Bally Technologies ANZ Pty Ltd - [2017] APO 14

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Bally Technologies ANZ Pty Ltd [2017] APO 14

Patent Application: 2011201004

Title:A Method and System for Gaming

Patent Applicant:                   Bally Technologies ANZ Pty Ltd
Delegate:  M. G. Kraefft
Decision Date:  21 March 2017
Hearing Date:  Written submissions due 24 January 2017

Catchwords: PATENTS – section 100A - examiner objection during re-examination – whether invention is a manner of manufacture – electronic gaming machines – selecting game play options – presentation of subset of game symbols corresponding with selected game play option – winning combinations – no patentable subject matter disclosed – application refused.

Representation: Patent attorney for the applicant: Franke Hyland

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2011201004

Title:A Method and System for Gaming

Patent Applicant: Bally Technologies ANZ Pty Ltd
Date of Decision: 21 March 2017
DECISION
The claimed invention is not for a manner of manufacture. Furthermore there is no patentable subject matter within the specification from which valid claims could be drafted.
The application is refused.
REASONS FOR DECISION

This matter concerns grounds of re-examination and whether I should exercise the Commissioner’s power to refuse to grant the application under Section 100A of the Patents Act 1990.
BACKGROUND
Shuffle Master Australasia Pty Ltd filed patent application 2011201004 on 8 March 2011. The application claims priority from two Australian provisional applications, 2010903536 and 2010903538. The earliest claimed priority date is 7 August 2010.
The identity of the applicant has been amended on two occasions. The application is presently proceeding in the name of Bally Technologies ANZ Pty Ltd (“the applicant”).
Application 2011201004 was advertised accepted on 7 November 2013. The application has been the subject of opposition proceedings. The applicant filed amendments to the specification under Section 104 during those proceedings. Those amendments were also subject to opposition. A decision issued on the Section 104 opposition on 24 December 2015, Aristocrat Technologies Australia Pty Ltd v Bally Technologies ANZ Pty Ltd, [2015] APO 92. The opponent subsequently appealed that decision.
On 26 and 27 May 2016 respectively, the opponent discontinued the appeal and withdrew the substantive opposition. The Section 104 amendment was subsequently allowed on 1 June 2016.
It is the practice of the Commissioner in the case of a withdrawn opposition to consider whether any matter on file provides grounds for re-examination. Examination of the application was requested on 22 December 2011. Consequently, substantive amendments to the Patents Act 1990 brought about by the Intellectual Property Legislation Amendment (Raising the Bar) Act 2012, which came into effect on 15 April 2013, do not apply to the present application. On the other hand, amendments to Section 98 to expand the grounds of re-examination applied to all applications and patents from the commencement of the Raising the Bar Act (see Schedule 1, Part 1, Item 17 and Part 3, Item 55(5)). Notably for the present case, non-compliance with S18(1)(a) – manner of manufacture – became a ground for re-examination.
Three re-examination reports have been issued in the present case, each raising an objection that the claims of the application did not define a manner of manufacture. The applicant responded to each of those reports but did not further amend the specification. The examiner remained unpersuaded. In the absence of progress in resolving the re-examination issues, the matter was set for hearing by way of written submissions. Written submissions were due by 24 January 2017. The applicant did not provide any submissions. Consequently this decision is based on the applicant’s re-examination responses mentioned above.
SPECIFICATION
The specification states that the invention relates to wagering games and bonus systems for electronic gaming machines (“EGMs”). The invention is applicable, although not exclusively, to EGMs that have one or more bonus symbols included with other symbols in an array of symbols that are to be displayed on a video screen and where prescribed sets of these symbols are randomly selected from the array and displayed in a matrix as a result of play of a game. The specification includes a definition of the term “pseudo-random”, meaning that a selection is made on a random basis from within a limited range.
The discussion of the background art in the specification centres on regular players of EGMs tiring of particular games as the entertainment factor or winning opportunities reduce or become staid. Therefore it has become necessary for EGM manufacturers to develop innovative games that differ from previous types of games and have variety and bonuses in the form of features or jackpot awards that add interest to the games.
For a considerable period of time before the priority date, EGMs had evolved to the virtual reel-type that displayed a number of simulated or virtual reels on video display systems. The reels had various symbols at prescribed locations on the reels. Paylines identified particular combinations of positions in an EGM display matrix that would have been considered for determining whether particular combinations of symbols at those positions on a game play constituted winning combinations and/or whether bonus triggers had occurred. The paylines may have logically traversed across the columns and through the rows of the display matrix. The paylines were not necessarily linear within rows but may have traversed diagonally, at least in part, between adjacent columns and rows.
