Aristocrat Technologies Australia Pty Ltd v Konami Australia Pty Ltd

OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 722902 in the name of ARISTOCRAT TECHNOLOGIES AUSTRALIA PTY LTD.

Title: Gaming Machine.

Action: Opposition under Section 59 of the Patents Act by KONAMI AUSTRALIA PTY LTD.

Decision: Issued .
Abstract

The invention relates to poker machines and games played on such machines. During play of a game the gaming machine randomly selects a plurality of symbols and displays them, and pays a prize if a winning combination results. If a particular combination occurs on this play of the game, a further random change takes place to those symbols. This change is randomly selected from a number of possible changes and if a particular change occurs to the symbols, a jackpot prize is paid on the same play of the game.
The description of the invention, and the clarity and fair basis of the claims, were found to be adequate. The claimed invention was also found to be novel, have an inventive step and was for a manner of manufacture on the available evidence.
The opposition failed on all counts.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent application 722902 by ARISTOCRAT TECHNOLOGIES AUSTRALIA PTY LTD, and opposition under Section 59 by KONAMI AUSTRALIA PTY LTD.

BACKGROUND

Aristocrat Technologies Australia Pty Ltd ("Aristocrat") filed patent application 722902 on 26 November 1997. The application claims priority from an Australian provisional application filed on 27 November 1996. Patent application 722902 was advertised accepted on 17 August 2000.
Konami Australia Pty Ltd ("Konami") filed a notice of opposition to the grant of a patent on the application on 17 November 2000. On 21 February 2001 Konami filed a statement of grounds and particulars in support of its opposition.
Following several extensions of time Konami completed the service of evidence in support on 20 October 2001.
Aristocrat also gained several extensions of time to serve its evidence in answer. Aristocrat completed the service of this evidence on 31 May 2002.
Konami was late filing a notice of intention to serve evidence in reply. An extension of time was granted. However Konami has not availed itself of the opportunity to serve evidence in reply.
A hearing was held in Sydney on 15 July 2003. Mr Jeremy Dobbin, patent attorney of F B Rice & Co, represented Aristocrat. Mr Peter Dummer, patent attorney of Wallington-Dummer, represented Konami. Mr John van Leeuwen, also of Wallington-Dummer, was present as an observer.
SPECIFICATION
The specification states the invention relates to poker machines and an improvement to a game played on such machines. The specification discusses some limitations with existing poker machines. For machines with spinning reels controlled by stepper motors there is a physical limit to the size and number of reels provided and the number of symbols on each reel. This limits the number of possible combinations of symbols which in turn limits the size of payouts. An alternative to overcome these limitations is the provision of video displays simulating spinning reels since this allows virtual reels that can be theoretically of infinite size. The specification further states that many gaming machine players prefer the physical spinning reel-type machines believing that such machines are inherently more honest than video simulated machines.
The invention broadly resides in a gaming machine enabling the following type of game to be played. In the play of a game the gaming machine randomly selects a plurality of symbols and displays them, and pays a prize if a winning combination results. If a particular combination occurs on this play of the game, a further random change takes place to those symbols. This change is randomly selected from a number of possible changes and if a particular change occurs to the symbols, a jackpot prize is paid on the same play of the game.
The specification has ten claims. Claim 1 is the only independent claim and reads as follows:-
1. A gaming machine having a display means, and a game control means arranged to control images displayed on the display means, the game control means being arranged to play a game wherein a plurality of symbols are randomly selected and displayed on the display means and, if a winning combination results, the machine pays a prize, the game being characterised in that the gaming machine is arranged so that on the occurrence of a particular combination of symbols on display during a play of the game, a further random change takes place to those symbols the change being randomly selected from a number of possible changes and if a particular change to the symbols occurs, a jackpot prize is then paid on the same play of the game.
STATEMENT OF GROUNDS AND PARTICULARS
Konami's statement of grounds and particulars lists the following grounds of opposition. The claimed invention is not for a manner of manufacture, is not novel, and does not involve an inventive step. Furthermore the specification does not fully describe the invention nor include the best method of performing the invention. The statement also states the claims do not define the invention, and are not clear, succinct and fairly based on the description. Konami provides numerous particulars to support each of these grounds.
EVIDENCE
Konami's evidence in support of its opposition consists of statutory declarations from Mr Glen Howard Gordon, Mr Toshiaki Shimizu and Mr Peter Lyall Chick.
Mr Gordon is a patent attorney employed as a consultant with Wallington-Dummer. His declaration includes numerous exhibits of alleged prior art against the present application.
