Madness Gaming Products, Inc v B.C.D. Mecanique Ltee

[2001] APO 70

OFFICIAL NOTICE

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Application  :          No. 708104 in the name of MADNESS GAMING PRODUCTS, INC.

Title:          Method and Apparatus for Random Prize Selection in Wagering Games

Action: Opposition under Section 59 by B.C.D. MECANIQUE LTEE

Decision:          Issued            .

Abstract

The opposition was upheld on the ground that the invention does not involve an inventive step in light of the prior art. The grounds that the application lacks novelty and does not comply with section 40 were not upheld.

The invention relates to a method and apparatus in which a wagering game, such as "Blackjack" ("the underlying game") is overlain by another game in the form of a random jackpot game in which the awarding of a prize is based upon a predetermined event occurring in the underlying game.  The set of prizes from which the random jackpot prize is selected in the random jackpot game is also predetermined.

The method claims where found to be novel and to involve an inventive step.  However, the apparatus claims, which make extensive use of means plus function language, were found to lack an inventive step when properly construed.

One document which was relied on to establish lack of an inventive step was a patent document allegedly accessible to the public in the Dominican Republic Patent Department.  While the document may have been open to public inspection in this way a few months before the priority date of the present claims, the evidence suggested that no publication beyond this had occurred before that date.  The document was in the Spanish language.  This document was found to be not one that it could reasonably be expected to be ascertained by the person skilled in the art.

The claims of the opposed application were found to be entitled to their claimed priority date which resulted in another document relied on to establish lack of inventive step not being prior art information for the purposes of subsection 7(2) of the Patents Act (inventive step) due to it having a later publication date than the claimed priority date.

Costs were awarded against the applicant.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent No. No. 708104 in the name of MADNESS GAMING PRODUCTS, INC., and opposition thereto by B.C.D. MECANIQUE LTEE under section 59 of the Patents Act 1990.

BACKGROUND

Application 708104 was filed under the Patent Cooperation Treaty as International Application PCT/US97/05185 by Madness Gaming Products, Inc. on 28 March 1997, claiming priority from United States applications 60/014,657 and 08/761,492 filed on 2 April 1996 and 6 December 1996, respectively.  Australia was one of the countries designated.  PCT/US97/05185 was published under the PCT as WO 97/36658, and in Australia was allocated the application number 24275/97.  The application entered the national phase of processing on 16 September 1998, having undergone international preliminary examination under the PCT.  After being subjected to modified examination based on a granted United States Patent, the application was advertised accepted on 29 July 1999 and given the six-figure number 708104.

A notice of opposition to application 708104 was filed on 29 October 1999 by B.C.D. Mecanique Ltee.  The serving of the statement of grounds and particulars and evidence in support, answer and reply was relatively uneventful, and was completed on 12 June 2001.

The grounds of opposition specified in the statement of grounds and particulars are that the specification does not comply with the following provisions of the Patents Act 1990: subparagraph 18(1)(b)(i) (novelty), subparagraph 18(1)(b)(ii) (inventive step) and section 40. The particulars for these grounds refer to just four items of prior art, each of which is a patent specification. Only two of these patent documents (PCT application WO 96/11730 and Dominican Republic patent No. 5173) were relied upon at the hearing, and these documents are, moreover, family equivalents, although they are not linked by any priority claim.

The matter was heard on 24 September 2001 in Canberra.  The applicant was represented by Dr Mark Horsburgh, assisted by Sharon York, patent attorneys of the firm Fisher Adams Kelly, Brisbane, and the opponent was represented by Jeremy Dobbin, patent attorney of the firm F B Rice & Co, Sydney.

SPECIFICATION

The invention relates to a wagering game apparatus and method.  The invention has as its basis the enhancement of such casino games as blackjack (which are referred to as "the underlying game" in this specification) to stimulate the interest of players and, ultimately, expand turnover.  The particular enhancement with which this invention is concerned is the provision of a facility whereby a player can make a side wager, the success of which depends upon a predetermined event occurring in the underlying game and the return on which is randomly determined from among a set of predetermined values.  While the specification appears to principally envisage that the random return for a successful wager be generated electronically, it is not limited to this form.

