Diogenes Limited - [2023] APO 8

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Diogenes Limited [2023] APO 8

Innovation Patent: 2021103809
Title:Pool wagering apparatus, methods and systems

Patentee:  Diogenes Limited
Delegate:  Dr N. R. Madsen – Deputy Commissioner of Patents
Decision Date:  8 February 2023
Hearing Date:  13 December 2022 via video conference, and written submissions completed 18 January 2023

Catchwords: PATENTS – section 101B – examiner’s objection – partial and full cash out on continuously monitored single or multi leg bets – invention in substance directed to a mere scheme – alleged invention not a manner of manufacture – patent revoked

Representation: Madeleine Kelly and Rory Campbell of FB Rice Pty Ltd

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Innovation Patent: 2021103809
Title:Pool wagering apparatus, methods and systems

Patentee: Diogenes Limited
Date of Decision: 8 February 2023
DECISION
The claims of the innovation patent do not define a manner of manufacture.

I revoke the innovation patent.
REASONS FOR DECISION
BACKGROUND

Diogenes Limited (“the patentee”) filed patent application 2021202507 on 23 April 2021 as a divisional application of 2019201870. The patent application traces back through a family to obtain an earliest priority date of 6 September 2012 via an original Australian filing of application 2013311319 which claimed priority from US applications 13/605813 and 13/957489. Being a divisional application, the Commissioner directed the patentee to request examination and the patentee so complied on 17 May 2021. On 23 June 2021 the patentee requested conversion of the patent application to an innovation patent the subject of this decision.
Two examination reports were issued in respect of this innovation patent both finding that the claimed invention was not for a manner of manufacture. Comment was reserved for grounds of novelty and inventive step. After the second examination report the patentee requested to be heard. The patentee also requested to be heard in respect of a similar but unrelated innovation patent being 2020104437.
The examination of the present application is governed by the Patents Act 1990 (“the Act”) as amended by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (“the Raising the Bar Act”) as the application was filed after 15 April 2013. Thus, I must certify the innovation patent if satisfied on the balance of probabilities that the application complies with the Act. If I am not so satisfied, then I can revoke the patent. Also, the final date for certification of the patent was 18 July 2022. At this point, paragraph 9A.4(f) of the Patent Regulations is available to extend the time for gaining certification to 3 months from the date of the present decision.
While not related through a family of patent applications, the present patent describes an invention that is fundamentally the same as that in patent 2020104437 the subject of a recent decision of this office by delegate Greg Powell in Diogenes Limited [2023] APO 5. Much of the analysis and reasoning in that decision is equally applicable to this decision, and I will make reference where useful to that decision. Similarly to 2020104437, the patent the subject of this decision is expired. However as noted by delegate Powell at [10], undertaking examination after the expiry date is appropriate given that certification facilitates enforcement, and infringement proceedings may be brought up to 6 years after expiry.
SPECIFICATION
The specification begins by discussing that there are a range of betting products on the market that may involve, for example, multi leg jackpot type betting involving a bonus pool and consolation prizes. Sports such as horse racing and football are commonly used as betting arenas for such multi leg betting processes. The specification discusses significant revenues made in these areas of multi leg betting and notes that within this market segment there is a need for new products to generate and maintain interest. The specification notes that the present invention is directed to a new betting product developed initially to apply to the most globally bet upon sport in the world, football, and specifically United Kingdom premiership football. The concept, however, has more widespread applications and potential appeal, and thus it may be applied to other types of sporting events as well as being expanded to lotteries, and other multi-leg/multi-events/multi-outcome or divisible games.
The specification discusses at length the implementation of the invention in the context of pool betting and early cash out offers, this being best depicted in FIG. 5 which is self-explanatory.
