Bally Gaming Inc v IGT - [2012] APO 61

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Bally Gaming Inc v IGT [2012] APO 61

Patent Application: 785305

Title:Wide Screen Gaming Apparatus

Patent Applicant:  IGT
Opponent:  Bally Gaming Inc.
Delegate:  R Subbarayan
Decision Date:  15 June 2012
Hearing Date:  21 March 2012, in Canberra
Catchwords:  PATENTS - opposition to Section 104 amendment – scope of certain terms indeterminate – whether drawings can be used to determine aspect ratios - amendments refused under subsections 102(1), 102(2) (a) and 102(2)(b)

Representation: Patent applicant: None
Opponent:Glenn McGowan of Counsel and instructed by Tracey Hendy of Freehills

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 785305

Title:Wide Screen Gaming Apparatus

Patent Applicant: IGT
Date of Decision: 15 June 2012
DECISION
The proposed amendments are not allowable under subsections 102(1), 102(2) (a) and 102(2)(b).
The amendments are refused.
REASONS FOR DECISION
BACKGROUND

Application 785305 (29239/02) was filed by IGT on 28 March 2002 and claims priority from a priority application made in USA on 28 September 2001. The application was advertised accepted on 11 January 2007.
Bally Gaming Inc. filed a Notice of Opposition on 11 April 2007 and followed it up with a Statement of Grounds and Particulars on 11 July 2007. The Opponent completed its evidence in support on 6 March 2009. The applicant did not file evidence in answer but instead filed an application to amend under S104 on 7 July 2010. A delegate of the Commissioner granted leave to amend the specification as requested by the applicant and the amendments were advertised on
9 December 2010. The opponent filed an opposition to these amendments on 8 March 2011 and followed it up with the Statement of Grounds and Particulars on 8 June 2011. No evidence was served by either side in the opposition to the S104 amendments.
The hearing in relation to the S104 amendments was held in Canberra on 21 March 2012. The applicant advised that they would not attend the hearing nor file any written submissions, but instead requested the opposition to be decided based upon the materials already before the Commissioner. The opponent was represented by Glenn McGowan of Counsel and instructed by Tracey Hendy of Freehills.
SPECIFICATION
The specification as filed, describes the invention as a gaming apparatus having a wide screen display. More specifically it indicates that the width of the display screen divided by the height of the display screen forms an aspect ratio having a magnitude greater than or equal to 16:10 (1.6). The gaming apparatus is also described as including a graphics controller that can generate wide screen video images. Such a wide screen image is especially beneficial as players can visualise more action on a wide screen display as compared to a conventional display which has an aspect ratio of 4:3.
The specification then goes on to describe different visual displays that may be displayed on the display screen during performance of different games like video poker, video blackjack, video keno and video slots. Figures 18-21 are specifically described as embodiments of visual displays for specialised video games that may be displayed on a gaming apparatus having a wide screen display.
The proposed amendments of 7 July 2010, the subject of the present opposition, amend the description and claims of the specification.
The specification before amendment included 13 claims whereas the amended claim set includes 7 claims. The amendments alter the text of claim 1, delete claims 2-13 and introduce new claims 2-7 including a new independent claim 3.
Amended independent claims 1 and 3 are as follows with the additions being underlined and deletions being struck through:
1. A gaming apparatus, comprising:
a display support structure having a width and a height;
a display unit capable of generating video images and attached to said display support structure in a position that is non-rotatable about an axis substantially perpendicular to a plane formed by a front surface of said display unit, wherein said display unit comprises:
a flat-panel display screen having a width and a height, said width of said flat-panel display screen and said width of said display support structure extending in a common direction, said width of said flat-panel display screen being larger than said height of said flat-panel display screen, said width of said flat-panel display screen divided by said height of said flat-panel display screen forming an aspect ratio having a magnitude greater than or equal to 16:10;
a value input device;
a controller operatively coupled to said display unit and said value input device, said controller comprising a processor and a memory operatively coupled to said processor,
said controller being programmed to allow a person to make a wager,
said controller being programmed to cause a video image to be generated on said display unit, said video image representing a game selected from a group of games comprising video poker, video blackjack, video slots, video keno and video bingo, wherein each video image includes a plurality of image elements and wherein the area occupied by the image elements displayed for a selected game has an aspect ratio having a magnitude greater than or equal to 16:10 and occupies the majority of the surface area of said display unit, and
said controller being programmed to determine a value payout associated with an outcome of said game;
a display interface operatively connected to ~~said controller and~~ said display unit; and
a touchscreen sensor located in a plane substantially parallel to said front surface of said display unit and associated with said flat-panel display screen.
3. A gaming apparatus, comprising:
a display support structure having a width and a height;
a display unit capable of generating video images and attached to said display support structure in a position that is non-rotatable about an axis substantially perpendicular to a plane formed by a front surface of said display unit, wherein said display unit comprises:
a flat-panel display screen having a width and a height, said width of said flat-panel display screen and said width of said display support structure extending in a common direction, said width of said flat-panel display screen being larger than said height of said flat-panel display screen, said width of said flat-panel display screen divided by said height of said flat-panel display screen forming an aspect ratio having a magnitude greater than or equal to 16:10;
a value input device;
a controller operatively coupled to said display unit and said value input device, said controller comprising a processor and a memory operatively coupled to said processor,
said controller being programmed to allow a person to make a wager,
said controller being programmed to cause two or more video images to be simultaneously generated on said display unit, each video image representing a game selected from a group of games comprising video poker, video blackjack, video slots, video keno and video bingo, wherein the area occupied by said two or more simultaneously generated video images has an aspect ratio having a magnitude greater than or equal to 16;10, and
said controller being programmed to determine a value payout associated with an outcome of said game;
a display interface operatively connected to ~~said controller and~~ said display unit; and
a touch screen sensor located in a plane substantially parallel to said front surface of said display unit and associated with said flat-panel display screen.