The specification indicates that random distributions of particular symbols, referred to as scatter pays, may also have been used to provide winning outcomes, bonus triggers and bonus wins. These scatter pay events did not necessarily require the symbols to be adjacent or in any predefined order, but merely appear in sufficient number on the display screen.
In respect to games with multiple paylines, players could select, by wagering or purchasing, one or more paylines per game. The specification states that it is common knowledge that most EGMs are designed so that the player has the highest probability of winning and/or triggering a bonus when the maximum number of paylines is selected. This means though that the player has to wager a comparatively large amount for each play. Volatility is related to the size of the bonus awarded relative to the frequency of winning. Bonuses that are awarded less often for comparatively large amounts is known as high volatility whereas bonuses that are awarded more often for comparatively small amounts is known as low volatility.
The background discussion in the specification concludes by stating that it is a constant challenge for EGM manufacturers to come up with new games that appeal to players that may satisfy their variable need for volatility and provide an entertainment experience.
The specification, as amended, concludes with 34 claims. Claims 1 and 18 are independent claims. These claims are recited below.
1. A method for operating an electronic gaming machine, including at least the steps of:
providing a fixed number of reels having displayable symbol positions, wherein each displayable symbol position is capable of being populated and repopulated with a different game symbol;
providing a player interface, said interface requiring a player to select from a plurality of different game play options, wherein each game play option has an associated subset of game symbols from a set of game symbols, at least some of the subsets associated with game play options being different from each other; wherein each game play option is associated with a base wager; wherein among the different game play options there are at least three different base wagers corresponding to different game play options;
receiving a game play option selection from the player;
debiting a wager amount from the player’s credit balance; wherein the wager amount debited cannot be less than the corresponding base wager for the selected game play option;
populating said displayable symbol positions with the subset of game symbols associated with the selected game play option; wherein any game symbol from said set of game symbols which does not form part of the subset of game symbols associated with the selected game play option consequently does not appear in any displayable symbol position; and
initiating a game using the fixed number of reels with said populated displayable symbol positions; wherein a predetermined number of populated displayable symbol positions are caused to be displayed in game outcome positions on a game outcome display;
wherein non-scatter winning game outcomes are determined by whether any combinations of game symbols appear in any of a fixed number of predetermined combinations of game outcome positions displayed on the game outcome display; and
wherein whether the displayed game symbols on the game outcome display are determined to provide one or more non-scatter wining (sic) game outcomes is inherent in the selected game play option and said player interface does not permit a player to alter the number or particular combinations of the fixed number of predetermined combinations of game outcome positions.
18.An electronic gaming machine for providing a reel-type game, said reel-type game providing a fixed number of reels having displayable symbol positions, wherein each displayable symbol position is capable of being populated and repopulated with a different game symbol; said gaming machine including a display, a player interface, and a processor adapted to control the game play and the display, said player interface requiring a player to select from a plurality of different game play options, wherein each game play option has an associated subset of game symbols from a set of game symbols, at least some of the subsets associated with game play options being different from each other; wherein each game play option is associated with a base wager; wherein among the different game play options there are at least three different base wagers corresponding to different game play options; so that operatively, when a player selects a game play option via the player interface, a wager amount is debited from the player’s credit balance; wherein the wager amount debited cannot be less than the corresponding base wager for the selected game play; said processor populates said displayable symbol positions with the subset of game symbols associated with the selected game play option; wherein any game symbol from said set of game symbols which does not form part of the subset of game symbols associated with the selected game play option consequently does not appear in any displayable symbol position; said processor operatively plays a game using the fixed number of reels with said populated displayable symbol positions and causes a predetermined number of populated symbol positions to be displayed in game outcome positions on said display; wherein non-scatter winning game outcomes are determined by whether any predetermined combinations of game symbols appear in any of a fixed number of predetermined combinations of game outcome positions displayed on the display; and wherein whether displayed game symbols on the display are determined to provide one or more non-scatter wining (sic) game outcomes is inherent in the selected game play option, and said player interface does not permit a player to alter the number or particular combinations of the fixed number of predetermined combinations of game outcome positions.
In substance, claim 18 is an apparatus version of method claim 1.
RE-EXAMINATION REPORTS AND RESPONSES
Rather than outline all the points made in each re-examination report and the applicant’s counter responses in each case, I will mention the themes from that correspondence that I think are relevant to the determination of the present matter.
