Kabushiki Kaisha Universal v. Ainsworth Nominees Pty. Ltd.

[1988] APO 17

In the Matter of the Patents Act 1952 and - In the Matter of Application No. 537380 for a Patent by KABUSHIKI KAISHA UNIVERSAL - and In the Matter of Opposition thereto under Section 59 by AINSWORTH NOMINEES PTY. LTD.

 

DECISION OF A SUPERVISING EXAMINER OF PATENTS:

Background

Patent application 537380 entitled "Slot Machine' was filed on 11 January, 1982 by KABUSHIKI KAISHA UNIVERSAL (K.K.). This application claims Convention priority based on earlier applications filed in Japan on 12 January, 1981 and 27 April, 1981. Following acceptance of the application, AINSWORTH NOMINEES PTY. LTD. (Ainsworth) lodged a notice of opposition on 21 December, 1984.

Evidence stages for the opposition were completed in March 1986. Following several postponements of the hearing in the matter scheduled for October 1986 and April/May 1987 a hearing was held in Sydney on 16 October, 1987. The applicant was represented by Mr. R.G. Shelston, patent attorney, on instructions from H.R. Hodgkinson & Co., Sydney and the opponent by Mr. C. Owens, patent attorney of F.B. Rice & Co., Sydney.

Grounds of opposition

The notice of opposition listed as the grounds of opposition those grounds specified in paragraphs (c) to (i) of sub- section 59(1) of the Act. At the hearing the grounds relied on by the opponent were obviousness, lack of novelty And non-compliance with section 40 only, i.e. the grounds of paragraphs (g), (h) and (i).

The Specification

The specification commences by stating that the invention:

"relates to a slot machine having a plurality of reels each provided with an annular row of various symbols, particularly the invention relates to a slot machine in which a plurality of reels are driven by means of-pulse motors otherwise known as stepping motors."

The specification explains that in known slot machines, coins or tokens are inserted into the machine and the reels are simultaneously rotated and then each reel is stopped at a random position. The machines are also provided with means for detecting the stop positions of the respective reels in order to determine prize-winning combinations. In known machines, the means for rotating, stopping and detecting the stop positions has comprised mechanical devices. However, this is stated to result in the machines being complicated in construction, noisy in operation and poor in durability. The principal object of the present invention is to provide a slot machine which is simple in construction.

Then follows a consistory statement in similar terms to claim 1. The specification then includes a description of one embodiment of the invention. The embodiment provides a description of one of the reel assemblies, comprising a reel and its individual driving pulse motor and support frame. The reel itself is basically of circular pan shape but is shaped to provide a "dishlike recess" in the central portion about its rotation axis, and displays a number of different symbols at regular intervals on the peripheral flange of the reel. In figure 2, a side-by-side stacking of reels is represented wherein the pulse motor driving one reel is accommodated in the recess area of an adjacent reel Also described and illustrated is a circuit for operating the pulse motors and for determining the stop positions of the reels. (Figure 2 is reproduced later in this decision).

The specification concludes with eight claims. They read as follows:

"1) A slot machine having a set of separately- rotatable, similar reels coaxially arranged side-by-side each reel being formed with a radially-extending, annular, intermediate portion whose inside edge bounds the perimeter of a dished central portion providing a recess in one side of the reel, and whose outside edge is integral with one edge of a cylindrical peripheral flange surrounding the dished central portion of the reel and having an annularly distributed row of symbols on its periphery , independently operable pulse motors driving respective reels, control means supplying electrical pulses to the motors to rotate the reels when the machine is in use, and switching means controlling the supply of pulses from the control means to the motors to determine the durations of their respective operations; in which machine a frame member extends between each pair of reels to support within a recess in one of them one of the pulse motors, and the angular position at which a reel stops is signified by an electrical output which is a measure of the number of electrical pulses fed to the reel motor to rotate it from a predetermined origin position.

2) A slot machine as defined in claim 1, wherein said control means include a micro computer for providing pulse signals and a motor driving circuit for driving said pulse motor by one stop for every one pulse of said pulse signal fed thereto.

3) A slot machine as defined in claim 2, further comprising means for detecting a fixed point or origin position on each reel every one revolution thereof and count means for starting a count of said pulse signals upon the occurrence of a signal by said detecting means signifying its detection of the origin position.

4) A slot machine as defined in claim 3, wherein said fixed point detecting means comprises: a light shield member provided with a window at said fixed point on the reel; and positionally fixed light-sensing means formed by a light-emitting source and a light receiving element respectively disposed on opposite sides of the light- shield member so as to permit the windows to pass therebetween during rotation of the reel.