The specification concludes with sixteen claims, of which Claims 1, 9 and 15 are independent.  As Claim 15 falls entirely within the scope of Claim 1, I only need here set out Claims 1 and 9. They read as follows:

"1.       A method of playing a wagering game comprising the following steps:

(A)     a player placing a prize wager,

(B)playing an underlying game, the underlying game being capable of producing a predetermined event,

(C)if the predetermined event occurs during the underlying game, then randomly selecting a prize from a predetermined set of prizes, and

(D)awarding the prize to the player,

whereby the underlying game may be enhanced by providing an opportunity for the player to win a randomly selected prize in the playing of the underlying game."

"9.An apparatus for use with a wagering game, the game being capable of producing a predetermined event, the apparatus comprising:

(A)random selection means for randomly selecting a prize from among a set of predetermined prizes,

(B)activation means for activating said random selection means when the predetermined event occurs, and

(C)display means for displaying the randomly selected prize,

whereby the game is enhanced by allowing a player to win the randomly selected prize during the play of the wagering game."

EVIDENCE

The evidence in support consists of the following statutory declarations and affidavits:

·    a declaration by Jeremy Dobbin dedicated to placing into evidence a number of documents which are included in the declaration as exhibits, these documents being:

§copies of the patent documents referred to in the statement of grounds and particulars

§a copy of US Patent No. 5,377,973 (a family equivalent to Dominican Republic patent 5173)

§copies of the priority documents of the application in suit

·    an affidavit by François Nadeau declaring to the date on which Dominican Republic patent 5173 became publicly available and including two exhibits which are e-mails from a law firm Messina & Messina in the Dominican Republic

·    a declaration by Philip Charles Bennett, the Managing Director of the company Legal Gaming and Hospitality Management Pty Ltd which provides consultancy services in the field of legalised gambling; Mr Bennett compares the content of the specification in suit with that of WO 96/11730 and US 60/014,657; he also declares that it was common general knowledge in the field of gaming in Australia before 1996 to randomly generate a prize chosen from a selection of prizes (such as in the case of the so-called "chocolate wheel") and to award prizes in cash or non-cash goods and services.

The evidence in answer consists of a statutory declaration by Andrew MacDonald.  Mr Macdonald has had extensive experience in the casino industry in Australia, and at the time of making the declaration was the Manager, New Gaming Developments with Publishing & Broadcasting Limited (often just referred to as "PBL").  Mr MacDonald agrees with Mr Bennett's analysis of the differences between the opposed specification and that of WO 96/11730, but he differs on the significance of those differences.  As well, he comments that use of patents in legalised gaming in Australia is not common and patents are not relevant to the common general knowledge.  He concedes that it is known to award "mystery or random jackpots" which are awarded when the cumulative amount wagered corresponds to a randomly generated amount.  He also concedes it is known to apply progressive jackpots to the winning of a primary wager.  However he considers it to be not obvious to combine these two methods to arrive at the present invention.  According to Mr Macdonald, the present invention forms the basis of a live card game which has been played in the Crown Casino in Melbourne since 28 March 2000 and has been a considerable commercial success.

Mr MacDonald is in agreement with Mr Bennett that chocolate wheel type devices are common general knowledge.  However he seeks to differentiate these devices from the present invention on the basis that the odds of winning in the case of chocolate wheels are fixed and relatively high (and thus the prizes are of a consistent, relatively low value), whereas the present invention allows a variable payout up to 250,000 to one.  Finally, Mr MacDonald challenges the assertion by Mr Bennett that the opposed specification describes a different game from that described in US 60/014,657.

The evidence in reply is a declaration by Regine Hyde, who is the manager of the searching department of FB Rice & Co.  In this declaration she provides evidence of the patenting activity in the field of legalised gaming in Australia in the years from 1992 to 2001.

More details of what is stated in the evidence, where relevant, will be given later in the decision.