The re-examination reports maintain a position throughout that the claimed invention in substance relates to merely a set of game rules. Moreover, in the implementation of those rules, there is no technical problem that is solved, or ingenuity or improvement evident, from the specification as a whole, in what might broadly be called computer technology.
The applicant stated that the claims are directed to computer processor-level operations about which a game player would not be aware that those operations were taking place. Because the game player is not aware of those operations of the EGM, the applicant indicated that the claims are not directed to rules of a game.
The applicant highlighted various features of the claims. Firstly each game play option has an associated subset of game symbols from a set of game symbols. Secondly displayable symbol positions are populated with the subset of game symbols associated with the selected game play option and any game symbol not part of the subset consequently does not appear in any displayable symbol position. The applicant suggested these features provide integers that operate as a processor-level restriction for a game play option. The applicant stated the restriction provides computing improvements in several ways. One is an improvement to local memory storage utilised to populate the display since storage is limited to the subset instead of the entire set of game symbols. The second is that restricting the display of game symbols to the subset reduces the processing time required to populate the display. The third is that restricting the game symbols to the subset increases the speed of play as the processor is not taxed in populating the display with game symbols outside the subset.
In all of the above references to populating the display, it is presumed that populating the symbol positions of the reels is meant, as is claimed. The claimed display defines the display of symbol positions in game outcome positions on the display. That is, the display is the part of the device for viewing the outcomes of the play of a game.
The applicant’s third highlighted feature of the claims was that the player interface does not permit a player to alter the number or particular combinations of the fixed number of predetermined combinations of game outcome positions. By example, the predetermined combinations of game outcome positions may be paylines (claims 2 and 19). The applicant suggested the third feature is an integer for providing instructions to the interface based upon the selected game play option and therefore upon the subset of game symbols. By not allowing the player to alter those aspects of the game outcome positions, the applicant stated the integer minimises the number of interaction steps by the player and therefore again reduces the memory and processing requirements of the system.
The applicant thus summarised that the claimed invention is clearly an improvement to the operation of the machine and how it is applied to the playing of a game. The integers provide advantages in improved utilisation of local memory and processing output. The contribution is technical in nature and achieves practical and useful results.
In the third response the applicant referred to a number of cases that concluded that certain claims directed to the operation of EGMs met the test for manner of manufacture. Moreover the applicant distinguished the claimed invention from being characterised as rules for playing games by referring to the player interface. The applicant indicated that the substance of the invention lay in the operation of the player interface. The player selects a game play option, with an associated wager option, and the game play option has an associated subset of symbols. The corollary is that the player does not have any option to select particular paylines. This selection is already inherent in the game play option selected. The applicant noted that at this stage there is no game being played. The easy and rapid selection by the player of different game play options, with different symbol subsets and potentially different levels of volatility, is a feature more analogous to the invention claimed in Aristocrat Technologies Australia Pty Ltd, [2016] APO 49.
That decision determined that the presentation of game information in a way that allowed the game and bet denominations to be selected in a single action did not appear to be a normal way at the priority date to configure a gaming machine interface, was technical in nature and achieved a practical and useful result, and thus satisfied the test for manner of manufacture.
Further comments by the applicant, where relevant, will be discussed later.
APPLICABLE LAW
As indicated above, Section 98 as amended by the Raising the Bar Act applies to the present case. It states:-
On re-examining a complete specification, the Commissioner must ascertain and report on:
(a)   whether the specification does not comply with subsection 40(2) or (3); and
(b)   whether, to the best of his or her knowledge, the invention, so far as claimed, does not satisfy the criteria mentioned in paragraph 18(1)(a), (b) or (c); and
(c)   whether the invention is not a patentable invention under subsection 18(2).
Because of the application’s examination request date, Section 100A as in force before commencement of the Raising the Bar Act applies in the present case. At the relevant time, Section 100A stated:-
(1)Where the Commissioner makes an adverse report on a re-examination under subsection 97(1), the Commissioner may refuse to grant the patent (see subsection 61(1)).
(2)The Commissioner cannot refuse to grant a patent under this section unless the Commissioner:
(a) has given the applicant a reasonable opportunity to be heard; and
(b) has, where appropriate, given the applicant a reasonable opportunity to amend the relevant specification for the purpose of removing any lawful ground of objection and the applicant has failed to do so.
(3)The applicant may appeal to the Federal Court against a decision of the Commissioner under this section.
Notably this does not include the condition added by the Raising the Bar Act that the Commissioner “is satisfied, on the balance of probabilities”. While clearly I need to be satisfied that what is claimed is not a manner of manufacture within the meaning of the Act before refusing the application, this does not appear to be a case which turns on any distinction in the evidentiary standard of proof that may arise as a result of the amendment of the legislation.
