Crown Melbourne Limited [2020] APO 47 (16 October 2020)

Crown Melbourne Limited [2020] APO 47 (16 October 2020)

Last Updated: 16 October 2020

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Crown Melbourne Limited [2020] APO 47

Patent Application: 2018219972

Title: METHOD AND APPARATUS FOR ROULETTE GAME



Patent Applicant: Crown Melbourne Limited



Delegate: R Subbarayan



Decision Date: 16 October 2020

Hearing Date: Written submissions filed on 17 June 2020

Catchwords: PATENTS – Examiner’s objection – whether claims are to a manner of manufacture – layout of numbered wagering spaces on the roulette table – whether serves a mechanical or other technical purpose – scheme for increased take-up of game and increased betting options – not a manner of manufacture – application refused

Representation: Patent attorney for the applicant: Pini IP

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application: 2018219972

Title: METHOD AND APPARATUS FOR ROULETTE GAME



Patent Applicant: Crown Melbourne Limited



Date of Decision: 16 October 2020

DECISION

Claimed invention is not for a manner of manufacture. The application is refused.

REASONS FOR DECISION

BACKGROUND

1. Patent application 2018219972 in the name of Crown Melbourne Limited (the Applicant) was filed on 20 August 2018 as a divisional application of 2016210666 which is in turn a divisional of grandparent 2008203384. As a consequence, the present applicant claims an earliest priority date of 25 July 2008, being the filing date of grandparent 2008203384. I also note that the applicant filed an innovation patent 2008100694 on 25 July 2008 for what appears to be the same invention. This innovation patent was advertised on 19 February 2009 as having been examined and certified and has now expired after running its full term. However, neither the parent nor the grandparent applications were accepted, both having lapsed due to failure to overcome the examiner’s objection within the period to gain acceptance. I also observe that application 2020204279 was filed on 26 June 2020 as a divisional of the present application.

2. Examination of the present application was requested on 26 October 2018 and a first examination report was issued on 27 June 2019. The sole objection in that report (which was also present in the reports for 2016210666 and 2008203384) was that all the claims were not for a manner of manufacture. The applicant filed a letter on 2 June 2020 requesting to be heard in relation to this sole objection on the basis of written submissions. They then filed their written submissions on 17 June 2020. On the same day, they also filed a set of proposed amendments which have not yet been considered by the examining section. I will consider these amendments as part of my decision.

APPLICABLE LAW

3. On 15 April 2013, the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 commenced which resulted in significant amendments to the Act and Regulations. As the application was filed on 20 August 2018, the amended provisions of the Act and Regulations apply to the examination of the Application and to the instant hearing. This means that if I am satisfied, on the balance of probabilities, that a ground of objection exists, I can refuse the Application. However, I will only refuse the Application if I am also satisfied that providing the Applicant with an opportunity to amend will serve no useful purpose; for example, if I consider that any potential negative findings are not rectifiable by an allowable amendment.

SPECIFICATION

4. The present invention relates to a method and apparatus for playing the casino table game Roulette. This typically comprises a spinning wheel with numbered pockets at one end of a table and the rest of the table has a layout of numbered wagering spaces where players may place their bets. During the playing of the game, a white ball is made to spin around the wheel and eventually falls into one of the numbered pockets and, if the number or colour of the wagering space on which the player bets matches with that of the pocket, the player wins their bet.

5. As part of the background art, the specification discusses two types of Roulettes; namely European or ‘Single Zero’ Roulette, and American or ‘Double Zero’ Roulette.

6. A ‘Single Zero’ Roulette has wheel with 37 pockets numbered 1-36 and 0. The numbered wagering spaces on the table layout, has a solitary zero indicia ‘0’ adjoining the ‘1’, ‘2’ and ‘3’ number spaces that is used as a wagering space in the table layout design. A typical ‘Single Zero’ Roulette table layout and roulette wheel are shown in figures 1 and 4 respectively of the present application, and are reproduced below.

7. A ‘Double Zero’ Roulette has an additional ‘00’ pocket in the wheel and also an additional ‘00’ indicia next to the ‘0’ indicia in the table layout, with the ‘0’ and ‘00’ indicia adjoining the ‘1’ and ‘2’ and the ‘2’ and ‘3’ number spaces respectively to provide for a ‘Five-Line’ bet generally known as a ‘Five Bet’. The ‘00’ pocket in the wheel is located opposite the ‘0’ pocket. A typical ‘Double Zero’ Roulette table layout and roulette wheel are shown in figures 2 and 5 respectively of the present application, and are reproduced below.

8. The specification then notes that these “related art systems suffer from predictability and there is a need for additional incentives for increasing the player experience”^[1].

9. It then discusses some other prior art where there have been “attempts to improve the efficiency of both "single" and "double" zero Roulette systems in order to enhance the play of the traditional game from a player's point of view and also improvements in operation to enhance Roulette systems from a casino or house point of view”^[2].