SUBMISSIONS

At the hearing, Mr Dobbin stated that the opponent's case is based upon lack of novelty and inventive step in light of Dominican Republic patent No. 5173 and corresponding international patent application WO 96/11730.  The case for lack of inventive step in light of WO 96/11730 is reliant upon establishing that the present application is not entitled to its claimed earliest priority date of 2 April 1996, as WO 96/11730 has an international publication date of 25 April 1996.  However WO 96/11730 is available for novelty purposes on a "whole of contents basis", as it designates Australia and has a priority date of 18 October 1994 and filing date of 16 October 1995.

Mr Dobbin asserted that each integer defined by Claims 1 and 9 is disclosed in the cited documents, and all the features defined by the other claims are either similarly disclosed, or are lacking an inventive step.  The argument for the present application not being entitled to its earliest claimed priority date is based upon the fact that whereas the present invention requires a "predetermined event" to occur in the underlying game before random selection of a prize takes place, United States application 60/014,657, upon which the present application relies to obtain its priority date of 2 April 1996, requires a "winning hand".  Mr Dobbin therefore concluded that WO 96/11730 may be combined with the common general knowledge in Australia to establish a lack of inventive step objection against the patent.  In relation to Claim 1 he noted in his written submissions that the Bennett declaration

"describes the well known mechanical 'chocolate wheel' and other well known methods of randomly selecting a prize from a predetermined set of prizes in the field of gaming.  Thus even if feature (D) of claim 1 were not disclosed in JMD 7, that claim would lack an inventive step."

Finally, Mr Dobbin restated the various aspects of alleged non-compliance with section 40 as set out in the statement of grounds and particulars in respect of that ground.

Dr Horsburgh began by observing that the present invention did not relate to the category of jackpots commonly referred to as "progressive", that is, jackpots that build up over time in proportion to the amount wagered without success in attempting to win them.  Instead it related to random jackpots.  Dr Horsburgh noted this as a difference between the present invention and WO 96/11730.  He also noted that whereas the present invention defined by Claim 1 required the placing of a wager, WO 96/11730 merely utilised a token acceptor.  According to Dr Horsburgh a token acceptor does not imply, or describe, a wager, and, in fact, the citation even refers to the possibility of a winner being selected who had not even contributed a token.  Finally, Dr Horsburgh drew attention to the circumstance that whereas with the present invention the awarding of a prize was based on a predetermined event, in WO 96/11730 the determination of a winner must occur at the end of the game.  The determinant may, for example, be whether a player is a loser or has the highest card combination.

In relation to Claim 9, Dr Horsburgh stated as follows:

"The means plus function language of Claim 9 limits its scope to those integers which achieve the stated function.  The elements identified by the opponent achieve a different function and therefore do not anticipate the elements of the apparatus claim."

On the issue of inventive step, Dr Horsburgh drew attention to the lack of evidence as to the common general knowledge, and dismissed the applicability to inventive step of WO 96/11730  because of it not having been published in time and Dominican Republic patent No. 5173 because of there being no proof of it ever having been published.  On the priority claim of the opposed application he contended that there had been a real and reasonably clear disclosure of the claimed invention in the priority document in question, and thus the priority claim is valid.
Finally, in respect of the section 40 issues raised by the opponent, Dr Horsburgh noted that these were of a minor nature and appeared to have had no impact on any of the declarants for either side. He also noted that so far as fair basis is concerned an exact correlation of language is not required, and furthermore the claims need only recite the essential integers and it is not a requirement that the claims list every integer found at some place in the specification.

I will provide more details of the parties' submissions, where relevant, later in my decision.

DECISION

Preliminary Issues

Status of Dominican Republic patent No. 5173

In the course of the hearing several issues arose in relation to the status of Dominican Republic patent No. 5173.  The first of these concerns whether this document has been properly particularised in the statement of grounds and particulars in respect of the ground of novelty.  While being listed as a particular to the ground of novelty, no explanation is given of its significance.  Instead, such explanation concentrates on WO 96/11730.  It is possible to speculate why this is so.  Dominican Republic patent No. 5173 is a rather obscure document, and may not have been available when the statement of grounds and particulars was being composed or, if it had been available it may not have been available in English translation (it is a Spanish language document).  Another reason why the statement of grounds and particulars may not have paid any regard to Dominican Republic patent No. 5173 is that its disclosure is for all intents and purposes the same as WO 96/11730, and there was thus no point in doing so.  And this I think is the crux of the matter: it is irrelevant to the outcome of this opposition whether Dominican Republic patent No. 5173 is considered to be a particular for the ground of novelty or not.  Because of this it is not strictly necessary for me to decide this point, but nonetheless I will make the observation that I am unable to discern anything I consider to be inadequate in the particularization of Dominican Republic patent No. 5173.