STATEMENT OF GROUNDS AND PARTICULARS
The opponent in their Statement of Grounds and Particulars listed the grounds as follows:
a)as a result of the amendment, the specification claims matter not in substance disclosed in the specification as filed;
b)a claim of the specification does not in substance fall within the scope of the claims of the specification before the amendment;
c)the claims as amended are not clear;
d)the claims as amended lack succinctness; and
e)the claims as amended are not fairly based on matter described in the specification.
ALLOWABILITY OF AMENDMENTS
Section 102 of the Patents Act covers the allowance of amendments. The pertinent subsections in this case are subsections 102(1), (2) and (2A)(a).
(1)An amendment of a complete specification is not allowable if, as a result of the amendment, the specification would claim matter not in substance disclosed in the specification as filed.
(2)An amendment of a complete specification is not allowable after the relevant time if, as a result of the amendment:
(a)a claim of the specification would not in substance fall within the scope of the claims of the specification before amendment; or
(b) the specification would not comply with subsection 40(2) or (3).
(2A) For the purposes of subsection (2), relevant time means:
(a)in relation to an amendment proposed to a complete specification relating to a standard patent---after the specification has been accepted; …….
DISCUSSION
I will first decide whether the specification complies with subsection 40(3) as any clarity issues could influence the considerations as to whether the amendments are in substance disclosed.
Subsection 102(2)(b): Not comply with subsection 40(3)
Claim 1
The opponent submitted that the definition “the area occupied by the image elements displayed for a selected game has an aspect ratio having a magnitude greater than or equal to 16:10” is unclear as the area occupied by the image elements does not have an aspect ratio.
Firstly I will consider what I understand by the term “image elements”. While the description uses the term “video image” nowhere does it use the term “image elements” and hence I need to decide what I consider to be the image elements.
The specification on pages 27-29 describes under the heading “Games adapted for wide-screen display” four displays (700, 740, 760, 780) that may be shown on the display unit. These four displays are shown in figures 18-21 respectively. Each of these figures shows a rectangular outline within which images of one or more games and their associated credit tables and player selectable buttons are shown. Viewing the figures on their own it would appear that the rectangular outline is the outline of the screen of the display unit and the smaller rectangles within them are the individual images of the games and the player selectable buttons. However when I read the description of these figures, wherein it states for example “Fig. 18 is an exemplary display 700 that may be shown on the display unit 70” and “Fig 19 is an exemplary display 740 that may be shown on the display unit 70” (my underlining), it becomes clear to me that the rectangular outline is actually the outline of the overall rectangular image that is displayed or shown on the screen of the display unit.
For example when I consider figure 18, it shows a rectangular display 700 of a slots game and this display includes within it video images of a plurality of slot machine reels 702, a “Cash Out” button 706, a “See Pays” button 708, payline selection buttons 710, bet-selection buttons 712, a “Spin” button and a “Max Bet” button.
Hence in my view each of these displays in figures 18-21 is a screenshot that shows a rectangular overall image which corresponds to the “video image” defined in claim 1 and the images of the one or more games and their associated credit tables and player selectable buttons within this overall image corresponds to the “image elements” defined in claim 1.
Having decided what I consider to be the image elements, I now need to decide what I consider to be scope of the term “the area occupied by the image elements”. In my view there are three possible constructions for this term, (a) the collective area of the image elements, (b) the area of the overall video image, and (c) the area of an imaginary rectangular boundary encompassing the image elements of the game. A literal construction would favour construction (a), while a more logical or purposive construction would favour constructions (b) or (c). The opponent was of the view that construction (c) might have been intended but this was by no means clear.
While most of the image elements are clearly rectangular and have an aspect ratio they do not occupy the entire area of the overall image and also there are gaps or spaces between them. Hence if I were to take construction (a) the collective area occupied by these image elements would not have an aspect ratio. Constructions (b) and (c) would make more sense in terms of the further qualification that this area also has an aspect ratio as each of these two constructions would give an area having a rectangular shape.
However the description provides absolutely no hint as to which construction is contemplated. In fact it is totally silent on any reference to the area of the image elements. The applicant’s decision not to attend the hearing or file written submissions does not help in resolving this issue. I have therefore nothing in front of me to suggest which one of these interpretations that a person skilled in the art would have ascribed to this term.
I am therefore unable to clearly determine the scope of the term “the area occupied by the image elements displayed for a selected game has an aspect ratio having a magnitude greater than or equal to 16:10”.
The opponent also submitted that the phrase “occupies a majority of the surface area of the display unit” is unclear as to whether the majority must be of the display unit or of the display screen inside the display unit.
While I agree that there is some ambiguity, in my view this can be readily resolved. I note that the claim does not define the display unit as comprising any integer other than the display screen. Also it goes without saying that the image can be displayed only on the screen and not on any other undefined part of the display unit. To relate the size of the video images as a proportion of the area of any integer other than the display screen would not make sense. In my view a person skilled in the art would clearly interpret the reference to “display unit” to be a reference to the “display screen”. Therefore this phrase is clear.
Claim 2
The opponent argued that claim 2 lacks clarity as it is unclear whether the “video image elements of player-selectable buttons” form part of the “image elements” recited in claim 1 and also whether the term “being” is used in the sense of the term “is”.
However I disagree. In my view it is clear that the “video image elements of player-selectable buttons” do form part of the “image elements” and that the term “being” is used in the sense of the term “is”.
Claim 3
In relation to new independent claim 3, the opponent submitted that the definition “the area occupied by said two or more simultaneously generated video images has an aspect ratio having a magnitude greater than or equal to 16:10” lacks clarity because it is unclear whether (a) the area occupied by all the games simultaneously generated on the screen must conform to the specified aspect ratio or (b) the area occupied by any two or more of the total number of games generated on the screen must conform to the specified aspect ratio.

