Novomatic AG
[2017] APO 24
•26 May 2017
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Novomatic AG [2017] APO 24
Patent Application: 2016201789
Title:Electronic gaming device
Patent Applicant: Novomatic AG
Hearing Officer: Dr S.D. Barker – Deputy Commissioner
Decision Date: 26 May 2017
Hearing Date: Applicant was invited to request to be heard, but did not request to be heard. Matter was heard by consideration of submissions previously provided in relation to the parent application.
Catchwords: PATENTS – examiner objection – grounds of manner of manufacture and support – law on computer related inventions is applicable to electronic gaming machines – substance of the invention is a scheme for how to start a game – ground of manner of manufacture made out – ground of lack of support not made out – application refused
Representation: Patent attorney for the applicant: Cullens Pty Ltd
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2016201789
Title:Electronic gaming device
Patent Applicant: Novomatic AG
Date of Decision: 26 May 2017
DECISION
The invention as claimed in claims 1 – 14 is not a manner of manufacture.
I refuse the application.
REASONS FOR DECISION
Patent application 2016201789 (the present application) was filed by Novomatic AG (the applicant) on 22 March 2016.
The application is a divisional application of 2010251451 (the parent application). The parent application lapsed without gaining acceptance. The parent application claimed priority from DE 20 2009 007 113.8 (filed on 18 May 2009).
An examination report on the present application issued on 3 April 2017 raising the grounds of manner of manufacture and support. That report also included the observation:
"My report below includes objections that are equivalent to objections raised in the examination of the related parent application which is directed to the same or essentially the same subject matter. As there has now been several adverse reports in relation to this subject matter, the application will be referred to a Hearing Officer to consider whether to accept or refuse the application under s49 or to direct amendment under s107. If you wish to be heard on this matter, you have one (1) month from the date of this report to request a hearing. Fee item 230 applies.
If you request a hearing you will contacted regarding the relevant deadlines in due course. Hearings in relation to examination objections are normally by way of written submissions. If you disagree with the Hearing Officer's decision you may appeal the decision to the Federal Court of Australia."
The applicant did not ask to be heard.
In deciding this matter I have had regard to the submissions provided by the applicant in relation to the parent application.
The relevant law
The examination of the present application is governed by the Patents Act 1990 (the Act) as amended by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (the Raising the Bar Act). Amendments to sections 7, 40 and 49 of the Act apply to the present case as a consequence of Schedule 1, items 55(1)(d) and 55(4)(a), and Schedule 6, item 133(7)(d) of the Raising the Bar Act – the application was made after 15 April 2013.
The standard of proof that applies to the examination of the present application is the balance of probabilities – I must accept the present application if satisfied on the balance of probabilities that the application complies with the Act.[1] If I am not so satisfied, then I can refuse the application.[2]
[1] Section 49 of the Act as amended.
[2] Explanatory Memorandum to the Raising the Bar Bill at page 54.
THE SPECIFICATION
The specification of the present application states that the field of the invention is:
"The present invention relates to an electronic gaming machine, in particular a lottery gaming machine, having a game server for controlling a game and to which at least one gaming apparatus can be connected, wherein the game server has at least one game ticket block, preferably an electronic game ticket block, including a plurality of preferably electronic game tickets which are each individually characterized by a winning number combination, wherein the at least one gaming apparatus can be connected to a credit store associated with it which can be loaded by an input apparatus and including a ticket purchasing apparatus for purchasing a game ticket while reducing the credit stored in the credit store."
The discussion of the prior art focusses on DE 295 16 968, which relates to lottery gaming machines. The specification notes several disadvantages associated with the prior art:
· a gaming ticket is completed in writing and scanned into the system;
· determination of winning lottery tickets is complicated, since scanned data has to be transformed; and
· paying out can optionally only be made after a long delay.