Mr Shimizu is a game designer for Konami. He states to have 13 years of experience in Australia in the gaming machine industry. Mr Shimizu comments on several of the exhibits of Mr Gordon's declaration to assert the claimed invention is not new in the light of those disclosures. Mr Shimizu also makes statements of the common general knowledge in Australia at the priority date in 1996 of the application and further asserts most of Mr Gordon's exhibits formed part of the common general knowledge at that date. Mr Shimizu states he kept abreast of technical developments by reading patent specifications and technical journals.
Mr Chick is a compliance manager for Konami. He states to have more than 25 years of experience in Australia in the gaming machine industry. Mr Chick essentially states that he regards that most of Mr Gordon's exhibits formed part of the common general knowledge in Australia at the priority date of the application.
Aristocrat's evidence in answer consists of statutory declarations from Mr Nicholas Luke Bennett, Ms Natalie Bryant and Mr Philip Charles Bennett.
Mr Nicholas Bennett is employed at Aristocrat as a senior manager. He has approximately 15 years of experience in games design and research, and gaming machines. Mr Bennett asserts that people in the industry in 1996 did not routinely read patent specifications. They kept abreast of technical developments by reviewing manufacturers' games brochures and gaming machines, and attending clubs and gaming exhibitions. Mr Bennett disputes the declarations of the opponents that Mr Gordon's exhibits formed part of the common general knowledge in 1996 in Australia. Mr Bennett also draws attention to several differences between the claimed invention and the prior art in evidence to assert the former is novel and inventive.
Ms Bryant is employed at Aristocrat as an IP officer. She began her career in the gaming industry in 1994 at GTest in South Australia. Ms Bryant was involved in the testing of gaming machines and gaming machine software for compliance against jurisdictional standards and communication protocols. Her declaration essentially supports Mr Bennett's declaration about the state of the common general knowledge and the lack of use of patent specifications in 1996 to keep abreast of technical developments in the industry. She also highlights several differences between the claimed invention and Mr Gordon's exhibits.
Mr Philip Bennett is a managing director of a company trading as Phil Bennett & Associates. He has held this position since 1989. The firm provides specialised consultancy services in the field of legalised gaming. He has over 20 years experience in the gaming industry in Australia. Mr Bennett essentially supports the comments of Ms Bryant and Mr Nicholas Bennett in respect to the state of the common general knowledge in the industry in 1996 and how people in the industry kept abreast of developments.
Konami has not served any evidence in reply.
DESCRIPTION OF THE INVENTION, CLARITY AND FAIR BASIS OF CLAIMS
Mr Dummer submitted the specification does not clearly describe an invention. He referred to the abstract and the description of the background art, particularly noting the last paragraph on page 3, to state the alleged invention is a game. The stated problem is the limitations on the size of the mechanical reels and the number of symbols that can be implemented on mechanically operating gaming devices. Mr Dummer noted that page 3 of the specification states a solution to this problem is the provision of video gaming machines. He also noted though that page 3 states that video gaming machines are untrustworthy amongst users. Consequently Mr Dummer suggested the specification did not offer any solution to the problem. Alternatively he suggested if there was an invention it only related to gaming devices of the mechanical reel type.
Mr Dobbin referred to Mr Nicholas Bennett's declaration, paragraphs 5 and 7, to state the invention was applicable to gaming machines of both physical reel and video reel type. Mr Dobbin noted the invention provides bigger jackpot payments on both mechanical and video machines.
It appears Mr Dummer has focused too narrowly on the stated problems with both mechanical and video gaming machines and expected a machine-based solution from either one or both types of machines. On the other hand Mr Dummer has also relevantly noted above that the alleged invention is a game. Consequently the solution is not necessarily machine-based but a programming solution for a machine. The game relates two stages of play for a main prize and a jackpot prize. I agree with Mr Dobbin that it is readily apparent from the specification that this invention has application to both mechanical and video gaming machines.
Mr Dummer further submitted that at least claim 1 was not fairly based on the description. He said the claim clearly travelled beyond the disclosure of the specification as a whole. He said only one example is given of a further symbol change, that being a change of colour. Alternatively Mr Dummer argued that the claim is flawed because the symbol itself does not change, only the colour of it changes. Mr Dummer relied on Lockwood Security Products Pty Ltd v Doric Products Pty Ltd, (2003) AIPC 91-873, and Neurizon Pty Ltd v LTH Consulting and Marketing Services, [2002] FCA 1547. He asserted that the courts are taking a strict line on fair basis, particularly conformity between the scope of independent claims and the description on which they are based.