Section 18 of the Patents Act 1990 provides that:-
(1)Subject to subsection (2), an invention is a patentable invention for the purposes of a standard patent if the invention, so far as claimed in any claim:
(a) is a manner of manufacture within the meaning of section 6 of the Statute of Monopolies; …
In National Research Development Corporation v Commissioner of Patents (“NRDC”), [1959] HCA 67, (1959) 102 CLR 252, the High Court provided a statement of the law in this regard. At page 275, “… a process, to fall within the limits of patentability which the context of the Statute of Monopolies has supplied, must be one that offers some advantage which is material, in the sense that the process belongs to a useful art as distinct from a fine art…- that its value to the country is in the field of economic endeavour”. In discussing the “vendible product” proposition put forward by Morton J in Re G.E.C’s Application, (1942) 60 RPC 1, the High Court in NRDC upheld the validity of a patent for the use of previously unknown properties of a known chemical to effect a new purpose. At page 277:-
“The effect produced by the appellant’s method exhibits the two essential qualities upon which “product” and “vendible” seem designed to insist. It is a “product” because it consists in an artificially created state of affairs, discernible by observing over a period the growth of weeds and crops respectively on sown land on which the method has been put into practice. And the significance of the product is economic; for it provides a remarkable advantage … for one of the most elemental activities by which man has served his material needs, the cultivation of the soil for the production of its fruits.”

In D’Arcy v Myriad Genetics Inc (“Myriad”), [2015] HCA 35, the High Court noted the difficulty in that case, related to the patentability of an isolated nucleic acid coding for a mutant or polymorphic polypeptide, of engaging with the criterion of “an artificially created state of affairs”. At [91]:-
“Engaging with that criterion in this case places the question of patentability in too narrow a frame. It invites debates about the application of categories such as “products of nature” versus “artificially created products” which may be distracting from the central issue, that is whether an essential integer of the claims, the genetic information, takes them outside the category of that which can be “made”.”
Further in Myriad, an emphasis on considering the substance of the claimed invention over the form of the claims is apparent. At [94]:-
“Although it may be said in a formal sense that the invention as claimed, referring to isolated nucleic acids, embodies a product created by human action, that is not sufficient to support its characterisation as a manner of manufacture. The substance of the invention as claimed and the considerations flowing from its substance militate against that characterisation.”
Gaming machines have been characterised by computer control, within the machines and as part of networked systems, of their operations and display functionality for a considerable period of time. In the realm of computer-implemented methods, the Full Federal Court in Research Affiliates LLC v Commissioner of Patents, [2014] FCAFC 150, discussed several authorities in Australia and other jurisdictions. At [94], the court stated that when the authorities in Australia prior to and including Grantv Commissioner of Patents, [2006] FCAFC 120, are considered, a consistent approach emerged as to the relevance of a number of points. The pertinent points for the present case are:-
- the distinction between mere intellectual information and a method that affects the operation of an apparatus in a physical form (Grant at [18]);
- the fact that the claimed steps are foreign to the normal use of computers;
- whether part of the invention is an inventive method which includes the application and operation of the method in a physical device (Grant at [30]);
- the fact that a physical effect is required does not make it sufficient to confer patentability; and
- the fact that, for claimed computer programs, the courts look to the application of the program to produce a practical and useful result, so that more than “intellectual information” is involved (Grant at [29]). A method that is in the nature of directions for use does not constitute an invention or a manner of manufacture in the absence of some previously unrecognised property of an aspect of the method (Grant at [29]).
In Commissioner of Patents v RPL Central Pty Ltd (“RPL”), [2015] FCAFC 177, the Full Federal Court similarly dealt with a computer-implemented method. At [99], the court provided, in its own terms, a reiteration of some of the matters discussed in Research Affiliates. These were that:-
- it is necessary to ascertain whether the contribution to the claimed invention is technical in nature;
- one consideration is whether the invention solves a “technical” problem within the computer or whether it results in an improvement in the functioning of the computer, irrespective of the data being processed;
- does the claimed method merely require generic computer implementation?;
- is the computer merely the intermediary, configured to carry out the method using a computer readable medium containing program code for performing the method, but adding nothing to the substance of the idea?
