimes produce the same output on the screen display. However, it has not been established that the game control means of the present claims is disclosed in Okada.
Marnell discloses an electronic poker game machine which displays, in addition to the usual poker hand, a bonus symbol. When a player has a winning combination and a card having a bonus signal forms part of the winning combination, the player is awarded bonus winnings in addition to the usual winnings for the poker hand. This bonus can result in doubling of the win that would otherwise have been paid. It is stated several times in Marnell that the bonus is paid when the special symbol appears in the winning combination (eg column 3 lines 26 to 33 and 64 to 68, column 7 lines 15 to 18), and I have not been directed to any passage in this document which discloses that the bonus is paid if the special symbol appears but is not part of a winning combination.
Mr Dummer referred to the following passage from Marnell, alleging that it teaches towards the present invention:
"Adding special designated symbols to conventional slot machines essentially has been used to create new game winning combinations which award a different, usually higher, value."
I agree with Mr Dobbin that this disclosure falls short of what is required to satisfy the reverse infringement test.
Hamano relates to a reel-type gaming machine having special symbols that result in the win being increased by a bonus factor. However, whether or not the win is increased depends on which, if any, particular combinations of non-numerical symbols appear on the first three reels, and not on the number of such symbols. There are additional special symbols that appear only on the fourth reel. Once more, it is the particular special symbol that counts in determining by how much the win is increased, and not the number of such symbols. These symbols cannot appear at "any position on the display window". They can only occur on their particular reels. Therefore Hamano does not disclose a gaming machine having the claimed combination of features.
Exhibit CHGC-04 is a specification for the poker machine game "Golden Canaries", by Aristocrat Leisure Industries. It contains a hand-written date of "13-12-94" next to the typed word "Issued". Mr Dobbin questioned the veracity of this date as a publication date due to the fact that it is hand-written. This fact alone surely cannot, ipso facto, call the date into question. In any event, the applicant did not produce any evidence to dispute this date, which could have been more persuasive. I note that Aristocrat are the applicant of both the presently opposed application and the Golden Canaries game, putting them into a prime position in which to adduce just such evidence. However, even accepting this hand written date, the opponent has not established that this date represents a date of issue of this document to the public.
The Golden Canaries game consists of five spinning reels, and has nine pay lines. The relevant part of the specification is as follows:
"Golden Canary Feature:
8 free games occur with any scatter win. Your total win during the free games is repeated by the total number of canaries appearing anywhere in the window during these games. …"Natalie Bryant, for the applicant, discussed this exhibit in her declaration as follows:
"During the free games, the number of occurrences of canary symbols are accumulated. At the end of the free game series, the total amount that was won over the duration of the free game series is repeated by the number of canaries that appeared during the free game series. In contrast, in the invention disclosed and claimed in AU 723324, the multiplier is applied to the current screen display for one game not to an accumulated win over a series of free games. In the present invention it is necessary to have the special symbol appearing somewhere in the combination of symbols that appear on the screen display to have a multiplier effect, even though the special symbol does not have to form part of the actual winning combination(s)." (original emphasis)
Ms Bryant is currently IP Officer for Aristocrat, and in 1994 worked in the industry as a gaming machine tester. Mr Dobbin submitted that she was declaring her own personal knowledge from her own personal experience. The opponent did not adduce any evidence to contradict this explanation. I am prepared to accept this explanation of how the Golden Canaries game works, and therefore I conclude that this exhibit does not disclose the claimed invention.
Exhibit CHGC-05 is a flier for the "Hot Chilli" gaming machine. There is no evidence of when this flier was published. It features a special symbol that substitutes for other symbols. Mr Dummer did not make any submissions regarding this document, and the opponent's declarants do not discuss it. I accept the applicant's submission that this document does not disclose the invention. Exhibits GHGC-06 to GHGC-08 comprise chapter 4 of "Winning at Slot Machines" by Jim Regan, chapter 15 from "Scarne's New Complete Guide To Gambling; Fully Revised, Expanded, Updated Edition" by John Scarne; chapter 9 and the glossary from "Daniel Ortiz On Casino Gambling; The Complete Guide To Playing and Winning" by Daniel Ortiz, respectively. They were not relied on by the opponent as anticipating the claimed invention, and they do not disclose the features of the claims.
In conclusion, none of the prior art information raised by the opponent discloses each and every feature of the claims. Therefore the opponent has not established lack of novelty.