5) A slot machine as defined in claim 4, wherein said fixed point detecting means detects a trailing edge of a signal provided by said light sensing means to signify the origin position.

6) A slot machine as defined in claim 4, wherein said count means is adapted to be reset by a signal from said origin position detecting means.

7) A slot machine as defined in any one of the preceding claims, in which the pulse motor supported in the recess of one of a pair of neighbouring reels drives the other reel of the pair.

8) A slot machine as described herein and with reference to the accompanying drawings."

Section 40

Several matters were raised by Mr. Owens for the opponent under this ground of opposition.

Firstly, it was argued that the specification did not fully describe the invention. In this regard it was submitted that an important feature of the machine defined in claim 1 was the particular reel shape (including a dished central portion), yet the description of the invention is silent on the advantages or importance of such a feature. It is true that the description of the invention does not identify advantages due to the feature mentioned, nor in fact arising from other features of the machine defined. There is of course no requirement for a specification to include an explanation or itemisation of any such advantages other than in perhaps "selection" situations. Whilst advantages are not highlighted in this case, it should be noted that the claimed arrangement is such as to enable a pulse motor for a reel to be accommodated within a recess formed by the dished portion of a reel any advantage arising from such an arrangement, or additionally from providing pulse motor driven reels in contrast to the known mechanically driven and mechanically stopped reels in a slot machine would, I believe, be apparent to those skilled in the art. I therefore reject this attack on the specification.

Secondly, it was submitted that claim 1 was not fairly based in that the definition concerning the reels and the location of the pulse motors was broader than the disclosure. I cannot agree with this submission. Regarding the reel and its "dished central portion", it is clear from the definition that the central portion is surrounded by the "cylindrical peripheral flange", and so the claim does not include a reel construction having a dished central portion axially offset from the peripheral flange as I understood Mr. Owens' submission to suggest. As to the extent of the dishing, this is clearly somewhat variable although the minimum dishing would seem to be dependent on the size of pulse motor to be accommodated in the recess created by the dished central portion. Another point made by Mr. Owens was that the claim should be limited to an arrangement where a pulse motor for one reel is accommodated in the recess of an adjacent reel. I am unable to find support for this contention - whilst the preferred embodiment relates to such an arrangement, there is no suggestion in the specification that the invention is limited to only that particular arrangement of reels and motors.

Thirdly, it was suggested that the definition in claim 1 relating to the "switching means" was unclear or misleading. From the description it is apparent that such switching means can include a common start switch and individual stop switches to control the supply of pulses between the control means and motors, the time period between the actuation of the start and stop switches determining the operational duration of each motor. The claim definition can in my view be clearly interpreted to include such elements, along with other possible forms, of switching means. I therefore see no difficulty with this definition.

Finally, it was submitted that claim 4 was not fairly based due to the reference to the light shield member being provided with a window. It is true that the description makes no specific reference to a "window" but I believe it would be apparent to a skilled addresses that one form of light shield for the purpose indicated would be of the type possessing a window.

In summary I find the attack on the specification on the grounds of non-compliance with section 40 not sustainable.

Novelty

Whilst a number of publications disclosing prior art devices, mainly patent specifications, were submitted in the evidence in support of the opposition, the opponent's attack on the ground of lack of novelty at the hearing was confined to one document, namely UK Patent specification 1550732 (Exhibit C04). This document was available to the public in Australia at the Patent Office in January 1980, i.e. before the earliest priority date of the opposed application.

UK 1550732 discloses apparatus for playing a game of chance, the apparatus being of the slot machine type wherein reels, drums or discs bearing symbols are rotated, and when at rest display a symbol combination seen through windows in the machine. The embodiment of Figure 3 discloses a reel (commonly called a "pan reel") having a cylindrical peripheral flange joining at one edge a planar, radially-extending disc. The rotational axis of the reel lies at the centre of the disc and the reel is directly driven by its own motor mounted at the reel axis outside the bounds of the reel itself. The motor can be a stepping motor, and with such form of drive means, the control and position recording of respective reels is determined by the pulses to the motors. It is worth noting that the Patent contains no indication of how the "several" reels are arranged together, the embodiments shown in the figures merely representing a single reel and its drive means.

Reproduced below is Figure 2 of opposed specification 537380 and Figure 3 of UK Patent 1550732.