The solution presented in the present application, in its broadest form, is as follows:
"In one broad form, the invention provides an electronic gaming machine comprising:
a game server for controlling a game, wherein the game server is configured to be indirectly or directly connected to at least one gaming apparatus, and wherein the game server comprises an electronic game ticket block comprising a plurality of electronic game tickets with which for each electronic game ticket at least one winning symbol combination is associated, and wherein the gaming apparatus is connectable to a credit store which is associated with the gaming apparatus and which can be loaded with a credit via an input apparatus; and
a ticket purchasing apparatus for purchasing a game ticket while reducing the credit loaded in the credit store, and wherein the gaming apparatus comprises a gaming device configured to receive a winning symbol combination from a winning symbol generator after purchase of a ticket and to compare the received winning symbol combination with the winning symbol combination associated with the purchased ticket, said gaming device being further configured to be actuated in dependence on a course of a game while using, as a basis, data of the same game ticket in a plurality of game rounds from the credit store and then from a winnings store;
wherein in a first game round the gaming device is configured to be actuated upon reduction of the credit from the credit store and to compare a first round winning symbol combination received from the winning symbol generator with the winning symbol combination of the purchased ticket; and
wherein in a second game round the gaming device is configured to be actuated upon reduction of the credit from the winning store, if any of the credit was credited to said winning store in the first game round, and comparing the second game round winning symbol combination received from the winning game generator with the winning symbol combination associated with the same game ticket used in the first game round."[3]
[3] The present application at page 2.
It is clear that there are only a small number of physical integers in the machine: a game server, at least one gaming apparatus, and a ticket purchasing apparatus. The other features describe the way in which the physical integers operate and communicate. For example, the game server is connected (either directly or indirectly) to at least one gaming apparatus, and contains a game ticket block. The gaming apparatus contains a "gaming device" that receives information as to the winning symbol combination and compares that to the ticket purchased by the player. The gaming device uses the data of the ticket in further games by drawing funds from the winnings store. The advantages of using funds from the winnings store are explained as follows:
"In one embodiment, if winnings are made in the first game, which can be started by and/or after purchasing a game ticket, a further game round can be started by staking these winnings or a portion thereof – in particular without reducing the credit in the credit store – while using as the basis for the further game round the data of the same game ticket, whereby the data management is simplified without having to be achieved by losses in the incentive to play."[4]
[4] The present application at page 3.
I conclude that the specification describes an arrangement in which winnings are held separate to credit, and "the gaming device writes any winnings achieved to the named winnings store".[5] The simplification of data management appears to arise from the purchase of a ticket stored on the game server without the need for scanning of a written document. The game that is played can be selected from a wide range of game types:
"The gaming device can in particular be designed as a reel gaming unit which can be controlled by a random generator and/or by a manually actuable control apparatus … The gaming device can, in a further development of the invention, also be designed as a lottery gaming unit, in particular as a ticket gaming unit"[6]
[5] The present application at page 3.
[6] The present application at page 4.
In another embodiment, the gaming device can host a number of different games, and those games can be connected "either only to the credit store or only to the winnings store".[7]
[7] The present application at page 4.
The various components of the machine are described in general terms only.
The embodiment(s) of the invention
The patent application does not contain any worked examples. Instead it contains the statement:
"The invention will be explained in more detail in the following with reference to a preferred embodiment and associated drawings."[8]
[8] The present application at page 7.
The specification then contains a heading
Brief Description of the Drawings
and a brief explanation of the content of the three Figures (reproduced in Annex 1 to this decision). Following that there is a passage of text headed
Description of Embodiment(s) of the Invention
and then there are three pages of explanation of the three Figures in more detail. Figures 1 and 2 relate to the arrangement of the game server and the gaming apparatus. Figure 3 shows an electronic display for a reel gaming unit.
It is clear that this embodiment is very generic, and is not a description of a single precise embodiment.
Technical features of the invention as described
There are several technical features that are mentioned in the specification. I will briefly explain my understanding of these features.
How is a ticket purchased?
The specification states that the game server has a central database (identified as 3 in Figure 1) "in which a plurality of game ticket series 1,2 … n are stored".[9] Tickets can be purchased on a gaming apparatus (identified as 5 in Figure 1). This would suggest that it is unnecessary to have a means to scan tickets into the system.
[9] The present application at page 8.
How does a player pay for games?
A player has a credit store on the gaming apparatus that can be loaded by inserting coins or bills or using "plastic money or also jetons or winning tickets or credit tickets".[10] A game is set in motion by a start button. If winnings are made, "they are written into a winnings store".[11] A further game can be played without buying a new ticket using funds in the winnings store. Once the winnings store has decreased to zero, a new game ticket has to be bought to play again.
[10] The present application at page 9.
[11] The present application at page 9.
What type of games are played?
At page 4 the specification states that the gaming device "can in particular be designed as a reel gaming unit", but that "in a further development of the invention, also be designed as a lottery gaming unit". Figure 3 relates specifically to reel games. I conclude that the gaming machine can play either lottery games or reel games.