The specification also introduces the concept of continuously monitoring a betting event to determine chances of correct outcomes. In my understanding this relates to the idea that during a betting event, any number of factors may affect the probability of certain outcomes, so some sort of frequent recalculation of odds is beneficial. In this respect the specification as filed states at various places (page 9 lines 21-24; page 19 lines 17-19; page 19 line 33 – page 20 line 2):
“The Pool Collations 540 routine calculates and continuously recalculates the odds as each bet is placed and accepted, and as each event result occurs within the pool, so as to determine the odds with respect to each remaining active ticket within the pool bet…”
“It is also envisioned that cash-in buy back may also operate during live play and offer continuous cash-in ability as soon as it is technically possible, for example at the half-time of a match or during the running of a match when possible…”
“It is further contemplated that the ability to trade or sell your tickets back to the system operator will be continuous and in these circumstances, the bid will be extremely time sensitive. Additionally, as discussed above the player or ticket holder will have the option to sell a fraction of his ticket to the system operator…”
The methods of the invention are also discussed to function within a physical system such as that presented in FIG. 1. The specification discusses FIG. 1 as follows (page 3 lines 21-29):

“FIG. 1 is a schematic of an exemplary wagering system hardware and network that will be used herein to describe and illustrate one implementation of the present invention. The system includes a network, based on a central server system 12 being interconnected through the internet 10 to a plurality of wager input devices such as wagering stations 14, wagering terminals 16, and internet connected computing systems 18, smart phones 20, tablet computers 22 and televisions 24 each of which is representative of a plurality of each type of wager input device (e.g. wagering stations 14A-N). As will also be discussed below, the concepts herein may also be applied to gaming machines, so gaming machine 26 is depicted as an additional input device to the central server system 12 in Fig. 1.”
The functional architecture of programming arrangements supporting the present invention are depicted in FIGs 3A-3C.
Most relevant to the core aspects of the claimed invention is the “Mid Tier” program at FIG. 3B that includes programming that enables cashing in of bets. The specification (page 7 lines 18-26) describes the “Mid Tier” program as follows:
“The Mid Tier program 402, as shown in FIG. 3, includes most critically the Cash-In 422 program, which itself may include the Offers Generation 452 routine, the Offers 454 routine and the Tickets 456 routine. The Cash-In 422 program is responsible for determining when an offer to buy-out a ticket holder will be made, and the price that will be offered. Within the Cash-In 422 program, the Offers Generation 452 routine is the trading engine that, when triggered, will generate a set of offers over all of the tickets that are still potential winners and then publish the offers and receive/process the acceptance of these offers via the Merchant API 420. The Offers 454 routine stores all the offer made, accepted and declined. The Tickets 456 routine stores all the tickets for a pool and who the rightful owner is.”
FIG. 3C demonstrates a “Micro Tote 408” routine which is a program equivalent to a “Totalisator” that receives, calculates, and provides a display output for all bets made in a given progressive pool bet system. As noted in the specification (page 9 lines 11-26):
“… The Micro Tote 408 routine may thus include a Gateway 520 program, a Memory Grid 522 program, a Central Repository 524 program and an Administration 526 program. The Gateway 520 program includes a routine posting the wagering card 530, summing all of the wagering 532, providing updates 534, and calculating each potential payout 536. The Gateway 520 program also includes a routine for pooling and accumulating all of the Gateway Tickets 538, which is the master routine for each bet that has been placed and accepted in the pool.
Also within the Micro Tote 408 is a Memory Grid 522 program that includes a Pool
Collations 540 routine. The Pool Collations 540 routine calculates and continuously
recalculates the odds as each bet is placed and accepted, and as each event result occurs within the pool, so as to determine the odds with respect to each remaining active ticket
within the pool bet. The odds and all information calculated by the Pool Collations 540
routine is routed through the Tote API 410 to the Mid-Tier 402, and specifically to the Merchant API 420, Cash-in 422 and Administration 424 routines.”
The Mid Tier program of FIG. 3B also interacts with web administration functionality as per FIG. 3A. In this program a dedicated website may be presented to a player allowing them to login and place bets, or the player may interact with a merchant microsite that the player is already a customer of, which has its own established means of collecting wagers and paying bets. An “Admin Console” is also operated to manage customer details, manage customer deposits and withdrawals, and manage sales, marketing, and customer service.
In essence this functional architecture represents the various grouped functions of; managing inputs/outputs, customer data and interactions; managing logic and operation of cash-in options; and totalising odds for the betting events, in three distinct sets of programs. This functional architecture is not present in the claims.
