*1 important It is to note that the United meanings of those words. He tions of the government played no role accuracy whatsoever of the tran- States further verified preparation in either the destruction noting the unusual nature of scripts by that recordings tapes. or the the master cassette conversations memo- greetings made the question transcripts that these There is no that he also testified rable for him. Sabio requirement origi- that the meet Rule 1004’s transcripts contained say could not that the recording through not be lost bad faith nal every parties in words used the exact part proponent. on the of the Fed.R.Evid. conversation, but that he believed the conver- 1004(1). that, question giv- There is also no essentially as tran- sations were carried testimony, en Sabio’s admission the five scribed. involving him transcripts of conversations Spanish police officers told the The two agree I that the cause no concern. admis- they all thirteen district court how made remaining eight transcripts sion of the They that all original transcripts. testified am, however, that troublesome. I satisfied wiretapped phone conversations from two evidentiary hearing demonstrated that originally a master phones were recorded on transcripts were indeed reliable. Under tape. Spanish police A officer then listened circumstances, involving the actions of a tape to the and identified conversa- master foreign government and not the United ongoing investiga- tions that related to their government, agree they I States were recordings tion. The of those conversations reiterate, however, properly I admitted. tapes duplicated onto cassette and the were holding that our on this issue should be Generally, then reused. tape master was unique pre- circumstances confined Spanish language Spanish police made a sented in this case. listening transcript of the conversation while cassette, duplicate to the but on certain occa- transcript directly from
sions the was made tape. court
the master The district noted procedures followed fell short of the country by
safeguards provided in this comported Spanish but law. ALAPPAT, Kuriappan In re P. Edward E. Averill and James G. Larsen. ample opportunity to
Defense counsel had Spanish police officers in cross-examine No. 92-1381. jury procedures front of the on the Appeals, United Court of States making transcripts followed in and on the Federal Circuit. accuracy partici- of their identification of the pants. Sabio was also available the de- July testimony accuracy regarding fense for but, surprisingly, transcripts he was called, testimony presumably because his supports accuracy transcripts. In- of the
terestingly, the Government did not bolster reliability transcripts jury of the for the
by re-calling as a after the Sabio witness
transcripts ruled admissible. had been Sabio called as a witness
had been Government
prior proffer transcripts,
naturally testimony at that time made no his Thus, jury transcripts.
mention transcripts
weighed the value of the without testimony supporting benefit Sabio’s accuracy.
their *4 Johnson, Jr., Marger,
Alexander C. John- son, Stolowitz, P.C., Portland, McCollom & OR, argued appellants. himWith on the brief was Peter J. Meza. Also on the brief Tektronix, Inc., Gray, I. was Francis Wilson- ville, Sokal, Finnegan, M. OR. Allen Henderson, Farabow, Dunner, Garrett & DC, Washington, curiae, argued for amicus Bar him Federal Circuit Association. With Bjorge, on the brief were Gerald H. Herbert George H. Mintz E. Hutchinson. Solicitor, McKelvey, Fred E. Office of the Sol., VA, Arlington, argued appellee. him on the brief were Lee E. Barrett With Schafer, E. and Richard Associate Sol. Of Albín F. counsel were Drost John W. Dewhirst. Wamsley
Herbert C. and Richard C. Witte, Owners, Inc., Property Intellectual DC, Washington, ami- were on the brief for curiae, Owners, Property Intellectual Inc. cus Stern, James, H. Richard Graham & DC, Washington, was on the brief for amicus curiae, Seagate Technology, Inc. Also III, this court Heller, over ex- Patent valid decision P. Edward was brief jurisdiction pursuant to subject matter ercise Counsel. 1295(a)(4)(A) (1988) and 35 28 U.S.C. Linck, Nancy J. Koenigsberg and Fred I. below, As discussed Cushman, Washington, Cushman, Darby & panel which issued the legality of the Board curiae, DC, for amicus on the brief were question, inis thus reconsideration decision Property Law Associa- Intellectual American validity of the deci- raising the issue of Weg- Harold C. were Also on the brief tion. consequently authority our sion itself Cantor, Workman, Wegner, and H. Ross ner Therefore, before ad- review decision. Washington, Of Player, DC. & Mueller merits, appropriate dressing the we LaFuze. was William S. counsel the decision was ren- first determine panel to legally en- dered constituted RICH, ARCHER, Judge, and Chief Before hang jurisdictional cloud does not that a sure MAYER, MICHEL, NIES, NEWMAN, In re holding on the merits. See over our CLEVENGER, PLAGER, LOURIE, Corp., 772 Bose F.2d SCHALL, Judges. Circuit RADER (Fed.Cir.1985).1 3—4 RICH, Judge, with whom: Circuit *5 (Jurisdiction): Although Alappat does contest PAULINE Part I
as
RADER,
validity of the Board’s reconsideration
NEWMAN,
Cir-
and
LOURIE
decision,
ARCHER,
jurisdiction cannot be conferred on
Judge,
Judges, join;
Chief
cuit
PLAGER,
acquiescence.