Moreover the Full Federal Court in RPL reiterated the Myriad statement in respect to considering the substance of the claimed invention where the invention was in substance a scheme. At [96] of RPL:-
“A claimed invention must be examined to ascertain whether it is in substance a scheme or plan or whether it can broadly be described as an improvement in computer technology. The basis for the analysis starts with the fact that a business method, or mere scheme, is not, per se, patentable. The fact that it is a scheme or business method does not exclude it from properly being the subject of letters patent, but it must be more than that. There must be more than an abstract idea; it must involve the creation of an artificial state of affairs where the computer is integral to the invention, rather than a mere tool in which the invention is performed.”
Concluding at [98]:-
“It is not a question of stating precise guidelines but of deciding, in each case, whether the claimed invention, as a matter of substance not form, is properly the subject of a patent.”
In Research Affiliates, the Full Federal Court noted similarities in approach between Australia, the United Kingdom (“UK”) and the United States (“US”). In particular, the UK consideration of the “necessary technical contribution”, in the context of the statutory exclusions existing in the UK, was of relevance to an analysis of a necessary technical or artificial effect under Australian law (see [36], [45]). It follows that the UK cases may provide assistance in the determination of the substance or actual contribution of the claimed invention in the present case.
In Aerotel Ltd v Telco Holdings Ltd; Macrossan’s Application, [2006] EWCA Civ 1371; [2007] RPC 7, a four-step “technical effect” approach is outlined in respect to the question of excluded subject matter under UK law. At [40]:-
“(1) properly construe the claim
(2)identify the actual contribution;
(3)ask whether it falls solely within the excluded subject matter;
(4)check whether the actual or alleged contribution is actually technical in nature.”
In addressing the second step, Jacob L.J. stated at [43]:-
“The second step – identify the contribution – is said to be more problematical. How do you assess the contribution? Mr Birss submits the test is workable – it is an exercise in judgment probably involving the problem said to be solved, how the invention works, what its advantages are. What has the inventor really added to human knowledge perhaps best sums up the exercise. The formulation involves looking at substance not form – which is surely what the legislator intended.”
Further at [44]:-
“Mr Birss added the words ‘or alleged contribution’ in his formulation of the second step. That will do at the application stage – where the Office must generally perforce accept what the inventor says is his contribution. It cannot actually be conclusive, however. If an inventor claims a computer when programmed with his new program, it will not assist him if he alleges wrongly that he has invented the computer itself, even if he specifies all the detailed elements of a computer in his claim. In the end the test must be what contribution has actually been made, not what the inventor says he has made”.
On the other hand, care must be taken not to determine the substance of the claimed invention merely on the basis of excluding known features in the claims. As indicated by Kitchin L.J. in Lantana Limited v The Comptroller General of Patents, Design and Trade Marks, [2014] EWCA Civ 1463, at [64]:-
“… it is the claim as a whole which must be considered when assessing the contribution which the invention has made, and that it is not permissible simply to cut the claim into pieces and then consider those pieces separately and without regard to the way they interact with each other. Thus in Symbian Ltd v Comptroller-General of Patents [2008] EWCA Civ 1066, [2009] RPC 1, Lord Neuberger (giving the judgment of the court) said at [37] (referring to decision T 0208/84 Vicom Systems Inc/Computer related invention [1987] OJ EPO 14, [1987] 2 EPOR 74 at [37]):
‘Finally at [16] the Board described “making a distinction between embodiments of the same invention carried out in hardware or in software” as “inappropriate”, as what is decisive is “the technical contribution which the invention described in the claim when considered as a whole makes to the known art”.’
In relation to whether the substance of the present application falls within an established exclusion, the decision in IGT v The Comptroller General of Patents, [2007] EWHC 1341 (Pat), appears particularly relevant. The IGT applications featured aspects relating to the play or running of bonus games on gaming machines. As discussed in Konami Gaming, Inc., [2016] APO 46 at [28], in IGT, the High Court of England and Wales refused patent applications relating to such gaming systems. The grounds of refusal were that the contributions that were made lay in the excluded field of a scheme, rule or method for playing a game, as per Article 52(2) of the European Patent Convention (“EPC”), which exclusions were deemed at [5] of IGT to be practically speaking of the same scope as the exclusions in Section 1(2) of the UK Patents Act 1977. It may be noted that Article 52(2) and Section 1(2) both group a scheme, rule or method for playing a game, or doing business, amongst other things, into the same category of excluded subject matter under their respective Subsection (c) in each case. This would appear to support a position that subject matter relating to playing games and doing business may be treated analogously.
CLAIMED INVENTION
Concentrating initially on independent claims 1 and 18, there is defined an EGM or a method for operating one. A fixed number of reels are provided having displayable symbol positions. Each symbol position is capable of being populated and repopulated with a different game symbol. A player interface requires a player to select from a plurality of different game play options. Each game play option has an associated subset of game symbols from a set of game symbols. At least some of the subsets are different from each other. Each game play option is associated with a base wager and there are at least three different base wagers among the different game play options.