Claim 1 as proposed to be amended on 25 March 2022 in response to the first examination report is as follows:
1. A system comprising:
a processor operatively coupled to a memory configured to store computer-readable instructions that, when executed by the processor, cause the processor to:
receive, via a communications interface, a wager on the wagering event from one or more input devices, wherein the wager is associated with a player and comprises a value associated with one or more potential outcomes of the wagering event;
continuously monitor a progress of the wagering event, wherein the progress of the wagering event comprises at least a current status;
determine that the wager has the potential to correctly select an outcome of the wagering event based on the continuously monitored progress, thereby qualifying the player to win;
generate an option for the player to one or more of fully cash out of the wager or partially cash out of the wager prior to a conclusion of the wagering event;
cause the option to be presented to the player on the one or more input devices;
receive, via the communications interface, a selection of the option from the one or more input devices; and
issue one or more of a credit, tokens, currency, coupon, voucher, credit slip, award, and funding of one or more of an electronically recordable identification card and an online account of the player.
The claimed invention is relatively straight forward to construe. To begin with, as a matter of physical architecture present in claim 1 is a central processor that executes a program and one or more input devices that communicate bidirectionally with the central processor. This is akin to that presented in FIG. 1. On this architecture is performed a method involving a series of steps designed to facilitate an early partial or full cash out of a wager.
The steps of the method begin with the receipt by the central processor of a wager on a wagering event from an input device by a player. As is normally the case, the wager comprises some kind of value (which may be a bet amount) associated with outcomes of an event. With regard to the specification’s disclosure, this may or may not involve an event with multiple legs. Following this, the wagering event is continuously monitored by the processor. There is a question as to what is precisely meant by the idea to “continuously monitor” an event and this has been neatly addressed by delegate Powell in his decision. I concur with his decision at [29] – [45] where he discusses at length the nature of this feature concluding that “continuously monitored progress”:
“…is the capturing (or input) of a result or occurrence within an overall wagering event to generate what might be termed a data point at discrete points in time, with this data point then being used to update various files to determine tickets that could still be successful in the wagering event. There is nothing more “technical” than this. I would also observe that this monitoring, to my mind, is the first step shown in figure 5 above.”
A determination occurs subsequent the “continuous monitoring” in order to work out if the player has the potential to win their wager and based on this determination, an option is generated for the player to “cash out” before the end of the event. In other words, I interpret this to mean that, in a situation such as a multi leg football bet that involves four matches, the event is continuously monitored such that if a player has won their first three legs of the four-match event, then an offer for early cash out may be generated for their consideration, before the fourth match begins. The same principle can be applied to an early cash out of a single leg event in which there are discrete points of time where information about the progress of the event can be gleaned and used to adjust betting odds.
After the generation of the offer, the offer is provided to the player on one of their input devices, and if they select the option to cash out on their input device, communication is returned to the central processor to issue an award of some kind to the player. Fundamentally the invention of claim 1 thus relates to the idea of “continuous monitoring” and early cash out. This idea is a focus of the patentee’s submissions and succinctly articulated by the patentee as a system having a specific configuration to:
“… continuously monitor progress of the wagering event to determine that the wager has the potential to correctly select an outcome of the wagering event qualifying the player to win, and generate an option for the play to fully or partially cash out of the wager prior to the conclusion of the wagering event…”
Dependent claims 2-5 add features relating to: the different financial-type options provided to the player for cash out; alternatively defined input devices such as a telephone, smart phone, or wagering terminal, and alternatively defined communication means such as cellular or wireless networks; alternative options for the different sports/non-sporting events that can be bet on and types of wagers that may be offered; and specific features relating to the amount and type of award receivable by the player. They present no issues of construction and are not the focus of any submissions of the patentee.
MANNER OF MANUFACTURE LAW
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 regarding manner of manufacture. 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”.
The High Court though was not laying down a precise formulation that can be applied unthinkingly. In D’Arcy v Myriad Genetics Inc (“Myriad”), [2015] HCA 35, at [23]:
“This Court in NRDC did not prescribe a well-defined pathway for the development of the concept of ‘manner of manufacture’ in its application to unimagined technologies with unimagined characteristics and implications. Rather, it authorised a case-by-case methodology.”
That case-by-case approach must have regard to the substance of the claimed invention, not simply the form of the claim. The point was made succinctly in the Myriad case by Gageler and Nettle JJ. At [144]:-
“Whatever words have been used, the matter must be looked at as one of substance and effect must be given to the true nature of the claim.”