Coast
Judges, con-
this court waiver
and
NIES
Circuit
States,
MAYER,
Corp. v.
713 F.2d
conclusion;
MI-
al
United
cur
in
and
(Fed.Cir.1983).
SCHALL,
This court
therefore has
CHEL,
Cir-
and
CLEVENGER
jurisdiction
sponte,
sua
as
dissent;
the issue of
raised
Judges,
cuit
Mansfield,
&
duty.
Coldwater
is its
See
(Merits): PAULINE NEW-
to Part II
Swan,
Ry. Co. v.
U.S.
Lake Mich.
LOURIE, MICHEL,
MAN,
PLAGER and
(1884);
510, 511,
court have stated that its reconsidera- tion decision was a appealed pur- decision? “new decision” for poses requesting reconsideration or seek- (3) relationship, any, if What is the be- ing not, court review of that decision. It did action tween the “reconsideration” taken however, original vacate the three-member “rehearings” by in this case and Instead, panel majority decision. indicat- 7(b)? provided Board 35 U.S.C. original, ed that the panel three-member de- below, our discussion we Consistent with only cision was “modified to the extent indi- question hold that the answer to the first Alappat, USPQ2d cated.” at 1347. That yes. Consequently, we need not address the was, however, “modification” a de facto re- question. question, second As to the third decision, original panel’s versal of the affirm- hold, later, explained we for the reasons ing reversing instead the examiner. the Board was a “reconsideration” “rehearing” provided for in 35 U.S.C. B. Discussion 7(b) (1988). (1) Legality Rehearing the Board’s Panel Background A. statutory interpretation When is at In an Office Action mailed December issue, plain unambiguous meaning of finally rejected the Examiner claims prevails a statute clearly the absence of being 15-19 under 35 U.S.C. 101 as direct- expressed legislative contrary. intent to the non-statutory subject Alappat ed to matter. Mansell, 581, 592, See Mansell v. 490 U.S. appealed rejection pursuant to the Board 2023, 2030, 104 (1989); 109 S.Ct. L.Ed.2d 675 (1988), to 35 U.S.C. and a three-mem- Aktiengesellschaft Hoechst Quigg, panel up ber made of Examiners-in-Chief (Fed. *6 USPQ2d 1549, F.2d Thomas, Lindquist, and Krass reversed the Cir.1990). case, composition this of non-statutory subject Examiner’s matter re- authority the Board and its to reconsider its jection in a decision mailed June decisions, own and the au Commissioner’s requested The Examiner then reconsidera- Board, thority governed over by decision, pursuant tion of this to section 7,§ which reads: Examining 1214.04 of the Manual Patent of (a) per- The examiners-in-chief shall be (MPEP), stating panel’s Procedure that the competent legal knowledge sons of and policy. decision conflicted with PTO ability, appointed scientific who shall be requested Examiner further that such recon- competitive service. The Commission- by expanded sideration be carried out an er, Commissioner, Deputy the Assis- panel. Commissioners, tant the examiners- and. shall constitute the Board Pat- expanded eight-member panel, An acting in-chief of Appeals ent and Board, granted as the both of the Examiner’s Interferences. (b) requests. Appeals The Board of Patent and expanded panel up was made shall, appeal Interferences on written of an Manbeck, Depu- of PTO Commissioner PTO applicant, review adverse decisions of ex- Comer, ty Commissioner PTO Assistant upon patents applications aminers and Samuels, Commissioner Board Chairman Se- priority patentability shall determine and rota, Calvert, Board Vice-Chairman and the of invention in un- interferences declared original panel. three members of the On 135(a) ap- der section of this title. Each April the five new of members peal and interference shall be heard expanded panel majority issued the decision Ap- least three members the Board of of appeal, now on authored Chairman Sero- Interferences, peals and who shall be des- ta, they in which affirmed the Examiner’s ignated