IGT v Aristocrat Technologies Australia Pty Ltd

[2009] APO 23

ABSTRACTS OF DECISIONS

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Application  :          No. 754689 in the name of Aristocrat Technologies Australia Pty Ltd

Title:          Slot Machine Game and System with Improved Jackpot Feature

Action:          Opposition by IGT under s.59 of the Act

Decision:          Issued 16 November 2009

Abstract

The opposition fails.

The claims are clear when read in light of the specification to explain the background to the claims, to ascertain the meaning of technical terms and to resolve ambiguities in the construction of the claims.  The claims are also fairly based and the specification meets the requirements of Section 40(2)(a) and (b).

The claims are novel.  In particular there is no disclosure of an event having a probability that is related to the desired average turnover.

The claims have an inventive step.  The evidence filed does not establish that all the features of the claims were common general knowledge at the priority date.  Alternatively, if it is accepted that all the individual elements of the claims were common general knowledge, the evidence does not establish that the person skilled in the art would, as a matter of routine, have selected the particular features claimed and combined them in the same way.  Additionally the evidence does not establish that the person skilled in the art would have been motivated in some way to alter the respective features in these documents, including the addition of common general knowledge, so that they matched what was claimed.

The claims are clearly directed to a manner of manufacture.

Costs awarded against the opponent.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application No. 754689 by Aristocrat Technologies Australia Pty Ltd and an Opposition by IGT under s.59 of the Act

BACKGROUND

1. Patent application 754689 in the name of Aristocrat Technologies Australia Pty Ltd (“Aristocrat”) was advertised accepted on 21 November 2002.  Acres Gaming, Inc filed a notice of opposition on 21 February 2003.  Following company mergers, the opponent subsequently became IGT.  The evidence in support of the opposition was completed on 2 March 2005.  On 4 December 2006, Aristocrat informed the Commissioner that they would not be filing any evidence in answer.  The matter was originally set for hearing on 7 March 2007 but was deferred.

2. On 13 April 2007 IGT filed a request to lodge further evidence.  This request was accompanied by the declaration in support of the application and a second declaration which constituted part of the further evidence.  Aristocrat requested to be heard on the request to file further evidence and a hearing was set down for 27 June 2007.

3. On 26 June 2007, IGT filed a request for the Commissioner to issue a Notice requiring production of documents (“the Notice”).  The Notice would require Aristocrat to produce all documents in the possession of Aristocrat relating to correspondence between Aristocrat, the Queensland Office of Gaming Regulation (“QOGR”) and the Queensland Treasury Office of Gaming Regulation (“QTOGR”) in respect of gaming machine compliance with the QTOGT Local Area Gaming Machine Communications Protocol Version 1.2 (“QCOM”).  Section 17 of this document is entitled Down-Loaded System Awards (“DLSA”) and was of particular interest to IGT.  It should be noted that a copy of QCOM was in the further evidence filed by IGT on 13 April 2007.

4. On 9 August 2007, the Commissioner issued a decision refusing IGT’s request for further evidence (Aristocrat Technologies Australia Pty Ltd v IGT [2007] APO 26). That decision concluded that the further evidence was unlikely to add significantly to IGT's case in the opposition. In the circumstances, the Commissioner concluded that extra material arising from the Notice would not add anything further to the opposition and declined to issue the Notice.

5. This decision was appealed by IGT to the Federal Court.  Aristocrat agreed to make joint submissions with IGT at the appeal based on an agreement that:

   (i)allowed IGT to file further evidence by 29 February 2008;

   (ii)imposed a condition that IGT ask for no more extensions of time to file further evidence;

   (iii)allowed Aristocrat the opportunity to file evidence in response to the further evidence; and

   (iv)required IGT to pay $30,000 to Aristocrat.

6. On 17 January 2008 consent orders were issued by the Federal Court setting aside the decision and remitting the matter back to the Commissioner (IGT v Commissioner of Patents [2008] FCA 15). The reason for setting aside the decision was that:

   “that the delegate … could be taken to have elevated the significance of the evidence to a determinative factor effectively excluding consideration of other matters. I emphasise that I do not find that this was the legal effect of the delegate’s remark.  However, the possibility of error which [IGT and Aristocrat] have accepted, is sufficient to support the consent order which is now sought”.

7. In light of that decision, the Commissioner issued the Notice and required Aristocrat to produce the various documents by 29 February 2008.  The Commissioner also granted leave for IGT to file further evidence.

8. On 8 March 2008, the Commissioner, at the request of IGT, issued a summons on Mr Robert Larkin, an employee of QOGR, to provide a statutory declaration.  To reduce confusion, the Commissioner directed that the further evidence, including the declaration by Mr Larkin, was to be filed by IGT on 31 March 2008.  While this time limit was outside the agreement reached between the parties, it was pointed out to both sides that the Commissioner was not a party to that agreement and was not bound by it.  In any event, further evidence was completed by IGT on 31 March 2008.

9. The Commissioner also extended the time for Aristocrat to comply with the Notice.  They were given until 11 April 2008 to either comply with the Notice or request to be heard on the matter of lawful excuse.  On 11 April 2008 Aristocrat requested a hearing and a hearing was scheduled for 1 July 2008.  Notwithstanding their request to be heard, on 24 June 2008 Aristocrat produced documents in compliance with the Notice.  As a consequence the hearing was cancelled.

10. After a number of extensions, Aristocrat completed evidence in response to IGT’s further evidence on 3 November 2008.

11. The matter was set for hearing on 26 and 27 August 2009 in Sydney.  Shortly before the hearing date IGT requested leave to file further evidence.  Leave was granted (based upon the wording of an agreement made between the parties) and the evidence was supplied on 12 August 2009.  On 4 September 2009 (following the hearing), Aristocrat indicated that it would not be filing any evidence in response.  Additionally, on 4 September 2009, in line with discussions during the hearing, IGT filed an amended Statement of Grounds and Particulars which consolidated and restricted the documents to those that were ultimately relied upon by IGT at the hearing.  The amendment to the Statement of Grounds and Particulars was allowed on 9 October 2009.

12. At the hearing on 26 and 27 August 2009 in Sydney, Aristocrat was represented by Steven Burley of counsel, assisted by Andrew Fox of counsel as well as John Dower and Carl Harrap, both patent attorneys of Freehills Patent and Trade Mark Attorneys.  IGT was represented by Richard McCormack of counsel assisted by Stephen Krouzecky and Simon Murphy, both patent attorneys of Hodgkinson McInnes Patents.  Ms Lynne Oldfield and Mr Kieran Power of Aristocrat also attended as observers on 26 August.

    GROUNDS OF OPPOSITION

13. The grounds for opposition alleged by IGT are that the claimed invention was not a manner of manufacture, lacked novelty and inventiveness, and did not satisfy section 40(2) or (3) of the Act.

    THE SPECIFICATION

14. The present invention primarily relates to an improved jackpot mechanism for a system of linked gaming machines (often called “poker machines”).

15. In prior art gaming machine systems several jackpot schemes existed to induce players to play gaming machines.  One scheme involved incrementing a bonus prize value jackpot based on the amount of money being bet on a number of linked gaming machines.  Once the prize value reached a randomly selected value, the prize was awarded to, for example, the first machine where a game was played after the value was reached.  Another scheme involved a random number being selected each time a game was played and being compared to another preselected random number.  If the numbers matched, a bonus prize was awarded.  Yet another scheme involved a number of games being randomly selected, and counting down to zero every time a game was played on the linked gaming machines.  The machine which caused the count to go to zero won the bonus.

16. The prior art schemes had the disadvantage that a player betting a single token per game was just as likely to receive the bonus as a player who bet multiple tokens per game.  Moreover, a $10,000 prize for betting one token provided a much better return per token than a $10,000 prize won after betting 5 tokens (which effectively provided a $2,000 per token return).  As such, there was no incentive to bet multiple tokens per game.

17. The specification also indicates that there are other inherent limitations to jackpot games.  For example, games in which a specific combination of symbols is needed to win the major jackpot are perceived as being unwinnable.  The reason is due to the fact that the major jackpot is usually not awarded until a large amount has been accumulated.  Since this takes time, the jackpot is not seen to be won by most players.  It is also difficult to design games that satisfy the demand from players for a more complex game range.  In addition, the fixed hit rates for the combination that triggers the awarding of the jackpot removes the ability to vary jackpot frequency from the operator’s control.