From an overall reading of the specification the essence of the invention is a game characterised by a further random change taking place to certain symbols in a gaming machine. Much of the specification discusses the further change as being a change of colour of symbols. On the other hand colour changes are not the only changes discussed. The last paragraph on page 4 discusses change of colour or even the appearance of symbols by the game control means in video gaming machines. Page 6 lines 26-31 discuss changes to the symbols themselves to different symbols altogether.
The above disclosure renders otiose the argument that claim 1 is flawed because the symbol itself does not change, only the colour of it changes. In any case such an argument attempts to make artificial distinctions. A change of colour of a symbol falls within the scope of a change to the symbol itself.
I find claim 1 is fairly based on the above points.
Mr Dummer further relied on the Neurizon (supra) decision to state the claims were not fairly based because they were not restricted to an electronic gaming machine as set by the body of the specification. The lack of fair basis in Neurizon of claims absent the electronic aspect was subsequently affirmed in Neurizon Pty Ltd v LTH Consulting and Marketing Services, [2003] FCA 208.
At paragraph 33 of Neurizon [2002] (supra), Dowsett J. noted many claims referred to "a gaming machine" or "gaming machines". Dowsett J. further stated:
"Claim 16 refers to a gaming machine which is an "electronic gaming device". It is dependent upon all preceding claims and adds this additional integer to them. In the absence of Claim 16, I would have read Claims 1-15 as referring to EGMs (electronic gaming machines), having regard to the context set by the specification. See Kimberley-Clark Pty Ltd v Arico Trading International Pty Ltd (2001) 201 CLR 1 at [15]. However Claim 16 makes such an approach difficult. It may be that claims such as Claims 1-15 are not fairly based on the specification."
This would suggest claims 1-15 include non-electronic gaming machines, for example purely mechanical devices.
The claims of the Neurizon case principally relate to probabilities of winning draws being dependent on amounts wagered on particular machines during an elapsed period. Dowsett J. at paragraph 34 referred to the difficulty in interpreting such claims in the sense of mathematical probability if considering all gaming machines, as opposed to only electronic gaming machines ("EGMs"). He noted the importance in commercial gaming operations of the probability of a win being capable of calculation. Nonetheless the claims appeared capable of construction as to non-EGMs.
Independent claim 17 of the Neurizon case additionally defined a control means to conduct the prize draws. Again while it is difficult to envisage machines other than EGMs, it is open for the conduct of prize draws to be controlled purely mechanically.
In the present case, I agree with Mr Dummer that the context set by the specification is that of electronic or at least electromechanical gaming machines. There is also no claim in the present application like claim 16 of the Neurizon case. Consequently there is no compulsion in the present case to interpret claims as to non-EGMs as was required in Neurizon to give effect to claim 16.
Further the claims of the present application all include at least a game control means arranged to control images displayed on a display means and to play a game. This is different from the control means of the Neurizon case conducting prize draws in a general sense. The controlling of images on a display would suggest electronic components are essential to the gaming machine to give effect to the claims of the present application.
I conclude the gaming machine of the claims of the present application is necessarily an electronic gaming machine. The claims do not require the word "electronic" in front of "gaming machine" to be fairly based.
Mr Dummer further submitted that the phrases in claim 1 of "the change being randomly selected from a number of possible changes" and the payment of the jackpot on "the same play of the game" were absent from the specification before the amendment which gained acceptance of the specification. Consequently Mr Dummer stated claim 1 now was not fairly based.
The general principle for a claim to be fairly based, from CCOM Pty Ltd v Jiejing Pty Ltd, (1994) 28 IPR 481, is that there must be a real and reasonably clear disclosure of its subject matter in the specification. In respect to the first phrase, those specific words only appear in claim 1 and the revised consistory statement (first paragraph on page 4). It is clear though throughout the rest of the specification, prior to and after amendment, that the further change is randomly selected from a number of possible changes. Mr Dummer has noted the particular embodiment is the change of colour of the symbols. For example, page 4 lines 19-21 states the displayed 7s may change to either three red 7s, three blue 7s, three white 7s or three 7s of mixed colour. There are four possible changes here to be randomly selected. I conclude claim 1 is fairly based on this point.
