Konami Gaming, Inc.
[2016] APO 46
•12 July 2016
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Konami Gaming, Inc. [2016] APO 46
Patent Applications: (1) 2015200029; and (2) 2015200697
Titles:(1) Gaming Machine and Methods of Allowing a Player to Play Gaming Machines Having Expanding Symbol Positions; and
(2) Chinese Domino Video Wagering Game
Patent Applicant: Konami Gaming, Inc.
Delegate: M. G. Kraefft
Decision Date: 12 July 2016
Hearing Date: 10 May 2016
Catchwords: PATENTS – examiners’ objections - whether claimed inventions directed to a manner of manufacture - gaming machines - games played thereon – allocation of expanding special symbol positions on reels of gaming machines – display frame selection – winning combinations – modified payouts - claimed inventions not directed to a manner of manufacture – no patentable subject matter in specifications - applications refused
Representation: Patent applicant: Mr Mark Horsburgh, patent attorney, Fisher Adams Kelly Callinans.
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Applications: (1) 2015200029; and (2) 2015200697
Titles:(1) Gaming Machine and Methods of Allowing a Player to Play Gaming Machines Having Expanding Symbol Positions; and
(2) Chinese Domino Video Wagering Game
Patent Applicant: Konami Gaming, Inc.
Date of Decision: 12 July 2016
DECISION
The claimed inventions are not for a manner of manufacture. Furthermore there is no patentable subject matter within the specifications from which valid claims could be drafted.
The applications are both refused.
REASONS FOR DECISION
BACKGROUND
Konami Gaming, Inc (“the applicant”) filed patent application 2015200029 on 6 January 2015. The application is a divisional application based on AU patent 2013231053 which in turn is a divisional application based on AU patent 2012275033. The earliest priority date of application 2015200029 is 24 December 2012.
Application 2015200029 has been subjected to three examination reports. The applicant proposed amendments during the examination stages. However, in the latest report, an objection has been raised that none of the claims relate to patentable subject matter because they do not define a manner of manufacture within the meaning of Section 18(1)(a) of the Patents Act 1990.
The applicant filed patent application 2015200697 on 12 February 2015. This application claims earlier priority from a US basic application 61/939723. The earliest priority date of application 2015200697 is 13 February 2014.
Application 2015200697 has been subjected to two examination reports. The applicant proposed amendments during the examination stages. However, in the latest report, an objection is maintained that none of the claims relate to patentable subject matter because they are not for a manner of manufacture within the meaning of paragraph 18(1)(a) of the Patents Act 1990.
As a result of the adverse examination reports against both applications, the applicant requested to be heard.
The applicant failed to gain acceptance of both applications within the normal 12 month period for acceptance (sub-regulation 13.4(b) of the Patent Regulations 1991). However, under sub-regulation 13.4(g), where the Commissioner gives the applicant an opportunity to be heard in relation to a report under section 45, the applicant has 3 months from the date that a decision is made in writing in relation to the report.
SPECIFICATION FOR 2015200029
The specification for application 2015200029 (“the ‘029 application”) describes the subject matter as relating to gaming machines. Gaming machines have long ago developed from the mechanical type with mechanical reels and spin mechanisms to the electronic type involving computers and graphical displays. Electronic gaming machines have typically comprised a display, a user input device for wagering and game interaction, a controller including a random number generator for the control of game play, and coin, bill or other credit acceptors, and payout mechanisms. The specification particularly describes the subject matter as relating to an apparatus and method for allowing players to play gaming machines having expanding symbol positions. As background, the specification states that at least some known gaming machines display reels having a plurality of special symbols displayed within the reel. Known reels include a predefined number of special symbols displayed in each reel. Over time, during game play, the player may become aware of the number of special symbols displayed in each reel and may become frustrated because the number of special symbols within each reel remains constant for each game play.
The specification states that, accordingly, new features are necessary to appeal to player interest and enhance excitement to entice longer play and increased profitability.
The specification, as proposed to be amended, ends with 15 claims. Claim 1 reads as follows.