Where a lottery game is played, it seems clear that a ticket is purchased to set the winning combination for the lottery. Further games with the same winning combination can be played out of the winnings store. In the case of reel games they are also commenced by the purchase of a ticket, and further games are also played out of the winnings store:
"If winnings are made on actuating the reel gaming unit 9, they are written into a winnings store 11 in dependence on which at least one further game round can be activated without buying a new game ticket by a controller connected to the gaming device 8, in particular by staking at least a portion of the winnings from the winnings store 11."
Thus, a ticket is purchased to start the reel game. The ticket is associated with a winning symbol combination. The reel game utilises a random generator to determine the symbols resulting from the game. These symbols are compared to the winning combination of the ticket. Thus the winning combination depends on what ticket you purchase, and are not set by the game that you are playing. Once there are no winnings in the winnings store, a new ticket is purchased and a new winning combination is established. While this strikes me as likely to be confusing to the player, it seems to be what is described.
The claims
Claim 1 as filed in the present application reads:
"An electronic gaming machine comprising:
a game server for controlling a game, wherein the game server is configured to be indirectly or directly connected to at least one gaming apparatus, and wherein the game server comprises an electronic game ticket block comprising a plurality of electronic game tickets with which for each electronic game ticket at least one winning symbol combination is associated, and wherein the gaming apparatus is connectable to a credit store which is associated with the gaming apparatus and which can be loaded with a credit via an input apparatus; and
a ticket purchasing apparatus for purchasing a game ticket while reducing the credit loaded in the credit store, and wherein the gaming apparatus comprises a gaming device configured to receive a winning symbol combination from a winning symbol generator after purchase of a ticket and to compare the received winning symbol combination with the winning symbol combination associated with the purchased ticket, said gaming device being further configured to be actuated in dependence on a course of a game while using, as a basis, data of the same game ticket in a plurality of game rounds from the credit store and then from a winnings store;
wherein in a first game round the gaming device is configured to be actuated upon reduction of the credit from the credit store and to compare a first round winning symbol combination received from the winning symbol generator with the winning symbol combination of the purchased ticket; and
wherein in a second game round the gaming device is configured to be actuated upon reduction of the credit from the winnings store, if any of the credit was credited to said winnings store in the first game round, and comparing the second game round winning symbol combination received from the winning game generator with the winning symbol combination associated with the same game ticket used in the first game round."
The claim is directed to a machine. The machine is characterised by the integers of
· a game server,
· a gaming apparatus,
· a ticket purchasing apparatus, and
· a credit store and a winnings store.
There are a number of requirements in relation to how these integers operate. These requirements have been discussed previously in relation to the invention as described. It is only necessary to note a few matters. The claim does not specify the type of game that is played, so it can be a lottery game or a reel game. It is clear that the claimed invention is directed solely to the way in which a game is started – by purchase of a ticket followed by payment for games first from the credit store, and subsequently from the winnings store if credit was added to the winnings store in the first round.
Claims 2 – 14 are appended (directly or indirectly) to claim 1.
THE GROUNDS OF OBJECTION
I will now consider each of the grounds of objection that are raised in the examination report.
1. Manner of manufacture
The examiner has raised an objection that the invention as claimed in claims 1 – 14 is not a manner of manufacture.
The law
Section 18(1) of the Act relevantly reads:
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:
The classic definition of "manner of manufacture" is set out in National Research Development Corporation v Commissioner of Patents[12] (NRDC):
"The right question is: 'Is this a proper subject of letters patent according to the principles which have been developed for the application of s. 6 of the Statute of Monopolies?' "[13]
[12] [1959] HCA 67; 102 CLR 252.
[13] NRDC at 269, [14].
The court then went on to set out a test in terms relevant to the facts of that case:
"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."[14]
and
"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, indeed to the lay mind a sensational 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."[15]
[14] NRDC at 275, [22].
[15] NRDC at 277, [25].
However, the High Court was not laying down a precise formulation that can be applied unthinkingly:
"This Court in NRDC did not prescribe a well-defined pathway for the development of the concept of 'manner of manufacture' in its application to unimagined technologies with unimagined characteristics and implications. Rather, it authorised a case-by-case methodology."[16]
[16] D'Arcy v Myriad Genetics Inc [2015] HCA 35, 115 IPR 1 (Myriad) at [23].
That case-by-case approach must have regard to the substance of the claimed invention, not simply the form of the claim.[17] The point is made most succinctly by Gageler and Nettle JJ in the Myriad case:
"Whatever words have been used, the matter must be looked at as one of substance and effect must be given to the true nature of the claim."[18]
[17] Myriad at [6] and [88].
[18] Myriad at [144].