Applying the normal rules of construction in my view alternative (a) is the only construction that can be given to this definition.

However, although this was not specifically raised by the opponent, in my view claim 3 suffers a similar clarity issue as claim 1 in that it is unclear as to what is meant by the “the area occupied by said two or more simultaneously generated video images”. Again the same three different constructions are possible for this term.

Figure 21 is the only figure that clearly shows and describes a display with two or more video images with each image representing a video game. This figure shows images of four games (782, 784, 786, 788), a credit display section (790) and a game selection section (792) simultaneously displayed on the one display screen. While each of these images is rectangular and they all fit within the rectangular overall video image (780), the figure clearly shows gaps between these images and the area occupied by these four games does not constitute a perfect rectangle which could be said to have an aspect ratio. While the overall image (780) is rectangular and has an aspect ratio, claim 3, unlike claim 1, does not define an overall video image. The draftsman appears to not have used consistent terminology to refer to like features in claims 1 and 3. While in claim 1 the term “video image” appears to refer to the overall image or display within which “image elements” of the games are displayed, in claim 3 the term “video image” appears to be used to refer to the “image elements” rather than the overall video image.
The description is again totally silent in relation to what is meant by the area occupied by the four simultaneously displayed games or that they have an aspect ratio.

I am therefore unable to clearly construe what is meant by the definition “the area occupied by said two or more simultaneously generated video images” in claim 3.

Claim 4

The opponent argued that claim 4 is unclear as to whether the “video image elements of player-selectable buttons” form part of the “video images” recited in claim 3. I have already found the same feature in claim 2 to be clear and therefore I can see no issues with the clarity of claim 4.

Claim 5

It was also argued that claim 5 lacks clarity as it is unclear whether (a) all the games on the display must be different to one another or (b) merely any two of the total number of games must be different to one another.