10. The specification further notes that certain Roulette markets, including Australia, have traditionally played Single Zero Roulette and prior attempts to introduce Double Zero Roulette in these markets have not been successful because (1) the order of the numbers on a Single Zero wheel is different to that on a traditional Double Zero wheel, and (2) some of the betting options available on a Single Zero layout are not available on a traditional Double Zero layout. Double Zero Roulette has therefore been considered as unsuitable for these markets and no consideration has been given to modifying the Double Zero Roulette for the Single Zero markets.

11. The present invention seeks to address the need for a useful alternative or variation to the accepted Double Zero game that will make it more attractive in Single Zero markets or extend its attractiveness in traditional Double Zero Roulette markets.

12. Under the heading “Summary of Invention”, the specification sets out a number of consistory statements which generally mirror the claims of the specification. It is clear from these statements that the present invention is a modification of the traditional Double Zero table layout to make it more similar to the Single Zero layout and optionally also a modification of the Double Zero roulette wheel to change the location of the ‘00’ pocket with respect to the ‘0’ pocket.

13. A detailed description of the invention then follows. The invention can be best understood with reference to figures 3 and 6 of the application that are reproduced below.

14. In relation to the table layout, as can be seen in figure 3, the ‘00’ indicia (33) has been moved above the ‘0’ indicia so that only the ‘0’ indicia adjoins the numbers ‘1’, ‘2’ and ‘3’ similar to the Single Zero game layout.

15. In relation to the roulette wheel, as can be seen in figure 6, the ‘00’ pocket (33) has been placed adjacent to the ‘0’ pocket (32) on the wheel. The numbered pockets ‘1’–‘36’ have also been placed in the same order as the numbered pockets of a Single Zero Roulette wheel shown in figure 4 rather than in the order of the Double Zero wheel shown in figure 5.

16. The specification notes that this modified layout provides a number of advantages including:

• Minimal differences from the Single Zero layout.
• Retains all betting options available on the Single Zero table layout of figure 1.
• Provides additional betting options to the betting options of known Double Zero Roulette.
• The numbered pockets ‘1’ to ‘36’ have been placed in the same order as on the Single Zero wheel.
• Placing the ‘00’ pocket next to ‘0’ pocket makes sense for section betters because both numbers are also adjacent on the preferred table layout as shown in figure 3.

17. The specification finally notes that the present invention can be embodied in many different forms including electronically using appropriate hardware and programmable logic.

18. The specification as filed and as examined includes 6 claims that are as follows:

1. A Roulette apparatus comprising a table layout adapted for placing wagers, the table layout comprising:

first elements comprising individual numbered wagering spaces for accommodating individual indicia from one (1) to thirty-six (36);

a second element comprising an individual numbered wagering space for accommodating a double zero indicia; and

a third element comprising an individual numbered wagering space for accommodating a single zero indicia, wherein the third element is configured relative to the first and second elements to form a common boundary with a subset of the first elements and to exclude the second element from contact with the subset of first elements.



2. A Roulette apparatus comprising:

a table layout adapted for placing wagers comprising first elements for individual numbered wagering spaces accommodating individual indicia from at least one (1) to thirty-six (36), a second element for an individual numbered wagering space accommodating a double zero indicia, and a third element for an individual numbered wagering space accommodating a single zero indicia abutting the second element, wherein the third element is configured to form a common boundary with a subset of the first elements and to exclude the second element from contact with the subset of first elements; and

a Roulette wheel comprising compartments numbered from at least one (1) to thirty-six (36), a compartment numbered zero and a compartment numbered double zero located either adjacent to or separated from the compartment numbered zero.



3. A Roulette apparatus as claimed in claim 2 wherein the compartments of the Roulette wheel are numbered consecutively as:

32, 15, 19, 4, 21, 2, 25, 17, 34, 6, 27, 13, 36, 11, 30, 8, 23, 10, 5, 24, 16, 33,1, 20, 14, 31, 9, 22, 18, 29, 7, 28, 12, 35, 3, 26, 0, 00.



4. A method of playing a Roulette game using apparatus comprising a first set of indicia numbered from at least one (1) to thirty-six (36), a second indicia comprising a double zero and a third indicia comprising a single zero wherein the indicia are applied to a betting table layout where the third indicia is configured to form a common boundary with a sub-set of the first set of indicia and exclude the second indicia from contact with the sub-set of the first set of indicia and, a Roulette wheel having a double zero compartment and a single zero compartment that are either adjacent or separated, the method comprising the steps of:

providing betting options comprising at least one or more of:

a zero-two split; a zero-three split; first four corner.



5. A method of playing Roulette comprising the steps of:

placing wagers on a table layout comprising: first elements comprising individual numbered wagering spaces for accommodating individual indicia from at least one (1) to thirty-six (36);

a second element comprising an individual numbered wagering space for accommodating a double zero indicia; and

a third element comprising an individual numbered wagering space for accommodating a single zero indicia, wherein the third element is configured relative to the first and second elements to form a common boundary with a subset of the first elements and exclude the second element from contact with the first elements;

spinning a Roulette wheel comprising compartments numbered from at least one (1) to thirty-six (36), a compartment numbered zero and a compartment numbered double zero located either adjacent to or separate from the compartment numbered zero;

introducing a ball to the spinning Roulette wheel;

determining a settlement of wagers based on the compartment in which the ball comes to rest.