The second issue that arose in relation to Dominican Republic patent No. 5173 is whether it could be considered to be a publicly available document. Once again, so far as the ground of novelty is concerned it is not strictly necessary for me to decide this point, given the existence of WO 96/11730 and its availability as a novelty citation. However, the opponent also seeks to rely on Dominican Republic patent No. 5173 to establish its ground of lack of inventive step, a purpose for which WO 96/11730 is not available as a consequence of my finding later in this decision as to the priority date of the present application. Therefore another issue related to that of the public availability of Dominican Republic patent No. 5173 is whether in accordance with subsection 7(3) of the Patents Act it could reasonably be expected to be "ascertained" by the person skilled in the relevant art.

The situation in relation to the public availability of Dominican Republic patents is set out in this e-mail, which is an exhibit to the affidavit of François Nadeau:

"In connection to our communications of today's date and to the telephone conversation held to Mr. Nuñez we confirm you that in our country the patent applications and registrations are not published at any time.
Nevertheless, the patents are open to the public when the register certificate has been issued since someone could apply for a certification of this patent and the Patent Department should grant the corresponding data."

Dr Horsburgh disputed whether this was adequate evidence to establish public availability.  However, putting that consideration aside, there is certainly nothing in the evidence indicating any means of knowing what is in the records of the Dominican Republic Patent Department.  It therefore appears that some sort of prior awareness of the existence of Dominican Republic patent No. 5173 would have been required in order to access it, such as applies with the present opponent which I understand from comments made by Mr Dobbin at the hearing is in effect the owner of Dominican Republic patent No. 5173.  It must also be taken into account that Dominican Republic patents are, it appears, Spanish language documents.  Moreover, I note that registration of the patent only took place a few months before the priority date of the present application.  And a final aspect for consideration is that the only evidence on point (that of Mr MacDonald) suggests that persons skilled in the art in Australia "have limited need to consider or read patents".  All these factors strongly suggest, particularly given the exoticness of the locale in which the document resides, that it would not be reasonable to expect that the person skilled in the art in Australia could have ascertained Dominican Republic patent No. 5173.  Certainly, as per my approach in Beissbarth GmbH v Snap-On Technologies Inc. [2001] APO 20, I consider that in order to find otherwise some strong evidence to that effect from persons killed in the art would need to be forthcoming. As there is no evidence of that nature, I therefore find that it is not reasonable to expect that Dominican Republic patent No. 5173 could have been ascertained by the person skilled in the art, and therefore that document cannot be considered as prior art information for the purposes of subsection 7(3).

Priority date of the claims of the opposed application

It is alleged by the opponent that the claims of the opposed application are not entitled to the priority date claimed for them, namely, the filing date of US basic application 60/014,657.  The issue arises principally from the fact that in referring to "winning combinations" and the such-like, US 60/014,657 is open to interpretation as to whether it is a winning combination in accordance with the underling game described in the specification that is being referred to or whether it is a winning combination that has been predetermined for purposes of the random jackpot game.  If the former interpretation holds good, then, so the argument goes, the claims are not entitled to take their priority date from US 60/014,657 because they include within their scope something not disclosed in US60/014,657, namely, the possibility that a winning hand in the random jackpot game is not a winning hand in the underlying game.  Each party was able to cite passages from US 60/014,657 in support of its position, with the opponent relying on findings in Anaesthetic Supplies Pty Ltd v Rescare Ltd 28 IPR 383, (1994) AIPC 91-076, 122 ALR 141, and the applicant relying on CCOM Pty Ltd v Jiejing Pty Ltd 28 IPR 481, (1994) AIPC 91-079.