18. In seeking to overcome these disadvantages, the present application proposes a system in which the normal prizes are awarded in the standard fashion of gaming machines and that there is the possibility of a trigger condition occurring which initiates an award of a “feature outcome”.  In a preferred embodiment, the “feature outcome” is another game different to the “base game” of the gaming machine.  The player has the opportunity to win the other game and be awarded a jackpot, for example.

19. Page 4 of the specification states that:

    “in a preferred embodiment of the invention, the trigger condition is determined by selecting a random number from a predetermined range of numbers to be associated with each bought game, and for each credit bet on the respective game, allotting to the game one or more numbers from the predetermined range of numbers, and in the event that one of the numbers allotted to the player matches the randomly selected number, indicating that the trigger condition has occurred.”

20. That is, the more credits bet per game, the more likely it is that the player will match the number and initiate the “feature outcome”.  This creates an incentive for the player to bet more credits per game.

21. The “predetermined range” of numbers is determined as a function of the desired average turnover (i.e. the average amount of money wagered on the machine) between consecutive occurrences of the trigger condition.  In the preferred embodiment, the range is calculated by dividing the desired average turnover by the credit value for the machine.  For example, if it was desired that, on average, the amount of money wagered between trigger conditions should be $5000 and the machine was one where each credit costs 5¢, the predetermined number range would be from 1 to 100,000 (i.e. $5000/5¢).

22. When the player plays a game, for each credit that they bet on that game the player is allocated one number from the predetermined range.  For example, where the range is 1 to 100,000, if the player bets five credits, the player could be given numbers 1 to 5 from the range.  A random number between 1 and 100,000 is generated and compared with the numbers allocated to the player.  If the random number was any one of 1, 2, 3, 4 or 5, the trigger condition would exist and the feature outcome would be initiated.  In other words, the player would have a 1 in 20,000 chance of generating the trigger condition.  Likewise, a player betting 20 credits in the game could be allocated numbers 1 to 20 and have a 1 in 5000 chance of generating the trigger condition.  A player betting one credit would have a 1 in 100,000 chance.

23. The specification ends with 69 claims, with four independent claims.  The independent claims are as follows:

    1.A random prize awarding feature to selectively provide a feature outcome on a gaming console, the console being arranged to offer a feature outcome when a game has achieved a trigger condition, the console including trigger means arranged to test for the trigger condition and to initiate the feature outcome when the trigger condition occurs, the trigger condition being determined by an event having a probability related to desired average turnover between successive occurrences of the trigger conditions on the console.

    25.A gaming console including a prize awarding feature to produce a feature outcome, the console being arranged to offer the feature outcome when a game has achieved a trigger condition and including trigger means arranged to test for the trigger condition and to initiate the feature outcome when the trigger condition occurs, the trigger condition being determined by an event having a probability related to desired average turnover between successive occurrences of the trigger conditions on the console.

    43.A method of awarding a prize on a gaming console, the console being arranged to offer a feature outcome when the game has achieved a trigger condition, the method including testing for the trigger condition and when the trigger condition occurs offering the feature outcome, the trigger condition being determined by an event having a probability related to desired average turnover between successive occurrences of the trigger condition on the respective console.

    65.A prize awarding feature to selectively provide a feature outcome on one or more gaming consoles associated with a gaming system, wherein the gaming system comprises a gaming network to which are connected each of the gaming consoles and a central feature jackpot system which provides a prize to be awarded, each of the consoles being arranged to offer a feature outcome when a game played on the respective console has achieved a trigger condition, each console including trigger means arranged to test for the trigger condition and to initiate the feature outcome when the trigger condition occurs, the trigger condition being determined by an event having a probability related to desired average turnover between successive occurrences of the trigger conditions on the respective console, and the feature outcome awarding a prize from the central feature system.

    EVIDENCE

24. The evidence in support consists of the following statutory declarations and accompanying exhibits:

    • A declaration by Lloyd John Boris Golja, patent attorney with Wray and Associates (as it was then), with exhibits LJBG 1 to LJBG 18 dated 21 May 2004 (“Golja #1”)
    • A declaration by Lloyd John Boris Golja, patent attorney with Wray and Associates (as it was then), with exhibits LJBG 1 to LJBG 10 dated 20 January 2005 (“Golja #2”)
    • A declaration by Phillip Charles Dimond, consultant with IGT Advantage Systems, dated 24 January 2005 (“Dimond #1”)
    • A declaration by Phillip Charles Dimond, consultant with IGT Advantage Systems, dated 2 March 2005 (“Dimond #2”)

25. As noted above no evidence in answer and, therefore, no evidence in reply was filed.

26. The first lot of further evidence consists of the following statutory declarations and accompanying exhibits:

    • A declaration by Keiran Daley, retired gaming machine designer, with exhibits KD–1 to KD–14 dated 29 February 2008 (“Daley #1”)
    • A declaration by Keiran Daley, retired gaming machine designer, with exhibits KD–1' to KD–4' dated 29 February 2008 (“Daley #2”)
    • A declaration by Neil Phillip Spencer, Managing Director of Aerosystems Developments Pty Ltd (trading as Gaming Consultants International), with exhibits NPS–1 to NPS–6 dated 29 February 2008
    • A declaration by Stephen George Krouzecky, patent attorney currently with Hodgkinson McInnes Patents (but with Wrays when the declaration was made), with exhibits SGK–1 to SGK–6 dated 29 February 2008 (Krouzecky #1)
    • A declaration by Stephen George Krouzecky, patent attorney currently with Hodgkinson McInnes Patents (but with Wrays when the declaration was made), with exhibits SGK–1 to SGK–6 dated 29 February 2008 (Krouzecky #2)

27. In addition to this further evidence, in response to a summons to provide a statutory declaration, the Commissioner was supplied with:

    • A declaration by Robert Larkin, Principal Technical Officer in the Gaming Services Branch of the Queensland Office of Gaming Regulation, dated 31 March 2008

28. The evidence in reply to the further evidence and Mr Larkin’s declaration consists of the following statutory declarations and accompanying exhibits:

    • A declaration by Lynne Oldfield, employee of Aristocrat Technologies Australia Pty Ltd in the Intellectual Property Management section, with exhibits LO1 to LO12 dated 2 September 2008
    • A declaration by Edward William Culley, previous Managing Director of Bally Gaming Australia, with exhibits TC1 to TC13 dated 29 October 2008
    • A declaration by Carl Harrap, patent attorney with Freehills Patent and Trade Mark Attorneys, with exhibits CH1 to CH11 dated 3 November 2008

29. The second lot of further evidence consists of the following statutory declarations and accompanying exhibits:

    • A declaration by Phillip Charles Dimond, consultant with IGT Advantage Systems, with exhibits PD–1 to PD–3 dated 12 August 2009 (“Dimond #3”)
    • A declaration by Phillip Charles Dimond, consultant with IGT Advantage Systems, with exhibits PD–1 to PD–3 dated 12 August 2009 (“Dimond #4”)
    • A declaration by Simon John Murphy, patent attorney with Hodgkinson McInnes Patents, with exhibit SJM–1 dated 12 August 2009
    • A declaration by Keiran Daley, retired gaming machine designer, with exhibits KD–1 to KD–20 dated 12 August 2009 (“Daley #3”)

30. As noted above, no evidence in response to this further evidence was filed

    DECISION

    Section 40

    Clarity

31. IGT submitted that several terms of the claims lacked clarity.

32. As noted by IGT, Sheppard J summarised the rules of construction for a patent specification in Décor Corp v Dart Industries 13 IPR 385 at 400. This summary has been referred to in numerous subsequent judgements, and was endorsed by the Full Federal Court in Pfizer Overseas Pharmaceuticals v Eli Lilly [2005] FCAFC 224.