by Only the Commissioner. rejection, § ruling contrary thus Appeals Board Patent and Interferences original panel. decision of the three-member authority grant rehearings. has the original panel The three members of the (1988) added). (emphasis § 35 U.S.C. dissented on the merits for the reasons set original opinion, below, forth in their which For forth the reasons set we augmented dissenting opinion. grants § in a hold that the Commissioner the legislative of a There is no evidence authority designate members whole, history clearly § request or Title 35 as for reconsidera- panel to consider includes, indicating Congress impose This intended to tion of Board decision. case, statutory regarding designating an limitations which this Commissioner may ap up of members the Commissioner panel made the members Board expanded point expanded panel to an or when original panel, other members of such, Board, may panel.3 convene such a to consider Commissioner himself as authority has the of a decision ren- The Commissioner thus request for reconsideration includes, expanded panel original panel. The Board’s convene which dered up predominately as in this made therefore constitut- case reconsideration decision of, which court senior executive officers the PTO such a valid over this ed decision Commissioner, jurisdiction. Deputy as the the Assistant exercise Commissioner, the Board’s Chairman Vice-Chairman, and himself.4 (a) 7(a) outset, At we note that (b) unambiguously provides that the plainly and Commissioner, jurisdictional Commissioner, Deputy inquiry The focus of the 7(b) Commissioners are mem in this case the last sentence of Assistant 7(b) provides: “Only Patent plainly of the Board. Section the Board of bers authority unambiguously requires Appeals the Commis Interferences designate grant rehearings.” “at least Board mem The Commissioner sioner three” appeal. By to hear use of the contends that the reconsideration action tak bers each three,” express type “at case language Congress least en this constituted of “rehear authority ly granted ing” in the last the Commissioner the mentioned sentence 7(b). below, designate expanded panels up Board For reasons set forth we made interpretation than Board find the more three members.2 Commissioner’s raised); Horton, elty parte Court of issues 2.Both court and the of Customs Ex Inter.1985) (five-mem (CCPA), Appeals prede (Bd.Pat.App. & Patent cessors, one this court’s panel); parte Tytgat, Ex have Board ber reviewed decisions rendered Inter.1985) (five-member (Bd.Pat.App. panel); & by panels up made of more three Board than *7 Jackson, 804, (Bd. USPQ parte and Ex 217 806 questioning validity members without of such (nine-member Inter.1982) 1028, Pat.App. panel & Wong, be panels. e.g. See v. 892 F.2d Hahn 1031, 1313, legal impression). (Fed.Cir.1989) cause was one of issue first USPQ2d 13 1316 (seven-member panel significance because of Lundak, 1216, raised); issues In re 773 F.2d interpreted 3. The Commissioner has his authori- 1219, 90, (Fed.Cir.1985) (eighteen- USPQ 227 92 panel ty expanded granting to convene an as him Durden, 1406, panel); member re F.2d In 763 authority expand panel to a three-member to 3, 359, (Fed.Cir. USPQ n. 1409 226 360 n. 3 include additional Board members after oral Henriksen, (sixteen-member 1985) panel); Kuklo, In re hearing. e.g. parte USPQ2d See Ex 25 253, 1, 224, 1387, 1992) (five- 1 (Bd.Pat.App. 399 F.2d (CCPA 254 n. 158 225 n. 1388 & Inter. 1968) (nine-member panel panel); Johenning, because v. 17 member USPQ2d Larson 1610, 1991) raised"). (Bd.Pat.App. legal "the nature of the issues Other 1610 & Inter. (five-member panel); Lyell, USPQ2d parte Ex has con 17 instances wherein Commissioner 1548, (five- 1990) (Bd.Pat.App. & expanded panel Alpha 1549 Inter. parte an vened include Ex Remark, Inc., 1851, panel); parte USPQ2d member Ex 15 (Bd.Pt.App. USPQ2d Indus. 