In my view, reliance on Anaesthetic Supplies Pty Ltd v Rescare Ltd (supra) as an authority in the present matter is problematical.  This is because, in the first place, it deals with fair basing on a provisional specification and, in the second place, later decisions such as CCOM Pty Ltd v Jiejing Pty Ltd (supra) and Sartas No. 1 Pty Ltd v Koukourou & Partners Pty Ltd and Nicola Leonardis 30 IPR 479 and (1995) AIPC 91-121 seem to have adopted a different approach to the earlier decision. However, I accept the proposition put forward by Dr Horsburgh, based on CCOM Pty Ltd v Jiejing Pty Ltd, that fair basis requires a real and reasonably clear disclosure.  Even though CCOM Pty Ltd v Jiejing Pty Ltd also deals with fair basing on a provisional specification, there are a number of other authorities supporting that general proposition.

The main thing that the opponent has going for it on this issue is that in US 60/014,657 all the winning hands in the random jackpot game that are exemplified or indicated as preferred are also winning hands in the underlying game.  The underlying game in the preferred embodiment is Blackjack, and the preferred winning hands are the various ace plus 10 value card (10, jack, queen, king) combinations.  However, nowhere in the specification is it stipulated that the jackpot winning hand has to be a hand that is also a winning hand in the underlying game.  At one point in US 60/014,657, in discussing how large jackpots are achieved, the following is stated:

"Broadly speaking this is accomplished in accordance with the present invention by setting up a system which combines the statistical frequency in which random values are sent to the jackpot meter with the statistical odds of being dealt a winning hand combination.  Jackpot-winning hands of cards are selected so that the probability of such a win is low."

I draw two inferences from this passage.  These are that, firstly, where the specification uses the expression "winning" it is doing so in the context in the context of the random jackpot game.  Secondly, it indicates that there is an arbitrariness in the selection of what constitutes a winning hand which is constrained only by the need for there to be a low probability of it occurring.  It must also be borne in mind that the addressee of the specification must be assumed to bring to their consideration of the specification their common general knowledge (see, for example, Stauffer Chemical Company's Application [1977] RPC 33) and a reasonable amount of commonsense (Osram Lamp Works Ltd v Pope's Electric Lamp Co. Ltd. (1917) 34 RPC 369).

The upshot is that on my reading of US 60/014,657 it would not convey to the addressee of the specification that it was an essential feature of the invention that a winning hand for the random jackpot game had to be a hand that was also a winning hand of the underlying game. Therefore I find that there has been a real and reasonably clear disclosure in US 60/014,657 of the invention claimed in the opposed application, and accordingly the opposed application is entitled to its claimed priority date of 2 April 1996. As a consequence of this finding WO 96/11730, which has an international publication date of 25 April 1996, does not constitute prior art information for the purposes of subsection 7(2) of the Patents Act (inventive step).

Novelty

The test for determining whether the invention lacks novelty is the "reverse infringement test" as set out in Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) 137 CLR 288 at page 235 where Aickin J stated:

"The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask whether the alleged anticipation would, if the patent were valid, constitute an infringement."

Infringement occurs when "each and every one of the essential features" of the claim has been disclosed in the prior document: see Rodi and Wienenberger AG v Henry Showell Ltd [1969] RPC 367 at page 391.

The only disclosure which the opponent seeks to rely upon to establish its ground of novelty is WO 96/11730 and its equivalent, Dominican Republic patent No. 5173.

The applicant relies on three points of distinction to differentiate its claimed invention from the prior art represented by WO 96/11730.  Two of these may be rejected fairly readily.  They are:

·    Firstly, the applicant asserts that WO 96/11730 does not disclose placing a prize wager.  This is clearly not correct, as there is an explicit disclosure of the possibility for requiring a stake of a coin or token in order to participate in the random jackpot game, and there is in any case a reference to the token having a value, part of which goes to increment the jackpot.