In Commissioner of Patents v RPL Central Pty Ltd[19] (RPL) the Full Court of the Federal Court said the same thing in the context of an invention that was in substance a scheme:
"A claimed invention must be examined to ascertain whether it is in substance a scheme or plan or whether it can broadly be described as an improvement in computer technology. The basis for the analysis starts with the fact that a business method, or mere scheme, is not, per se, patentable. The fact that it is a scheme or business method does not exclude it from properly being the subject of letters patent, but it must be more than that. There must be more than an abstract idea; it must involve the creation of an artificial state of affairs where the computer is integral to the invention, rather than a mere tool in which the invention is performed. Where the claimed invention is to a computerised business method, the invention must lie in that computerisation. It is not a patentable invention simply to 'put' a business method 'into' a computer to implement the business method using the computer for its well- known and understood functions.
Is the mere implementation of an abstract idea in a well-known machine sufficient to render patentable subject matter? Is the artificial effect that arises, because information is stored in RAM and there is communication over the Internet or wifi, sufficient? Does any physical effect give rise to a manner of manufacture? Are the mere presence of an artificial effect and economic utility, without more, sufficient to determine manner of manufacture?
It is not a question of stating precise guidelines but of deciding, in each case, whether the claimed invention, as a matter of substance not form, is properly the subject of a patent."[20]
[19] [2015] FCAFC 177, 115 IPR 461.
[20] RPL at [96] – [98].
The Court then detailed the considerations that are relevant to the determination, summarising the important principles coming out of the earlier decisions of the Court. In Aristocrat Technologies Australia Pty Limited[21] I summarised these principles as:
[21] [2016] APO 49.
"I conclude that it is relevant to consider a range of matters. Without seeking to be exhaustive, these include:
·there must be more than an abstract idea, mere scheme or mere intellectual information;
·is the contribution of the claimed invention technical in nature;
·does the invention solve a technical problem within the computer or outside the computer;
·does the invention result in improvement in the functioning of the computer, irrespective of the data being processed;
·does the application of the method produce a practical and useful result;
·can it be broadly described as an improvement in computer technology;
·does the method merely require generic computer implementation;
·is the computer merely an intermediary or tool for performing the method while adding nothing of substance to the idea;
·is there ingenuity in the way in which the computer is utilised;
·does the invention involve steps that are foreign to the normal use of computers; and
·does the invention lie in the generation, presentation or arrangement of intellectual information."
The objection
The examiner's objection on this ground reads as follows:
"Claims 1 – 14 do not define a manner of manufacture for the reasons outlined in objection 12 of the fifth examination report for parent application AU 2010251451 dated 29 February 2016."
I note that a reference to a previous report rather than mechanically repeating the terms of that report is an appropriate way to carry out the examination in this case. The report on the parent application reads:
"Claims 1 - 14 do not define a manner of manufacture as discussed in objection 4, 6 & 9 of the previous examination reports.
In the response, the applicant submits that the applicant, and its lead attorneys in Europe remain firmly of the view that the objection is unwarranted and cannot be sustained and that the claim was considered patentable subject matter by the USPTO, and industrially applicable by the International Searching Authority.
However, you will still have to comply with Australian patent law for your Australian application. The current practice in relation to computer implemented inventions is supported by Research Affiliates LLC v Commissioner of Patents [2014] FCAFC 150, and is consistent with the recent judgement in Commissioner of Patents v RPL Central Pty Ltd [2015] FCAFC 177.
As previously stated, none of the other court cases cited in the present or previous response are distinguished from the basis of the manner of manufacture objection raised in this and the previous reports as none of them apply the necessary considerations of substance over form as specified in the Research Affiliates decision. I would also like to re-emphasise that the considerations of Research Affiliates was reaffirmed in the recent RPL case.
The applicant refers to the well known Hills hoist as an analogy of what could be considered patentable subject matter. Upon applying the considerations of substance over form as specified in the Research Affiliates & RPL case to the Hills hoist, there is a clear interrelationship between the 'idea' of arranging a clothesline in a loop rather than a straight line. That is, the substance of the invention has resulted in an improvement of the existing technology by introducing a loop clothesline where traditionally, this is performed on a straight clothesline.
The applicant submits that the present applicant appears to utilise conventional electronic components which are programmed in an alleged new or improved manner; the combination of specific functional elements interacts in a particular working arrangement; and are configured to operate in an improved manner ... thereby resulting in functional and commercial advantages.