- A method of providing a game to a player through a game machine having a display device and a controller coupled to the display device, the method comprising the steps of:
displaying, on the display device, a display grid and at least one reel, a portion of the at least one reel being displayed within the display grid, the at least one reel including a run of consecutive symbol positions displaying the same symbols;
receiving, through the controller, a signal indicating a wager being made by the player via the user input device, randomly generating an outcome of a base game, and spinning and stopping the at least one reel to display the outcome of the base game;
detecting, through the controller, a triggering condition appearing in the outcome of the base game and responsively awarding a number of free games as a function of the triggering condition;
determining, through the controller, an amount of consecutive symbol positions associated with each of the number of free games, a corresponding amount of symbol positions associated with each free game being determined as a function of the number of free games being awarded, wherein each free game includes a different amount of consecutive symbol positions;
initiating, through the controller, a first free game including a first amount of consecutive symbol positions being displayed with the at least one reel in the first free game;
randomly selecting, through the controller, a first symbol from a set of symbols and displaying the first symbol in each of the first amount of consecutive symbol positions during the first free game;
randomly generating, through the controller, an outcome of the first free game and displaying, on the display device, the outcome of the first free game including spinning and stopping the at least one reel such that the first symbol in each of the first amount of consecutive symbol positions are moved through the display grid;
initiating, through the controller, a second free game including a second amount of consecutive symbol positions, the second amount of consecutive symbol positions being different than the first amount of consecutive symbol positions;
randomly selecting, through the controller, a second symbol from the set of symbols and displaying the second symbol in each of the second amount of consecutive symbol positions during the second free game;
randomly generating, through the controller, an outcome of the second free game and displaying, on the display device, the outcome of the second free game including spinning and stopping the at least one reel such that the second symbol in each of the second amount of consecutive symbol positions are moved through the display grid; and
providing the player an award as a function of at least one of the outcome of the first free game and the outcome of the second free game.Claims 2 and 15 are the other independent claims. These claims, respectively, are directed to a gaming device characterised by substantially the features of claim 1, and a non-transitory information recording medium containing a computer readable program that causes a computer to function as a gaming machine substantially as in claim 1.
SPECIFICATION FOR 2015200697
The specification for application 2015200697 (“the ‘697 application”) describes the invention in this case as relating to gaming machines for the playing of games of chance and, more particularly, to special features of games or feature games that may be offered on such machines. As background, the specification traces the history of gaming machines from the mechanical type with mechanical reels to the electronic type involving computers and graphical displays. The specification states that the introduction of electronics, computers and electronic graphical displays has allowed a continual increase in the complexity and variations of gaming machines, games and displays while maintaining the basic concept of the traditional machine. In some jurisdictions though, government regulations restrict the degree of variation which may be incorporated in games played on such machines. The specification then suggests that machines and games therefore that offer novel and stimulating variations on the basic game theme and environment, yet comply with these restrictions, are eagerly sought by the gaming industry and there is consequential intense competition between machine manufacturers to innovate.
Symbol patterns and relationships on reels are then discussed in the specification, as is the development of common sets of symbols in the gaming industry such as the use of cherries, the number 7, triple 7s, etc. This common symbol language though allows players to quickly understand the payout rubrics and gameplay of gaming machines. This regular use of various symbols also limits the variability of gameplay among gaming machines.
The specification states that it is an object of the invention to address or at least ameliorate some of the above disadvantages.
The specification, as proposed to be amended, ends with 35 claims. Claim 1 reads as follows.
- A game machine comprising:
a display configured to display a plurality of frames; and
a controller in communication with the display, the controller configured to:
select at least one symbol to display within each frame on the display;
determine the presence of a winning combination of symbols within a first set of frames;
determine the presence of a winning combination of symbols within a second set of frames, wherein the frames of the first set and second set of frames are mutually exclusive;
generate a payout amount if a winning combination is determined within the first set of frames or the second set of frames; and
modify the payout amount as a function of the symbol in at least another one of the frames separate from the first and second set of frames.Claims 18 and 35 are the other independent claims. These claims, respectively, are directed to a method of playing a game machine characterised by substantially the features of claim 1, and a non-transitory information recording medium containing a computer readable program that functions as a gaming machine substantially as in claim 1.