Thus, the assessment as to patentable subject matter in this context requires a consideration of the substance of the invention. To further guide the determination of patentable subject matter in the context of computer implemented inventions, a range of principles have been developed. The principles of law that apply to the present matter are themselves substantially uncontroversial, noting however that on a case-by-case basis at times they can be difficult to apply. These principles were usefully summarised and generally accepted at [200] – [201] by Robertson J in Rokt Pte Ltd v Commissioner of Patents [2018] FCA 1988 (Rokt 1) at [189] as follows:
“17.1 The Court must decide, as matter of substance not form, whether the claimed invention is the proper subject-matter for a patent: RPL Central at [99]; Research Affiliates at [106], [117].
17.2       This requires consideration of both the claims of the Application and the invention described in the body of the specification: RPL Central at [114].
17.3       The assessment is not done mechanically. There are no precise guidelines or mathematical formula. It is ‘a question of understanding what has been the work of, the output of, and the result of, human ingenuity’ and then applying the developed principles: Research Affiliates at [116]. See further RPL Central at [112]:
Recognising that the claims are to a method and system comprising a combination of integers, it is necessary to understand where the inventiveness or ingenuity is said to lie ...
17.4       One well-settled principle is that a distinction exists between a technological innovation and a business innovation. A technological innovation is patentable. A business innovation is not: Research Affiliates at [94]; RPL Central at [100]. Consequently, a business method or scheme is not, per se, a proper subject for letters patent: RPL Central at [96]. Nor are abstract ideas, mere intellectual information or mere directions for use patentable: Research Affiliates at [101]; RPL Central at [100].
17.5       A computerised business method or scheme can, in some cases, be patentable. However, ‘[w]here the claimed invention is to a computerised business method, the invention must lie in that computerisation’: RPL Central at [96] (emphasis added). This requires ‘some ingenuity in the way in which the computer is used’: RPL Central at [104]. It is not a patentable invention ‘to simply “put” a business method “into” a computer to implement the business method using the computer for its well-known and understood functions’: RPL Central at [96]. In other words, if the ingenuity lies in the business method or scheme alone, the invention will not be patentable despite the computer-implementation.
17.6       Thus, 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: RPL Central at [96]. Contrary to [the applicant’s submissions at [49]], this is a binary distinction: the invention is either an unpatentable scheme or plan, or it is a patentable improvement in computer technology. In conducting the analysis, it is useful to:
17.6.1      ascertain whether the contribution to the claimed invention is technical in nature: RPL Central at [99], Research Affiliates at [114];
17.6.2      consider whether the invention solves a ‘technical’ problem within the computer or outside the computer: RPL Central at [99], Research Affiliates at [103];
17.6.3      consider whether the invention results in an improvement in the functioning of the computer, irrespective of the data being processed: RPL Central at [99], Research Affiliates at [118];
17.6.4      consider whether the invention requires merely ‘generic computer implementation’, as distinct from steps which are ‘foreign’ to the normal use of computers: RPL Central at [99], [102]; Research Affiliates at [101]; and
17.6.5      consider whether the computer is merely the intermediary, configured to carry out the method using program code for performing the method, but adding nothing to the substance of the idea: RPL Central at [99].”

The Full Federal Court decision in Commissionerof Patents v RoktPte Ltd (Rokt 2) [2020] FCAFC 86 confirmed and applied these principles. It appears a sensible approach, consistent with the above principles for considering patentability, to consider whether the invention constitutes a technical solution and/or solves a technical problem.
This approach remains relevant in view of subsequent decisions. In Commissioner of Patents v Aristocrat Technologies Pty Limited (Aristocrat ’21) [2021] FCAFC 202, it was found that a game implemented on an electronic gaming machine was not patentable. After first identifying the claimed invention as involving a mere game which was unpatentable, the Full Court asked whether the claimed invention was a computer-implemented invention before determining that for the claims to be patentable, there needed to be “an advance in computer technology”.