However, all gaming machines are programmed in some way. Therefore the act of merely programming a conventional gaming machine cannot lead to an improvement in the technology itself. Therefore the substance of the invention appears to lie with the scheme. That is, the financial arrangement as discussed in objection 9 of the previous examination report. The gaming machine itself (including the display, console and processors) relates to the mere implementation of the scheme and subsequently is not a manner of manufacture.
Therefore, this is merely an abstract idea based on gaming rules and hence not patentable. It is not presently apparent how this arrangement is directed to improving the technology associated with the gaming terminal.
Additionally although the present claims meet the requirements for novelty and inventive step, the issue of whether the same claims constitute patentable subject matter is a separate issue. The fact that electronic gaming machines are electromechanical devices used for commercial purposes in established gaming and entertainment industries is not disputed."
The applicant's responses
The applicant's response is best developed in their response to the fourth examination report in relation to the parent application.[22] In summary, I consider that the issues are:
[22] The response is dated 16 February 2016.
· the approach of the examiner is an unjustified extension of Research Affiliates (and RPL);
· there are other decisions of the Federal Court that establish the patentability of gaming machines;
· the gaming machine is analogous to an industrial machine;
· the gaming machine is not a general purpose computer;
· the invention lies in the functional interrelationship between the elements;
· the invention is not a financial scheme;
· there is a technical contribution;
· the computer is not an intermediary, it is the invention;
· the invention is not a presentation of information; and
· the same invention has been accepted by the USPTO.
Some of these matters go to the key question of what is the substance of the invention, and I will discuss them in that context. However, there are some matters of legal and procedural precedent that I will discuss first.
The decisions in Research Affiliates and RPL, discussed above, set out general principles that are applicable to the consideration of any computer related invention. There is no doubt that an electronic gaming machine utilises computing elements – in the present case the specification states that there are servers, databases, storage devices, electronic display and data transfer. Inevitably the machines require programing to achieve their operation. While it may not look like a personal computer on a desk, there is no doubt that an electronic gaming machine is a computer related invention. The principles set out in Research Affiliates and RPL are equally applicable to gaming machine type computers.
The Federal Court has previously decided cases involving gaming machines. In Neurizon Pty Ltd v LTH Consulting and Marketing Services[23] the invention related to a gaming machine and a method of awarding a prize in a gaming machine. Dowsett J said:
"Clearly, the programming of EGMs is necessarily incidental to a 'field of economic endeavour' to use the words of the Full Court in CCOM. In this case it is the conduct of gaming facilities … it cannot be said that on its face, there is no manner of manufacture."[24]
[23] [2002] FCA 1547, 58 IPR 93.
[24] at [101].
In Aristocrat Technologies Australia Pty Limited v Konami Australia Pty Limited[25] the invention related to a gaming console, and a random prize awarding feature. Nicholas J said:
"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."[26]
[25] [2015] FCA 735, 114 IPR 28.
[26] at [223].
In Konami Gaming Inc v Aristocrat Technologies Australia Pty Ltd[27] the issue of manner of manufacture was not raised by the parties.
[27] [2015] FCA 92, 110 IPR 524.
The applicant also referred to a decision of a delegate of the Commissioner in Konami Australia Pty Ltd v Aristocrat Technologies Australia Pty Ltd[28]. The delegate stated:
"In the present case, as in the Neurizon case, the field is the conduct of gaming facilities. The claims define particular results to be produced on gaming machines by appropriate computer programming. They define more than an idea that is a known desirable outcome and more than what is revealed as known on the face of the specification."[29]
[28] [2003] APO 57.
[29] at [74].
The delegate concluded that the invention was a manner of manufacture.
While it might be argued that each of these decisions were decided on their own facts, it is more significant that each of them was decided without application of the approach set out in Research Affiliates and RPL, namely a consideration of the substance of the invention rather than the form of the invention. As such, they provide little guidance in how the Commissioner should apply those principles. I note that the application of these principles to inventions related to gaming machines leads to a case by case outcome rather than a blanket rule. In recent decisions of the Commissioner there are instances where the application of these principles has led to the conclusion that gaming machines are a manner of manufacture,[30] and instances where they are not.[31]
[30] see Aristocrat Technologies Australia Pty Limited [2016] APO 49.
[31] see Bally Technologies ANZ Pty Ltd [2017] APO 14.
Finally, the applicant pointed out that the corresponding invention was accepted by the USPTO. The approach taken in the United States after the decision in Alice Corporation Pty Ltd v CLS Bank International[32] is similar to that in Australia, but it is necessary to apply the approach laid down by the Australian courts. Often there will be the same or a similar outcome, but each case must be considered on its merits.