6. A method as claimed in claim 5 wherein the wagers are placed before the ball comes to rest in a wheel compartment.

Proposed Amendments

19. As noted earlier, the applicant has proposed amendments to the claims on 17 June 2020. These amendments seek to introduce a new dependent claim 4 and the consequential renumbering of claims 4, 5 and 6 as claims 5, 6 and 7.

20. New claim 4 is as follows:

4. A Roulette apparatus as claimed in claim 2 wherein the compartments of the

Roulette wheel are numbered consecutively as:

35 32, 15, 19, 4, 21, 2, 25, 17, 34, 6, 27, 13, 36, 11, 30, 8, 23, 10, 5, 24, 16, 33, 1, 20, 14, 31, 9, 22, 18, 29, 7, 28, 12, 35, 3, 26, 00, 0.

21. The only difference between dependent claims 3 and 4 is in the order of the numbers ‘0’ and ‘00’. The order of the numbers defined in proposed new claim 4 is clearly disclosed in the specification as filed. I am therefore satisfied that this amendment is allowable.

22. As there are no amendments to the independent claims, it follows that the examiner’s objection to the claims not being for a manufacture would still have been raised even in light of the amendments to the claims.

THE EXAMINER’S OBJECTION

23. The sole objection in the examination report reads as follows:

The claims do not define a manner of manufacture within the meaning of paragraph 18(1)(a) of the Patents Act 1990. The invention defined in the claims is considered to be the arrangement of information characterised solely by the content of that information, ie arrangement of numbers, in that the invention involves a standard roulette wheel and table layout in which the location of the double zero indicia is different compared to the standard layout. This arrangement of information is not considered to provide a material advantage, rather it is of purely abstract character, as it merely relates to an arrangement of numbers that a particular scheme of wagering can be extrapolated from. The arrangement of information and scheme of wagering, merely intended to provide less player dissatisfaction and higher take up of the game, both cannot be considered to be a material advantage in the sense of a practical utility.

MANNER OF MANUFACTURE – LEGAL PRINCIPLES

24. Section 18(1)(a) of the Act provides that an invention is a patentable invention for the purposes of a standard patent if the invention, so far as claimed in any claim, is a manner of manufacture within the meaning of section 6 of the Statute of Monopolies.

25. The classic statement of the law on manner of manufacture is set out in National Research Development Corporation v Commissioner of Patents [1959] HCA 67, 102 CLR 252 (NRDC) at 269:

"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?' "



The Court then went on to set out a test in terms applicable 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."

26. The Court, however, cautioned that any attempt to state the ambit of section 6 of the Statute of Monopolies by precisely defining “manufacture” is likely to fail and, further, “to attempt to place upon the idea the fetters of an exact verbal formula...would be unsound to the point of folly” (at 277). These cautionary observations were later reinforced by the High Court in D’Arcy v Myriad Genetics Inc [2015] HCA 35 (Myriad) at [23]:

“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.”

27. This case-by-case methodology must have regard to the substance of the claimed invention, not simply the literal form of the claim. As stated in Myriad at [144]:

“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.”

28. A similar observation was made in Commissioner of Patents v RPL Central Pty Ltd [2015] FCAFC 177 (RPL) at [98]:

“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”.

29. The distinction between a mere scheme or a plan on the one hand, and a patentable invention on the other, has been considered in a number of cases. In Grant v Commissioner of Patents [2006] FCAFC 120 (Grant) the Full Court said:

“Business, commercial and financial schemes as such have never been considered patentable...in the same way that the discovery of a law or principle of nature is not patentable. Sir Robert Finlay A-G observed in Re Cooper’s Application for a Patent (1901) 19 RPC 53 at 54, ‘[y]ou cannot have a Patent for a mere scheme or plan – a plan for becoming rich; a plan for the better government of a State; a plan for the efficient conduct of business’. A law of nature becomes patentable when applied to produce a particular practical and useful result (Welcome Real-Time SA v Catuity Inc [2001] FCA 445; (2001) 113 FCR 110 at [117]). While a mere scheme or plan is not the proper subject of a patent, an alleged invention which serves a mechanical purpose that has useful results does not become such an unpatentable scheme or plan merely because the purpose is in the carrying on of a branch of business (Re Fishburn’s Application (1938) 57 RPC 245 at 248)”. [14]

“A physical effect in the sense of a concrete effect or phenomenon or manifestation or transformation is required. In NRDC, an artificial effect was physically created on the land. In Catuity and CCOM as in State Street and AT&T, there was a component that was physically affected or a change in state or information in a part of a machine. These can all be regarded as physical effects. By contrast, the alleged invention is a mere scheme, an abstract idea, mere intellectual information, which has never been held to be patentable, despite the existence of such schemes over many years of the development of the principles that apply to manner of manufacture. There is no physical consequence at all”. [32]

30. In Encompass Corporation Pty Ltd v InfoTrack Pty Ltd [2019] FCAFC 161, the Full Court noted that the physical effect noted in Grant is to be construed in a broad and extended sense and is similar to the “physical phenomenon” noted in NRDC.