33. It is a recognised tenet of Australian patent law that each claim must be read as part of the entire specification (Electrical and Musical Industries Ltd v Lissen Ltd 56 RPC 23 at 39), and thus the meaning of the words used in a claim may be affected by what is said in the body of the specification (Rosedale Associated Manufacturers Ltd v Carlton Tyre Saving Co Ltd [1960] RPC 59 at 69). While noting that it is not legitimate to narrow or expand the boundaries of monopoly as fixed by the words of a claim, by adding to those words glosses drawn from other parts of the specification (Welch Perrin & Co Pty Ltd v Worrel (1961) 106 CLR 588 and Decor Corporation Pty Ltd v Dart Industries Inc (supra)), it is legitimate to refer to the rest of the specification to explain the background to the claims, to ascertain the meaning of technical terms and resolve ambiguities in the construction of the claims (see Interlego AG v Toltoys Pty Ltd (1973) 130 CLR 461 at 476).

34. In applying these tenets, it is clear that any clarity issues raised by IGT are resolved.  However, I now discuss three of the clarity issues because they are important in my conclusions later in this decision.

    “Feature” (when used as a noun)

1. IGT noted that while claim 1 purported to define a “random prize awarding feature to selectively provide a feature outcome on a gaming console”, the claim did not actually define any integers of the feature.  Instead, it defined features of the console itself.

2. From the evidence, it would appear that, in the gaming machine art, the word “feature” has a specific meaning.  It is a secondary or “bonus” occurrence that occurs from time to time while playing on the gaming machine.  For example, it might be a secondary game that is triggered when certain conditions are met while playing the machine’s primary game.

3. Typically, a feature has a “feature outcome”.  For example, if the feature was a secondary game, then the feature outcome would be the outcome of the secondary game.  In the present claims though, the feature outcome is always provided by the console.  If “feature” is given the meaning that is normally ascribed in the art, then it seems unclear how it is the console and not the feature that provides the feature outcome.  However, as noted above, where ambiguity exists then it is legitimate to refer to the rest of the specification to resolve the issue.

4. Turning to the specification I note that it says:

   “the console is arranged to play a first main game and the feature outcome initiated by the trigger condition is a second feature game” (page 4 lines 18–20)

5. I also note claim 3 which says:

   “The prize awarding feature of claim 1 or 2 wherein the console is arranged to play a main game, during which testing for the trigger condition will occur, and the feature outcome initiated by the trigger condition is the awarding of one or more feature games”

   and claim 65 (see above) where, in both claims, the “feature outcome” is clearly indicated to be a secondary game of some sort which awards a prize– i.e. “feature outcome” in the specification is what is normally considered to be a “feature’ in the art.  Consequently, it cannot be the case that in the present specification, “feature” has the same meaning as it does in the art in general.

6. Moreover, in describing the invention, there is little mention of “feature” on its own.  Often the term is used in describing “feature jackpot game” or the like.  That is, it is used as an adjective.  Clearly, it is not used as an adjective in claim 1.  What does “feature” mean?

7. While prima facie there seems to be an ambiguity with this term, I believe that a meaning can be given to it.  In my opinion, it seems quite clear that the term “feature”, when used as a noun in the claims, has a similar meaning to the term “system”.  No other meaning makes sense.  The claims would be internally inconsistent otherwise.  It may be the case that it would have been better had the draftsman used “system” instead of “feature” when writing the claims, but this does not get in the way of understanding the claims.

8. Purely for completeness, I note that my “meaning” does not seem to match any of the meanings presented by Mr Daley in paragraph 4(b) of his third declaration (Daley #3).  However, the construction of a specification is ultimately the responsibility of the Commissioner's delegate hearing the matter.  It is a matter of law and any opinion in that regard given in the evidence is not binding on the hearing officer.  It is ultimately up to the Commissioner to construe the specification.

   “Feature Outcome”

9. Taking a plain meaning of this term as it is used in claim 1, for example, it would appear that the awarding of a bonus jackpot (as often happens with networked gaming machines) would fall within the scope of triggering a “feature outcome”.  That is, the prize awarded is a “feature outcome”.  This meaning is also consistent with the meaning given in the art.

10. However, as has been noted above, claim 3 defines the feature outcome as being a second game that can be played.  It may be a simpler game than the primary game of the gaming machine and has a prize associated with it that has nothing to do with the prizes offered by the primary game.  Also as noted above, claim 65 makes it clear that it is the “feature outcome” which awards a prize – it is not the prize itself.  It is also the case throughout the specification, that the outcome of the “feature outcome” may be a prize.  Therefore, to give these words their plain meaning (or even an industry meaning) would create a situation where the claims would be seen as defining that the prize awards a prize.  Such an absurd result must mean that the plain or industry meaning should not be used.

11. While taking particular note of the discussion of “feature outcome” in the section above, it is quite clear from the specification as a whole that “feature outcome” is an element separate to the game of the console (i.e. the primary game) which may award a further prize.  For the avoidance of doubt I emphasise that the “feature outcome” cannot be the prize itself.

    “Related to”

12. The claims define that the probability of the trigger event occurring (which trigger event initiates the “feature outcome”) is “related to desired average turnover between successive occurrences of the trigger condition”.

13. The probability of something occurring is usually given in the terms of “X chances in Y”.  As noted in paragraphs 21 to 22 above, in the preferred embodiments of the specification, “X” is equal to the number of credits bet, while “Y” is calculated by dividing the amount of desired average turnover between successive occurrences of the trigger condition by the amount it costs to bet one credit.

14. Clearly “related to” in the claims does not mean “directly related to”.  Rather, in setting out the probability of an event occurring as saying that there is an X chance in Y of this happening (as it must be done), the calculation in getting a value for “X” or “Y” must involve the desired average turnover.

    Fair Basis

15. IGT submitted that most, if not all, of the claims lacked fair basis.

16. Under Section 40(3), fair basis is “concerned purely with the relationship between the body and claims of the one specification.” (Lockwood Security v Doric Products [2004] HCA 58; 217 CLR 274; 212 ALR 1; 79 ALJR 260). As was noted in Kimberly-Clark Australia Pty Ltd v Arico Trading International Pty Ltd [2001] HCA 8; 207 CLR 1; 177 ALR 460; 75 ALJR 518 “a comparison between the matter described in the specification and the claim which defines the scope of the monopoly”, following the reasoning of Barwick CJ in Olin Corporation v Super Cartridge Co Pty Ltd [1977] HCA 23; (1994) 180 CLR 236 when he said:

    “The question whether the claim is fairly based is not to be resolved ... by considering whether a monopoly in the product would be an undue reward for the disclosure. Rather, the question is a narrow one, namely whether the claim to the product being new, useful, and inventive, that is to say, the claim as expressed, travels beyond the matter disclosed in the specification.”

17. As was noted in Lockwood (supra):

    “the statutory test as expounded by Barwick CJ does not call for any evaluation of whether the breadth of the claims exceeds "the technical contribution to the art embodied in the invention", merely for an evaluation of whether the claims travel beyond the matter described in the specification”

18. Page 3 of the present application sets out the invention as follows:

    “According to a first aspect the present invention provides a random prize awarding feature to selectively provide a feature outcome on a gaming console, the console being arranged to offer the feature outcome when a game has achieved a trigger condition, the console including trigger means arranged to test for a trigger condition and to initiate the feature outcome when the trigger condition occurs, the trigger condition being determined by an event having a probability related to credits bet per game on the console.

    According to a second aspect, the present invention provides a random prize awarding system associated with a network of gaming consoles, the system being arranged to offer a feature outcome on a particular console when a trigger condition occurs as a result of a game being played on the respective console the prize awarding system including trigger means arranged to test for a trigger condition and to initiate the feature outcome on the respective console when the trigger condition occurs, the trigger condition being determined by an event having a probability related to credits bet per game on the respective console.

    According to a third aspect, the present invention provides a gaming console including a random prize awarding feature to produce a feature outcome, the gaming console being arranged to offer the feature outcome when a game has achieved a trigger condition, the console including trigger means arranged to test for the trigger condition and to initiate the feature outcome when the trigger condition occurs, the trigger condition being determined by an event having a probability related to credits bet per game on the console.”

19. As was pointed out by IGT, the immediate difference that is apparent between these consistory clauses and the claims is that the claims have the probability of the trigger condition occurring being related to “desired average turnover” while these clauses relate the trigger to “credits bet per game”.

20. Such a difference might give rise to a lack of fair basis if it was also the case that the language of the consistory clauses was reflected in the description of the invention in light of the body of the specification as a whole.