22 1852 1498, 1990) (five- (Bd.Pat.App. 1992) 1498 & (five-member Inter. panel); parte & Inter. Ex Fu panel); Kumagai, USPQ2d parte 1073, member Ex 9 jii, (Bd.Pat.App. USPQ2d & In 1074 (five- Inter.1988) (Bd.Pat.App. & (five-member ter.1989) signifi panel because of panel). member Kristensen, raised); parte cance of issue Ex 1989) USPQ2d (Bd.Pat.App. & Inter. Kitamura, (five-member panel); parte Ex say 4. This is not to that the Commissioner’s Inter.1988) USPQ2d (Bd.Pat.App. authority designate & to Board members of a (five-member panel possible because of conflict panel may may by princi- not be constrained law); Berguer, USPQ2d process by ples in case Lamontv. due Title the Administra- (five-member However, Inter.1988) (APA). (Bd.Pat.App. & tive Procedure Act herein, as noted raised); novelty argu- panel Alappat any Kwon because of of issue not raised such Perkins, (Bd.Pat.App. USPQ2d appeal, & in this we need not ments therefore Inter.1988) (nine-member panel of nov address such issues. because deference, criticism, one entitled to accepted, to be reasonable CCPA without the PTO’s given that neither the statute itself nor the treatment of a Board pursu- reconsideration legislative history Congres- thereof indicates ant to Rule on an request, examiner’s as contrary. to sional intent 7(b).7 “rehearing” provided § for in interpret “rehearings” We the term interpret We also the Commission § encompassing any 7 as reconsideration express statutory er’s authority designate to by the Board of a decision rendered one panel hearing appeal members of a panels. § of its The fact that 7 refers to extending designation to panel of a to consid (PTO “rehearings” whereas 37 C.F.R. 1.197 request er rehearing for a pursuant 197)5 Rule refers to “reconsideration” is of 7(b).8 There is no indication to con significance. differing terminology no statute, trary in the and we have found no appears nothing to be more than the result of legislative history indicating Congres a clear imprecise regulation drafting.6 We have sional intent that the Commissioner’s author suggesting been unable find evidence ity designate the members of a Board that, promulgating Rule the PTO panel designation be limited to the of an process separate intended to create a review original panel or that the Board be limited provided by distinct from statute. exercising addition, rehearing interpretation authority only In support our finds Schmidt, In re through panel original rendered an (CCPA 1967), wherein the decision. those cases where a different 197(b) pertinent part: Apparently, 5. Rule reads in the Board's reconsideration deci- single present request sion in the case A for reconsideration or modifi- was based on the same cation of the decision original made if filed record that was before the three-member original within one month from the date of the panel, Alappat opportu- was not allowed an decision,.... nity to add to that record. We do not intend to suggest 7(b) “rehearings” herein that under “rehearing” 6. The terms and “reconsideration” Indeed, are limited to such situations. it would interchangeably. used often In some con- not be “rehearings” unreasonable to construe texts, a distinction is made between the two. We 7(b) broadly encompassing under as also re- basis, however, imposing any see no such consideration the Board wherein the Board pro- distinctions in the context of PTO Board applicant supplement existing allows an ceedings, especially considering that the Com- argues record or missioner wherein the Board allows the PTO does not make both the distinctions, citing McCrady, applicant such Patent and the examiner to brief the issues Office Practice, (3d 1950). § 235 ed. We note that anew. Practice, (1959) McCrady's Patent 4th ed. Office states in 235: "These two terms 