“Although the Full Court referred to the need for a “physical effect”, it is abundantly clear that their Honours used the word “physical” in a very broad or extended sense. It is apparent that their Honours did so in an endeavour to demark, as best as words can, the conceptual distinction between, on the one hand, a manner of manufacture and, on the other, “a mere scheme, an abstract idea, mere intellectual information, which has never been held to be patentable ...”: see at [32]. We see the Full Court’s reference to, and use of, “physical effect” to be in no way different to the High Court’s reference to, and use of, “physical phenomenon” in the passage from NRDC we have quoted at [38] above”. [88]

31. They further noted that even the presence of a physical effect may not be enough to make it patentable subject matter.

“But perhaps more importantly for present purposes, the reasons of the plurality in Myriad make it perfectly clear that CCOM should not be taken as laying down a rule or rigid formula to be adhered to when characterising the claimed invention, although recourse to the terminology of an “artificially created state of affairs of economic significance” can be taken as a guide when analysing the true character of the invention that is claimed. Even then, it does not follow that the demonstration of a physical effect mandates patentability”. [90]

32. In Commissioner of Patents v RPL Central Pty Ltd [2015] FCAFC 177 (RPL) at [99-100], the Full Court emphasized the need to distinguish between a technical innovation and a business innovation.

“To reiterate some of the matters discussed in Research Affiliates:

• It is necessary to ascertain whether the contribution to the claimed invention is technical in nature. In Aerotel Ltd v Telco Holdings Ltd; Macrossan’s Application [2007] 1 All ER 225, the subject matter was an interactive system whereby questions were asked, the answers incorporated in a draft and, depending on some particular answers, further questions were asked. It was held that, apart from the fact of running a computer program, there was nothing technical about the contribution and the method was for the business of advising upon and creating appropriate company documents.
• One consideration is whether the invention solves a “technical” problem within the computer or outside the computer, or whether it results in an improvement in the functioning of the computer, irrespective of the data being processed.
• Does the claimed method merely require generic computer implementation?
• Is the computer merely the intermediary, configured to carry out the method using a computer readable medium containing program code for performing the method, but adding nothing to the substance of the idea? In Alice Corporation, the method was for exchanging financial obligations in which the computer was used to create records, track multiple transactions and issue simultaneous instructions. The majority in the Supreme Court of the United States concluded that the use of the computer added nothing to the substance of the abstract idea of reducing settlement risk in exchanging financial obligations.

Relevantly, the Full Court in Research Affiliates said (at [94]) that the distinction to be drawn was between the employment of an abstract idea or law of nature and the idea or law itself and that there is a distinction between a technological innovation which is patentable and a business innovation which is not. Their Honours repeated an observation from Grant (at [29]) ‘[a] product of a method is something in which a new and useful effect may be observed. For claimed computer programs, the courts looked to the application of the program to produce a practical and useful result, so that more than “intellectual information” was involved.’ A technological innovation is patentable; a business innovation is not, although a business method may be the subject of letters patent. However, ‘[a] method that is in the nature of directions for use does not constitute an invention or a manner of manufacture in the absence of some previously unrecognised property of an aspect of the method’ (Research Affiliates at [95])”.

33. In relation to subject matter that relates to games, it has long been held that games per se are not patentable, being merely mental processes, abstract ideas or schemes, and this includes even those games that are implemented with the assistance of cards, tokens or a game board as these are considered as intellectual information related to the rules of the game. However, where the game apparatus has a practical utility other than merely allowing the game to be played, it may be patentable.

34. Likewise, inventions that are characterised by presentation of information have also traditionally not been held to be patentable unless the presentation or arrangement of the information provides a material advantage (in the sense of a practical utility) rather than being of a purely intellectual or visual character.

“A second category (printed sheets and the like) was the subject of a Law Officer's Direction in 1899 upon which Patent Office practice has since been based. In the course of time, the principle that the intellectual or visual content of a printed card related to the fine and not the applied arts, and was accordingly outside the statutory definition of invention has been extended to cover additional articles e.g., cinematograph films and gramophone records, which differ only in the means whereby information is conveyed, to the brain. Even where such information is of importance in describing or defining an operation to be performed on some apparatus it cannot be regarded as part of the performance itself and thus qualify as a manner of manufacture. If however the marks as such are described to operate through appropriate means automatically to fulfil a commercial purpose, whether the means are mechanical, optical or electrical, they can properly be regarded as an integral part of a manner of manufacture and as such fit subject matter for patent claims”. (Virginia-Carolina Chemical Corporation's Application [1958] RPC 35)

35. In Pitman's Application [1969] RPC 646, an invention which related to variations in the visual presentation of printed characters, in order to assist in voice production by a recording machine or a human reader, was held to be patentable.

“If the applicants' alleged invention is considered in relation to its recommended use in a speaking machine a definite mechanical purpose is plainly apparent. In its broader aspect of association with the organs of human speech, a functional purpose is no less apparent and it cannot with confidence be asserted that the mechanism of voice production would be assuredly excluded from consideration as adding nothing to the mere arrangement of letters upon a sheet.