·    The second way in which the applicant asserts its invention differs from the prior art is that in the cited prior art the determination of a winner for the random jackpot game must occur at the end of the game, whereas with present invention the predetermined event determining the winner for the random jackpot game occurs during the underlying game.  I fail to understand this.  In the particular examples in the prior art cited by the applicant where a loser or the holder of the highest card combination in the underlying game is a winner for the purposes of the random jackpot game, the "predetermined event" of losing or holding the highest card combination obviously occurs during the underlying game.

The third way in which the applicant seeks to differentiate its invention over the prior art is that whereas the present invention involves a predetermined set of prizes, the prior art employs a progressive jackpot.  Here I think the applicant is on solid ground.  The present invention as claimed calls for the selection of a prize from a predetermined set of prizes.  What that conveys to me is that all prizes are fixed, although obviously there is randomness to which prize a winner of the random jackpot game will end up with.  In response, Mr Dobbin made the statement at the hearing that Claim 1 does not exclude from its scope progressive jackpots.  I disagree with this assertion.  While it is correct that Claim 1 does not explicitly make reference to progressive jackpots being excluded, in effect the fact that the prizes are a predetermined set would appear to mandate this.

WO 96/11730, on the other hand is entitled "Progressive Jackpot Gaming with Random Prize Generation", and is clearly concerned with a gambling game having as one of its features a progressive jackpot.  It is true that one preferred component of the game is a small fixed prize (a so-called "random fixed amount"), but this exists in tandem with the progressive jackpot aspect of the arrangement.  It cannot be said, therefore, that WO 96/11730 involves a "selecting a prize from a predetermined set of prizes" (my emphasis), as with the present invention.  This is notwithstanding that one small passage in the specification read in isolation appears to suggest the contrary.  That passage reads as follows (with paragraph iii being especially relevant):

"The invention provides a progressive jackpot game in which a prize is determined by one or more of the following:
           i) randomly choosing the winning card or combination of cards at the end of the principal game;

ii) randomly selecting at the end of the principal game from all participants one of the following:  a) directly a winner;  b) a single participant who may win if in possession of the card or combination of cards determined in i); and c) a table where participants may win if in possession of the card or combination of cards determined in i); and

iii) randomly selecting the amount of the prize either as a random fixed amount or a random percentage of the jackpot."

The notion of the only prize on offer being a fixed amount is clearly at odds with the notion of a progressive jackpot game, and I think ought to be set aside as anticipating the invention defined by the claims of the opposed application when due consideration is given to such authorities as General Tire & Rubber Co. v Firestone Tyre & Rubber Co. Limited [1972] RPC 457, in which it is stated that

"To anticipate the patentee's claim, the prior publication must contain clear and unmistakable directions to do what the patentee claims to have invented ... A signpost, however clear, upon the road to the patentee's invention will not suffice.  The prior inventor must be clearly shown to have planted his flag at the precise destination before the patentee."

In conclusion then, the distinction of "a predetermined set of prizes" is, I believe, sufficient to confer novelty on the presently claimed invention over what is disclosed in the prior art, particularly bearing in mind where the benefit of the doubt lies in opposition actions, as expressed by the High Court in Microcell Ltd.'s Application 102 CLR 232:

"it is well settled that the Commissioner ought not to refuse acceptance of an application and specification unless it appears practically certain that letters patent granted on the specification would be held invalid."

Hence I find the claims of the opposed application to be novel in light of WO 96/11730 and its equivalent, Dominican Republic patent No. 5173.

Inventive Step

According to subsections 7(2) and 7(3) of the Patents Act, a claimed invention will lack an inventive step if it is obvious 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.

In the present opposition, as a result of my earlier findings on the various matters I have designated as preliminary issues, there is no document in the evidence with which to sustain the ground of lack of inventive step.  If lack of an inventive step is to be established, it must be on the basis of common general knowledge alone.

As a precursor to any inventive step consideration, the state of the common general knowledge in the art has to be established.  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 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."

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 something is common general knowledge.

In its statement of grounds and particulars the opponent has invoked the following items of common general knowledge:

(i)The random selection of a prize from a predetermined set of prizes, such as by means of a chocolate wheel or an electronic equivalent;

(ii)The awarding of goods such as cars and services instead of, or as well as, monetary sums as prizes in casinos, clubs or the like;

(iii) The use of display means to display prizes and jackpots;

(iv) Storing pay tables in memory means.  The generation of random numbers to select prizes by comparing the random number to the pay table.