In respect to the second phrase, if it were absent from the claim then the claim would appear to include in its scope the further random change merely being a re-spinning of the reels (mechanical or video-simulated). Such a claim would not be fairly based in the present case. A definition of the claimed process taking place on one spin of the reels would thus appear to be essential. A reading of the above phrase in light of the specification as a whole and as addressed to a person skilled in the art would appear to determine its basis (Décor Corporation Pty Ltd v Dart Industries Inc, (1988) 13 IPR 385 especially at page 400). On the one hand, one might interpret there are two games in the claimed invention, the main game and the jackpot game. On the other hand the opponent's Mr Shimizu, at paragraph 10 of his declaration, discusses two stages in the play of the game. This suggests an understanding from Mr Shimizu of the main and jackpot stages being part of a single game. It appears to be consistent in the specification as a whole and in Mr Shimizu's comments that the same play of a game is understood as a single actuation of the reels of a gaming machine.
In the present case a single actuation of the reels of the gaming machine achieves all of the following. It displays one of a multitude of possible combinations of symbols. A particular combination of symbols on the reels also qualifies a player for a jackpot prize depending on a further random change to those symbols (page 5 lines 22-36 of the description).
I find there is adequate disclosure in the description of a jackpot pay-out on the same play of the game when a further particular change occurs to the symbols.
I conclude the claims of the application are fairly based on the description.
NOVELTY
The Meyers Taylor Pty Ltd v Vicarr Industries Ltd decision, (1977) 137 CLR 228, provides an appropriate test for novelty. The test is also known as the "reverse infringement test". Aickin J., at page 235, states:
"The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement."
The Rodi and Wienenberger AG v Henry Showell Ltd decision, (1969) RPC 367, states that infringement occurs where each and every one of the essential features of a claim is taken.
A practical application of the above decisions suggests a claim lacks novelty if a prior citation discloses all of the essential features of a claim. I will apply this test to the present case.
At the hearing Mr Dummer essentially relied on two of Mr Gordon's exhibits, GHGA-2 and GHGA-7, being US Patents 5152529 and 5449173 respectively. Both were published well before the priority date of the present application.
US 5152529
Mr Dummer referred to paragraph 10(a) of Mr Shimizu's declaration to submit the claimed invention is not novel over US 5152529. Mr Dobbin pointed to a number of differences between the claimed invention and the US patent to counter Mr Dummer's submissions.
US 5152529 describes a gaming machine with an outer reel having a first series of symbols and an inner reel disposed co-axially inside the outer reel and having a second series of symbols. When a specific symbol on the outer reel, for example an opening or a transparent area, stops in the display window of the gaming machine, the inner reel is spun and stopped to enable an additional outcome with the displayed combination of symbols on the inner reel and on other outer reels. There are a number of differences between this arrangement and the claimed invention in claim 1. Firstly US 5152529 does not specifically discuss winning combinations on the first stage of play nor the machine paying a prize at that point. On the other hand one could argue that the occurrence in the display window of the specific symbol on the outer reel, that is the opening or the transparent area, together with symbols on the other outer reels is a winning combination. More significantly there is no disclosure in US 5152529 that, when a particular combination of symbols is displayed at the first stage of play, a further random change takes place to those symbols. In US 5152529 a different series of symbols, specifically those on the inner reel, undergo the further random change by spinning of the inner reel.

I conclude the claimed invention is novel over US 5152529.
US 5449173
Mr Dummer referred to paragraph 10(b) of Mr Shimizu's declaration to assert the claimed invention is not novel over US 5449173.
This patent discloses a reel-type gaming machine with a wildcard symbol on one of the reels. The appearance of the wild card in the display position triggers a supplemental pay-off under certain circumstances. During the supplemental pay-off sequence the wildcard reel shakes or jitters while coins fall in the trough.
Mr Shimizu discussed the disclosure of a second stage pay-out, and the nature of the second stage random change to the symbol being the length of the shaking. Mr Dobbin stated the shaking of a single reel does not constitute a change to all the symbols of a particular displayed combination as claimed in the application. Further he noted the symbols in US 5449173 do not change. One merely shakes.
I accept that shaking a reel, and the consequential image of a shaking symbol, is a further change, as claimed in the application, to a symbol. In US 5449173, only the wildcard reel with all its symbols shakes. Mr Dobbin though correctly pointed out that in the US patent there is no disclosure of the claimed invention of a further random change to the symbols of the particular displayed combination. That is, a further random change to each of the displayed symbols on each reel. In any case, in US 5449173, it is difficult to see any randomness, as claimed, in the shaking. A random event suggests there is more than one possible outcome associated with the event. Mr Shimizu states the randomness in US 5449173 is in the variety of lengths of shaking which is proportional to the pay-out amount. This does not fit well with the later definition of the claimed invention where the change is randomly selected from a number of possible changes to the symbols. A range of lengths of shaking a symbol does not constitute a number of possible changes to symbols. In US 5449173 there is only one change. That is the shaking of a symbol.