As I see the matter, the applicants' product cannot adequately be categorised solely as an intellectual, literary or artistic connotation of matter. So to do would be to deny the functional purpose which the novelty of the representation is intended to provide and without which its very utility becomes non-existent. There would appear therefore to be sufficient material upon which a court might hereafter hold the applicants' novel contribution to the visual representation of speech sounds as being within the scope of section 6 of the Statute of Monopolies and I must in consequence allow this appeal and I direct the Comptroller General to allow the application to proceed”.

36. In Cooper’s Application (1901) 19 RPC 53, Sir Robert Finlay A-G, while accepting the correctness of the principle that the inclusion of printed matter in connection with a scheme, even where the alleged invention lies in that arrangement of the printed matter on the sheet, would, in substance, still be a unpatentable scheme, found that leaving a blank space down the middle of a newspaper was more than a mere arrangement or words in that it serves a mechanical purpose rendering it physically more convenient to read and hence a manner of manufacture.

“The question which I have to determine is for this purpose, I think, solely whether this application relates to a manufacture. I feel constrained to come to the conclusion that it does. There is no doubt that newspaper is an article of manufacture. It is an artificial product. Mr. Cooper alleges that by following his directions, and leaving a blank space in the middle of the page each way, you will render it physically more convenient for use than by printing it in the way hitherto accustomed, I do not see myself any difference, from the point of view from which I now am dealing with this matter, between such an application as this and an application relating to a proposal for so binding a book so that it opens comfortably and conveniently for the reader", so that there should be no difficulty in unfolding it so completely that he would have the whole of each page lying flat before him, instead of being curved, and almost concealed, as it is in some old fashioned methods of binding. There may be a vast difference in the utility of the two processes, but the point of principle it seems to me that the one must be regarded as a manufacture just as much as the other”.

37. In Cobianchi’s Application (1959) 29 AOJP 2133, which was a patent for a special pack of cards designed for playing the well-known game "Canasta", the main novelty being that the symbols shown in two colours on conventional cards were replaced by pips or other markings in two colours. Lloyd-Jacob, J held that it was a manner of manufacture

“It is well settled law that a printed sheet, ticket, coupon or the like, upon which some arrangement of words or the like is the only alleged invention, does not generally speaking qualify for patent protection.

The rule has been held to be subject to certain exceptions, but it is reasonably clear that a mere multiplication of the sheet, ticket, coupon or the like and the aggregation of a number of copies into a pack could not properly be said to provide a manner of manufacture.

If, however, the aggregation into a pack is not of a number of copies, but of a number of differently printed sheets which in their association one with another have a potential working inter-relationship, the aggregation possesses something more than the sum of its individual parts, although it is to be noted that this something more is but a potentiality which requires for its translation into actuality not only the full collection of the parts but a conception or plan for their use, for example, a card game.

......

I am satisfied that the game itself, whatever its ingenuity, could not be the subject of patent protection, but I am not satisfied that the ingenuity shown in devising this novel pack, which requires the operation of a manner of manufacture for its reproduction, can be dismissed as a mere idea or plan”.

38. In I.T.S Rubber’s Application (1979) 96 RPC 318, the invention was a squash ball which was coloured blue. This was the only difference, the ball otherwise being no different to other squash balls. The court of appeal found that it was a manner of manufacture on the basis that the blue colour provided a technical purpose in that it improved the visibility of the ball against the white background wall.

39. In W.'s Application (1914) 31 RPC 141, the invention was to the arrangement of well-known buoys in a particular way and identifying them with different numbers painted on its face. Sir Stanley Buckmaster, S.G. held that the alleged invention was not a manner of new manufacture noting that the buoys in question were of a perfectly ordinary character and that the invention if any was merely confined to arranging them in a particular way.

"I cannot see that it is an invention that involves any manner of new manufacture at all. It is nothing but an arrangement of well-known forms of signals so that the position of anyone of such signals may be known by a number painted on its face. It appears to me no more than if he were to say: 'You may know if a buoy is a buoy outside a particular line of coast by painting the buoy red and whether it is outside another line of coast by painting it blue'. It is, in fact, doing nothing but so fixing these buoys as that they show, by their position, sound, or appearance, where they are. In my opinion that is not the subject of any new manufacture. It appears to me that it clearly resembles the case which I put to Mr. Justice of the system of numbering houses and streets in some of the towns of the United States, a system by which you can tell where you are directly you see the number of any street. That does not seem to me to be a manner of new manufacture. Then Mr. Justice said 'You would manufacture the doors or the numbers'; but that you would do in any event. It would be a question of the arrangement of the numbers on the doors and nothing else. It is just the same here. Here nothing new is manufactured. Here are the buoys just as they were before, numbered as they were numbered before. All the applicant does is, he takes a series of known means of directing the sea traffic and denotes it by number or sound, so as to make plain what the position of any such signal or device may be. I cannot think that that is a method of new manufacture. "

40. In Rhodes Application (1973) 90 RPC 243, the invention was the speedometer of a car which had in addition to the normal scale for showing the speed of the travelling vehicle another concentric scale to show the square of the speed, this being proportional to the kinetic energy of the car. The meter was thus able to indicate to a driver both the speed of his car and also what was termed its "impact speed". On appeal, the Court in finding that this invention was a manner of manufacture noted that it is useful to consider what is the nature of the contribution of the invention.