'reconsidera- consistently interpreted 8. The Commissioner has 'rehearing' tion' and seem to be treated Rule statutory authority designate his the constitu interchangeable, 197 as and are so treated here.” ency panel allowing change of a Board him to se, Although legislative history per we also augment originally designated panel Fenning, note Karl at the time a former *8 response request to a for . reconsideration. See Patents, during Assistant Commissioner of stated Johnson, (Bd. e.g. parte Appeal Ex No. 91-0143 hearing the 1926 House on the bill to include the Inter.1991) (on Pat.App. request & for reconsid rehearing provision says in the statute that "It eration, augmented panel of seven examiners-in- rehearing, rehearing, used in the technical granted request chief the and voted four to three sense, legal is reconsideration.” Procedure in examiner, contrary original to the affirm to the Office,Hearing the Patent on H.R. 7563 and H.R. Holt, panel); parte USPQ Patents, three-member Ex 218 13487 the Committee on United Before (on (Bd.App.1982) request Representatives, 747 for reconsid Cong., States House 69th 2d of (1926) (1926 Director, Hearing). Finally, by Group rehearing granted by Sess. 29 eration House additionally Dictionary we augmented note that Black’s Law panel); parte an fifteen-member Ex “rehearing” part Scherer, defines “[s]econd as a con- (Bd.App.1954) 107-08 purpose calling sideration of cause for of to (rehearing by augmented pan eleven-member court's or administrative board's attention granted probable importance el because of of error, omission, oversight in first consider- issues); Ball, (Bd. parte Ex (6th 1990). Dictionary ation.” Black's Law ed. (reconsideration App.1953) granted to allow fur Black’s defines "reconsideration” as follows: by augmented eight-mem ther consideration normally "[a]s used in the context of administra- Commissioner); panel including parte ber the Ex adjudication implies tive 'reconsideration' reex- (rehear Wiegand, USPQ (Bd.App.1944) amination, possibly a different decision ing by panel). a different three-member entity initially the decided it.” reconsidering hearings an earlier end of the 1926 House and Senate the Board is panel of decision, entity- the during the Board is still which the last sentence of what is now panel decision; 7(b) discussed, reexamining it that earlier sim- the was Senate Committee panel. doing through different ply so on Patents concluded: lawyer Fenning, [remarks of chair- One 7(b) §of is noth The last sentence man of the committee on laws and rules of exclusionary statement ing more than an Association, the American Patent Law authority vesting with the sole to the Board Office, Hearing Procedure in the Patent Thus, example, the grant rehearing. on the Committee on Pat- S. 4-812 grant personally a re Before cannot Commissioner Senate, ents, United States 69th Con.2d notwithstanding general hearing, the authori (1926) 19, 21-22 expressed ] Sess. the operation of the ty over the PTO. that he has 16-17, providing page fear in lines history general of the Board and of For a (sec. 482) 7(b)], precursor [the to section PTO, from appeals within and the see Mi appeals the that the board of shall have Blommer, The Board Patent chael W. of grant power “rehearings,” to the bill sole Interferences, AJPLA Appeals and Bulletin present supervisory power the lessen (1992), Federico, Ap The Board P.J. of commissioner, agreed by it but was (1961), 1861-1961, peals 43 JPOS 691 lawyers hearing, other at the Appeals, Evolution Patent JPOS Office 92(M9 Committee Patents concurs in this 838-64, view, supervisory power § 7 predecessor was section 482 of commissioner, as it has a num- existed for Statutes, the Revised amended the Act decades, unchanged by ber remains 2,1927. The Act added of March to bill. Commissioner, the First Assistant Board Commissioner, S.Rep. Cong., the Assistant Commis- No. 69th 2d Sess. (1927) added). right (emphasis It eliminated the of an Fenning expressed sioner. also appeal to from applicant Commissioner concerns same to House Committee decision, by adding an adverse Board Hearing on Patents. House at 22-23. language Ap- “[t]he the Board of Report, statute The House Committee H.R. No. grant power rehear- peals shall have sole Cong., (1927), 69th 2d is silent on Sess. essentially provision ings,” the same issue, suggesting thus that the House did 7(b). 