[32] 134 SCt 2347 (2014).
What is the substance of the invention?
When determining the substance of the invention it is important to consider the claimed invention as a whole, not just the individual parts. The applicant stated that they considered that the invention is
"a novel electronic gaming machine … configured to operate in a novel and improved manner. It is analogous to an improved computer"[33]
[33] Response dated 16 February 2016.
The applicant emphasised the improvements as the way in which a ticket is purchased, and as a secondary consideration the different stores:
"The gaming function of the machine is improved as a user does not have to get a new ticket for every game. If the user wins a first round, the machine is configured to enable the user to use the ticket for one or more additional rounds. Moreover, the user can use the same ticket for additional rounds without affecting the credit in the user's credit store"[34]
[34] Response dated 16 February 2016.
The invention is an arrangement of conventional gaming machine components such as servers, gaming apparatus, screens and data storage. Each of these components is used in their normal way. There is nothing in the present application that indicates that any of these components has been altered – except for the programming. They seem to be generic components, and there is nothing to suggest that it is unusual to combine these components. The effect produced lies in the way that a player starts a game, which can be looked at as having a technical aspect. But it seems that it is largely a programming issue – achieved by (1) creating electronic tickets within the machine, and (2) creating a record of winnings in a separate store to the record of credit. I do not see how this solves a technical problem within the computer.
Purchasing a ticket that is within the machine rather than scanning in a written document can be viewed as a technical difference, but it seems that it is known in the closest prior art (US 6,024,640, cited as D1 in the examination of the parent application). I have verified that D1 does not include the scanning of a written document, but rather the ticket is created by the machine. In their response dated 1 September 2015 in relation to inventive step, the applicant referred to the separate credit store and winnings store as the distinction over the prior art:
"D1 does not show all features of amended claim 1. In particular, it does not disclose or suggest using the same game ticket in several rounds using credit from a credit store and then from a winnings store."
The same comment is made in the response of 16 February 2016 in relation to manner of manufacture (quoted above in paragraph 50). Based on this information, I am satisfied that the contribution to the art does not lie in the physical components or the way in which they are combined, or the way in which a ticket is generated within the machine. Rather the contribution to the art, and what has been added to human knowledge, is the way in which the machine operates by:
i)allowing a player to use the same ticket for additional rounds;
ii)maintaining a credit store separate from a winnings store; and
iii)using the winnings store for additional rounds.
These are matters that relate to the rules that apply to commencing a game. I am unable to see what technical effect is created by this arrangement. The specification does not suggest any technical effect achieved by maintaining separate winning and credit stores. Using the same ticket for additional rounds appears to be more convenient than technical. It is conceivable that it might enhance player interest in the game.
On balance I consider that the substance of the invention is a scheme for modifying the way in which a game is commenced by storing information about a player's winnings separately to information about the player's credit. This is the substance of all of claims 1 – 14.
Conclusion
It is well established that schemes are not patentable.[35] The fact that the scheme is embodied in a machine does not change the conclusion. The invention defined by claims 1 – 14 is not a manner of manufacture.
[35] Grant v Commissioner of Patents [2006] FCAFC 120, 69 IPR 221.
2. Support
The examiner objected that claims 1 – 14 lack support. In light of my conclusion in relation to the ground of objection of manner of manufacture it is not necessary to consider this ground. However, I think it may be useful to consider the ground briefly.
The law
The support requirement is found in subsection 40(3) of the Act, which says that:
The claim or claims must be clear and succinct and supported by matter disclosed in the specification.
I discussed the law in relation to support at length in CSR Building Products Limited v United States Gypsum Company.[36] I stated that:
"The requirement of support can be summarised as the scope of the claims 'should correspond to the technical contribution to the art' (Fuel Oils/EXXON (T409/91) [1994] OJ EPO 653 (Exxon) at 659)."[37]
and concluded that the approach to resolve an issue of support is:
i)construe the claims to determine the scope of the invention as claimed,
ii)construe the description to determine the technical contribution to the art, and
iii)decide whether the claims are supported by the technical contribution to the art.
[36] [2015] APO 72.
[37] at [109].
The objection
The examiner's objection is as follows:
"Claims 1 – 14 lack support for the reasons outlined in objection 13 of the fifth examination report for parent application AU 2010251451 dated 29 February 2016."
The objection in the earlier report is as follows:
"Claims 1 - 14 lacks support for the reasons discussed in objection 10 of the previous examination report.