“It is sometimes useful in assessing whether there has been an invention to consider what the nature of the contribution, if any, of the inventor can be said to be.

On the information at present available it could be said that this inventor's contribution was the idea that it would be valuable to provide a driver with an instrument which would indicate his "impact speed" coupled with a method of doing this. The invention appears to us to lie not in the information but in the idea of presenting such information and in a way in which this can be done”.

41. In Aristocrat Technologies Australia Pty Limited v Commissioner of Patents [2020] FCA 778 (Aristocrat), Burley J found that an Electronic Gaming Machine (EGM) that implemented a particular game function on the occurrence of a trigger event was a manner of manufacture on the basis that it was a device of a specific character that produced a useful result.

“I do not consider that, properly understood, the invention described and claimed, when understood as a matter of substance, is to a mere scheme or plan. It is to a mechanism of a particular construction, the operation of which involves a combination of physical parts and software to produce a particular outcome in the form of an EGM that functions in a particular way”. [95]

“The result is that to the person skilled in the art, the invention may be characterised as a machine of a particular construction which implements a gaming function. It yields a practical and useful result. Simply put, the machine that is the subject of the claims is built to allow people to play games on it. That is its only purpose. In this regard, the physical and virtual features of the display, reels, credit input mechanism, gameplay mechanism and game controller combine to produce the invention. It is a device of a specific character”. [98]

42. In Aristocrat Technologies Australia Pty Ltd [2016] APO 49 (APO Aristocrat), an EGM with a touch sensitive electronic display that allowed for selecting both a game (from a plurality of games) and a denomination (from a plurality of denominations associated with the game) with one action by the player was found by the delegate to be a manner of manufacture.

THE APPLICANT’S SUBMISSIONS

43. Firstly, the applicant submitted that the examiner’s objection and the reasoning given therein are not clear.

“Overall, the objection and what reasoning, if any is provided, is not clear. In this respect, in the wording of the objection, the examiner has first identified the claimed invention as the arrangement of information characterised solely by the content of that information. However, the examiner also concludes the invention is at the same time a scheme of wagering that can be extrapolated from the arrangement of information. Yet, the objection proceeds to label the arrangement of information as purely abstract in character. Therefore, one could at least ask, if the arrangement of information is purely abstract, how can a practical activity such as wagering be carried out? More relevantly, how can indicia physically disposed within elements of a betting table layout for public display as defined by the claims possibly be abstract? In this respect, by the very definition of the words used to limit the claimed features in forming a common boundary to introduce a double zero ‘00’ into the otherwise conventional single zero ‘0’ Roulette game, the claimed features are incarnate in the physical world as opposed to abstract being something existing merely as thoughts in the mind, not related to physical objects or real events and actions”.

44. The applicant has then made other submissions asserting that the claimed invention is not an abstract scheme or rules for playing a roulette game and that it falls well within the ambit of a manner of manufacture. Some of the key submissions are as follows.

“The invention in the present case, lies not in a presentation of information per se or in any scheme or plan, but the physical and positional means by which a game is realized. Here there is an artificial state of affairs to realize the invention, and the invention precedes the playing of the game and the general rules of the game. The present invention is in line with the Aristocrat single touch interface decision^[3] : “information is located in a particular position (by virtue of the claimed physical elements of the Application comprising individual numbered wagering spaces for accommodating indicia) and functionality is generated by the use of this positional location to improve the gaming machine” or, apparatus in this case.”

“The claims of the Application do not attempt to monopolize the presentation of information. Nor do they attempt to monopolize the numeric value of any information. By way of counterexample, this is markedly different from Myriad, in which the patentee was actually trying to monopolize a genetic code, ie information (which happened to be carried in isolated DNA).”

“Apparatus claims 1, 2 and 3 of the Application are directed to Roulette apparatus comprising, inter alia, a physical table layout adapted for placing wagers. This wording in the preamble of the apparatus claims cannot be ignored because it goes to the substance of the invention. The layout features, as claimed, provide a physical modification of conventional forms of single-zero and double-zero Roulette table layouts that produces a new functionality to both traditional forms of Roulette by way of a new form of double-zero Roulette that retains preferred betting options available only in single-zero Roulette.”

“The claims do not attempt to monopolize either the presentation of information or the numeric value of any information. None of the claims is to a presentation of information ("mere") or otherwise, these claims are to a physical/mechanical device. One of the components of that device is a region for the receipt of wagering chips, two of the sub-regions of which carry the markings "0" and" 00"............ With the present invention, as claimed, the zero "0" and the double zero "00" elements are physical components of the table for receipt of gambling chips. They are no more "information" than are the dimples on the skin of a golf ball which, like the "wagering spaces" of the presently claimed invention, are there to serve a physical function.”

“The limitations recited in the apparatus claims define a physical contraption, not a presentation of information. In combination with the defined physical contraption information is located in a new arrangement to provide a mechanical result in providing hitherto unavailable betting options for the play of Roulette in a double zero version of the game. Even if the physical device aspects of the claimed invention were to be dismissed (improperly as that would be), the location of information in a particular position where functionality is generated by the use of this positional location to improve the game is considered patentable by IP Australia^[4] and such a contribution is technical in nature, and achieves a practical and useful result.”