Mr. Owens submitted, and I agree, that UK 1550732 discloses all features of the invention defined by claim 1 except as mentioned following. There is no disclosure of the particular reel configuration claimed (i.e. having a dished central portion) and consequently there is no disclosure of positioning a pulse motor within a recess formed by a dished portion. With regard to the novelty question, Mr. Owens submitted that the difference concerning the shape of the reels of the claimed invention as compared to the UK Patent was not a feature to confer novelty on the combination. He argued that the differently shaped reel added nothing to the working of the invention, whilst noting that the specification itself suggested no advantages arising from this construction of reel.

Mr. Shelston for the applicant did not contest the disclosure in the cited specification of the other features as claimed apart from that of the dished reels. However he argued that the novel aspects of the invention resided in more than the dished reel feature considered by Mr. Owens. Thus he submitted one needed to consider for novelty purposes the combination of:

(a) a pulse motor for each reel,

(b) a frame member between each pair of reels to support a pulse motor, and

(c) the dished reel shape to accommodate respective motors.

He referred to the evidence lodged on behalf of the applicant which discussed the features mentioned and advantages said to arise by having this combination in a pulse motor driven slot machine, although Mr. Owens in his submissions and the opponents evidence have contested those claimed advantages.

In considering the novelty question, I shall refer to the well known statement of Dixon J. in Griffin v. Isaacs (1942) AOJP 739 at p.740:

"Where variations from a device previously published consist in matters which make no substantial contribution to the working of the thing or involve no ingenuity or inventive step and the merit if any of the two things, considered as inventions, is the same, it is, I think impossible to treat the differences as giving novelty. It may be true that in neatness, ease of adjustment and commercial attractiveness the particular publication, relied upon in the present case, is inferior to the applicant's arrangement, but, - notwithstanding some misgivings caused by this fact, I think, that when the principle of the two things is considered closely the differences which the applicant's device exhibits are not such as to remove it from the objection of want of novelty."

The test for novelty as encompassed in this statement was applied by the Full Federal Court in Dennison Manufacturing Company v. Monarch Marking Systems Inc. 1 IPR 431, in which Fox J. at 441 commented that the above statement encompasses what are commonly called "workshop improvements".

Before turning to an assessment of the respective arguments on the novelty issue, I am mindful that the specification mentions no advantages arising from using a reel with a dished central portion. The specification itself is drafted against the background of known mechanically actuated slot machines and two known reel position detecting devices therefor. The stated objects of the invention are principally to "provide a slot machine which is simple in construction", and further to "provide a slot machine in which the actual stop position of a respective reel can be detected by means of a simple device". A slot machine utilising pulse motors is then described as constituting the invention.

For its part, the applicant in evidence advances advantages in using individual pulse motors to drive the reels and having the claimed dished reels. Its declarants, Chick and Yoshida, give advantages which can be summarised as follows:

(a) pulse motors - reduce the size and cost of the machine by avoiding the known mechanical drive mechanism; and allows reel stop position detection based on the pulses driving the motors.

(b) dished reels - the dishing strengthens the reel to thus better withstand axial oscillation of the rim flange and thus allows reels of lightweight construction to be used with pulse motors; and allows a compact array of reels by enabling the pulse motors to be accommodated within the recesses created by the dished portions.

(See for example, Chick, paras. 9 and 10; Yoshida, paras. 3, 13 and 14).

The declarants for the opponent, Smyth and Janson, have contested these advantages. In particular it is argued that a reel driven by a pulse motor would not be expected "to experience any greater vibrational problems than mechanically spun reels, even if the stepping motor driven reels were of lighter construction" (Janson, para 6). Further, it is suggested that if a lighter but stronger reel were needed given the known pan reel shape, the use of a dished central portion would have been one of the design options available to the person skilled in the art. With regard to the positioning of the motors, it is suggested that the known pan reels can accommodate respective pulse motors thus forming a closely spaced array of reels without the need to use dished reels (Exhibit C02, US Patent 4099722 in fact discloses such an arrangement of pulse motor and reel). (See for example', Smyth, 2nd decl. paras. 7 and 8).

As already noted, the variation between the claimed device and that previously published primarily concerns the dishing of the central portion of the reels - I will refer to the related aspect of accommodating the pulse motors later. Smyth, for the opponent, admits that a dished reel as in the opposed specification when compared to a prior art flat pan reel may exhibit additional strength for a given mass (2nd decl. para. 10). However it seems to me that any additional strength would at least be related to the size and nature of material used in construction and the degree of dishing used : in the claim, the only indication of the degree of dishing is by way of reference to the requirement that the recess generated by the dished central portion supports a pulse motor therein. The evidence tends to suggest to me that the provision of a reel with a dished central portion in a pulse motor driven slot machine would provide a contribution to the working of the machine particularly arising from a strengthening of such reels. However given the evidence on behalf of the opponent which raises doubts as to the need for strengthening the known flat pan reels (e.g. Smyth, 1st decl. para. 3), I am in some doubt whether that contribution would be a "substantial" one as the Griffin v. Isaacs (supra) test requires.