In my view the person skilled in the art would have no difficulty in interpreting this claim as defining that all of the games simultaneously generated are different games. This claim is therefore clear.
Claim 7
The opponent raised a lack of clarity issue with this claim in relation to the definition “the majority of the surface area of said display unit”. As I have discussed in relation to claim 1, I clearly equate the reference to the surface area of the display unit to be the surface area of the display screen. This claim is therefore clear.
Subsection 102(1): In Substance Disclosed in the Specification as Filed
When determining whether a matter is in substance disclosed in the specification as filed, the courts have basically applied the test for fair basis. Thus for an amended claim to claim matter in substance disclosed in the specification as filed, then in effect that claim must be fairly based on the specification as filed (see United-Carr Incorporated's Application [1971] RPC 23, RGC Mineral Sands Pty Ltd v Wimmera Industrial Minerals Pty Ltd (1998) 42 IPR 353).
The test for fair basis accepted in LockwoodSecurity Products Pty Ltd v Doric Products Pty Ltd [2004] HCA 69 at [98-99] as being relevant to the consideration of fair basis is:
·whether there is a real and reasonably clear disclosure of the claimed invention in the specification [from Société Des Usines Chimiques Rhône-Poulenc v Commissioner of Patents (1958) 100 CLR 5 and cited with approval in Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd (1988) 81 ALR 79] or
·whether the claims travel beyond the subject matter of the invention described in the specification [Olin Corporation v Super Cartridge Co Pty Ltd (1977) 180 CLR 236].
Claim 1
The opponent in their submissions summarised the key aspects of amended claim 1 as follows:
(A)screen with an aspect ratio having a magnitude of greater than or equal to 16:10.
(B)Each video image includes a plurality of image elements and the area occupied by the image elements displayed for a selected game has an aspect ratio having a magnitude of greater than or equal to 16:10
(C)The area occupied by the image elements for a selected game occupies the majority of the surface area of the display unit.

I agree that these are the key features of amended claim 1. Of these feature A was present in the claims as accepted and only features B and C are new features introduced by amendment.
The opponent submitted that the amendment to claim 1 is not allowable because features B and C are not in substance disclosed in the specification as filed, either in the description or in the drawings.
Feature B
The description at a number of places discloses that the video images displayed on the display unit may comprise high definition images having a picture resolution format of 1080i or 1080p or 720p. It further states that the 1080i format has 1080 interlaced scanned lines each with 1920 pixels and that the 1080p format has 1080 progressively scanned lines each with 1920 pixels. This is entirely consistent with what is well known in the art. Clearly a picture with a resolution of 1080i or 1080p format would have an aspect ratio of 1.77 which is greater than the 16:10 defined in claim 1.

The opponent argued that while they accept there is disclosure of this widescreen aspect ratio of 1.77, this aspect ratio relates to the whole video image appearing on the screen and not to image elements forming part of the image.

As I have discussed under Subsection 102(2)(b), there are three possible constructions for the term “the area occupied by the image elements”.
Construction (a) would not give a rectangular shape having an aspect ratio. While most of the individual image elements as depicted in the figures are rectangular and some of them also appear to have an aspect ratio greater than or equal to 16:10, there is certainly no support either in the description or in the drawings for the collective area of all of these “image elements” to have a rectangular shape having an aspect ratio greater than or equal to 16:10.
Construction (b) equates this term to be the area of the whole video image and this clearly has an aspect ratio which is greater than 16:10 as I have just discussed. Therefore if I were to adopt this construction, feature B would be in substance disclosed in the specification as filed.
Construction (c) requires an imaginary rectangular boundary encompassing the image elements. Clearly such a rectangular boundary would have an aspect ratio. I therefore need to determine whether there is any support in the specification for the aspect ratio of this rectangular boundary to be greater than 16:10. As I have mentioned earlier the description is totally silent on any imaginary boundary around the image elements let alone any aspect ratio for this imaginary boundary. Figures 18-21 are clearly directed to wide screen displays. If an imaginary rectangular boundary were to be drawn encompassing the image elements in figures 19-21, this boundary could possibly have an aspect ratio approximating that of the whole image which is clearly greater than 16:10. However I am conscious of the fact that there is no indication that these figures have been drawn to scale. I am guided by the comments of Aldous J in Vax Appliances Ltd v Hoover Plc [1991] FSR 307 at 313 and which was quoted with approval by the Full Federal Court in Leonardis v Sartas No 1 Pty Ltd and Another (1996) 35 IPR 23
“patent drawings are not designed to be used to denote precise measurements unless so stated, They are there to illustrate the concept and the overall relationship of the parts.”
In the present instance while the figures show the overall relationship of the image elements to the whole image, I have great hesitation in drawing an imaginary rectangular boundary around these image elements and measuring the aspect ratio of this rectangle to see whether they provide support for feature B. In my view there is no real and reasonably clear disclosure of feature B if I were to adopt construction (c).
Claim 1 as a result of the amendment would therefore claim matter not in substance disclosed in the specification as filed if constructions (a) or (c) were to be given to the term “the area occupied by the image elements”.
Feature C
I have earlier found that the reference to display unit would be understood to be a reference to the display screen. The description as filed does not explicitly disclose that the area occupied by the image elements occupies a majority of the surface area of the display screen or even of the overall video image.
However when I consider the figures, including figures 18-21 which specifically relate to wide screen displays, it is clear that the collective area of the different image elements shown occupies a majority of the surface area of the overall video image. The image elements are the ones that constitute the game and it would therefore be logical to make them as large as possible while minimising the empty spaces between them. Therefore despite the absence of any indication in the specification that the figures have been drawn to scale, I am of the view that the figures provide a real and reasonably clear disclosure that the area of the image elements occupies a majority of the area of the overall image.
Having decided this, next I need to decide whether the collective area of the image elements occupies a majority of the area of the display screen.
The specification clearly states that a preferred aspect ratio for the wide screen display is 16:9 (1.77). It further states that the video image displayed on the wide screen display can be of the 1080p format and as discussed earlier such a format has an aspect ratio of 1.77. Clearly such an image when properly displayed would fill the entire wide screen having a 1.77 aspect ratio. Also in order to enhance the viewing experience for the player it would only be logical to try and make the overall image fit the full area of the display screen. To do otherwise would defeat the object of the invention.
Therefore despite the lack of explicit descriptive support, I am of the view that there is real and reasonably clear disclosure in the specification as filed for the feature that the area occupied by the image elements occupies a majority of the surface area of the display screen.