INVENTIVE STEP
Under s 7(2), an invention is taken to involve an inventive step when compared to the prior art base unless it would have been obvious to a person skilled in the art, in light of common general knowledge considered, inter alia, separately or together with a single piece of prior art information. The concept of common general knowledge is discussed in Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Limited (1980) 144 CLR 253 at 292.
Common general knowledge
The opponent's declarants, Peter Chick and Toshiaki Shimizu, claim that the subject of the exhibits GHGC-01 through GHGC-08 formed part of their common general knowledge in and around the year 1996 in Australia. Shimizu additionally lists several other pieces of information relating to the technical evolution of gaming machines which he claims were part of his general background knowledge before the priority date. Some of these make reference to exhibits GHGC-06 to GHGC-08. Mr Shimizu is listed as the inventor on Australian patent application 76215/98, now patent number 742205. He states that he keeps abreast of technical developments generally in the gaming industry by reading technical journals and patent specifications.
Mr Dobbin submitted that I could not rely on Mr Shimizu's evidence on the basis of the Patent Office decision Hood Computers Pty Ltd v On-Line Furniture Pty Ltd 28 IPR 347. In this decision, the delegate of the Commissioner found that the naming of a person as an inventor on a patent application in the field of the invention in dispute is a prima facie indicator of inventive faculties in the art. Shimizu acknowledges that he is an inventor in the field of the present invention, and as a result, his statements regarding his own personal knowledge may not reflect that of the skilled but non-inventive worker. However, I think the fact that inventorship was held in this decision only to be a prima facie indicator is important. Other relevant factors may displace this prima facie indication. For example, in the unreported Patent Office decision Asahi Kasei Kogyo Kabushiki Kaisha v WR Grace & Co -Conn [1994] APO 63 (1 November 1994), the evidence of one of the inventors of the opposed application was taken into account, and the delegate noted that "[e]vidence by an inventor is admissible provided that it satisfies the well known requirements of relevance". In the more recent Federal Court decisions Aktiebolaget Hassle v Alphapharm 44 IPR 593 and on appeal 51 IPR 375, the evidence of a witness who was named as the inventor and co-inventor on several patents was also taken into account, and it was held that the witness "was qualified to give evidence as to common general knowledge in Australia at the priority date and as to the practice of formulators in Australia at that time". This finding was not overturned on appeal to the High Court, Aktiebolaget Hässle v Alphapharm Pty Limited [2002] HCA 59. I think that I can similarly have regard to the evidence of Shimizu, rather than dismissing it entirely. However, I accept that his naming as an inventor may affect the weight I give to this evidence.
The applicant's declarants dispute these statements of common general knowledge. According to their declarations, they and their colleagues keep abreast of developments in the gaming industry by attending exhibitions and reading brochures, and they and others in the field do not routinely read patent specifications. The declarants claim that exhibits GHGC-01 to 05 were not common general knowledge in the art in Australia in 1996, and that they had not seen any of the cited patent specifications in 1996. Mr Phillip Bennett recalls playing the Golden Canaries game on one occasion in 1997 or 1998. Mr Nicholas Bennett states that he was aware of the Golden Canaries game prior to December 1996, however, it appears that this was due to his employment at Aristocrat. Ms Natalie Bryant does acknowledge that some of the concepts of one of these patent specifications were known to her, but denies that the patents themselves were common general knowledge.
Mr Dobbin also submitted that it is not clear from Shimizu's comments whether he was routinely looking at patents in 1996, or if that is what he is doing now. He also noted that the documents were US patents, and that common general knowledge can be different in different countries. The applicant's declarants further noted that Shimizu's comments are restricted to what he himself does, and not to what he knows that others in the field do.
In addition, Mr Dobbin questioned the breadth of the statement that the entire contents of each of these documents could have been common general knowledge. Mr Dummer submitted that, if I do not accept these broad statements regarding common general knowledge of the declarants in their entirety, then I can still accept the evidence in part rather than rejecting it outright. I agree with Mr Dobbin that it is intrinsically unlikely that the entire content of each of these documents could have been common general knowledge. While I agree with Mr Dummer's submission, at least in principle, that some of the information contained in these documents would have been common general knowledge, it leaves me none the wiser as to which part or parts of these documents I can consider as representing the relevant common general knowledge. The purpose of the opponent's evidence in support is to establish exactly that, and not to leave me guessing.
