IGT / Acres Gaming Inc, Re

When a patent claim combines technical features with excluded business features, the Patent Office may search the prior art by stripping out the merely business aspects and identifying the remaining technical combination. If the alleged technical contribution was already known or obvious, it cannot constitute a contribution to human knowledge. The four-stage Aerotel approach remains applicable: construe the claim, identify the actual contribution, ask whether it falls solely within excluded subject-matter, and cross-check whether it is technical. Patent claims must be sufficiently clear at the examination stage. Where amended terminology may mislead the examiner or obscure the invention, amendment may be required even if the objection is raised late.

The applicants appealed against a UK Intellectual Property Office decision refusing patent application GB 0311200. The application concerned using information read from pre-existing cards to identify and access casino accounts, without first decoding the information. The hearing officer treated the claimed contribution as a business method as such, although he was not satisfied that it lacked an inventive step.

On appeal, the central issues were whether the Patent Office could search for prior art to determine the actual contribution, how business features should be treated in that search, and whether the amended claim was sufficiently clear. The court also considered whether the use of the terms “encrypted” and “without decrypting” obscured the scope of the invention.

1. Prior art and excluded subject-matter. The Patent Office was entitled to search the prior art to determine what the applicant had actually added to human knowledge. If the alleged contribution was already known or obvious, there could be no patentable contribution. A new and non-obvious technical procedure would not become excluded merely because it was intended for use in a business method.
2. Application of the Aerotel approach. The court applied the four consecutive steps of construing the claim, identifying the actual contribution, asking whether it fell solely within excluded subject-matter, and checking whether the contribution was technical in nature. The fourth step was a cross-check rather than a freestanding test.
3. Clarity. The expressions “encrypted”, “non-decrypted” and “without decrypting” were insufficiently clear. They could suggest that the information was secret, although the application also referred to cards carrying openly accessible information. At the examination stage, a claim may require a higher practical standard of clarity where its broad wording could mislead readers or cause relevant prior art to be missed. The objection arose under section 14(5)(b) of the Patents Act 1977.
4. Late objection and search method. The Patent Office was entitled to raise the clarity objection at the appeal stage, and the court had power to permit it under section 99. The applicants were given the choice of amending the application or pursuing an appeal to the Court of Appeal. For future searches, the Office could strip out merely business features and search the remaining technical combination, including non-patent material such as published standards. The court did not seek to fetter the Office’s discretion.
5. There was no order as to costs.

High Court (Patents Court): appeal from the UK Intellectual Property Office hearing officer’s refusal of the application. The hearing officer’s decision was not given a citation in the judgment. The court required the applicants to elect whether to amend the application or seek permission to appeal.