On selection of a game play option and subject to a wager having been debited, which cannot be less than the corresponding base wager for the game play option, the displayable symbol positions are populated with game symbols only from the subset corresponding to the selected game play option. A game is initiated and a predetermined number of symbol positions are caused to be displayed in game outcome positions on a display.
Non-scatter winning combinations of game symbols are determined by their appearance in any of a fixed number of predetermined combinations of game outcome positions on the display. The claims then define a relationship of inherency between the capability of achieving winning outcomes and the selected game play option. Finally the player interface does not permit the player to alter the number or particular combinations of the fixed number of predetermined combinations of game outcome positions.
When determining the substance of the alleged invention it is important to consider the claimed invention as a whole, not just the individual parts (see Lantana at [64]). Essentially the claimed invention resides in an EGM presenting a number of game play options to a player, with the player selecting one. Wager debits then occur. The EGM then populates symbol positions on reels with only symbols from a subset of game symbols commensurate with the selected game play option. Game play then proceeds and winning outcomes are determined by a number of rules related to the combinations of game symbols in a fixed number of combinations of positions on the display, and to the game play option chosen. Notably also, the EGM does not allow the player to alter the number or particular combinations of the fixed number of combinations of positions on the display that may provide winning outcomes. It would appear that the substance of the claimed invention resides in the enablement of game play option selection at the player interface by a player, and the commensurate game play control and display of symbols by the EGM in accordance with that selection. It would thus appear prudent to consider the nature of the game play options and their effects in more detail.
The remaining claims further embody these options and/or the nature of paylines, wager amounts, and the use of game symbols and their frequency of occurrence in the symbol display, whether within or outside any particular subset of game symbols associated with the selected play option.
DISCUSSION
At least two interpretations are plausible with the definition of a game play option in the claims. One interpretation is that a game play option amounts to a player’s ability to choose one of multiple available games through the EGM. This mode is described at page 9 lines 1-4 of the specification. In analysing the background art at the relevant time in respect to EGMs in Aristocrat Technologies Australia Pty Ltd, [2016] APO 49 (“Aristocrat #1”), the delegate stated at [47] that it was known to select a game from a list of options on a gaming machine. Furthermore at [9] and [10] of that decision, it would appear that multi-game gaming machines had become normal. Another delegate in Aristocrat Technologies Australia Pty Ltd, [2017] APO 1 at [50] (“Aristocrat #2”), came to a similar conclusion. Both of these decisions related to patent applications with earlier priority dates than the present application.
A second interpretation is the ability for a player to choose one of multiple different play options within a single game, once a particular game is invoked. This mode is described at page 9 lines 5-8 of the specification. Overall though, the concept of enabling player selections of a range of options within games had also been a feature of EGMs for a considerable period of time before the priority date. The ability for players to have chosen the number of paylines to play per game comes readily to mind. This aspect is also discussed as background art on page 3 of the specification. This was within the realm of merely requiring generic computer programming implementation of game features.
In discussing the player selection of a game play option with its associated subset of symbols in the third response, the applicant stated:-
“The corollary is that players do not have any option to select particular pay lines or the like; this selections (sic) already inherent in the game play option selected, and cannot be later changed by (for example) selecting how many pay lines to play, as in many conventional games”.
If that is so, then this would not seem to help the applicant’s case. It would mean the player’s selection of a game play option locks in particular payline(s). If one interprets this as the player having indirectly also selected paylines when selecting a game play option, then it may be noted that the specification acknowledges that the player’s ability to select paylines was common knowledge (page 3 lines 7-19).
I am not convinced though that the feature, described in the applicant’s statement quoted above, is reflected by the claimed invention. A link between selected game play options and available paylines (or in the words of claims 1 and 18, predetermined combinations of game outcome positions) is not readily apparent. Similarly in the claims, the number of paylines is fixed but that is not necessarily dependent on the selected game play option. Rather, claims 1 and 18 define more broadly a determination of displayed game symbols providing non-scatter winning outcomes being inherent in the selected game play option. The barring of alteration to the number or particular combinations of paylines may be independent of the selected game play option. Moreover, the inherency relationship defined in these claims has its own problems. See Aristocrat Technologies Australia Pty Ltd v Bally Technologies ANZ Pty Ltd, [2015] APO 92 at [52]-[54], for a more detailed discussion of this issue. The interpretation adopted in that case as a consequence was that whether the symbols result in a winning outcome is dependent, rather than inherent, upon the selected game play option. Whatever the case, it appears there is insufficient support in the claims that available, particular paylines are necessarily linked to the selected game play option.