Mr Dobbin referred to several decisions relating to whether documents can be considered as part of the common general knowledge, including the unreported Patent Office decision regarding patent application 660897, IGT v Aristocrat Leisure Industries Pty Ltd [1998] APO 33 (12 June 1998); Aktiebolaget Hassle v Alphapharm Pty Ltd 44 IPR 593 at 606; and on appeal 56 IPR 129 at 144 and 172; Stack v Brisbane City Council 47 IPR 525, GS Technology Pty Ltd v Davies Shephard Pty Ltd 47 IPR 525 at 565, and EI Dupont De Nemours & Co v Imperial Chemical Industries PLC 54 IPR 304 at 332. He also cited Minnesota Mining & Manufacturing Co v Tyco Electronics Pty Ltd 56 IPR 248, submitting that Shimizu's prior knowledge of the patent in suit further disentitles him to give credible evidence on inventive step.
Recourse to these decisions has not proven necessary. The opponent has produced two witnesses who make the bare and unqualified allegation that exhibits GHGC-01 through to GHGC-08 formed part of the common general knowledge for themselves in 1996. They do not appear to make any statements regarding what would have been common general knowledge to others, which may have been of more relevance in ascertaining the knowledge of the hypothetical person skilled in the art. The applicant has produced three declarants who give reasons for disputing that these documents were part of the common general knowledge of the person skilled in the art. Mr Dummer further submits that I can accept the opponent's evidence as to common general knowledge in part, without illuminating me as to which parts of the evidence could be accepted. On the balance of probabilities, the opponent has not established that the matter referred to by their declarants formed part of the common general knowledge of the person skilled in the art before the priority date of the claims. Although I am satisfied that some of the content of these exhibits would have been common general knowledge, the opponent has not established exactly which parts. In conclusion, the opponent has not discharged their burden in establishing the state of common general knowledge in the art.
Obviousness
Even if I had accepted that the documents CGHC-01 to CGHC-08 were common general knowledge, the opponent's submissions would not have established that the claimed invention lacks an inventive step. The test for obviousness was discussed in Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Limited (1980) 144 CLR 253 at 293. To establish obviousness in light of the common general knowledge, the opponent would basically have to establish firstly that the features of the claims were common general knowledge, and secondly that the particular claimed combination of these features would have been obvious. I have considered all of the exhibits, and I cannot see any combination of features that would give rise to the claimed invention. Therefore the opponent has not established lack of inventive step.
MANNER OF MANUFACTURE
The opponent submitted that the specification does not disclose an invention having inventive merit with regard to the disclosure of the specification, the documents cited by the opponent, or the common general knowledge in Australia. They also submitted that the invention is no more than a mere working direction to operate an old machine in a different manner to produce an old result, that it amounts to no more than an arrangement of letters and symbols on a screen and results in no material product, and that it amounts to no more than a scheme or plan or set of rules for playing a game. They relied on NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd 32 IPR 449 and the fact that the distinction between the claims and the prior art comes down to how the winning symbols are placed on the display (where many other gaming machines are similar to the claimed invention, but have different placements of winning symbols).
The applicant submitted that the claimed invention is a "vendible product", so is a manner of manufacture per GEC's Application (1943) 60 RPC 1, and that the "newness" threshold of invention is present because the opponent has been unable to establish any anticipation of the invention. They also submitted that gaming machines were traditionally patentable subject matter, and that many patents had been granted for them, citing IGT v Aristocrat Leisure Industries Pty Ltd (supra) as an example.
In my opinion, the opponent has not made out this ground. Per Bristol-Myers Squibb Co v FH Faulding & Co Ltd (2000) 46 IPR 553, as the opponent has not demonstrated a lack of inventive step in light of what was known as revealed on the basis of the specification (indeed, they have not established lack of inventive step at all), they have not established that the threshold requirement of inventiveness per Phillips is lacking. Furthermore, the opponent has not established the existence of any "old machine" in relation to which the present claims represent mere working directions. I do not consider the present claims to be a "mere presentation of information". They differ from the prior art by more than merely the information appearing on the current screen display. Finally, although the present claim 1 is characterised in terms of the game that is played, it is directed towards a gaming machine per se. It could not be fairly said that the claim as a whole is directed to no more than a mere plan or scheme or rules of a game.