APPLICABLE LAW
Section 18 of the Patents Act 1990 provides that:-
(1)Subject to subsection (2), an invention is a patentable invention for the purposes of a standard patent if the invention, so far as claimed in any claim:
(a) is a manner of manufacture within the meaning of section 6 of the Statute of Monopolies; …
In National Research Development Corporation v Commissioner of Patents (“NRDC”), [1959] HCA 67, (1959) 102 CLR 252, the High Court provided a statement of the law in this regard. At page 275, “… a process, to fall within the limits of patentability which the context of the Statute of Monopolies has supplied, must be one that offers some advantage which is material, in the sense that the process belongs to a useful art as distinct from a fine art…- that its value to the country is in the field of economic endeavour”. In discussing the “vendible product” proposition put forward by Morton J in Re G.E.C’s Application, (1942) 60 RPC 1, the High Court in NRDC upheld the validity of a patent for the use of previously unknown properties of a known chemical to effect a new purpose. At page 277:-
“The effect produced by the appellant’s method exhibits the two essential qualities upon which “product” and “vendible” seem designed to insist. It is a “product” because it consists in an artificially created state of affairs, discernible by observing over a period the growth of weeds and crops respectively on sown land on which the method has been put into practice. And the significance of the product is economic; for it provides a remarkable advantage … for one of the most elemental activities by which man has served his material needs, the cultivation of the soil for the production of its fruits.”
In D’Arcy v Myriad Genetics Inc, [2015] HCA 35, the High Court noted the difficulty in that case, related to the patentability of an isolated nucleic acid coding for a mutant or polymorphic polypeptide, of engaging with the criterion of “an artificially created state of affairs”. At [91]:-
“Engaging with that criterion in this case places the question of patentability in too narrow a frame. It invites debates about the application of categories such as “products of nature” versus “artificially created products” which may be distracting from the central issue, that is whether an essential integer of the claims, the genetic information, takes them outside the category of that which can be “made”.”
Further in Myriad, an emphasis on considering the substance of the claimed invention over the form of the claims is apparent. At [94]:-
“Although it may be said in a formal sense that the invention as claimed, referring to isolated nucleic acids, embodies a product created by human action, that is not sufficient to support its characterisation as a manner of manufacture. The substance of the invention as claimed and the considerations flowing from its substance militate against that characterisation.”
In Grant v Commissioner of Patents, [2006] FCAFC 120, the Full Federal Court affirmed at [14] that business, commercial and financial schemes as such have never been considered patentable. Moreover at [16], the Full Federal Court stated as follows:-
“Patents have also been refused for methods of calculation, theoretical schemes, including business schemes and abstract plans, such as:
· systems for arrangement of known things, such as a plan relating to the layout of houses in a row or terrace so as to prevent overlooking (Re ESP’s Application (1944) 62 RPC 87);
· an arrangement of buoys for navigational purposes (Re W’s Application (1914) 31 RPC 141);
· a system of business even though its implementation involved the use of a printed envelope with a particular arrangement of words (Re Johnson’s Application for a Patent (1901) 19 RPC 56 at 56); and
· a method of preventing the fraudulent re-use of sales book dockets and books used in that connection (Re Brown (1899) 5 ALR 81).”
At [47], the Full Federal Court further stated that it has long been accepted that “intellectual information”, a mathematical algorithm, mere working directions and a scheme without effect are not patentable.
Gaming machines have been characterised by computer control, within the machines and as part of networked systems, of their operations and display functionality for a considerable period of time. In the realm of computer-implemented methods, the Full Federal Court in Research Affiliates LLC v Commissioner of Patents, [2014] FCAFC 150, discussed several authorities in Australia and other jurisdictions. At [94], the court stated that when the authorities in Australia prior to and including Grant are considered, a consistent approach emerged as to the relevance of a number of points. The pertinent points for the present cases are:-
- the distinction between mere intellectual information and a method that affects the operation of an apparatus in a physical form (Grant at [18]);
- whether part of the invention is an inventive method which includes the application and operation of the method in a physical device (Grant at [30]);
- the fact that a physical effect is required does not make it sufficient to confer patentability; and
- the fact that, for claimed computer programs, the courts look to the application of the program to produce a practical and useful result, so that more than “intellectual information” is involved (Grant at [29]). A method that is in the nature of directions for use does not constitute an invention or a manner of manufacture in the absence of some previously unrecognised property of an aspect of the method (Grant at [29]).