Claim 3

The opponent also submitted that the newly introduced feature that the area occupied by the two or more simultaneously generated video images has an aspect ratio having a magnitude greater than or equal to 16:10 is not in substance disclosed in the specification as filed.

As discussed earlier, I cannot understand the scope of this feature. The area occupied by the two or more simultaneously generated images depicted in figure 21 does not form a perfect rectangle that could be said to have an aspect ratio. The description is also totally silent regarding an aspect ratio for the area occupied by the images While the overall image within which the images of the two or more games are displayed would have an aspect ratio greater than 16:10, claim 3, unlike claim 1, does not even define this overall image. Although an imaginary boundary drawn around the four games could have the general shape of a rectangle with an aspect ratio greater than 16:10, I do not consider this to be a real and reasonably clear disclosure of this feature as discussed in relation to claim 1.

Claim 3 as a result of the amendment would therefore claim matter not in substance disclosed in the specification as filed.
Claims 5 and 6
I disagree with the opponent’s submission that the feature of the “controller being programmed to cause said video images representing two or more games to be that of different games” is not fairly based on the specification as filed. Claim 5 is appended to claim 3 and figure 21 and its accompanying description on pages 28 and 29 clearly shows and describes four different games on the one screen. Claim 5 is therefore fairly based and in substance disclosed in relation to this additional feature that it defines.

In relation to claim 6, while the specification as filed does not explicitly disclose that the controller independently controls the two or more games, in my view this is inherent in the disclosure. As there is clear teaching for two or more different games to be simultaneously played, the requirement for the controller to control the two or more games independently is implicit in this teaching. This claim is also therefore fairly based.
Subsection 102(2)(a): Fall within the scope of the claims before amendment
The opponent submitted that claims 1 and 3 do not fall within the scope of the claims before amendment as they omit the feature of the display interface being operatively connected to the controller and this therefore broadens the scope of the claim.
I agree. Although claims 1 and 3 define the controller as being operatively coupled to the display unit and the display interface as being operatively connected to the display unit, this does not necessarily lead to the conclusion that the display interface is also operatively coupled to the controller. Therefore by omitting this feature, claims 1 and 3 do not fall within the scope of the claims before amendment.
DECISION
The proposed amendments are not allowable under subsections 102(1), 102(2) (a) and 102(2)(b). Proposed claims 1 and 3 include matter that is not in substance disclosed in the specification as filed. Claims 1 and 3 also lack clarity and do not in substance fall within the scope of the claims of the specification before amendment.
I therefore refuse the request for leave to amend the specification filed on 7 July 2010.
COSTS
I see no reason to depart from the normal practice that costs follow the event. Bally Gaming has been successful in this opposition. I award costs against IGT.
R Subbarayan
Delegate of the Commissioner of Patents