Konami Gaming, Inc. - [2016] APO 46

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.

Grounds of appeal

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

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

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

Consideration

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

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

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Details

AGLC: Konami Gaming, Inc. [2016] APO 46
Case: [2016] APO 46
Decision Date: 12 July 2016

CaseChat Overview and Summary

Konami Gaming, Inc. filed two patent applications (2015200029 and 2015200697) with the Australian Patent Office. The applications related to gaming machines and methods for playing games on gaming machines. The primary focus of the applications was on the allocation of expanding special symbol positions on reels of gaming machines and display frame selection for determining winning combinations. The delegate of the Commissioner of Patents, M. G. Kraefft, refused both applications. The court held that the claimed inventions were not for a manner of manufacture and did not constitute patentable subject matter under Section 18(1)(a) of the Patents Act 1990. The court found that the inventions were essentially related to the rules of a game and did not involve a technical contribution or a physical effect observable in the operation of the gaming machine.

The court examined the principles established in various cases, including NRDC, D’Arcy v Myriad Genetics Inc, Grant, Research Affiliates LLC v Commissioner of Patents, RPL Central, Aristocrat Technologies Australia Pty Ltd v Konami Australia Pty Ltd, and IGT v The Comptroller General of Patents. The court noted that while gaming machines are generally patentable, the claims in these applications did not go beyond the rules of the game and the implementation of those rules using a gaming machine. The court concluded that the claimed inventions did not satisfy the requirement of being a manner of manufacture and did not involve any technical contribution or physical effect. Therefore, the applications were refused as they did not contain patentable subject matter.

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