In Commissioner of Patents v RPL Central Pty Ltd, [2015] FCAFC 177, the Full Federal Court similarly dealt with a computer-implemented method. At [99], the court provided, in its own terms, a reiteration of some of the matters discussed in Research Affiliates. These were that:-
- it is necessary to ascertain whether the contribution to the claimed invention is technical in nature;
- one consideration is whether the invention solves a “technical” problem within the computer or whether it results in an improvement in the functioning of the computer, irrespective of the data being processed;
- does the claimed method merely require generic computer implementation?;
- is the computer merely the intermediary, configured to carry out the method using a computer readable medium containing program code for performing the method, but adding nothing to the substance of the idea?
Whilst the Research Affiliates and RPL cases related in general terms to business method applications and the implementation of those methods in computing environments, one may regard the present cases of a game, or a number of games, run on a gaming machine as broadly analogous in relation to the issue of whether an invention characterised by the nature of the game may become patentable simply by running that game on the gaming machine.
Aristocrat Technologies Australia Pty Ltd v Konami Australia Pty Ltd, [2015] FCA 735, specifically related to gaming machines. The claimed invention in that case broadly related to a random prize awarding feature involving a game console to offer a feature outcome when a game achieved a trigger condition, the game console including trigger means to test for the trigger condition and initiate the feature outcome on the trigger condition’s occurrence, where the trigger condition was determined by an event having a probability related to desired average turnover between successive occurrences of the trigger condition on the console. At [223], Nicholas J stated:-
“A mere idea that does not translate into a claim for a new and useful result is not within the concept of a manner of manufacture because it involves no more than “mere discovery” or “discovery without invention” cf. NRDC at 264. However, the inventions claimed in the 689 patent are not “mere ideas” but new and useful gaming machines and new and useful methods of operation producing new and improved results.”
Dynamite Games Pty Limited v Aruze Gaming Australia Pty Limited, [2013] FCA 163, concerned a standard patent and an innovation patent for gaming apparatus and systems. In both patents, the claimed inventions defined event guarantee features that triggered a game event within a set amount of gameplay.
The subject matter in the Aristocrat and Dynamite cases is clearly similar. On the other hand, Emmett J in Dynamite at [172], while not needing to form a final view on the point, expressed some doubt that the manner of manufacture requirement had been satisfied. In any case, both of the Aristocrat and Dynamite decisions were decided before the Full Federal Court’s decision in RPL and before RPL’s implication for computer-implemented methods became apparent.
In IGT v The Comptroller General of Patents, [2007] EWHC 1341 (Pat), the High Court of England and Wales refused four patent applications relating to gaming systems. The grounds of refusal were that the contributions that were made lay in the excluded field of a scheme, rule or method for playing a game, as per Article 52(2) of the European Patent Convention (“EPC”), which exclusions were deemed at [5] of IGT to be practically speaking of the same scope as the exclusions in Section 1(2) of the UK Patents Act 1977. It may be noted that Article 52(2) and Section 1(2) both group a scheme, rule or method for playing a game, or doing business, amongst other things, into the same category of excluded subject matter under their respective Subsection (c) in each case. This would appear to reinforce the position that subject matter relating to playing games and doing business may be treated analogously.
The patent applications in IGT all featured aspects relating to the play or running of bonus games on gaming machines. The free games in the ‘029 application may be considered to be similar to the bonus games in IGT. At [12], the High Court followed a 4 step “technical effect” approach from the England and Wales Court of Appeal decision in Aerotel Ltd v Telco Holdings Ltd; Macrossan’s Application, [2006] EWCA Civ 1371, which dealt with two appeals. From [40] in Aerotel, the 4 step approach was (1) properly construe the claim; (2) identify the actual contribution; (3) ask whether it falls solely within the excluded subject matter; and (4) check whether the actual or alleged contribution is actually technical in nature. Research Affiliates at [29] also cited the 4 step approach from Aerotel. At [30], Research Affiliates then explained that the second step required the court to consider what the inventor “has really added to human knowledge”, looking at substance and not form.