“The integers of claim 1 may include indicia that conveys information to the user for placing wagers but more importantly the integers of claim 1 define a physical positioning of specific indicia at particular locations upon the device of a table layout in order to serve a mechanical function, ie allow for specific bets to be placed upon the laying down of players chips at locations on the table layout in relation to the newly devised hybrid double zero Roulette game in order to retain the favoured betting options of single zero Roulette. This can hardly be categorised as the mere presentation of information characterised solely by the content of the information.”

“We submit that the substance of the invention of the present Application is not a mere scheme because the claimed limitations directed to physical elements and components of Roulette apparatus go to the heart of the improvement offered by the invention and produce a double zero Roulette variation with material advantages over both single zero Roulette and double zero Roulette forms of the game as they were known and operated before the priority date of the invention.”

“As submitted, the invention is directed to physical apparatus and a method of using that physical apparatus for playing Roulette. It involves physical process steps which can only be carried out using physical apparatus on a physical product”

“It is not to the point, nor is it accurate to state that the claimed invention merely relates to an arrangement of numbers that a particular scheme of wagering can be extrapolated from. The claimed invention, in substance, is a physical arrangement and configuration of Roulette devices, namely a table layout with its characteristic positioning of wagering spaces for accommodating indicia and a Roulette wheel retaining a known form of number sequence with an added compartment that produces a functionally improved form of Roulette.”

CONSIDERATION

45. In relation to the applicant’s submission that the examiner’s objection and the reasoning given therein are not clear, I am inclined to agree. Each of the independent claims is directed to a physical apparatus in the form of a roulette table, or to a method of playing a game using a roulette table, wherein the numbered spaces on the table and the pockets in the roulette wheel are placed in a particular layout or order. Furthermore, the layout of the wagering spaces is set out and marked accordingly at the time of manufacture of the roulette game apparatus and, therefore, precedes the actual playing of the game. In that respect each of the independent claims is not in form directed to an abstract idea or scheme. However, in my view it appears to me that what the examiner was intending to convey was that the substance of the invention in each of these claims lies in the rearrangement of the ‘0’ and/or ‘00’ indicia in the standard double zero table layout and such an arrangement is no more than the implementation of an abstract idea or scheme to provide additional wagering options.

46. As clearly set out in the authorities that I have mentioned earlier, the first step in the process of determining whether a claimed invention is to a manner of manufacture is to identify the true substance of the invention. In this regard it should be noted that just because each of the independent claims is embodied in, or utilises, a physical apparatus is not sufficient to make them a manner of manufacture. Once the substance of the invention is identified, it must then be determined whether it has the necessary qualities to be a manner of manufacture.

The Substance of the Invention

47. It is clear from a fair reading of the description, that the present invention seeks to provide a Double Zero roulette game that provides the same visual appearance and betting options as a Single Zero roulette game and also offers additional betting options over the traditional Double Zero roulette game. This is done primarily by modifying the layout of the numbered wagering spaces on the roulette table, although the invention optionally also contemplates modifying the pocket layout of the roulette wheel. This modified layout of the numbered wagering spaces is, however, the heart of the invention.

48. I would therefore characterise the substance of the invention as a modified Double Zero roulette game in which the layout of the numbered wagering spaces on the betting table has been rearranged so that it more closely resembles that of a Single Zero game layout whereby it can offer the same betting options as a Single Zero game in addition to the standard Double Zero game betting options.

Is the Substance of the Invention merely a scheme or presentation of information?

49. The substance of the invention that I have identified relates to the layout of the numbered wagering spaces on the roulette table layout. It involves rearranging the ‘0’ and ‘00’ wagering spaces in the Double Zero game table layout to make it more visually similar to the Single Zero table layout. This is the only difference between the claimed invention and the well-known Double Zero roulette apparatus. This is also clearly the contribution to the art. It is therefore fair to say that the substance broadly relates to the presentation of information comprising numbered wagering spaces to players of the game. However, the authorities that I have noted earlier do not, as a general rule, exclude every invention that relates to presentation of information from being suitable subject matter for letters patent. It is important to consider the nature of the contribution of that presentation of information and whether it serves some kind of a mechanical or technical purpose.

50. As discussed earlier, the purpose of the rearranged layout is to make the location and configuration of the ‘0’ wagering space of the modified Double Zero game similar to that of the location and configuration of the ‘0’ wagering space in the Single Zero game. This is said to offer the player the same betting options as in the Single Zero game, so that traditional Single Zero game players will be enticed or attracted into playing this modified Double Zero game. In my view this is merely a scheme or strategy to popularise the Double Zero game in Single Zero markets by providing similar visual appearance and similar betting options. By no stretch of imagination could this be considered as providing a mechanical or technical benefit. Whilst the applicant has argued that it serves a mechanical purpose because players can place bets on each of the wagering spaces, I am not persuaded. The placing of bets in the wagering spaces is an act performed on the table layout by the player at the time of playing the game and there is no action performed by the apparatus itself that assists in this placing of bets in the appropriate spaces. Even when the bets or chips are placed in the numbered spaces, the apparatus itself does nothing different as a consequence. It merely continues to hold the chips until such time it is removed by the croupier at the completion of each game. While I accept that the increased betting options may provide some commercial benefit to the casino operator and/or the players, it is clear from the authorities that mere economic or commercial benefits is not sufficient to make something a manner of manufacture. The invention should lead to some physical phenomenon or some technical benefit. In my view, merely presenting a different wagering space layout that does nothing otherwise to the functioning of the apparatus cannot be considered as a physical phenomenon or transformation.