Page 14, lines 10 and 11, of the specification states the “logic of the aforementioned rules of the game is implemented by way of a computer program that is effected by the processor”. Figure 6A, reproduced below, is illustrative.
As shown above at 604, the player may choose options to play with up to and including 5 gold symbols. Gold symbols correspond to enhancements of a bonus symbol (page 14, lines 14 and 15). The bonus symbol types are as follows: A = circle; B = square; C = diamond; D = star; and E = crown. At 605, the player’s selection determines the prescribed mix of symbols to be used on the reels. A reel strip loader loads the reel symbols corresponding to the selected play option from a table of symbol lists 608. At 608 and 610, the reel strips will contain the five bonus symbols A, B, C, D, E in either an enhanced or gold state, or in an unenhanced state depending on the selected play option. In running any of the selected game play options, there appears to be nothing in the specification that alludes to the processor performing any function beyond its normal function to select and run a game or game options on an EGM according to player input at the player interface.
The game play option together with the wager features also appear to warrant some comment. In Aristocrat #1 at [48], the selection of game and bet denominations in a single action was found to be beyond the normal way to configure a gaming machine interface, was technical in nature, achieved a practical and useful result, and was thus found to be a manner of manufacture. In the present case the claims refer to a base wager and a wager amount debited from the player’s credit balance. The base wager is associated with the game play option. It may thus be said that the player has indirectly selected the base wager concurrently with selecting a game play option, and that this situation is analogous to that in Aristocrat #1. On the other hand, the case in Aristocrat #1 offered multiple choices on a touch screen of bet denominations for any one of multiple games such that a player could select both a game and a bet denomination with one touch. That is not so in the present case. In Figure 7, table 7.2 indicates different credits for five play options. The description refers to these credits as the play cost which appears to be equivalent to the base wager as defined in the claims. The appropriate base wager is locked in by correspondence with each game play option. The base wager is not a separate, selectable parameter for the player.
It may be noted that the claims define debiting of a wager amount from the player’s credit balance immediately after the player’s selection of a game play option. Absent any other intermediate, claimed feature such as a determination of how much to debit, it may be natural to presume the base wager amount by default has been debited and that, again, this is a selection by the player concurrent with the game play option selection. On the other hand, the base wager should not be confused with the wager amount debited from the player’s account. The claims do not define debiting of the base wager but rather an amount that cannot be less than the base wager. In this context, although not defined in the claims, it must be presumed that the player has had some input into how much the system should debit his or her credit balance. The table on page 18 of the specification indicates examples where the player may choose integer multiples to wager per play option. For example, if the player selects 2 credits bet per play option with a particular play option that costs 60 credits, then the cost to the player would be 120 credits per play. There is no support in the specification that game play option selection and wager selection in this way by the player may be performed simultaneously. On the contrary, page 14, with reference to Figure 6C, states that an input process waits to receive two principal inputs A and B from the player, namely the number of gold symbols that are to be played (A), and the number of credits to be bet per play (B). The individual selection of a game play option and the selection of the amount to be wagered were part of the normal inputs, before the priority date, required of the player by an EGM before game play was initiated.

In its responses, the applicant argued that the association of subsets of game symbols with selected game play options and the barring of the player from altering the number or particular combinations of the fixed number of predetermined combinations of game outcome positions reduced local memory and processing requirements. According to the applicant, this was clearly an improvement to the operation of the machine, and was technical in nature and achieved practical and useful results.
The specification at page 10 lines 3-7 provides assistance in this regard. That passage sums up the position by describing that each play option has a predetermined design and mix of symbols associated with it, which are stored in the memory of the EGM for subsequent loading to fill the array with symbols corresponding to the particular reel design associated with the selected play option. This corresponds substantially with the position that the substance of the claimed invention resides in the enablement of game play option selection at the player interface by a player, and the commensurate game play control and display of subsets of symbols by the EGM in accordance with that selection.
