Crown Melbourne Limited - [2023] APO 3

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Crown Melbourne Limited [2023] APO 3

Patent Application: 2020204279

Title:Method and apparatus for Roulette game

Patent Applicant:                   Crown Melbourne Limited
Delegate:  Dr A. Lim
Decision Date:  19 January 2023
Hearing Date:  Written submissions filed on 07 November 2022

Catchwords: PATENTS – examiner objection – whether the invention is a manner of manufacture – informational aspect of rules for playing a modified Roulette game outweighs the form of a physical apparatus for playing the game –information represents the rules of the game itself – substance of the claimed apparatus is presentation of information – substance of the claimed method is the game itself – no patentable subject matter identified in the specification – application refused – applicability of issue estoppel discussed

Representation: Patent attorney for the applicant: Pini IP

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2020204279

Title:Method and apparatus for Roulette game

Patent Applicant: Crown Melbourne Limited
Date of Decision: 19 January 2023
DECISION
The claimed invention is not for a manner of manufacture. I see no subject matter in the specification which could be made the subject of a valid claim to overcome this finding.
I refuse the application.
REASONS FOR DECISION
Background

Patent application 2020204279 (the present application) was filed by Crown Melbourne Limited (the applicant) on 26 June 2020. The patent request claims divisional status from patent application 2018219972 (the parent) which is in turn a divisional application of 2016210666 (the grandparent). The grandparent is itself is a divisional application of 2008203384 (the great grandparent). The present application claims the earliest priority date of 25 July 2008, this date being the filing date of the great grandparent.
I also note that the applicant filed innovation patent 2008100694 (the ’694 innovation patent) on 25 July 2008 disclosing what appears to be the same invention as described in the great grandparent. In response to an Examiner’s objection regarding a lack of unity of the invention claimed in the ’694 innovation patent, the applicant filed two further innovation patents on 18 December 2008. The further innovation patent applications were 2008101234 (the ’234 innovation patent) and 2008101235 (the ’235 innovation patent). Each of ’234 and ’235 innovation patents claim divisional status from the ’694 innovation patent. All three innovation patents were examined and certified and expired on 25 July 2016.
However, the applications for the great grandparent and the grandparent both lapsed due to failure to overcome the examiners’ objections within the period to gain acceptance. The parent application was refused by a delegate of the Commissioner in a decision, [2020] APO 47 (issued 16 October 2020), after the sole objection for a lack of manner of manufacture was heard by way of written submissions.
Since the present application was filed after 15 April 2013, this application is governed by the Patents Act 1990 (the Act) as amended by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012. Accordingly, the standard of proof that applies…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

AGLC: Crown Melbourne Limited [2023] APO 3
Case: [2023] APO 3
Decision Date: 19 January 2023

CaseChat Overview and Summary

Crown Melbourne Limited filed an application for a patent for a method and apparatus for playing a modified Roulette game. The Commissioner of Patents refused the application, finding the invention was not a manner of manufacture within the meaning of s 18(1)(a) of the Patents Act 1990 (Cth). The applicant appealed the decision. The appeal was dismissed. The Commissioner's delegate found the invention was not a manner of manufacture as the substance of the invention was the presentation of information for playing a new Roulette game, and the game itself was not patentable. The delegate found the informational aspects of the invention outweighed the form of the invention as a physical apparatus. The delegate also found no other subject matter in the specification that could be made the subject of a valid claim to overcome the finding that the invention was not a manner of manufacture. The applicant submitted the Commissioner's delegate mischaracterised the invention and misapplied case law. The delegate in the present case considered the applicant's submissions and found the invention remained the presentation of information for playing a new Roulette game. The Commissioner's delegate found the game itself was not patentable and no other subject matter in the specification could be made the subject of a valid claim. The appeal was dismissed.

Orders