The applicant submits that it is unacceptable for a section 40 objection to be raised so late in the prosecution of the present application. In the applicant's response of 23 September 2015, the applicant respectfully request that examination of this application be reviewed for quality control. After a number of reviews, it was found that a section 40 objection should have been raised. I apologise for not raising this objection at the first report stage. However, as it is a valid objection, it must be raised.
The applicant also submits that the support objection is allegedly lacking and that the applicant is unable to respond to this vague objection. However the applicant points out that the components of the gaming machine, and their working interaction, are defined in the claims and also described in the specification; and is sufficient for a person skilled in the art to put the invention into effect.
Referring to the response, the applicant submits that the gaming machine itself is modified or acted upon, to perform in an improved manner; and that the gaming machine require more than just generic computer instructions.
Assuming that this is correct (which I do not agree as per the manner of manufacture objection), then the claims are not supported as the claims and description does not appear to provide adequate guidance in the form of explicit instructions and/or sufficiently representative examples that enable the person skilled in the art to perform the "more than just generic computer instructions" that the applicant insists are required."
It is clear that the examiner has raised this objection as a result of submissions by the applicant that the invention represents more than an assembly of generic components:
"It requires more than just generic computer instructions … The defined configuration in claim 1 is not that of a conventional gaming machine … The machine itself has been technically modified to a novel form."[38]
[38] Response dated 16 February 2016.
The technical modifications that the applicant refers to are not described in the specification.
The applicant's response
The applicant has not responded to this ground of objection in detail. The following are the more useful comments they have provided:
"we submit that there is sufficient disclosure in the specification to enable a person skilled in the art to put the invention into effect. … It would be expected that the national [sic] addressee, namely a person skilled in the art of designing electronic gaming machines, would be able to understand the invention as described in the specification and put it into practice."[39]
[emphasis in the original][39] Response dated 16 February 2016.
The person skilled in the art is an uninventive person,[40] with practical knowledge of the relevant art.[41] I doubt that a designer of gaming machines is such a person – a designer of gaming machines would be the inventor. However, nothing turns on this point in the present case.
[40] Tidy Tea Ltd v Unilever Australia Ltd (1995) 32 IPR 405 at 414.
[41] Aktiebolaget Hassle v Alphapharm Pty Ltd [2002] HCA 59, 212 CLR 411 at [148] – [154].
The applicant states that they are uncertain precisely what the examiner considers is lacking in the specification, and consequently
"The applicant points out that the components of the gaming machine, and their working interaction, are defined in the claim, and are also described in the specification. If there is any particular aspect which the Examiner contends would not be able to be understood or put into practice by a person skilled in the art of designing and manufacturing electronic gaming machines, we ask that the Examiner identify that aspect."[42]
[42] Response dated 16 February 2016.
In the circumstances, this is a reasonable comment.
Application to the facts of the case: what is the technical contribution to the art
Previously I concluded that the contribution to the art is a scheme modifying the way in which a game is commenced.
Application to the facts of the case: are the claims supported
If the application of the scheme of modifying the way in which the game is commenced involves an undue burden, then there is not support for the claims. In relation to the ground of manner of manufacture I concluded that the specification does not suggest that there are any such difficulties. On the basis of what is said in the specification, I conclude that there is support for claim 1.
Conclusion
The objection was raised as an alternative to the ground of manner of manufacture in the light of applicant's submissions. This was a reasonable action by the examiner. Based on my conclusions in relation to the ground of manner of manufacture, I consider that the objection does not succeed.
CONCLUSION
It follows that I am satisfied on the balance of probabilities that the objection of lack of manner of manufacture is properly taken.
I should allow the applicant an opportunity to propose amendments if it is reasonable to believe that the objection could be overcome by amendment. The applicant has not provided any submissions that assist me in this regard. I have considered whether it is possible to identify something patentable in the specification. I cannot find any patentable subject matter. I conclude that the application should be refused.