In view of Aerotel, a European Patent Office (“EPO”) Board of Appeal decision (T 0154/04) has described at [13] that the UK approach is irreconcilable with the EPC in some respects. The Aerotel decision added a rider to the “technical effect” approach at [26(2)] that novel or inventive purely excluded subject matter did not count as a “technical contribution”. The EPO decision stated though at [13] that a non-technical feature may interact with technical elements to produce a technical effect. In any case, the IGT decision held at [39] that the ultimate question was not whether the contribution was technical but whether it lay solely in an excluded area. That paragraph further stated that the issue of what is “technical” is of much less importance since that aspect ought to have been dealt with in looking at the third step. Again at [30], the Full Federal Court in Research Affiliates went further to state that, according to the third step, if the contribution identified consisted of excluded subject matter as such, it would be excluded and it would be unnecessary to progress to the fourth step. Research Affiliates also noted at [17] the apparent divergence of approach between the UK courts and the EPO Board of Appeal and concluded at [23] that it was more helpful to consider the analysis in the UK decisions which provided a consistent approach.
The IGT case and the RPL case also have some commonality of approach. The first step in IGT may be equated with the first sentence of [96] in RPL, which stated that a claimed invention must be examined to ascertain whether it is in substance a scheme or plan, or something more. The second and third steps in IGT may also be associated with the discussion in RPL at [96]. The fourth step in IGT is effectively equivalent to the first dot-point of [99] in RPL. The similarities of approach in IGT and RPL would again support an analogous treatment, as mentioned above, of subject matter relating to playing games and doing business. Thus, in the present cases, the principles from RPL, being broadly directed to computer-implemented business methods, are transferable to the area of computer-controlled games on gaming machines.
SUBMISSIONS
The applicant submitted that the examiners in both cases erred in reliance upon RPL and Research Affiliates as those decisions established a test for determining whether an otherwise non-patentable business method could be made patentable by implementation in a computer. In the present case the claims are not to a business method but to a gaming machine and a method of providing a game in a gaming machine.
The applicant further stated that it has long been established that gaming machines are patentable. Aristocrat v Konami at [223] and [224] was cited in support. It may be noted though that Nicholas J in Aristocrat v Konami went further than suggested by the applicant. At [223] and [224], Nicholas J indicated a satisfaction that the claimed inventions in that case were new and useful gaming machines and new and useful methods of operation producing new and improved results (my emphasis).
The applicant also asked that the patentability of board games be considered. That is, where the rules of a game have a working interrelationship with a game board and playing pieces then there is patentable subject matter. In the same way for gaming machines, there is a working interrelationship between the rules of the game and the operation of the machine.
For the ‘029 application, the applicant further submitted that the claimed invention related to more than just a game characterised by a triggering condition in an outcome of the base game awarding a number of free games, and including a determination of the number of consecutive symbol positions to display for each free game. Rather, the claims were directed to a gaming machine and a method of operating the gaming machine.
For the ‘697 application, the applicant further submitted that the claimed invention related to more than just the rules of a game but to the way the rules work. The applicant indicated that the present case operated multiple games at once with there being in effect two sub-games. It was suggested that this interrelationship of game features and games, and operation of gaming machine that determined a payout amount on the basis of both games and modified the payout amount based on a further symbol, was patentable subject matter.
DISCUSSION
The ‘029 Application
The invention, as defined in claim 1, is broadly directed to a method of providing a game to a player through a game machine having a display device and a controller coupled to the display device. The method comprises the running of a base game involving at least one reel that spins and stops to display the outcome of the base game. For reasons which should be apparent from the claim and, if not, would be apparent shortly, the reel would be a virtual reel in an electronic display, which is in the nature of gaming machines generally in the art, as distinct from a physical, mechanical reel. The reel includes a number of symbols in symbol positions around the reel, including a run of consecutive symbol positions displaying the same symbols. A triggering condition may be detected in the outcome of the base game and, in response thereto, a number of free games may be awarded as a function of the triggering condition.