I can accept that there are technical effects arising from the player’s selection of a game play option at the player interface, through the processor’s use of memory and recall from memory of a predetermined design and mix of symbols to display on the reels of an EGM commensurate with the selected game play option. The same may be said of the functions of the processor behind the barring of a player from altering the number or particular combinations of the fixed number of predetermined combinations of game outcome positions or paylines, regardless of whether that is linked to the selected game play option or not. On the other hand the delegate in Accenture Global Services Limited, [2017] APO 9, clearly indicated at [64] that “the presence of a technical effect is not enough to resolve the question of what is the substance of the invention”. In the present case the alleged invention only requires generic computer implementation in an EGM, using generic computing elements such as a processor, memory, player interface, display, and communications bus across the various computing elements. There is programming involved to enable the running of games on the EGM according to player-selected game play options. On the other hand, the computing elements would have been used in their normal way well before the priority date. The contribution to the art is not in the computing aspect of the invention but in the alleged improvement in game play options and symbol subsets presented to the player, leading to the possibility of an enhanced entertainment experience for the player. The computer in the EGM is merely the tool for performing the game, and the contribution to the art is not technical in nature.
The applicant further relied on Nicholas J.’s decision in Aristocrat Technologies Australia Pty Ltd v Konami Australia Pty Ltd, [2015] FCA 735 (“Aristocrat #3”), which, amongst other things, dealt with a patent related to trigger condition probabilities for jackpot features in EGMs. At [223] of that decision, Nicholas J stated:-
“A mere idea that does not translate into a claim for a new and useful result is not within the concept of a manner of manufacture because it involves no more than “mere discovery” or “discovery without invention” cf. NRDC at 264. However, the inventions claimed in the 689 patent are not “mere ideas” but new and useful gaming machines and new and useful methods of operation producing new and improved results.”
Manner of manufacture was not specifically addressed in the Full Federal Court’s appeal decision, Konami Australia Pty Ltd v Aristocrat Technologies Australia Pty Ltd, [2016] FCAFC 103.
The Dynamite Games Pty Limited v Aruze Gaming Australia Pty Limited decision, [2013] FCA 163, concerned a standard patent and an innovation patent for gaming apparatus and systems. In both patents, the claimed inventions defined event guarantee features that triggered a game event within a set amount of gameplay.
The subject matter in the Aristocrat #3 and Dynamite cases is clearly similar. On the other hand, Emmett J in Dynamite at [172], while not needing to form a final view on the point, expressed some doubt that the manner of manufacture requirement had been satisfied. In any case, both of the Aristocrat #3 and Dynamite decisions were decided before the Full Federal Court’s decision in RPL and before RPL’s implication for computer-implemented methods became apparent.
I conclude that claims 1 and 18 are not for a manner of manufacture and thus are not for patentable subject matter.
DEPENDENT CLAIMS AND BODY OF SPECIFICATION
As mentioned earlier, the remaining claims further embody the game play options and/or the nature of paylines, wager amounts, and the use of game symbols and their frequency of occurrence in the symbol display, whether within or outside any particular subset of game symbols associated with the selected play option. I have assessed these claims and similarly find there is no manner of manufacture and thus no patentable subject matter defined in these claims.
The descriptive part of the specification provides a number of embodiments stated to enable flexibility in the different design of reels between different play options. For example, the last paragraph on page 12 discusses bonus symbols that can also be enhanced to be of higher value than in their base state. For example, the enhancement may be a colour such as gold, as previously mentioned. In terms of game design, these enhanced bonus symbols logically constitute additional bonus symbols but follow a theme in terms of their selection between an enhanced and unenhanced state, according to the selected play option. In this manner, the same theme can be maintained between different play options to provide the player with the experience that they are playing the same game, but in reality involves a different bonus scheme and thus player experience between the play options that arises from effectively playing a different game in each play option. Page 13 of the specification describes such flexibility between the different play options as providing the game designer with more variables to design a game within prescribed parameters of returns to player, hit rate and bonus scheme for a common pay table, whilst seeking to achieve the elusive goal of the game being fun to play. Page 23 of the specification further summarises a mode for carrying out the alleged invention where the player is effectively offered the choice of different levels of volatility with each play option. These play options follow a common game theme and style, but with different pay tables according to the selected play option. This is stated to be a significant difference from the common types of EGMs in vogue, where a single pay table is provided across the entire game.
The common theme across the above passages of the specification is the greatly enhanced flexibility available from the alleged invention for the game designer to design games and more game options to ensure maximum enjoyment from the game for the player. Again there is nothing untoward in any of these aspects requiring the computer in the EGM to perform anything other than its normal functions. This reinforces the position that the alleged invention, in the specification as a whole, involves game design and operation and is not directed to a contribution to the art that is technical in nature.
I further conclude there is no patentable subject matter within the specification from which valid claims could be drafted.
CONCLUSION
I have found that the claimed invention is not for a manner of manufacture, and that there is no patentable subject matter within the specification from which valid claims could be drafted.
I refuse the application.
M. G. Kraefft
Delegate of the Commissioner of Patents