Dr S.D. Barker
Deputy Commissioner of PatentsANNEX 1: Figures from the present application
ANNEX 2: The claims of the present application
1. An electronic gaming machine comprising:
a game server for controlling a game, wherein the game server is configured to be indirectly or directly connected to at least one gaming apparatus, and wherein the game server comprises an electronic game ticket block comprising a plurality of electronic game tickets with which for each electronic game ticket at least one winning symbol combination is associated, and wherein the gaming apparatus is connectable to a credit store which is associated with the gaming apparatus and which can be loaded with a credit via an input apparatus; and
a ticket purchasing apparatus for purchasing a game ticket while reducing the credit loaded in the credit store, and wherein the gaming apparatus comprises a gaming device configured to receive a winning symbol combination from a winning symbol generator after purchase of a ticket and to compare the received winning symbol combination with the winning symbol combination associated with the purchased ticket, said gaming device being further configured to be actuated in dependence on a course of a game while using, as a basis, data of the same game ticket in a plurality of game rounds from the credit store and then from a winnings store;
wherein in a first game round the gaming device is configured to be actuated upon reduction of the credit from the credit store and to compare a first round winning symbol combination received from the winning symbol generator with the winning symbol combination of the purchased ticket; and
wherein in a second game round the gaming device is configured to be actuated upon reduction of the credit from the winnings store, if any of the credit was credited to said winnings store in the first game round, and comparing the second game round winning symbol combination received from the winning game generator with the winning symbol combination associated with the same game ticket used in the first game round.2. The gaming machine of claim 1, wherein the winning symbol generator is a winning number generator and the winning symbol combination is a winning number combination, wherein the gaming device is configured to receive a winning number combination one or more times from the winning number generator indirectly or directly connected to the gaming device, the winning number combination being able to be compared, optionally a multiple of times, with the at least one winning symbol combination of the same game ticket while staking an amount from the winnings store, and wherein the gaming device is connectable to a win control apparatus for the automatic comparison of a generated winning number combination with the winning symbol combination of the purchased game ticket and decreasing or increasing and/or blocking or releasing the winnings stored in the winnings store by the gaming device dependent on a result of the automatic comparison of the generated winning number combination with the winning symbol combination of the purchased game ticket.
3. The gaming machine of claim 1, wherein the gaming device is configured to be actuated only once from the credit store while using as a basis the data of the same game ticket and/or actuated further times while only decreasing the winnings store while using as a basis the data of the same game ticket, and/or actuated further times while decreasing the credit store using as a basis the data of a new game ticket and the at least one winning number combination associated therewith can be played.
4. The gaming machine of claim 1, wherein the gaming device is designed as a reel gaming unit which can be controlled by a random generator and/or by a manually actuable control apparatus.
5. The gaming machine of claim 1, wherein the gaming device comprises a plurality of differently designed gaming units configured to actuate in different game rounds and/or configured to connect either only to the credit store or only to the winnings store such that different gaming units are configured to be used for playing different game rounds.
6. The gaming machine of claim 2, wherein the winning symbol generator is accommodated in a first control module, and the win control apparatus is accommodated in a second control module, and wherein the first control module is connected to the second control module via a data transfer channel, and wherein the data transfer channel comprises a network line, and wherein the winning symbol generator is on the game server, and wherein the win control apparatus is on the gaining apparatus and/or at a group server connectable to the gaming apparatus.
7. The gaming machine of any one of claims 1 to 6, wherein the at least one gaming apparatus is directly connected to the game server via a remote data line.
8. The gaming machine of any one of claims 1 to 6, wherein the at least one gaming apparatus is indirectly connected to the game server, and wherein the gaming apparatus and game server are directly or indirectly connected to a local group server.
9. The gaming machine of any one of claims 1 to 6, wherein the at least one gaming apparatus is connected by a local network line to a group server connected to the game server via a remote data line and/or the network line of a global network.
10. The gaming machine of any preceding claim, wherein the game server has a plurality of game ticket series, and wherein each game ticket series comprises the plurality of game ticket blocks.
11. The gaming machine of any preceding claim, further comprising a game ticket distributor configured to associate game tickets from the game server with one or more group servers such that in the group server only one game ticket block including a plurality of game tickets from each game ticket series is held.
12. The gaming machine of any preceding claim, wherein the at least one gaming apparatus comprises a separate display apparatus configured to display the credit stored in the credit store and the winnings stored in the winning store.
13. The gaming machine of any preceding claim, wherein the gaming device comprises a game round controller for controlling a number of further game rounds which can be activated by a win in the first game round, and wherein the game round controller is configured to be activated by decreasing the credit store in dependence on the number of purchased game tickets and/or in dependence on the credit held in the credit store and/or in dependence on winnings stored in the winnings store.
14. The gaming machine of claim 13, wherein the gaming device comprises a stake controller configured to control the winnings set for a game of the second game round and/or for every further game round, and wherein the stake controller comprises a manual input button and/or a stake control module controllable by the game round controller for the automatic increasing of the stake in dependence on the number of activated game rounds which can be fed from the winnings store.
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