For a first free game, an amount of consecutive symbol positions is allocated on the reel and a first symbol is selected for display in each of those positions during the game. An outcome is then determined for the first free game. The same process is repeated for a second free game with the notable point being that each free game includes a different amount of the consecutive symbol positions. That is, no two free games have the same number of consecutive symbol positions displaying the same symbol. In other words, the allocated role of at least one symbol position on the reel and the symbol(s) displayed in that or those positions are altered for subsequent free games for the player.
Applying the principle from Myriad of substance over form to the present case, it is clear that essential integers of the present claims include a gaming machine having a display device and a controller coupled to the display device. That is clearly discernible from the form of the claims. However it needs to be established whether the above claimed invention around the allocation of different numbers of consecutive symbol positions hosting the same symbol on a reel in subsequent free games is in substance a mere game, or rules of a game, or a mere scheme or intellectual information, or whether there is something more than that (RPL at [96]).
In the present case the player would see a variation of symbol(s) in at least one position on the reel for subsequent free games. This would principally be possible only with a virtual reel viewable through an electronic display since it would seem impractical to alter mechanical reels during game play. Taking the virtual concept further, it is also within the scope of the claimed invention that the total number of symbol positions on the reel is altered to accommodate alterations in the number of consecutive symbol positions displaying the same symbol. In other words, the electronic gaming machine can do or provide things that a mechanical gaming machine cannot. This may be described as a technical result. On the other hand, the result in the present case is achieved merely by appropriate computer programming of the gaming machine to solely provide a game where, amongst other things solely related to the nature of the game, a different amount of consecutive symbol positions on a reel is allocated the same symbol for each free game. Thus the substance of the claimed invention relates to the rules of a game and not to the operation of the gaming machine. In other words, there is no contribution to the claimed invention that is technical in nature (RPL at [99]) nor is there a method affecting the operation of the gaming machine in a physical form (Research Affiliates at [94]). Similarly, there is no physical phenomenon in which an effect of the gaming machine may be observed (NRDC at page 276), or a physical effect in the sense of a concrete effect or phenomenon or manifestation or transformation (Grant at [32]).
I conclude the claimed invention, as in claim 1, is not for a manner of manufacture. I conclude the same for all claims of the ‘029 application.
The ‘697 application
The invention, as defined in claim 1, is broadly directed to a game machine comprising a display and a controller in communication with the display. The controller is configured to select at least one symbol to display within each frame on the display, determine the presence of winning combinations within two separate sets of frames, generate a payout amount if a winning combination is determined in any of the two frame sets and modify the payout amount dependent on the symbol at a further frame location. Applying the principle from Myriad of substance over form to the present case, it is clear that essential integers of the present claims include a gaming machine comprising a display and a controller in communication with the display. That is clearly discernible from the form of the claims. However it needs to be established whether the claimed invention, around symbol and frame selection for determining winning combinations and modified payouts, is in substance a mere game, or rules of a game, or a mere scheme or intellectual information. I regard the above selections and determinations and payout provisions as merely relating to the rules of play of this particular game, and the controller and the display of the gaming machine are the enablers or merely the intermediaries (RPL at [99]). On this broad analysis, the patentability of the subject matter is clearly in question. The same applies for claims 18 and 35.
The title of the alleged invention and the embodiments relate to Chinese dominos. Winning combinations may arise amongst pairs of dominos in the same frame set in the display grid of a gaming machine where the two frame sets, each with two dominos, are aligned side by side in the same row, or where the frame sets are aligned vertically across more than one row, or vertically and horizontally. Alternatively, a winning combination may consist of a completed image between the frames of either frame set. In this case there would also appear to be no restriction on whether either frame set extends vertically and/or horizontally. Firstly at least the independent claims are not limited to any particular images, Chinese dominos or otherwise. Secondly the claims are also not limited in the juxtaposition of individual frames within any one frame set, whether that be adjacent vertically, horizontally, diagonally, or where individual frames within any one frame set may be randomly located and even relatively remote from one another within the display grid of a gaming machine. At the hearing I indicated that the claims encompassed the two frame sets in their simplest form being two pay lines on a gaming display and that the symbol at a third location may modify any payout amount, with the pay lines not necessarily being straight all the way through a display grid but potentially covering multiple rows in a display across multiple reels. Mr Horsburgh suggested that an opportunity to amend the claims of the application would be appropriate if the present claims failed in any way.