On appeal to the High Court, in Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents (Aristocrat ’22) [2022] HCA 29 the Court was evenly split, and via section 23(2)(a) of the Judiciary Act1903 affirmed the Aristocrat ’21 decision, while appearing to confirm that an advance in computer technology is not a useful test for patentability. Additionally, the High Court confirmed the decisions of the Full Federal Court in RPL Central, Research Affiliates, Encompass Corporation Pty Ltd v InfoTrack Pty Ltd [2019] FCAFC 161, and Rokt 2 were correct. The High Court at [77] also discussed the idea that an “adaptation or alteration of, or an addition to, technology otherwise well-known in the common general knowledge to accommodate the exigencies of a new idea or plan or game” would give rise to patentable subject matter. Such an idea appears consistent with the principles articulated in Rokt 1 which seeks patentability in the form of something, for example, more than merely generic computer implementation; generally being steps which are foreign to the normal use of computers and where the computer is more than merely the intermediary, adding substance to the idea.
EXAMINER’S OBJECTION
In the second examination report, the examiner included the following as the primary basis of their objection:
“The applicant argues that the claimed invention has a technical contribution in the addressing ‘how to configure a system controller for conducting wagering events to provide a participant in the wager event with greater flexibility and control in managing their wager’ which is down [sic] by continuous monitoring of the wagering event and allowing for the player to cashout or transfer their stakes.
The applicant argues that based on Aristocrat Technologies Australia Pty Limited v Commissioner of Patents [2020] FCA 778 and the decision of Nicholas J, that a computer implemented scheme such as that for running a refrigerator in a more energy efficient way can be patentable even if the computer that controls the algorithm is operating in a standard way and there is no technical contribution in how the computer operates. The applicant argues that improving the flexibility, functionality and control in the way bets are placed in the game is analogous to the comments of Nicholas J in Aristocrat.
The examiner does not accept this analogy. In the analogy, there is an improvement in the refrigerator, which reduces energy wastage, which is a physical and technical effect in the refrigerator even if the computer implements the steps using standard computer functionality. In the present case, the computer is being used in a standard way to monitor the game, and the effect is that there is more flexibility in the financial and gambling options in the game. Increasing the flexibility in the financial options in the game is not physical or technical effect and is in no way analogous to a machine being used in a way that is more energy efficient.”
PATENTEE’S SUBMISSIONS
I summarise the patentee’s submissions as follows:
·Firstly, the patentee points to the nature of common general knowledge noting that the character of the invention cannot be determined without an understanding of the common general knowledge. They concede that the common general knowledge includes a system comprising a processor coupled with a memory storing program instructions and interfacing of such a processor with one or more input devices via a communications interface.
·The patentee points to various parts of the specification to suggest that specific implementation details of the functional architecture of the program that controls the system operation are provided. In particular they refer to a “Mid Tier” program 402 in FIG. 3 which interacts with customer, administrator and account programs via an API and which includes a Merchant API program, Cash-in program and Administration program.
·The patentee submits that:
o“The continuous monitoring together with the ability to generate cash out option(s) during live play (while the event is occurring) that track the event progress and where bids are time sensitive, requires a specifically configured computer having the ability to perform these time-sensitive operations (in real time/near real-time) - without adversely impacting the in-progress (live) event… Accordingly, the claimed invention provides an improved system that facilitates or allows for changes in wagers to be made during the actual wagering event.” (patentee’s emphasis)
o“…as is clear from the innovation patent, and in particular Fig. 3 and the associated description, the specification provides specific implementation details of how the system, or more particularly the functional architecture of the program that controls the operation of the system, is configured to achieve this technical benefit. Accordingly, on the face of the specification, the claimed invention is not a generic implementation of an otherwise unpatentable idea, and does indeed lie in the way the system is specifically programmed.”
o“…the examiner appears to have assumed that the manner in which the game is monitored is standard, but has provided no evidence that this was the case at the priority date.”
o“…the invention is properly characterised as an improved wagering apparatus that facilitates or allows for changes in wagers during the actual wagering event.”
o“The specific configuration of the system to continuously monitor progress of the wagering event to determine that the wager has the potential to correctly select an outcome of the wagering event qualifying the player to win, and generate an option for the player to fully or partially cash out of the wager prior to the conclusion of the wagering event provides the technical contribution that allows this technical or artificial effect to be achieved.”