The novelty test in Griffin v. Isaacs (supra) has an alternative consideration whereby the variation can be considered from the point of view of whether it concerns matters which "involve no ingenuity or inventive step". In this consideration I am mindful of the statements and findings concerning workshop improvements and novelty expressed in the Dennison v. Monarch case (supra), noting particularly those of Franki J. at p.454:

"Claim 5 gave me some concern. I am satisfied that the "elongate enlargement to facilitate insertion through the socket" is not disclosed in the Bayetto specification. It therefore represents an integer which is not disclosed in the Bayetto specification ....

Had it not been for Griffin v. Isaacs, supra, I might have had some doubt whether I should reach this conclusion. There was no evidence from anybody skilled in the art to indicate that the elongate enlargement is a feature which would not have been a development which any competent workman in the trade might have been expected to make. I agree with the views expressed by the Acting Deputy Commissioner of Patents when he said that it was "commonplace to provide an enlargement or strengthening of a thread which in use passes through a socket. The most commonplace example of that is, probably, the tang of a bootlace". I also agree with the learned trial judge when he said about this integer that: "At best it claims a mere workshop improvement." I take the view that this integer does not save the claim from being invalid."

From the preceding statement, in deciding whether in the present case the dishing of the reels involves any ingenuity or inventive step, I believe it is pertinent to consider whether such dishing is a feature a competent workman in the trade might have been expected to make. The only evidence of relevance to this is by Smyth. Smyth, who has had more than 20 years experience in the slot machine industry including design work therefor, states that at the priority date:

"any person employed in the design of mechanical components such as poker machine reels would have recognised that stiffening of an otherwise planar face can be achieved by providing a dished or frusto-conical central portion." (1st decl. para. 6)

Furthermore he states that:

"If, however, a need for a lighter stronger reel had become apparent prior to 1981, the use of a conical reel structure similar to that described in the Universal specification would have been amongst the design options which I would have had available to me at that time." (2nd decl. para. 7)

This evidence indicates that if a known flat pan reel needed to be strengthened (e.g. in order to avoid vibrational problems of the peripheral flange), the provision of a dished or frusto-conical central portion would have been a development recognised by a competent workman in the art. I therefore conclude that to vary the device of the prior art as disclosed in UK 1550732 by providing dishing of the central portion of the reels would be something a competent workman might normally do, i.e. would constitute a mere workshop improvement.

There is also the feature in the claim, related to the dishing of the reels, concerning accommodating pulse motors within the recesses formed by the reels. Regarding this feature, Yoshida for the applicant states in para. 3:

"in order that the dished central portion does not interfere with an adjacent pulse motor, the shape of the cavity so formed is designed to accommodate a pulse motor of an adjacent reel. Similarly it can also accommodate the pulse motor driving itself."

And in para. 13:

"the internal dished section for increasing strength is constructed not to hinder the pulse-motor thereby compact-assembling can be made.... "

Smyth, for the opponent, makes the following comments:

"With regard to the alleged advantage of accommodating the motor within the reel which it drives, or within the adjacent reel, the former is the approach adopted by Ainsworth in the stepping motor machines previously produced for the U.K. market [in 19821. In any event, one or other of these approaches would be essential to the achievement of a machine which was consistent with previous designs and had the reels closely spaced. The need to fulfil this design requirement would ensure that the reinforcing structure in the resulting reel design did not encroach upon the space to be occupied by the motor and would tend to direct the designer towards solutions similar to those adopted by Universal." (2nd decl. para. 7).

From this evidence, it seems to me that the positioning of the pulse motors as claimed is a design requirement stemming from the choice to provide dishing to the reels whilst wishing to retain a close reel spacing comparable to that existing in prior art slot machines with flat pan reels. That being so, I conclude that the claimed arrangement of pulse motor and reel would have been a configuration a competent workman in the art might normally be expected to make.

Accordingly I conclude that the variations the invention defined exhibits from the prior art device of UK 1550732 concern matters which involve no ingenuity or inventive step, and as the two devices are equally meritorious considered as inventions, I find the invention claimed to lack novelty. Whilst the above discussion and conclusion has been concerned with claim 1, the same conclusion also applies to claims 2 to 7 since, in my view, these claims introduce no characterising features which are either not disclosed in UK 1550732 or would not be developments normally done by a competent workman in the art at the priority date.