21. In the present case, the body of the specification does disclose the probability of the trigger condition occurring as being related to the credits bet.  When the specification is describing that the probability of a trigger condition occurring is X chances in Y, the credits bet per game supplies the value for the “X” in this statement.  If I went no further, the independents claims, at least, would lack fair basis.  However, it is also clear from the description that the desired average turnover is used to calculate the value of “Y” in the probability statement.  That is, it is clear from the description that the probability of a trigger condition occurring is related to the desired average turnover.

22. In this situation, where the consistory statements are supported by the description and the claims are supported by the description, but the consistory statements and claims do not match, is there a lack of fair basis?  I do not believe so.  I do not see, using the words of Barwick CJ in Olin (supra), how the claims have travelled beyond the matter described in the specification.  There is no inconsistency between the description and claims.

    Full Description

23. Under this ground, IGT submitted that the invention was not fully described because, while the claims 1 and 65 define the invention as a prize awarding feature, the claims did not define any integers of the “feature”.  They also submitted that the specification did “not describe a ‘feature’ in sufficient terms to constitute a fully [sic] description of the invention”.

24. Given my conclusions above as to the meaning to be given to the word “feature” in claims 1 and 65, this submission must fail.  There is a clear description of a prize awarding system.

25. IGT also submitted that, because there was no description of determining a trigger condition on the basis of an event having a probability related to average turnover per se, the invention defined by the independent claims at least was not fully described.  Such a submission cannot succeed for the very reasons that the claims are fairly based – there is clear description of determining the probability of an event happening where the calculation of the probability includes the use of a value for average turnover.

26. The remaining submissions made by IGT under this ground were based on the same approach – because certain features of a claim were not mentioned, the claim defined an invention that was not fully described.  Although it is true that some of the supposed missing features are described with words that are not exactly the same as the words used in the claims, in each case raised by IGT the feature is present in the specification.

    Claims Defining the Invention

27. The essence of IGT’s submissions under this ground, which can be gleaned from the amended Statement of Grounds and Particulars that IGT filed after the hearing, seemed to be two-fold.

28. Firstly, IGT submitted that the invention (according to lines 4–6 of page 1 of the description) related to an apparatus which provided an improved jackpot mechanism, with the apparatus being able to be used with a linked gaming machine system and, in IGT’s opinion, the only mechanism disclosed that apparently provided this was the specific mechanism of the preferred embodiment – i.e. for each credit bet, a number is picked from a predetermined range and compared to a number randomly selected from the same predetermined range and, if there was a match, indicating that the trigger condition had been determined (see page 4 lines 5–11).  According to IGT, it was clear that an “essential” integer of the mechanism was that the event that determined the trigger condition had a probability of occurrence that was related to the credits bet per game.  As I understood IGT’s submission, because the independent claims (at least) did not include the limitation that the probability of the occurrence of the event was related to the credits bet per game(instead making use of terms like “feature” and “feature outcome” which were hardly mentioned and apparently incidental), it followed that the claims did not define the improved jackpot mechanism and, because an improved jackpot mechanism was the invention, it followed that the claims did not define the invention, as required by section 40(2)(b).

29. Secondly, at least as I understood it, IGT submitted that the chronological development of the invention, as was apparent from the inventions described in the provisional applications, the originally filed application and the amended application, meant that the claims did not define the invention.

30. These arguments cannot be sustained.

31. The requirement of section 40(2)(b) is a requirement that claims will define the monopoly for which application has been made.  In AMP v Utilux, (1971) 45 ALJR 123, McTiernan J. stated:

    “The description of the invention is not the definition of it. A claim is a portion of the specification which fulfils a separate and distinct function. It, and it alone, defines the monopoly; and the patentee is under a statutory obligation to state in the claims clearly and distinctly what is the invention which he desires to protect.”

32. In other words, a mismatch between the invention claimed and the invention described does not mean that the claim does not define the invention.  Rather, if there is a problem, it is that the claim is not fairly based on the description.  As I have noted above, there is no fair basis problem in this application.

    NOVELTY

    The Law

33. The basic test for anticipation and lack of novelty is the “reverse infringement” test – see General Tire & Rubber Co. v Firestone Tyre & Rubber Co. Limited [1972] RPC 457 and Meyers Taylor Pty. Ltd. v Vicarr Industries Ltd. [1977] HCA 19; (1977) 137 CLR 228 at 235. In applying this test I must ascertain whether each and every one of the essential features of the claimed invention is provided by the prior disclosure (Rodi and Wienenberger AG v Henry Showell Ltd. [1969] RPC 367, Flour Oxidising Co. Ltd. v Carr & Co. Ltd. (1908) 25 RPC 428).

34. In his submissions, Mr McCormack also directed me to Re RD Werner & Co Inc v Bailey Aluminium Products Pty Ltd [1989] FCA 37, 57 Patents 25 FCR 565. He indicated that this decision permitted an objection on the ground of want of novelty to encompass evidence of absence of ingenuity or inventive step for those things commonly called “workshop improvements”.

35. In RD Werner (supra), it was said:

    “In Dennison Manufacturing Co. v Monarch Marking Systems Inc. (1983) 66 ALR 265 Fox J. interpreted Dixon J.'s judgment in Griffin v Isaacs, supra, as permitting an objection on the ground of want of novelty to encompass evidence of absence of ingenuity or inventive step as limited to what are commonly called "workshop improvements" (at 274). In other words it is only when you have a very clear case of what is in effect a mere workshop improvement that there is an absence of invention sufficient to support an objection on the ground of want of novelty. "Workshop improvement" is a convenient expression to encompass a mechanical improvement to an invention disclosed in a prior specification which involves no inventive quality or ingenuity. Mechanical equivalence is another expression to the same effect. King J. in his reasons for judgment in the present case agreed with Fox J.'s interpretation of Griffin v Isaacs.

    ...

    Although the High Court decisions which I have reviewed above were made with respect to the Patents Act 1903, the principle for which they are authority and which I have mentioned in the last paragraph is in my view applicable under the present Act. The principle is consistent with the view that the objections of novelty and of obviousness are fundamentally different in character though they to some extent overlap. That the Act, when it assumed substantially its present form in 1952, permitted objection to the grant of a patent on the ground of obviousness to be raised for the first time under Australian patent law, and that the earlier High Court decisions were made in the absence of that right does not diminish the correctness of the principle that obviousness may be raised under an objection for want of novelty only where the improvement obviously lacks any inventive merit, that is where the improvement is a mere workshop improvement. Nor does the structure of the Act lend support to the contention that obviousness and want of novelty are totally separate grounds of objection.”

36. While there is a contention that there is overlap between novelty and inventive step, attention needs to be paid to the fact that RD Werner was decided under the 1952 Patents Act.  I also note that Gummow J in RD Werner stated:

    “The difficulties to which Dixon J. had referred disappeared with the 1952 Act. The grounds of opposition have been widened. A distinction is drawn in the terms of the legislation between novelty and obviousness, both as to opposition and as to revocation. The present legislation is properly to be regarded as meeting what was a somewhat anomalous situation that evolved in the interpretation of the 1903 Act. In my view, in construing the grounds of opposition under the present Act it is not an element in the objection on the ground of lack of novelty that whilst there was no anticipation in the necessary sense, nevertheless the difference in the two is to be disregarded because to come from the alleged anticipation to the alleged invention would not have involved the exercise of inventive ingenuity in the light of common general knowledge.”

37. It is also quite clear from RD Werner that the “reverse infringement” test was used in determining novelty (or lack thereof).  In addition, it would appear clear from the High Court decision in Lockwood Security v Doric Products [2004] HCA 58; 217 CLR 274; 212 ALR 1; 79 ALJR 260 that grounds of invalidity have to be decided separately. Nevertheless, it is also true that, in the course of dealing with an objection to grant for want of novelty, the courts have had regard to the doctrine of mechanical equivalents. That is, whether, on the evidence before the court, the difference between the claimed invention and the alleged anticipation represented no more than the substitution of an inessential feature with an obvious equivalent. It is important in this doctrine that the substitution is of an inessential feature.  In that light, if a citation discloses a mechanical equivalent of a feature of a claim, and that feature is inessential, the “workshop improvement” in the claim will not confer novelty.