·With reference to the decision of the High Court in Aristocrat ’22 the patentee argues:
o“…the claimed invention involves “an adaption or alteration of, or an addition to, apparatus well known in the common general knowledge” in the form of configuring the system to continuously monitor progress of the wagering event to determine that the wager has the potential to correctly select an outcome of the wagering event qualifying the player to win, and generate an option for the player to fully or partially cash out of the wager prior to the conclusion of the wagering event.”
o“The claimed invention produces an artificial state of affairs and a useful result in that it provides for multiple types of changes in wagers to be facilitated during the actual wagering event…”
CONSIDERATION
Generally speaking, the invention relates to a betting method that is computer implemented. The patentee concedes that the character of the invention is identifiable through an understanding of the common general knowledge. They concede that the common knowledge includes a system comprising a processor coupled with a memory storing program instructions and interfacing of such a processor with one or more input devices via communications. This is the extent of the physical technological architecture present in the claims. This physical technological architecture is used to implement the betting method that most importantly, involves “continuous” monitoring and cash out options.
It is plainly apparent that the invention is not directed to some specifically characterised mechanical or physical object that can be considered patentable absent consideration of the touchstones I have outlined above as summarised in the Rokt 1 decision. Thus, I will proceed to address the patentee’s key submissions under headings representing the relevant touchstones of the precedential Federal Court decisions.
Does the invention solve a technical problem within the computer or outside the computer or provide a technical effect/benefit?
The patentee argues that the system the subject of the claimed invention is specifically configured “to continuously monitor the progress of a wagering event to determine that the wager has the potential to correctly select an outcome of the wagering event qualifying the player to win, and generate an option for the player to fully or partially cash out of the wager prior to the conclusion of the wagering event” and that this “provides the technical contribution that allows this technical or artificial effect to be achieved”.
Put most bluntly, there is simply no specific configuration whatsoever in the claimed invention. The extent of the configuration of the claimed system is merely that a computer system is arranged to process, receive, monitor, determine, generate, present and issue certain information. There is clearly no limitation of a computer system that is overcome by the functioning of the computer in the claimed invention. These functions are all generically described computer operations that are merely present to perform the relevant method step of the claim – no specific configuration exists here. The problem that is overcome by the present invention is touched upon in the specification as being a market gap for the creation of a unique betting product and more specifically (page 2 lines 3-9):
“Within this market segment, there is a need for new products to generate and maintain interest. The present disclosure is directed to a new betting product developed initially to apply to the most globally bet upon sport in the world, football/soccer and specifically United Kingdom premiership football/soccer. The concept, however, has more widespread applications and potential appeal, and thus it may be applied to other types of sporting events as well as being expanded to lotteries, and other multi-leg/multi-events/multi-outcome or divisible games.”
In not solving any technical problem inside a computer the claimed invention must be seen in substance as providing for a betting product that operates in a market gap to appeal to player interest. This is achieved fundamentally by monitoring a betting event at defined time intervals such that an improved product can be offered to a punter in the form of a cash out option. At this level, the invention does not address any issue of technicality that exists outside a computer but instead addresses an issue of improved business and betting operations. As a matter of substance, the invention clearly addresses a business, and not a technical problem.
It is plain that the claimed invention as a matter of form contemplates steps that involve a computer device and some form of technical function and even technical effects relating to processing, presenting, and receiving information. It is also true that the claim produces something that is strictly “artificial”. However, the same can be said of each of the inventions in Research Affiliates, RPL Central, Encompass and Rokt 2. In those cases, as in here, technical workings only manifest materially in the form of the claims, and not in substance. The ingenuity of the claimed invention lies, consistent with the submissions of the patentee, in monitoring a wagering event at discrete points in time in order to facilitate a cash out option.
Moving beyond the claimed invention to the specification I accept that the patentee’s submissions as to the specific system configuration conferring patentability may be a reference to the functional system architecture that is depicted and described in relation to FIGs 3A – 3C. The issue with this submission is that the description does not provide any technical detail as to how the computer system is to function in the context of this “architecture”. Instead, the relevant parts of the description merely describe the existence of schematically presented computer programs that may be designed for a certain function to somehow interact with other computer programs. The claimed and described invention thus suffers from the same problems as those in Encompass where at [101] the Full Court said:
“As the oral argument developed during the appeal, the appellants submitted that the claimed method is, itself, a high-level description of a computer program. We do not accept this characterisation. If approached from this point of view, the method is really an idea for a computer program, it being left (as we have said) to the user to carry out that idea in an electronic processing device. Indeed, the method, as claimed, is no different in principle to the methods claimed in Research Affiliates and RPL Central. Patentable subject matter is not provided simply because the method is a ‘method … in an electronic processing device’, which itself is not characterised. To find otherwise would be to elevate form over substance.”