Dr Horsburgh made submissions as to the lack of evidence on common general knowledge and the unsuitability of Mr Bennett to give evidence on common general knowledge.  However, I think it is pretty well incontravertible that the items (ii) and (iii) are common general knowledge.  In regard to item (i), Mr Bennett states

"In the claims of [the opposed application], in particular, in part (C) of claim 1, parts (A) and (B) of claim 9 and part (D) of claim 15 all relate to the random selection of a prize from a predetermined set of prizes.  The idea of randomly selecting a prize from a predetermined set of prizes, particularly with slot machines, is very old and is very commonly used in the field of gaming in Australia and worldwide.  The concept of spinning a wheel, for example, and winning a prize indicated in a segment where the wheel stops, is very well known.  Examples are chocolate wheels, casino big wheels, pick a box, pick a card, which have been known for many years prior to 2 April 1996.  Now produced and shown to me and marked PCB.4 is a brochure on the "Big Wheel" game played at Sydney Harbour Casino (now Star City Casino) which carries a publication date of 09/95.  That is just one example of the concept of randomly generating a prize chosen from a selection of prizes, which, in my view, was part of the common general knowledge in the field of gaming in Australia, before April 1996, and indeed, for many years beforehand."

I have some reservations about this evidence, in that my concept of a chocolate wheel is a device for determining a winning number, and "Big Wheel" seems to fall into a similar category, although unlike a chocolate wheel the odds of a particular symbol winning are not the same and the odds paid out vary accordingly.  However, I am aware from my own knowledge that the "lucky-dip" type of prize-selection is well known.  I also note that Mr Macdonald does not contest the evidence of Mr Bennett in this regard as such.  I am therefore prepared to accept item (i) as being part of the common general knowledge in the art.

There is no declaratory evidence on the issue of whether item (iv) is common general knowledge.  However, admissions of the common general knowledge in the specification under consideration may be taken as established, as is indicated by this passage from Bristol-Myers Squibb Co v F H Faulding Limited 46 IPR 553:

"If a patent application, lodged in Australia, refers to information derived from a number of prior publications referred to in the specification or, generally, to matters which are known, in our view the Court - or the Commissioner - would ordinarily proceed upon the basis that that the knowledge thus described is, in the language of s 7(2) of the 1990 Act, part of 'the common general knowledge as it existed in the patent area.'"

However, as I indicated in Beissbarth GmbH v Snap-On Technologies Inc. (supra), account needs to be taken of the significance of the use of the word "ordinarily" in this quote.

In the opposed specification, the following statement appears:

"Numerous random number generating techniques and seeds for initializing the random number generators are well known in the art."

I recognise that the opposed application is the product of modified examination and thus the quoted statement could perhaps be regarded as only being a statement of the common general knowledge in the United States.  Nonetheless in the absence of any evidence to the contrary I am prepared to accept the above statement as reflecting the true state of the common general knowledge of the person skilled in the art in Australia as well, although falling somewhat short of what item (iv) purports.

Turning now to what is claimed by the opposed application, the inventive concept of the invention defined by Claim 1 is the superimposition of one game upon another in a manner which cannot be said to be common general knowledge in the art and which in my view is sufficiently removed from the common general knowledge to have required some exertion of the inventive faculty to have achieved.  I therefore find that Claim 1, and Claims 2 to 8 appended thereto, involve an inventive step.  Claims 15 and 16 fall within the scope of Claim 1, and it follows that these claims also involve an inventive step.

Claim 9 is, however, a somewhat different proposition.  Dr Horsburgh referred to Claim 9 as being a "means plus function" claim, and observed that it is limited in scope to those integers which achieve the stated function.

Where the expressions "for" or "for use in" appear in a claim to an apparatus, they are taken to be merely indicative of the environment in which it is intended to use the apparatus, and to not limit the apparatus to use solely in that environment.  This is the plain meaning of those expressions.  Thus, on a proper construction, Claim 9 appears to define substantially no more than a random selection means plus an activation means plus a display means. 