    Priority date

1. One of the first steps to be undertaken in determining whether a claim lacks novelty or not is to determine the priority date of the claim.  The present application claims priority from two provisional applications – PO7780 filed on 8 July 1997 and PO9090 filed on 9 September 1997.

2. IGT submitted that the claims were not entitled to the filing date of either of the provisional applications.  They submitted that PO7780 did not disclose the presence of a trigger condition being determined by an event that had a probability related to average turnover.  IGT submitted that, instead, PO7780 disclosed a trigger condition that occurred when the accumulated bets on the gaming machine reached a particular amount.

3. In regard to PO9090, IGT submitted that the claims of the present application travelled beyond the matter described in this provisional application and, as such, were not fairly based upon it.  They submitted that the disclosure of PO9090 concerned determining a trigger condition by selecting a number from a predetermined range for each credit bet and comparing each selected number to a number randomly chosen from the same predetermined range and, if there was a match, indicating that the trigger condition had been determined.  IGT submitted that there was no disclosure in this provisional application of an event causing a trigger condition having a probability of occurring being related solely to desired average turnover.  In other words, IGT’s submissions in regard to the fair basis of the claims on PO9090 matched their submissions as to why the claims of the application lack fair basis.

4. IGT concluded that the priority date of the independent claims at least, was the date that they were introduced into the specification.  According to IGT that put the priority date at 18 October 2001, being the filing date of the statement of proposed amendments that resulted in the claimed disclosure.

5. In their submissions, Aristocrat explicitly said that they did not rely on PO7780.  They relied solely upon PO9090.

6. I have had read the specifications of PO7780 and PO9090.  IGT is correct when they state that the claims of the present application are not entitled to the filing date of PO7780 as their priority date.  IGT’s submissions regarding what PO7780 did and did not disclose are correct.  However, given the fact that IGT’s submissions in regard to the fair basis of the claims on PO9090 match their submissions as to why the claims of the application lack fair basis, for similar reasons to those I have set about above in regard to internal fair basis of this application, IGT’s submissions in this regard must fail.  While it is certainly the case that PO9090 discloses that the probability of the trigger condition being determined is related to the credits bet each game, it also discloses that the probability is related to the average turnover for the reasons I have already set out.

7. It follows that the priority date of the claims is 9 September 1997.

   Citations

8. IGT pressed lack of novelty in light of 11 citations:

   (a)Australian Provisional application PO4113 (associated provisional to complete application 47626/97 (721968))

   (b)AU 70247/96

   (c)AU 53370/86

   (d)US 5645486

   (e)JP 07-148307

   (f)Local Area Electronic Gaming Machine Communications Protocol (QCOM) produced by the Queensland Office of Gaming Regulation

   (g)AU 24938/97

   (h)Promotional brochure of the “Aces” poker machine game

   (i)WO 96/24421

   (j)Promotional brochure for the “4Play”, “Fortune” and “Prize Fight” poker machine games

   (k)Specification for the “Scatter Rug” poker machine game

   Novelty Conceded for Certain Claims

9. In the helpful novelty table provided by IGT at the hearing, there were a number of blank cells in the table which, prima facie, indicated that IGT was of the opinion that the particular claim feature associated with that cell was not found in the citation additionally associated with the cell.  Upon questioning at the hearing, IGT indicated that, where there was a blank cell, they did not press lack of novelty for the relevant claim for the particular citation.

10. On that basis, as there were a number of features which IGT indicated were not disclosed in any of the 11 citations, IGT has conceded the novelty of claims 7–13, 15–19, 30–34, 36–40, 48, 50, 51, 53, 55–57, 59, 67–69.  I agree with IGT.  These claims are clearly novel.

    Claim Features

11. In the claims in suit I do not think there is any doubt that every feature is essential.  A feature is essential if the applicant for the patent has made it an essential feature by the terms of the claim, properly construed (Catnic Components v Hill and Smith Ltd [1982] RPC 183), and this seems to me to be the case here.

12. Regarding claim 1, Aristocrat and IGT were generally in agreement with the features of the claim, although Aristocrat indicated that there were six features while IGT indicated there were seven (arrived at by splitting the first feature of Aristocrat’s submission into two).  I do not think there is any great disadvantage to any party in choosing one approach over the other.  Therefore, purely for convenience, I will use Aristocrat’s approach.  In that light, claim 1 defines six features:

    (1)a random prize awarding feature to selectively provide a feature outcome on a gaming console;

    (2)the console being arranged to offer a feature outcome when a game has achieved a trigger condition;

    (3)the console including trigger means arranged to test for the trigger condition and to initiate the feature outcome when the trigger condition occurs;

    (4)the trigger condition being determined by an event;

    (5)having a probability related to desired average turnover between successive occurrences of the trigger conditions

    (6)on the console.

    Features (2) to (6) appear to be common among all independent claims.

13. Turning to the citations, I will address each one separately.

    PO4113

14. This document was published on 11 June 1998.  This was after the priority date of the claims.  However, the document has an earlier priority date (10 December 1996).  As such it is what is colloquially known as a “Whole of Contents” document and it legitimately forms part of the prior art base for deciding whether an invention is or is not novel.

15. This document discloses a video gaming machine system in which individual gaming machines are linked in a network.  Games are played on the gaming machines by the real, or simulated, spinning of reels, with certain combinations of symbols appearing when the reels stop indicating a win.  The amount paid out for a win depends on the combination shown on the reels.  As games are played on the individual machines in the usual way, a jackpot prize accumulates.  The jackpot prize can be won on any machine in the network when a particular specified combination of symbols appears on the reels during usual play.  To ensure that players who bet more have a greater chance of winning the jackpot, the number of times that the symbols that form part of the specified combination appear on each reel increases.

16. Taking the appearance of the specified combination of symbols as being the “event” that determines the “trigger condition”, the “trigger condition” does not lead to the offering of a “feature outcome” as it is understood in the present application.  It awards a prize.  As I noted above, a prize is not a “feature outcome”.  Additionally, I cannot find a disclosure which would lead me to conclude that the appearance of the specified combination of symbols has a probability which is related to desired average turnover.

17. At the very least features (2), (5) and (6) are not disclosed.  Therefore all claims are novel in light of this document.

    AU 70247/96

18. This document discloses a video gaming machine system in which individual gaming machines are linked in a network.  As games are played on the individual machines in the usual way, a jackpot prize accumulates.  Each time a game is played on an individual machine, the system generates a random number for that game from a defined range (e.g. 1 to 10,000) and compares it with a number previously chosen by the system from the same range.  If the two numbers do not match, the random number generated for that game is deleted from the range of numbers available to other individual machines and the jackpot continues to accumulate.  For example, if the range from which numbers are chosen is 1 to 10, when one machine has a random number assigned to it which does not match the system’s number, the number assigned to the machine would be deleted from the range.  This means that the next machine to play a game would have a number assigned to it from the remaining 9 numbers available.

19. Of course, if the two numbers match, the jackpot is awarded to the particular machine associated with that random number.

20. As with PO4113, taking the matching of the machine number with the system number as being the “event” that determines the “trigger condition”, the “trigger condition” does not lead to the offering of a “feature outcome” as it is understood in the present application.  It awards a prize.  Moreover, the probability of the event does not seem to be related to desired average turnover.  The probability changes with each unsuccessful attempt at matching.

21. Features (2), (5) and (6) are not disclosed.  Therefore all claims are novel in light of this document.

    AU 53370/86

22. This document discloses, again, a video gaming machine system in which individual gaming machines are linked in a network.  As games are played on the individual machines in the usual way, a jackpot prize accumulates.  At a point in the past, the system generated a random value from a predetermined range which represented the jackpot prize to be awarded.  As games are played on the individual machines, the jackpot prize accumulates until it reaches the previously generated value.  At that point, the machine that caused the previously generated value to be reached is awarded the prize.

23. As with the previous documents, no “feature outcome” is offered.  In addition, it is clear that the testing for the “trigger condition’ is not done by the console.  As previously, the probability of the event is not disclosed as being related to the desired average turnover.

24. Features (2), (3), (5) and (6) are not disclosed.  Therefore all claims are novel in light of this document.

    US 5645486 and JP 07-148307

25. Certain parts of the disclosure of these two documents are essentially the same since US 5645486 claims priority from the JP application.  As such they will be discussed together.