The information of FIGs 3A – 3C is nothing more than an idea for a computer program, or, more precisely, an idea for a number of computer programs performing certain functions. No specific characterisation of an electronic device occurs in the claims or body of the specification, and no characterised computer program operation is described. As above, there are necessarily technical elements present in the performing of the functions defined in these figures in practice, however those elements do not contribute to the substance of the invention to themselves confer patentability. In other words, it is possible to characterise the substance of the invention as being an uncharacterised computer to implement an idea for offering cash out mechanisms to punters while “continuously” monitoring the progress of a wagering event. I consider it clear that the invention solves a business problem and does not lie in any improved technical or material effect as required by the High Court in the NRDC decision. The effect of the invention is in essence, simply the provision of a new betting option.
Does the invention improve the functioning of a computer, irrespective of the data being processed?
The patentee argues that:
“The continuous monitoring together with the ability to generate cash out option(s) during live play (while the event is occurring) that track the event progress and where bids are time sensitive, requires a specifically configured computer having the ability to perform these time-sensitive operations (in real time/near real-time) - without adversely impacting the in-progress (live) event… Accordingly, the claimed invention provides an improved system that facilitates or allows for changes in wagers to be made during the actual wagering event”
“…the invention is properly characterised as an improved wagering apparatus that facilitates or allows for changes in wagers during the actual wagering event.”
These submissions are largely addressed by my analysis above; however, it is useful to delve further into the patentee’s arguments in relation to the idea of continuous monitoring during play and for the cashing out during an event.
Firstly, as noted earlier, continuous monitoring is not reasonably understood to be some kind of infinitesimally precise and ongoing monitoring of a betting event. Instead, I understand the term to describe the idea of the capturing (or input) of a result or occurrence within an overall wagering event to generate what might be termed a data point at discrete points in time during an event. This might be results of individual football matches in a four-leg betting event or might even be discrete points in time or moments in a single match that could have an identifiable impact on the end result of a bet. To give a meaning to the term that involves some kind of physical system improvement to the computer driven task of monitoring would be to add content to the specification that is simply not present. The described invention does not concern itself with how continuous monitoring is done in any technical or physical sense. Instead, the ways and means of physically obtaining the inputs required for continuous monitoring are left completely to the skilled addressee to identify and implement. It is thus clear that the computer technology described for performing continuous monitoring is not described to any degree that could lead to the conclusion there is an improvement therein. In other words, the described system or apparatus can only be considered improved by reference to the nature of the data that it is processing and when it is doing so, and not by any improvement to technical functionality. The same can be said of the idea of cashing out during live play.
In making their case, the patentee made a similar argument with reference to the decision of the delegate in Aristocrat Technologies Australia Pty Limited [2016] APO 49. The patentee submitted that the present invention similarly provides for an improvement in the functioning of the computer that is agnostic to the data being processed. In that case, delegate Barker found a claimed invention that was for an improved interface that presents an option for selecting both a game and denominations from respective pluralities with one action by a player.
The present application is plainly distinguishable from the improved interface identified by delegate Barker. In the present invention there is simply no characterisation of an improved interface which relates to the manner in which information is presented and used to provide physical functionality in an interface. The present invention merely presents information to a user which they may select in order to facilitate a cashing out of a bet. The present invention thus simply takes advantage of the normal function of computer technology to provide options for selection and to facilitate selection. The invention is characterised by what is presented for selection to a user and when, and not how the information is generated or is used to provide improved device operation.
Does the invention require merely ‘generic computer implementation’, as distinct from steps which are ‘foreign’ to the normal use of computers; is the computer merely the intermediary adding nothing of substance to the idea?