SECTION 40
Mr Dummer relied on the statement of grounds and particulars relating to fair basis and whether the claims define the invention. This approach appears to be doing no more than attempting to make the applicant limit the claims to the preferred embodiments. Mr Dummer also submitted that Doric Products Pty Ltd v Lockwood Security Products Pty Ltd (2002) AIPC 91-769, Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (2003) AIPC 91-873, and Leonardis v Sartis(No. 1) Pty Ltd (1996) AIPC 91-239 established that the Courts have been adopting a strict view of fair basis in recent decisions. Mr Dobbin disputed that I should take these decisions as standing for this proposal. I do not find this line of argument at all helpful. Even if these cases did establish that fair basis should be considered strictly, the opponent still has to establish that there is a fair basis issue in the first place. They have not done this.
The opponent relied on the statement of grounds and particulars regarding clarity. Mr Dobbin conceded that there was no exact antecedent to "the special symbol" on line 15 of claim 1, which had previously been referred to as "particular symbols", and that there was no exact antecedent to "the win" in claims 2 and 3, which had been previously referred to as "the prize" in claim 1. The statement of grounds and particulars outlines several other issues which allegedly render the claims unclear, but which were not conceded by Mr Dobbin. However, in the face of the present specification, I cannot see how any of these issues can render the claims unclear. The opponent has to establish more than mere grammatical or textual quibbles. For example, in Glaverbel SA v British Coal Corp [1994] RPC 443 at 495:
"The issue of definition should be considered as a practical matter. The court will give little weight to puzzles which may arise 'at the edge of the claim' if those puzzles would not, as a practical matter, cause difficulty for the skilled addressee or manufacturer wishing to satisfy himself that what he proposes to do will not infringe that patent."
Mr Dummer has not established that any of these issues would actually cause this degree of practical difficulty to the skilled addressee. These issues seem to be straightforward to resolve when the claims are construed in light of the specification as a whole, and I am unwilling to hold that they would be problematical to the addressee without some evidence or more detailed submissions on the point.
Mr Dobbin also conceded that claims 2, 3 and 4 were incorrectly appended. I find that they are nevertheless clear. The appendance of claim 2 can hardly be questioned. Claim 3 is perfectly clear when appended to claim 1, and the "particular factor" could be any factor whatsoever. When appended onto claim 2, it turns out that the "particular factor" is limited to being the Nth root of the number N+1, or (N+1)1/N, where N is the number of special symbols appearing in the current screen display. This is probably not a limitation that the applicant intended to claim. However, the claim is nevertheless clearly claiming it. Claim 4 is appended onto claim 3, and limits the factor to being two times. This means that each occurrence of a special symbol increases the win by a factor of two, so that two special symbols will increase the win by a factor of four, three will increase the win by a factor of eight, etc. The opponent alleges that claim 4 is defining the number of special symbols as being 2, but I feel that they are simply misconstruing the claim. It appears that this claim can only be sensibly appended back onto claim 1 via claim 2 when there is only a single special symbol, and so it has quite a narrow scope when so appended. It is, however, not unclear.
The opponent also alleged that the specification does not describe the invention fully including a best method of performance. Their statement of grounds and particulars refers to several terms they allege are not described in sufficient detail. These include "prize", "special symbol", "indicia", and "pay line". As far as I can determine, these appear to be fairly standard terms in the art whose meaning would be perfectly clear to the skilled addressee, and the opponent has not persuaded me otherwise.
Finally, the opponent pointed out that there is no supporting description regarding the "standard micro-processor based machines" or "appropriate programming" by means of which the invention is implemented. Even accepting this submission, this does not necessarily lead to a lack of sufficiency. As long as this information could be supplied by the person skilled in the art without the exercise of any inventive faculty, the specification will be sufficient (AMP v Utilux (1971) 45 ALJR 123). The opponent has not provided any evidence on this point.
In summary, the opponent has not made out any of the section 40 grounds.
CONCLUSION
The opposition fails on all grounds. The opponent has not established that the claims lack novelty or an inventive step, nor have they established that they do not relate to a manner of manufacture. The opponent has also not established that the claims are unclear, that they lack fair basis, that they do not define the invention, or that the invention is not described fully. I have found that the claims are entitled to the priority date of 3 December 1996.
I direct the application be sealed after 30 days from the date of this decision. If the Commissioner has been served with a notice of appeal against this decision before that time, I direct that sealing not occur until the appeal has been decided or discontinued.
COSTS
The opponent has been unsuccessful in making out any of the grounds of opposition. Both parties submitted that costs should follow the event. Therefore I award costs against the opponent, Konami Australia Pty Ltd.
Michael O'Rourke
Delegate of the Commissioner of Patents23 January 2004
Patent attorneys for the applicant : F B Rice & Co, Sydney
Patent attorneys for the opponent : Wallington-Dummer
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