51. The present invention can be distinguished from those cases where it was found that, although the invention related to presentation or arrangement of information, they were still a manner of manufacture. In all of those cases the presentation of information served a mechanical purpose and provided some advantage which is material in the field of economic endeavour.

52. For instance, in Rhodes’s Application, the additional scale showing the kinetic energy of the vehicle, provided an indication to the driver of the severity of impact in a head-on collision and thereby cautioned them against excessive speeding.

53. In Cooper’s Application the leaving of a blank space rendered it physically more convenient to read the newspaper without the fold obscuring one or more printed lines.

54. In I.T.S Rubber’s Application the blue colour of the squash ball improved the visibility of the ball against the white background wall making it easier to see and hit the ball.

55. The applicant drew comparisons with the Office decision in APO Aristocrat. The applicant submitted that, similar to APO Aristocrat, the integers of claim 1 defined a physical positioning of specific indicia at particular locations upon the device of a table layout in order to serve a mechanical function, i.e. allow for specific bets to be placed upon the laying down of players chips at locations on the table layout. In my view, APO Aristocrat can be distinguished from the present invention. In that decision, the delegate found that the gaming interface allowed the game and bet denomination to be selected in a single action and that this would achieve a practical and useful result by simplifying the use of the gaming machine by the player. In the present invention this action of laying down chips is done by the player and not by the roulette apparatus. In APO Aristocrat, while the player may only have required to touch a single button on the interface, the electronic gaming machine then had to perform consequential actions in processing this touch to identify and display the chosen game and denomination. There was a physical effect on the EGM. However, in the present invention, the game apparatus does not perform any mechanical or physical actions as a consequence of the player placing down chips in one or more of the numbered wagering spaces on the table. The table layout has no role to play other than to present numbered wagering spaces where a player may place bets. There is no physical effect on the game apparatus itself during the playing of the game.

56. For similar reasons the present invention can also be distinguished from the invention in Aristocrat where, again, there was a physical effect on the EGM on the occurrence of a trigger event. The fact that it was also embodied in a physical device was only one of the considerations in finding that it was a manner of manufacture.

57. On the other hand, I can see similarities between the present invention and that in W’s Application. In that case a plurality of numbered buoys were located strategically so that they would provide an indication to a captain of a vessel as to where the vessel was in relation to the coast. Although the invention involved the use of physical devices, it was held that the mere placing of the differently numbered or coloured physical devices in different locations did not serve for any mechanical purpose. Similarly in the present invention, while the ‘0’ and ‘00’ wagering spaces may have been rearranged to make it visually similar to a Single Zero game and to allow for additional betting options, I do not consider that arrangement as serving a mechanical purpose. The basic construction of the roulette apparatus still remains the same and there is no physical effect or transformation on the working of the apparatus as a consequence of the rearranging of the location of the wagering spaces. Another analogy that was also noted in W’s Application is the numbering of houses. In Australia, houses in a street are numbered so that even numbers are on one side of the street and odd numbers on the opposite side of the street in order to make it easier to identify a particular numbered house. While it may provide a useful benefit, it still remains a scheme for numbering houses. Similarly, while the claimed invention may provide a useful result in providing greater betting options, there is no technical or mechanical effect. The substance of the invention in my view relates to no more than a scheme for enticing greater take up of a game of chance and to provide increased betting options for players. It is not for a technical innovation.

58. I find that the invention defined in claim 1 is not a manner of manufacture. Even in relation to claims 2 and 5 which define the location of the ‘0’ and ‘00’ pockets in the roulette wheel, I can see no reason to not arrive at the same conclusion as the modified arrangement of the table layout as all that has been done is to renumber the pockets to change the location of the ‘00’ pocket to be adjacent the ‘0’ pocket. This variation on the wheel is a different development related to the game and has no working relationship to the table layout. These claims are also not for a manner of manufacture.

CONCLUSION

59. None of the claims are directed to a manner of manufacture. I also cannot find any other disclosure in the present application that could possibly be patentable subject matter. I therefore refuse the application.

ADDITIONAL OBSERVATIONS

60. With respect to divisional application 2020204279 that I mentioned earlier, while I observe that the doctrine of issue estoppel does not apply to tribunals such as the Commissioner of Patents, it may be assumed that the present decision will be highly relevant to examination of this divisional application.

R Subbarayan

Delegate of the Commissioner of Patents

^[1] Specification at page 1, lines 31-32

^[2] Specification at page 1, lines 33 – page 2, line 3

^[3] Aristocrat Technologies Australia Pty Ltd [2016] APO 49

^[4] Aristocrat Technologies Australia Pty Ltd [2016] APO 49