26. Both documents disclose a video gaming machine system in which individual gaming machines are linked in a network.  Games of poker are playable on each individual machine in which the player is “dealt” 5 cards and, having elected to retain some (or none) further cards are dealt.  Certain combinations of cards win prizes.  In the event that the player receives a royal flush, if the player has bet the maximum amount allowed on that hand, a jackpot is awarded.  If the player has not bet the maximum amount, a “lottery” is initiated and, if the player wins, the jackpot is awarded.

27. The lottery can be seen to be equivalent to the “feature outcome” as it is understood in this application.  That being the case, the “trigger condition” that leads to the lottery being initiated is a combination of two elements – the fact that the player has achieved a royal flush but has not bet the maximum amount.  However, there is no disclosure of these two elements being related to desired average turnover.  As noted by Aristocrat, Daley when discussing the relationship between the trigger probability and the expected turnover in US 5645486 (in Daley #3) states:

    “There is no set relationship between the trigger probability and expected turnover on the gaming machine between consecutive trigger(s)”

28. When discussing JP 07-148307, he states:

    “The main game is configured to have a statistical cycle which is the turnover applicable if all possible discrete game outcomes are counted.  This is a theoretical figure which is used to calculate the expected frequency of an event for any actual turnover wagered.” (my emphasis)

100. I agree with these statements.  The probability of obtaining a royal flush is “built in” to the mathematics of the game.  It is not arrived at by a calculation utilising the desired average turnover.

101. Furthermore, as noted above, if the player has bet the maximum amount when they obtain a royal flush, the lottery is by-passed.  That is, a contribution is made to machine turnover but there is no feature outcome.

102. Clearly feature (5) is absent.  All claims are novel in light of these documents.

Local Area Electronic Gaming Machine Communications Protocol (QCOM) produced by the Queensland Office of Gaming Regulation (Version 1.2)

103. As noted by Aristocrat, whether this document was published and, therefore, part of the prior art base is difficult to establish.  The front cover indicates that it was “Designed” on (or by) 12 July 1996, “Revised” on (or by) 26 March 1997 and “Printed” on 23 April 1997.  While all of these dates are before the priority date, the cover is clearly marked “** CONFIDENTIAL **”.  This is not peculiar to this particular version of QCOM.  Several versions (Versions 1.1 (Draft), 1.3, 1.4, 1.5, 1.5.1, 1.5.2) were produced as part of this opposition and all were marked the same.

104. The author of the document, Robert Larkin, has declared (paragraph 10) that the document was available and Dimond (in Dimond #3, paragraph 12(c)) that it was disseminated widely.  I note that no other expert in this opposition has declared this.  However, I also note that, when the other versions of QCOM were produced by Aristocrat in response to the Notice that was served on them, and Aristocrat requested that the Commissioner prohibit certain documents from being made open to public inspection, the QCOM documents were not among these documents.  On balance I am prepared to proceed as if the QCOM document is part of the prior art base.

105. In any event, this document suffers from the same problems that exist above.  Section 17 of QCOM (“Down-Loaded System Awards (DLSA)”) discloses that a DLSA allows a gaming machine to configure a random award or event and states that the gaming machine “triggers the prize (or event)”.  It discloses that each gaming machine will have provision for up to eight “awards” and each award is configured with a “hit probability”.  According to QCOM, once per play, the gaming machine will test whether a hit has occurred on “each enabled level”.  If a hit occurs, the event is logged, the machine is optionally locked, and the remaining “enabled levels” are evaluated.  I do not see this document as disclosing the features of the claims. 

106. While QCOM discusses the machine triggering an “event”, there is nothing to indicate if this is a “feature outcome” as understood in this application, or even if the “trigger” in QCOM is the same as the “trigger condition” of the claims.  Furthermore, if the “event” in QCOM is equated to the “feature outcome”, then there seems to be nothing that equates to the event that determines the trigger condition, as required by the claim.  In addition, while QCOM mentions each “award” (which, I assume, is the same as the “event” mentioned earlier in QCOM) being configured with a “hit probability”, in my opinion, this does not provide any disclosure of the probability of the event that determines the trigger condition being related to desired average turnover.  The disclosure of QCOM is far too general to be of use.

107. No claims lack novelty in light of this document.

AU 24938/97

108. In some ways, the gaming system described in this document is a variation of that described in 53370/86.  As with 53370/86, this document discloses, again, a video gaming machine system in which individual gaming machines are linked in a network.  As games are played on the individual machines in the usual way, a jackpot prize accumulates.  At a point in the past, the system generated a random value from a predetermined range which represented the jackpot prize to be awarded.  As games are played on the individual machines, the jackpot prize accumulates until it reaches the previously generated value.  At that point, what is termed the “jackpot payout sequence” begins.  In this sequence, each player is given the opportunity to obtain a “qualification” by achieving a particular gambling result (e.g. a predetermined symbol combination) within a certain time period.  The players that qualify then have the opportunity to participate in a “final game” which could be, for example, to place a bet in a horse –racing game.  If the horse the player has bet on wins, then a percentage of the jackpot prize is awarded.  The percentage depends on the number of players who bet on the winning horse.

109. The “final game” in this document falls within the scope of a “feature outcome”.  However, like US 5645486 and JP 07-148307, the “trigger condition” is a combination of two elements – a certain jackpot value being reached and the predetermined symbol combination occurring within a certain time period.  Like US 5645486 and JP 07-148307, the “qualification” is not related to desired average turnover but to the “built-in” mathematics of the game.  There is no disclosure that the probability of an event that determines the trigger condition is related to desired average turnover.

110. Clearly at least feature (5) is absent.  All claims are novel in light of this document.

Promotional Brochure of the “Aces” Poker Machine Game

111. In this document the most relevant part of it is a passage stating:

“As players increase the number of coins per game, they increase the number of combinations that trigger jackpot prizes”

112. This raises more questions than it can answer.  What is the “feature outcome”?  Is there a “trigger means” to test for a “trigger condition” to initiate the “feature outcome”?  Is there an “event” to determine the “trigger condition”?  What is its probability and is it related to desired average turnover?  The brochure answers none of these.  Apart from the use of the word “trigger”, I cannot see how it relates to the claims.

113. All claims are novel in light of this document.

WO 96/24421

114. As with many of the documents above, this document discloses a video gaming machine system in which individual gaming machines are linked in a network.  As games are played on the individual machines in the usual way, a jackpot prize accumulates.  If what is termed a “progressive jackpot-winning outcome” is achieved while playing the game, the jackpot is distributed amongst the eligible players of machines linked by the network.  The eligibility of a player to receive a portion of the jackpot could be determined on how much they had previously bet.  For example, if the player had not bet more than a predetermined minimum amount, the player would not be considered eligible.  Alternatively, a player’s eligibility might be determined on whether they had played a game in the 15 seconds before the jackpot-winning outcome had occurred.

115. It is clear that there is no “feature outcome” disclosed in this document; only the awarding of a prize.  Moreover, the probability of the event does not seem to be related to desired average turnover.

116. At the very least features (2), (5) and (6) are not disclosed.  Therefore all claims are novel in light of this document.

Promotional Brochure for the “4Play”, “Fortune” and “Prize Fight” Poker Machine Games

117. These brochures suffer from the same problem that plagued the promotional brochure for the “Aces” poker machine game. 

118. The brochures for “4Play” and “Fortune” state:

“Feature starts when 4 PLAY [4 TUNE] appears on any bought line.  5 NEW reels appear spinning, all containing numbers.  The PLAYER stops the reels spinning by pressing the credit bet buttons in order.  One of the progressives is won depending on the sum of the numbers on the centre line as indicated on the scorecard”

119. While it could be said that the 4 Play and Fortune brochures describe a “feature outcome”, whether the trigger condition is related to desired average turnover is not disclosed.  I note that Mr. Daley (in Daley #3) states that:

“the trigger probability does not relate to turnover”

120. Features (5) and (6) of the claims are missing.

121. The brochure for “Prize Fight” states:

“5 free games are won whenever 5xKO, ANY 4xKO, ANY 3xKO occur on any line played.  During the 5 free games, wins are paid only on the line that started the feature.  All wins are tripled.  5 free games can be won again during the feature.”

