ROBERT FRANK OLLINGTON

[1987] APO 27

In the Matter of the Patents Act 1952

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In the Matter of Patent Application No. 42428/85 in the Name of ROBERT FRANK OLLINGTON

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In the Matter of Examiner's Objections thereto.

DECISION OF A SUPERVISING EXAMINER OF PATENTS:
Background
        Application No. 42428/85 was lodged on 13 May, 1985 by ROBERT FRANK OLLINGTON for a patent for an invention entitled "Game".  The application is a Convention application claiming priority from a United States application dated 25 June, 1984.  A request for examination was lodged on 28 February, 1986 and the examiner issued a first adverse report on 7 May, 1986.  In response to submissions from the applicant's patent attorneys, A. Tatlock & Associates, the examiner issued a second adverse report on 12 June, 1986; therein he maintained the objection in the first report that the invention claimed is not novel.  Pursuant to a request from the attorneys a hearing was held on the matter in Canberra on 11 September, 1987; Mr. A. Tatlock patent attorney appeared with the applicant.
Specification
        The invention relates to a dice game based on the game of two‑up in which coins are normally used.  In the simplest form of

the invention two dice are used, three faces of which are marked with the letter "H" and the remaining three faces of which are marked with the letter "T", representing heads and tails, and the dice are rolled on a gaming table.  The more sophisticated form of the invention uses three such dice.  Claim 1 reads as follows:

"A casino game comprising a table and at least two dice, the table having a number of player positions each of which has a location for the reception of bets, a location for a bet made by the shooter, the person who is to throw the dice, which bet can be of only one form, each die being so formed that each of the faces has one of two indicia, there being an equal number of indicia, the players, other than the shooter, being able, before each throw of the dice, to wager on at least one of the possible results."

Claims 2‑6 appended to claim 1 are directed to features relating to the number of dice, the player locations at the table and the wagering rules.  Claim 7 is an omnibus claim related to the drawings which show in figures 1‑3 a gaming table with marked player positions, and in figure 4 a die as described above.
Prior Art
        In his reports the examiner cited eight Australian patent applications relating to games in which various kinds of dice are used.  The dice are marked with alphabetical, numerical or mathematical information, or with information relating to other games such as card games or cricket.  Application No. 62838/65 in the name of Frank Harry Wyld relates to a word game played with fourteen lettered dice, two of which have the letter "A" on three faces and the letter "E" on the other three faces.
        Also cited by the examiner was a book entitled "The Way to Play" by the Diagram Group, available in Australia before August 1982.  Copies of an extract thereof showed details of games called Craps and Grand Hazard, inter alia, which are played with two or three dice, a gaming table and wagering chips or cash.  Dice throwing equipment such as a cup or hazard chute may also be used.
        Mr. Tatlock submitted as evidence copies of pages selected from six different publications relating to games, gambling and dice.  Several of these are copies of pages of the indexes of those publications which list the various dice games referred to therein.  Another copy gives details of the game of two‑up as it is played in the United States under the name of "the tossing game".
Novelty, Patentability
Mr. Tatlock submitted that the subject matter of the invention satisfied the test for novelty as set out by Dixon J. in Griffin v. Isaacs 12 ALJ 169:

"Where variations from a device previously published consist in matters which make no substantial contribution to the working of the thing or involve no ingenuity or inventive step and the merit if any of the two things considered as inventions is the same, it is, I think, impossible to treat the differences as giving novelty."

Firstly he suggested that the invention was not anticipated by the Wyld application because the game described therein required the use of twelve other dice as well as the two‑indicia A‑E dice, i.e. there is "no suggestion" in the Wyld application that the two A‑E dice "can be used alone".  Secondly he argued that "there is some ingenuity involved in what Mr. Ollington has done"; because in the indexes of the games publications referred to there was no mention of a two‑up version of dice games, and because in the publication which referred to two‑up there was no mention of a dice version, then the subject of the invention was not obvious, i.e. ingenuity was involved.  The author of the latter publication was also the author of one of the former publications.  Mr. Tatlock's submission was that because the invention was new (not anticipated) and involved some ingenuity, then it falls outside the terms of the Griffin v. Isaacs test and is therefore novel.
        The matter of novelty cannot be decided without reference to the claims.  Claim 1 in this case is directed to "a casino game comprising a table and at least two dice", the characterizing features being related to:

1.The table ‑ having locations and player positions.