Even if it were interpreted that a range of lengths of shaking constituted a number of possible changes, the claims of the present application would then require a jackpot prize to be paid if a particular length of shaking occurred. In US 5449173 a prize is paid irrespective of the length of shaking. The length merely determines the value of the prize.
I conclude the claimed invention is novel over US 5449173.
INVENTIVE STEP
Under sections 7(2) and (3) of the Patents Act, inventive step is presumed unless it is demonstrated that the invention is obvious. The assessment of obviousness may be made against common general knowledge alone, or together with information that was publicly available and which a person skilled in the relevant field in Australia could be reasonably expected to have ascertained, understood and regarded as relevant before the priority date.
An appropriate test for inventive step is 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 (Wellcome Foundation Ltd v VR Laboratories (Aust.) Pty Ltd, (1981) 148 CLR 262 at page 286).
Person Skilled in the Art
Both parties did not directly address who is the appropriate person skilled in the present field, either in their evidence or at the hearing. On the other hand each of the parties highlighted the inventors amongst each others' declarants suggesting some were over-qualified to be ordinary persons skilled in the present art.
Both Konami's Mr Shimizu and Aristocrat's Mr Nicholas Bennett are inventors for some Australian patent applications and their declarations also demonstrate significant practical experience in games design. However games design for gaming machines appears to be too high a level for the person skilled in the art to whom the present specification is addressed. A games designer, in Mr Bennett, came up with the present alleged invention. Nonetheless I am prepared to take into account all declarants' comments on common general knowledge whilst being mindful of Mr Shimizu's and Mr Nicholas Bennett's positions.
In view of the described problem of limitations on possible combinations of symbols and consequential limits on pay-out sizes with prior gaming machines, I will take the appropriate person skilled in the art to be a games installer, games programmer, games tester or games evaluator for gaming machines. From their declarations Konami's Mr Chick, and Aristocrat's Ms Bryant and Mr Philip Bennett would appear to be such persons.
Common General Knowledge
Mr Shimizu and Mr Chick both declare that the art the subject of the exhibits accompanying Mr Gordon's declaration formed part of the common general knowledge in Australia at the priority date of the application. Aristocrat's declarants countered this by stating that people in the gaming machine industry in 1996 did not routinely read patent specifications. People kept abreast of technical developments by reviewing manufacturers' games brochures and gaming machines, and attending clubs and gaming exhibitions.
At the hearing Mr Dummer challenged Aristocrat's statements about people in this industry not routinely reading patent specifications. He noted that Aristocrat is a prolific patent filer. On the other hand Mr Dobbin submitted that documents do not become common general knowledge merely because they are widely read and still less because they are widely circulated. Such documents only become common general knowledge when they are widely known and regarded in the relevant field (British Acoustic Films Ltd v Nettlefold Productions, (1936) 53 RPC 221 at 250 and General Tire & Rubber Company v Firestone Tyre & Rubber Company Ltd, (1972) 89 RPC 457 at 483).
In Konami's evidence it is difficult to draw on clear statements of what was common general knowledge in respect to games on gaming machines at the priority date of the present application. Two declarants assert the art the subject of more than fifteen exhibits in evidence forms part of the common general knowledge. Aristocrat's submissions though suggest caution should be exercised in holding large numbers of documents, specifically chosen against a particular patent application, to all be part of the common general knowledge. Mr Dummer submitted Konami is not asserting the documents were common general knowledge. Rather the art the subject of these documents was common general knowledge. However the evidence does not greatly assist in identifying what one should draw from those documents to generally hold as common general knowledge. After some prompting Mr Dummer offered two-stage game playing features as shown in three of Mr Gordon's exhibits.
In respect to common general knowledge of games features on gaming machines, paragraphs 7(g) and 7(h) of Mr Shimizu's declaration are relevant. In the first paragraph he asserts, at the priority date of the application, "progressive" gaming machines providing a pay-out (jackpot) from progressive plays of the one machine on the occurrence of a specific event were common general knowledge. In the second paragraph Mr Shimizu asserts that linked progressive features across a network of gaming machines where a jackpot would be paid to one of the linked machines on the occurrence of a specific event were common general knowledge.