122. For the Prize Fight brochure, in my opinion the 5 free games that are given to the player in the event of a certain combination of KOs do not fall within the scope of “feature outcome”.  The games do not appear to be anything other than the primary game played on the machine.  They are not separate games that offer anything other than the standard prizes available on the primary game.  As such, there is no triggering of a feature outcome with an event having a probability related to desired average turnover.

123. Features (2)–(6) of the claims are missing. 

124. No claims lack novelty in light of these documents.

Specification for the “Scatter Rug” Poker Machine Game

125. From this specification, it would appear that, in gaming machines running the Scatter Rug program, when a result of the game is that 2 or more rugs appear anywhere on the screen for four games in a row, all the money that the player bet on these four games is credited to them.  That is, the player effectively gets those four games for free.

126. This document suffers from the same problems as the brochure for the “Prize Fight” game.  The games played are not a “feature outcome” as it is understood in this application.  They are not separate games that offer anything other than the standard prizes available on the primary game.  As such, there is no triggering of a feature outcome with an event having a probability related to desired average turnover.

127. Features (2)–(6) of the claims are missing.

128. No claims lack novelty in light of this document.

129. For completeness, I will note that IGT also raised US 5116055 when discussing their novelty table, but only indicating that it was there for the purposes of common general knowledge.  While noting this, I have had regard to it to assess whether the claims lack novelty in light of it.  They do not.  As with many documents described above, it does not disclose a “feature outcome”, but the awarding of a prize when a certain trigger condition occurs.

INVENTIVE STEP

130. According to subsections 7(2) and 7(3) of the Patents Act as they were at the filing date of this application, a claimed invention will lack an inventive step if it is obvious to a person skilled in the relevant art in the light of:

(a)common general knowledge, or

(b)common general knowledge considered together with information in a single document or through doing a single act, provided that the document or act could reasonably be expected to have been ascertained, understood and regarded as relevant to work in the relevant art in the patent area by the person skilled in the art.

131. A widely accepted definition of common general knowledge is that provided by Aickin J in Minnesota Mining and Manufacturing Company and Another v Beiersdorf (Australia) Limited [1980] HCA 9; 144 CLR 253 at 292:

“The notion of common general knowledge itself involves the use of that which is known or used by those in the relevant trade. It forms the background knowledge and experience which is available to all in the trade in considering the making of new products, or the making of improvements in old, and it must be treated as being used by an individual as a general body of knowledge.”

132. The state of the common general knowledge is a question of fact which must, in general, be determined on the basis of evidence from persons whose background enables them to testify authoritatively as to the common general knowledge in the particular art.  Indirect evidence such as widespread publication or admissions made in patent specifications may also serve to indicate that something is common general knowledge

133. When deciding inventive step, Wellcome Foundation Ltd v VR Laboratories (Aust.) Pty Ltd, [1981] HCA 12; (1981) 148 CLR 262 at 280, stated:

“The test is whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not”

134. The High Court in Aktiebolaget Hassle v Alphapharm Pty Limited, [2002] HCA 59; (2002) 56 IPR 129 at [50]–[53], appears to approve of theWellcome(supra) test.  In discussing what was meant by a matter of routine, the High Court noted and accepted an affinity with the approach in Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd, (1970) 87 RPC 157, of whether the person skilled in the art would directly be led as a matter of course to try what was claimed in the expectation that it might well produce a useful alternative. In Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [No. 2] [2007] HCA 21; (2007) 235 ALR 202, general principles regarded to be of continuing relevance, at [50]-[52], were that “obvious” means “very plain”, a scintilla of invention remains sufficient to support the validity of a patent, there must be some difficulty overcome, some barrier to be crossed, and an invention must be beyond the skill of the calling.

The Problem

135. As discussed above, the disadvantages of the prior art are given by the specification as:

1. no incentive for players to bet multiple tokens per game;
2. the perception that major jackpots which are won on specific combinations of symbols are effectively unwinnable;
3. the difficulty in designing games that satisfy the player’s desire for more complex game ranges; and
4. the inability to vary jackpot frequency from the operator’s control.

136. The invention, as described, seeks to provide a game that avoids these disadvantages.

Person Skilled in the Art

137. It would appear that, in light of the problems to be overcome, the relevant person skilled in the art is a game designer.  In this regard, it seems clear that Mr Dimond and Mr Daley for IGT and Ms Oldfield and Mr Culley for Aristocrat could be considered people skilled in the art.  They have extensive experience in game design.

138. In regard to Mr Spencer, the situation is not as clear cut.  From his declaration, it would appear that Mr Spencer’s game design experience is limited.  While I am prepared to accept that Mr Spencer could identify common general knowledge, its weight will be somewhat less than Mr Dimond, Mr Daley, Ms Oldfield and Mr Culley.

139. Mr McCormack (for IGT) sought to place Mr Larkin as the “paragon” of the person skilled in the art.  I do not believe that I can put him that high.  There is no doubt that Mr Larkin has had many years experience in the field of gaming machines.  However, it is clear from Mr Larkin’s declaration that his experience was gained working for the Queensland Office of Gaming Regulation.  Such work is focussed on the legislative requirements for gaming machines.  There is little (if any) game design done.  While, because of his experience, he may be quite capable of indicating what was the common general knowledge in the art, I do not believe that I can give Mr Larkin’s evidence as much weight as I can give to Mr Dimond, Mr Daley, Ms Oldfield and Mr Culley. In the event of differences between evidence, Mr Larkin’s is not to be preferred.

Inventive Step in Light of Common General Knowledge

140. It would appear from the discussion below that claim features (2), (3) and (4) as set out in the novelty discussion above are common general knowledge.

141. Mr Daley in his evidence (exhibit KD–3 in Daley #1) provided a document titled “Linked Bonus Prize Systems” (“LBPS”).  This document describes two types of triggering mechanisms for systems in which multiple gaming machines are connected to a shared controller.  The two triggers were labelled as QUET (Quantum Equalisation Trigger) and SYCT (Symbol Combination Trigger).  Each trigger is said to initiate a predefined outcome such as a jackpot.

142. In a QUET system, the system selects a random value from a range of values.  As wagers are made on the linked gaming machine system, the values of the wagers are added to an accumulator.  When the value of the accumulator equals the randomly chosen value, the jackpot is awarded at the machine whose wager caused the accumulator to equal the random value.

143. In a SYCT system, the jackpot is won when a particular combination of symbols (e.g. 5 cherries) appears on a machine.  The jackpot may be a certain percentage (e.g. 3%) of wagers made on all linked gaming machines since the last jackpot was won.

144. It was stated by Mr Daley (Daley #1, paragraph 5(c)) that such systems were common general knowledge.  Mr Spencer (paragraph 5(d)) and Ms Oldfield (Exhibit LO–7, paragraph 8), while indicating that the terms “QUET” and “SYCT” are not in general use in the art, also agree that such systems are common general knowledge.

145. It would also appear to be common general knowledge in the art to provide gaming consoles that have an element separate to the game of the console (i.e. the primary game) which may award a further prize.  Mr Spencer (paragraph 9), Mr Dimond (Dimond #1 paragraph 7, Dimond #3, paragraph 5(c)), Ms Oldfield (paragraphs 41 and 84(a)) and Mr Culley (paragraph 54) all indicate that what are called “second screen games” were well known.  All make it clear that a second screen game is something different from the primary game that is played on the gaming machine.  As such, “feature outcome” appears to be common general knowledge.

146. Moreover, it appears common general knowledge to use trigger means to test for trigger conditions to award a bonus.  Ms Oldfield (paragraph 84(b)) and Mr Dimond (Dimond #3, paragraph 8) note this.  It could also be said to be inherent in the QUET and SYCT systems described in the LBPS document which would require something to determine whether the accumulator value matched the randomly chosen value (for QUET systems) or whether the symbol combination that appeared on a machine matched the particular symbol combination needed to win the jackpot (for SYCT systems).

147. Notwithstanding that it could be said that features (2), (3) and (4) are common general knowledge, I do not believe that the evidence has clearly established that claim feature (5) was common general knowledge at the priority date.

148. As noted above, feature (5) of the claims requires that the occurrence of an event has a probability related to desired average turnover between successive occurrences of the trigger conditions.  In this specification I have found that “related to” means that in setting out the probability of an event occurring, the calculation must involve the desired average turnover.