2.The dice ‑ with faces having two indicia, there being an equal number of indicia.

3.The game rules ‑ being a casino type game involving shooter and players making bets.

Because the claim is essentially directed to apparatus, the features relating to the game rules have little effect on the scope of the claim; it makes no difference to the dice or to the table whether the players other than the shooter are able or not able to "wager on at least one of the possible results".  Also it is difficult to envisage how the table as defined is any different from well known gaming tables, all of which have "locations for the reception of bets".  A determination of the novelty of the claim thus appears to reside in whether the dice per se are novel.
        In this matter I am guided by precedent.  In Thomson & Thomson's Application (1975) AOJP, relating to a twenty sided die with numbers arranged on the faces according to a formula, the application was refused because the claim was considered as being not novel in the light of known icosahedral dice, the Commissioner stated therein:

"information provided by the symbols indicated on the faces of the icosahedral solid (does) in no way affect the operation of that solid in its role as a die",

and

"that a patent cannot be sustained on the basis of novelty in information alone is clear from the decisions of the Patents Appeal Tribunal in Kessler's Application (1973 RPC 413) and Rhodes' Application (1972 RPC 243)."

Also, significantly, the eight applications cited by the examiner all either lapsed or were refused, two of which resulted from decisions of the Commissioner; see Munro's Applicaton (1957) AOJP 1017 and Ariel Productions Ltd.'s Application (1957) AOJP 1642.
When applying the Griffin v. Isaacs test, as well as whether there may be "ingenuity" involved, the matters of "contribution to the working" and "merit" should also be considered; however the test has not been referred to as a matter of course in decisions involving subject matter relating to games. In Cobianchi's Application (1959) AOJP 2133, for a pack of playing cards with modified suits, the Commissioner refused the application on lack of novelty because even though it was considered to be patentable subject matter, the differences between the applicant's pack and an ordinary pack of cards made no contribution to the working of the game as they amounted to information only . In Fortuna Agencies' Application (1977) AOJP 2138, for a mathematical game similar to the word game "Scrabble", which was also refused on the ground of lack of novelty, it was decided that the differences did contribute to the working of the game, but that there was a lack of inventive step and the merit was the same. But in other decisions such as Thomson & Thomson's Application, Munro's Application, Ariel Production Ltd.'s Application, Ticket Seal Ltd.'s Application (1974) AOJP 4274 and Indoor Cricket Arenas v. A.I.C.F. (1987) AIPC 90‑395, the Griffin v. Isaacs test has either not been referred to, or if it has been referred to has not been applied to the point of considering the separate parts of the test as discussed above.
        Difficulties arise in applying the test to games subject matter such as whether the "contribution to the working of the thing" should be considered in the light of the working of the game per se or the mere mechanical or functional working of the integers of apparatus of the game.  Also, a game may have some merit in a general sense, but when considered at a functional or mechanical level no merit may be apparent.  The Griffin v. Isaacs test is more suitable where there are constructional differences to be considered, and is only one of the tests for novelty available in patent law.  There is no statutory or other requirement that it be used whenever the question of novelty arises.  In the present circumstances the appropriate test can be derived from Thomson & Thomson's Application and the other cases referred to where the differences between dice games reside only in the information on the faces, and the law has been established that differences based on information do not confer novelty on apparatus claims.
Decision
        I conclude firstly that claim 1 is not novel in the light of the known games of Craps and Grand Hazard.  The only differences between the present invention and these games are features involving the rules of the game and the information on the dice, and as discussed none of these features are such as to confer novelty on the claim.
        Secondly, claim 1 is not novel in the light of the Wyld application.  The differences here are features involving the table, the rules of the game and the use of more dice in the Wyld game.  As discussed above games tables are well‑known and there is no reason to suppose that the Wyld dice could not be rolled on a games table.  Also, it is not significant that more dice are used in the Wyld game since the feature defined by claim 1 is disclosed as being part of the set of dice used in the Wyld set of fourteen; there is no disclaiming clause in the present claim.
        Finally, the features of claims 2‑7 do not contain any significant subject‑matter, and the description of the invention in pages 1‑8 of the specification also does not refer to any feature which, if claimed, would alter my conclusions.  Accordingly, I refuse to accept the application and complete specification.

(J.I. WELSH)