The patentee argues that on the face of the specification, particularly referring to FIG. 3, that implementation details are provided, and that the invention is not generic, but instead lies in the way the system is programmed. In a similar vein they suggest that present in the present invention is the type of adaptation or alteration to a common computing device that finds favour in Aristocrat ’22.
Again, I turn to FIGs 3A – 3C and reiterate that I simply cannot see a basis for the patentee’s assertion. These figures are nothing more than high level schematic diagrams that include blocks and sections representing discrete operational aspects as necessary pieces of the puzzle to implementing a method that involves “continuous” monitoring and offering and providing a full or partial cash out of a wager. There is nothing in any of these figures that corresponds to a detail of how a physical system is actually programmed or performs a particular task. The diagrams simply compartmentalise certain activities and leave it to the skilled addressee to completely determine implementation details. The programming of the schematic ideas represented in the figures can clearly occur in generically defined computer devices depicted for example in FIG. 1. Moreover, the specification admits that the mere program/process steps of FIGs 3A – 3C can simply be implemented on a system as per FIG. 1:
“The central server system 12 of FIGS. 1 and 2 will preferably include software programs for wagering software functionality such as registration, deposit taking, withdrawals, account selections that may include current and previous bet histories, figures, results, historical data, rules, and regulations. These types of software programs having these functionalities are in place in various totalizer facilities and are thus known in the art. However, FIG. 3 is provided to further illustrate process steps of the program and operation of the central server system 12 associate with the pool wagering system contemplated by the present invention.”

It follows that the implementation of the method of continuous monitoring and cash out is generically implemented or, in other words, merely automated in a computer. There is no “foreignness” to the computerisation; the computer system of FIG. 1 is merely the intermediary or “substrate” upon which the method is performed.
The patentee also suggests that the examiner appears to have assumed that the manner in which the game is monitored is standard but has provided no evidence that this was the case at the priority date. While the logic addressing this submission has already been provided above, I add that the specification itself suggests generic implementation of the betting method. The patentee admits that the physical architecture represented by FIG. 1 is common general knowledge and no submission supports the idea that there has been a modification or adaptation to the computer technology in order to implement the betting method. As above, FIGs 3A – 3C only represent an idea for a program. They do not characterise how a computer is to perform certain tasks, but merely provide an idea of what tasks need to be performed and how one might group these tasks. This leaves implementation to the skilled addressee, adding nothing of substance to the idea of continuously monitoring a betting event to provide an early cash out option.
Ultimately, I have no doubt that the invention is commercially useful, and I admit that I myself have dabbled in early cash out in multileg bets. However, the effect of the invention lies clearly in the realm of business innovation, with the process of continuously monitoring a wagering event to provide an improved cash out option not producing a material advantage. Instead, the advantage lies in player enjoyment and the financial result of a bet. The invention does not address any technical issues and is merely the implementation of an otherwise unpatentable business method in well-known computer technology. Claim 1 is not for a manner of manufacture.
CONCLUSION
I agree with the examiner. Claim 1 is not for a manner of manufacture. The dependent claims clearly add nothing more than business details or aspects of mere computer implementation as the intermediary to the invention. Given the level of disclosure in the specification, I cannot see what could be added to the claims that would avoid this finding. In these circumstances, there is no utility in continuing examination. I also echo the observations of delegate Powell in his decision at [88] in the related case where he noted:
“…if it were the case that, to provide the server with the capability of continuously monitoring any wagering event (even those that did not have any natural breaks during the course of the event), something other than the programming that was within the skill of persons in the art, then the specification is likely to be deficient under section 40(2)(a) of the Act. As I noted above, there is very little in the way of technical detail beyond mentions of elements in very broad terms and exemplified by entirely generic examples of that element. Most of the specification is taken up with a discussion on the rules, types of game, wagering process, game progress and pay-out arrangement of the scheme, with very little discussion of the actual programming involved. If this programming is not within the ordinary skill of the art, then it must be disclosed to the extent that the person skilled in the art could perform the invention. No disclosure would mean that the specification did not contain a clear enough and complete enough disclosure for the invention to be performed by a person skilled in the art, and this level of disclosure is required by section 40(2)(a).”
Consequently, it is appropriate that I revoke the patent.
Dr N. R. Madsen
Deputy Commissioner of Patents