149. In addressing feature (5), Mr Daley states in his evidence (Daley #1, paragraph 12) that setting the average occurrence of a win such that it would occur at a desired average turnover level “was not a new concept”.  Ms Oldfield disagrees in her evidence (exhibit LO–7, paragraphs 11–14).  In support of his contention, Mr Daley provides a copy of page 10 from a 1981 document titled “Licensing of Poker Machines in Registered Clubs”.  He states that paragraph 22 of this page indicates that the concept was not new.

150. Paragraph 22 has the following form:

“(22)    The following conditions shall apply to progressive poker machines:

(a)       the following information shall be advertised in respect of each machine:

(i)the minimum value at which a progressive meter is set after a prize of the amount previously appearing in the meter has been paid;

(ii)the rate of progress of the progressive meters as a result of the machine being played;

(iii)that the higher value appearing in the two progressive meters will be paid in the event of the appropriate jackpot occurring.

(b)at each clearance of a machine the following information shall be recorded in an accountable document and retained for a period of three (3) years:

(i)        the date of clearance;

(ii)       the serial number of the machine;

(iii)      the amount recorded in each progressive meter.

The information recorded shall be certified correct by two persons engaged in the clearance.

(c)a machine shall not be altered in any way, nor be fitted with any device which will prevent the meters from progressing at the advertised rate.”

151. I cannot see the same things as what Mr Daley sees in this passage.  I do not see feature (5) disclosed here.  The paragraph is indicating what is to be shown on the machine and what is to be recorded when the machine is cleared.  Probability is not discussed.

152. When discussing feature (5) again, Mr Daley also provides in his evidence (Daley #1, paragraph 13) a calculation which he says exemplifies that relationship between setting the desired average turnover and the return to player (RTP).  In this art RTP signifies the average amount of money returned to the player compared to the total amount bet.  For example, if, on average, a game is designed so that, for every 8 credits bet, 6 are returned to the player, the RTP for the game is 75% (6 ÷ 8).  However, I cannot see from the evidence the nexus between RTP and probability.  As is clear from the evidence, RTP is primarily based upon the amount of money returned to the player for certain combinations of symbols – some combinations result in no money return, others result in a large amount being returned.  The actual probability that a certain “winning” combination appears has nothing to do with RTP.  That probability arises from the number of reels used and the number and type of symbols per reel.  This calculation by Mr Daley does not establish feature (5) as common general knowledge.

153. At another point, when Mr Daley again discusses feature (5) in his evidence (Daley #1, paragraph 19), he calculates what the average win would be for a particular system based upon the probability of the winning combination occurring.  Again, this does not establish feature (5) as common general knowledge.  Firstly, it calculates average win and not average turnover.  Secondly, as is noted by Ms Oldfield in her evidence (exhibit LO–7, paragraphs 26 and 27) and Mr Culley in his evidence (paragraph 124), even if I assume that the calculation of Mr Daley is of average turnover, the calculation by Mr Daley is of average turnover from probability and not probability from average turnover.  When Mr Daley attempts to perform a calculation involving average turnover (Daley #3, exhibit KD–16 – calculating “Turnover between hits”), average turnover is calculated from probability and not the reverse.  I would also note that there is an observation to the calculation stating that the turnover “is variable dependent on the number of units bet in a game play” (my emphasis).  I cannot see how a variable figure can be an average.

154. I think Mr Daley has shown that, knowing a probability, it is possible to build a relationship between average turnover and probability, but this is not the same as saying that probability is “related to” average turnover.

155. Since feature (5) has not been established to be common general knowledge, the claims do not lack an inventive step in light of the common general knowledge alone.

156. This conclusion does not change even if I assume that I am wrong and it is the case that the evidence does establish that each one of the features of claim 1, for example, is common general knowledge.  I would still not be able to find a lack of inventive step in light of common general knowledge, because the evidence does not address why the person skilled in the art would combine the common general knowledge in the manner that is claimed.

157. Mr Daley in his evidence (Daley #2, paragraph 3) states that the claim “defines a combination of well known principles of operation”.  The key word here is “combination”.  Where an invention relates to a specific combination of integers or features (as is the case here), when deciding the inventiveness of that combination, some guidance is provided in Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Ltd (1979-80) 144 CLR 253 at page 293:

“In the case of a combination patent the invention will lie in the selection of integers, a process which will necessarily involve rejection of other possible integers. The prior existence of publications revealing those integers, as separate items, and other possible integers does not of itself make an alleged invention obvious. It is the selection of the integers out of, perhaps many possibilities, which must be shown to be obvious.”

158. That is, where each of the individual integers of the combination is common general knowledge, evidence is needed to establish that the person skilled in the art would have selected those integers and combined them in the way claimed.

159. It is possible to obtain a valid patent for combinations of known integers – patents for new electrical circuits and new chemical compounds immediately spring to mind – as long as the evidence does not show that the person skilled in the art would have made the combination as a “matter of routine” (Wellcome (supra)).

160. In the present case, there is no doubt that the claims are directed to a combination.  However, the evidence supplied by IGT does not address the relevant question.  Apart from Mr Culley for Aristocrat (paragraphs 39–45), there seems to be no evidence setting out what the person skilled in the art would have done at the priority date when faced with the problem that is evident from the specification (Mr Culley does not see any lack of inventiveness).  Without evidence as to what was a matter of routine in the art, I cannot go any further.

Inventive Step in Light of Prior Art Information + Common General Knowledge

161. It is for this same reason that IGT’s attack on inventive step under this ground also fails.  Assuming that it is the case that all the documents raised by IGT for novelty could have been ascertained, understood and regarded as relevant by the person skilled in the art (noting that PO 4113 could not be used as it was published after the priority date), there is no evidence to show that the person skilled in the art would have been motivated in some way to alter the respective features in these documents, including the addition of common general knowledge, so that they matched what was claimed.  It was noted by IGT that the change(s) would be made by the person skilled in the art as the circumstances required.  However, I think this simplifies the matter too much.  In any event, the circumstances that would encourage the person skilled in the art to modify the teachings of the document are never explained.  Consequently, it is impossible to find that the particular circumstances existed in this case.

162. I cannot conclude that the claims lack an inventive step.

MANNER OF MANUFACTURE

163. IGT submitted that at least claims 1 and 65 did not define a manner of manufacture because these claims defined a mere collocation of elements with no working inter-relationship, where none of the elements is novel in its own right.  Clearly, from the discussions above, this is not the case.

164. Separate to that argument, IGT also submitted that, while claims 1 and 65 and the claims dependent thereon defined the invention as a “feature”, no delimiting integers of the “feature” were defined.  IGT submitted that, since there were no elements or components to the “feature” to achieve the desired result, the invention provided no “utility in the field of economic endeavour”.  This also fails because of the discussions above.

CONCLUSION

165. The opposition fails.

166. The claims are clear when read in light of the specification to explain the background to the claims, to ascertain the meaning of technical terms and to resolve ambiguities in the construction of the claims.  The claims are also fairly based and the specification meets the requirements of Section 40(2)(a) and (b).

167. The claims are novel.  In particular there is no disclosure of an event having a probability that is related to the desired average turnover. 

168. The claims have an inventive step.  The evidence filed does not establish that all the features of the claims were common general knowledge at the priority date.  Alternatively, if it is accepted that all the individual elements of any of the claims were common general knowledge, the evidence does not establish that the person skilled in the art would, as a matter of routine, have selected the particular features claimed and combined them in the same way.  Additionally the evidence does not establish that the person skilled in the art would have been motivated in some way to alter the respective features in these documents, including the addition of common general knowledge, so that they matched what was claimed.

169. The claims are clearly directed to a manner of manufacture.

170. I direct that the application proceed to sealing unless the Commissioner is served with a notice of appeal within 28 days from the date of this decision.

COSTS

171. In proceedings such as these it is usually the case that costs follow the event.  I see no reason to vary that approach on this occasion.

172. Since the opposition has failed on all the grounds, I award costs in accordance with Schedule 8 against IGT.

GREG POWELL
Delegate of the Commissioner of Patents
16 November 2009

Patent attorneys for the applicant  :  Freehills, Sydney

Patent attorneys for the opponent   :  Hodgkinson McInnes Patents, Sydney