Even if all independent claims were narrowed though to define the Chinese domino embodiments and/or the alignment of frame sets, or to payouts being determined from winning combinations in both frame sets jointly, as Mr Horsburgh appeared to indicate may have been the intent, the conundrum over the patentability of the subject matter would appear to remain. The alleged invention principally relates to the selection of display images, the selection of individual frames that make up frame sets from which winning combinations may be determined, the generation of a payout amount for a winning combination in either frame set and the modifying of that amount dependent on the symbol at another frame location. This amounts to merely the rules of a game and their implementation with a gaming machine. The alleged invention is further characterised by mere directions for use and mere intellectual information without a method that affects the operation of the gaming machine in a physical form (Research Affiliates at [94]). Put another way, there is no physical phenomenon in which an effect, be it creation or alteration, of the gaming machine may be observed (NRDC at page 276), or a physical effect in the sense of a concrete effect or phenomenon or manifestation or transformation (Grant at [32]).
I conclude the claimed and alleged inventions of the ‘697 application are not for a manner of manufacture.
For the sake of completeness and since the applicant made submissions in respect to patented board games, I will refer to some US cases. In the US Supreme Court decision, Alice Corporation Pty Ltd v CLS Bank International (134 S Ct 2347 (2014)), the patents at issue disclosed a computer-implemented scheme for mitigating settlement risk. That is, the risk that only one party to a financial transaction will meet its financial obligations. The question for the US Supreme Court was whether the claims were patent eligible under Section 101 of the US Patent Act. Section 101 provides as follows:-
“Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.”
In Alice, the US Supreme Court stated that it had long held that this provision contains an important implicit exception that laws of nature, natural phenomena and abstract ideas are not patentable. The Australian courts have noted a commonality of approach with the US in respect to abstract ideas (for example Grant at [21] – [24]). In Ex Parte Kuester (PTAB Appeal 2013-001127 (2015)), the US Patent Trial and Appeal Board reversed the rejection of a set of claims covering a method of teaching by arranging cards for a game on a base, in which the base included compartments sized and shaped to receive and retain each card in place during the game. The board agreed that rules for playing a game constitute an abstract idea and that a method of playing a game is akin to the method of organizing human activity that was at issue in Alice. However the board found that the claims included limitations tying the method to a base having specific structural characteristics that add a degree of particularity to transform the claims into patent-eligible subject matter. In the present case, the claimed invention clearly relates the rules for playing a game on a gaming machine. Contrary to the situation in Kuester though, the presently claimed invention does not include any limitation tying the game play to any specific structural characteristics of an article or, in the present case, to any specific operational characteristics of a gaming machine. The claimed invention merely requires generic computer-implemented control of a gaming machine (RPL at [99]) enabling the machine to perform its normal functions of display symbol selection, determination of winning combinations in specified frame sets and the generation of payouts as appropriate.
Again, the claimed and alleged inventions of the ‘697 application are not for a manner of manufacture.
Further Descriptions in the Specifications
Both specifications include some discussion of gaming machine features and of gaming machines in gaming establishments. For example, gaming machines may be stand-alone devices or networked, such as in casinos. The networks may be wired or wireless. Various computer processing, data communications, program memory, database management and program module features within a gaming machine are also described. On the other hand these aspects have all been standard features of gaming machines for a considerable period of time before the priority date. There is nothing significant in the body of the specifications beyond the normal operation of gaming machines running games.
Consequently I further conclude there is no patentable subject matter within the specifications from which valid claims could be drafted.
CONCLUSION
I have found that the claimed inventions are not for a manner of manufacture, and that there is no patentable subject matter within the specifications from which valid claims could be drafted.
I refuse both applications.
M. G. Kraefft
Delegate of the Commissioner of Patents
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