Claim 8 is an omnibus claim in the following terms:

"A slot machine as described herein and with reference to the accompanying drawings."

This claim is therefore restricted to the specific disclosure of the essential features of the slot machine as described and shown in the preferred embodiment. Despite the foregoing conclusions, I am not satisfied however that a patent confined to what is within the scope of claim 8 would be clearly bad for lack of novelty. For instance I note that UK 1550732 discloses a control system such as a computer which calculates "a random reel spin time or random angular displacement" for each reel and accordingly generates the required drive signals for the motors, whereas I construe claim 8 to include switching and control means for operating the motors wherein separate start and stop switches in association with a micro computer control each motor and hence reel rotation. There is no evidence before me to suggest that this variation is not such as to involve a substantial contribution to the working of the machine, or alternatively involves no ingenuity or inventive step. In my opinion a claim to the substance of what is claimed in claim 8 is not anticipated by the cited specification.

Obviousness

On the question of obviousness I note the remarks of Aickin J. in the case before the full High Court of Australia, Wellcome Foundation Limited v. VR Laboratories (Aust.) Pty. Ltd. (1982) RPC 343 at 346:

"It is as well to bear in mind that the question of obviousness involves asking the question whether the invention would have been obvious to a non-inventive worker in the field, equipped with the common general knowledge in that particular field as at the priority date, without regard to documents in existence but not part of such common general knowledge."

Consequently a consideration of the question of obviousness must be made against the background of the proven common general knowledge in the art in Australia. As to what constitutes common general knowledge, the following remarks of Aickin J. in Minnesota Mining and Manufacturing Co. v. Beiersdorf (Aust.) Ltd. 144 CLR 253 at 292 are apposite:

"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."

It is therefore necessary in order to assess the obviousness allegation to determine the common general knowledge relevant to the present situation.

Evidence has been filed on behalf of the opponent by Richard Edward Smyth and John Arthur Janson, each of whom has been employed in the slot machine manufacturing industry in Australia for lengthy periods and who are, in my view, suitably qualified to attest to the common general knowledge in the art at the priority date, 12 January, 1981. However these declarants provide no statements of what each considered was common general knowledge in Australia at that time. However given Ainsworth's high involvement in the industry, (both declarants have worked for that company over lengthy periods), I believe it is reasonable to conclude from the evidence that the standard poker machine, i.e. being mechanically driven, and the utilisation of pan-shaped reels (undished) therein, were well known and part of the common general knowledge in January 1981.

However the common general knowledge position concerning slot machines with pulse motor driven reels, as concerns the present invention, is not so apparent especially in the absence of expert evidence in this regard. Certain foreign patent specifications exhibited in evidence and published in Australia prior to 1981 have disclosed slot machines having pulse motor driven reels, but given the fact that Ainsworth seemingly had no project development in relation to that type of slot machine until 1982 (see Smyth's second declaration), I do not consider that those patent specifications particularly in the absence of clear evidence to the contrary can be taken to form part of the relevant common general knowledge (see General Tire & Rubber Co. v. Firestone Tyre & Rubber Co. Ltd. (1972) RPC 457 at 482). Whilst some personnel at Ainsworth clearly knew of stepping motor mechanisms (see Smyth), neither the exact extent of their knowledge of such mechanisms and of slot machines incorporating such mechanisms, nor how widespread such knowledge may have been in Australia, is apparent from the evidence before me.

As is observed in the Wellcome Foundation case (supra) consideration of the question of obviousness of the claimed invention involves asking whether the invention would have been obvious to a non-inventive worker in the field equipped with the common general knowledge in the art. Given the absence of sufficient evidence to establish common general knowledge in the art particularly with respect to slot machines incorporating pulse motor driven reels, I am unable to decide this question, and accordingly I must reject the allegation of obviousness of the claimed invention.

Conclusion

I have decided that claims 1 to 7 lack novelty and thus the opposition succeeds. Given my finding regarding claim 8, I consider the specification discloses novel subject matter and could be amended accordingly. I therefore afford the applicant 60 days from the date of this decision to seek appropriate amendment of its specification.

I award costs against the applicant.

(T.R. BRUHN)

Supervising Examiner of Patents

30 MAY 1988 Patent attorneys for the applicant: H.R. Hodgkinson & Co. Patent attorneys for the opponent : F.B. Rice & Co.