"Random selection means" (for example, random number generators) are common general knowledge in the art, as I have found.  The fact that a random selection means is capable of "selecting a prize from among a set of predetermined prizes" would appear to be intrinsic to a random selection means, but in any case would not appear to amount to anything which could be considered inventive.  Similarly, "activation means" would appear to be intrinsic to a random selection means - one would expect that a random selection means would require an activation means in order to function.  "Display means" are common general knowledge in the art, and their utilisation in conjunction with a random selection means would require no inventive step as the advantages of doing so would be obvious to the person skilled in the art.  Accordingly I am unable to perceive anything in the apparatus defined by Claim 9 which could be considered to involve an inventive step over the prior art.

There are 5 claims appended to Claim 9.  They read as follows:

"10.The apparatus of claim 9 wherein said random selection means comprises a computer.

11.The apparatus of claim 10 wherein said computer comprises:

(A)random number generating means for generating a random number and

(B)memory means for storing a predetermined pay table,

whereby said computer may generate a random number and select a prize by comparing the random number to the pay table.

12.The apparatus of claim 10 further comprising sensing means for sensing wagers made by the player, whereby said computer may record and monitor wagers made by the player.

13.The apparatus of claim 9 wherein said display means is an electric sign.

14.The apparatus of Claim 10 wherein the activation means is an electric switch, whereby said electric switch transmits a signal to said computer."

Claims 10, 13 and 14 all define matter which is clearly common general knowledge and does not contribute any inventive subject matter to the claims to which they are appended.

Feature (B) of Claim 11 is also clearly common general knowledge, and I have already found feature (A) to be the same.  In my view there is nothing in the subject matter of Claim 11 which would render it inventive.

Claim 12 appears to include within its scope such well known arrangements as the coin-freed mechanism of poker machines, in which it is also well known include a mechanism to keep a tally of the number of coins being inserted into the machine (by law in most jurisdictions, as I understand it).  There would appear to be nothing amounting to an inventive step in adding such an arrangement to a wagering game apparatus.

Therefore I find that Claims 9 to 14 do not define an invention which involves an inventive step.

Section 40

The opponent has raised several section 40 issues in relation to the specification of the opposed application. The one with the greatest degree of substance concerns the fair basis of the claims. The specification has a number of imperfections in the form of apparent contradictions and inconsistencies within the body of the specification and between the claims and the body of the specification. However, I think these can all be resolved satisfactorily. Mr Dobbin himself stated at the hearing that "Claim 1 recites all the essential features of the invention", and I think this correctly expresses the situation.

The only other section 40 issue of any substance raised by the opponent concerned the clarity of the expression "may be" in Claims 1 and 16 and "may" in Claim 12. The use these impressions is claimed, as I understand it, to create vagueness and uncertainty as to the scope of the claims in question. I fail to see this. The words "may" and "may be" are clearly being used in the sense of "imparting a capability".

I find that that the opposed application satisfies all the requirements of section 40 of the Patents Act.

CONCLUSION

I have found that the grounds of opposition of non-compliance with section 40 and subparagraph 18(1)(b)(i) (novelty) of the Patents Act 1990 have not been established, but I have found that the opponent has been successful in its ground of opposition of non-compliance with subparagraph 18(1)(b)(ii) (inventive step). In particular I have found that Claims 9 to 14 do not involve an inventive step.

Consequently I find that the opposition has been made out in part, but as the specification is clearly capable of amendment to overcome its shortcomings which have been identified in this decision I allow the applicant sixty days from the date of this decision to propose amendments to that effect.  If suitable amendments are not filed within that time I will refuse the application.

COSTS

It is a general principle in matters such as these that costs follow the event.  There are no special factors present in this matter that would justify departing from that general principle.  As the opponent has been successful in its opposition, I award costs against the applicant, Madness Gaming Products, Inc.

E. J. Knock

Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :  Fisher Adams Kelly, Brisbane

Patent attorneys for the opponent   :  F B Rice & Co, Sydney