Aristocrat's Mr Philip Bennett generally agrees with Mr Shimizu in respect to paragraphs 7(g) and 7(h) with a qualifier to the latter that the amount of the jackpot pool would also comprise a start or reset amount which is not related to the money bet.
I am prepared to accept the statements of Mr Shimizu in paragraphs 7(g) and (h) as qualified by Mr Bennett as statements of the common general knowledge at the priority date of the application.
These statements are short on stating that two-stage gaming features were common general knowledge where the triggers of the second stage on the one machine were directly dependent on the outcomes of the first.
Inventiveness Over the Prior Art
Mr Dummer submitted that US 5152529 in combination with the common general knowledge, and US 5449173 in combination with the common general knowledge, each rendered the claimed invention lacking an inventive step.
As noted above, US 5152529 is silent on the claimed feature that when a particular combination of symbols is displayed at the first stage of play, a further random change takes place to those symbols. The common general knowledge does not cover this difference. The difference also appears to be a significant step from the US patent's disclosure of a different series of symbols on a different reel undergoing the further change by spinning of that reel. Konami has provided insufficient evidence to determine that such a step would have been a matter of routine to take for the person skilled in the art.
I conclude the claimed application has an inventive step over US 5152529 combined with the common general knowledge.
US 5449173 as noted above does not clearly disclose a further random change taking place
to the symbols of the particular displayed combination as claimed in the application. That is, to each displayed symbol on each reel. US 5449173 merely discloses a further change to the wildcard reel, and the symbols thereon, only. Again the common general knowledge does not cover this difference. The difference also appears to be significant over the US patent's disclosure of all the symbols of a single reel undergoing the change rather than one displayed symbol on each reel. Konami has presented insufficient evidence to determine such a difference would have been a matter of routine to the person skilled in the art at the priority date of the application.
I conclude the claimed invention has an inventive step over US 5449173 combined with the common general knowledge.
MANNER OF MANUFACTURE
Mr Dummer cited the Lockwood (supra) decision to submit the claims should fail under this ground because they merely define an idea that is a desirable outcome.
Branson J. in the Lockwood case described the claimed invention in that case as a latch assembly with the characteristic that the means which operates the bolt from the outside (that is, the key) releases the (dead)-lock. He saw this as merely an idea or principle and stated it is not possible to patent an idea or principle.
The NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd decision, (1995) 32 IPR 449, and the Bristol-Myers Squibb Company v FH Faulding & Co Ltd decision, (2000) 46 IPR 553, state the position in respect to a threshold requirement of inventiveness. The latter case at page 564 appears to affirm the decision in the former case. If, on the basis of what was known, as revealed on the face of the specification, the claimed invention was obvious or did not involve an inventive step, then the threshold requirement for an invention to be apparent on the face of the specification is not met.
The Neurizon Pty Ltd v LTH Consulting and Marketing Services Pty Ltd decision, [2002] FCA 1547, at paragraph 100, describes the CCOM Pty Ltd v Jiejing Pty Ltd decision, (1994) 28 IPR 481, as one where the Full Court considered the application of the [Patents] Act to computer programmes. The Neurizon decision at paragraph 101, with reference to CCOM at 513 and 514, states that clearly the programming of electronic gaming machines is necessarily incidental to a "field of economic endeavour" to use the words in CCOM. In the present case, as in the Neurizon case, that field is the conduct of gaming facilities. The claims define particular results to be produced on gaming machines by appropriate computer programming. They define more than an idea that is a known desirable outcome and more than what is revealed as known on the face of the specification. The relevance of the circumstances in the Lockwood case to the present case is not readily apparent.
On the face of the specification of the present application, I conclude there is a manner of manufacture.
DECISION
I have found the description of the invention, and the clarity and fair basis of the claims to be adequate. I have also found the claimed invention is novel, has an inventive step, and is for a manner of manufacture on the available evidence.
I conclude Konami's opposition fails on all counts.
Having regard to Order 3 Rule 2 (4A) of the Federal Court rules, I direct the application may be sealed after forty (40) days from the date of this decision.
If the Commissioner of Patents is served with a notice of appeal from this decision before that time, I direct that sealing not occur until the appeal has been decided or discontinued.
COSTS
Both parties stated that costs should follow the event. I see no reason to depart from this practice. Konami has been wholly unsuccessful in its opposition. I award costs against Konami.
M. G. Kraefft
Delegate of the Commissioner of Patents
Patent attorneys for the applicant : F B Rice & Co., Sydney
Patent attorneys for the opponent : Wallington-Dummer, Sydney

[2003] APO 57

23 December 2003