2,1927, today’s Act of March 7(b) ch. give intend the last sentence of amendment, 3,§ Prior Stat. 1335. meaning different than was ascribed to petitions acted on for re- Commissioner foregoing believe Senate. We hearing adverse Board decisions. part illustrates the lack of intent on the amendment, Congress Through this effec- Congress in enacting the last sentence placed tively 7(b) the onerous burden eliminated place any limitations Com- on the regarding reviewing on the Commissioner ability designate panels, missioner’s Board appeals, steering applicants to such instead including panels “rehearing” pur- Board requests. the Board with such poses. surrounding the enactment of events (e) any Congres-
the 1927 Act do indicate great supervisory holding intent sional to lessen Our consistent *9 supervisory power possessed authority that over the that Con the Commissioner broad Indeed, prior gress granted the PTO to that Act.9 at the has the Commissioner under Patents, supervisory authority except The un- rection of the Commissioner of Commissioner's prior judgments der Section 482 of the Revised Statutes to free in the in the exercise of their aptly 1927 the Act was described follows: matters submitted for their examination and the head determination. Commissioner is agencies provided The law official certain bureau, responsible the of the and he is the to aid and advance Office, work of the Patent general Examiners, issue that bureau. Primary the the such as States, obsolete], App.D.C. v. United 40 596 Moore [now Examiners of Interferences Examiners-in-Chief; (D.C.Cir.1913), App. quoting Drawbaugh, the In re 9 and subordinate, but are all (D.C.Cir.1896). subject 240 to the official di- D.C. regarding operation Commissioner, Title 35 the of the right PTO. appeal a deci- 6(a), Exemplary § thereof is which reads sion of the Board to this court. Since Con- pertinent part: gress § has reenacted 141 several times Commissioner, under the direction of since the 1927 debates about the Board’s Commerce, Secretary superin- independence, shall see 1926 Hearing House perform required by 22-29, tend or all duties law it is safe to infer that Congress be-
respecting granting issuing pat- lieved the Commissioner did not right need a ents. appeal in view of his limited control over pursuant § the Board 6(a) (1988) added). 7 and in view of his (emphasis U.S.C. rulemaking 6(a). pursuant authority §to may regula- The Commissioner also establish law, tions not inconsistent with the with the Commerce,
approval
Secretary
(d)
(1988),
U.S.C.
cause an examination to be
Contrary
suggestions by
Amicus Curiae
application,
of an
made
U.S.C.
(FCBA),
Federal Circuit Bar Association
our
(1988),
interference,
declare an
35 U.S.C.
holding does not conflict with this court’s
(1988),
§ 135
patent
and issue a
when autho-
previous
Legal
statements
Animal
De-
by law,
(1988),
§§
rized
920, 928-29,
Fund v. Quigg, 932 F.2d
fense
(1988),
USPQ2d .1677,
(Fed.Cir.1991),
that
Moreover, the Commissioner is not bound
the Board is not
ego
agent
alter
by a
applicant
Board decision
an
that
case,
Commissioner.
In that
this court
patent. Only
entitled to a
a court can order merely pointed out
the Board
derives its
act,
the Commissioner to
not
the Board.
adjudicatory authority
a statutory
from
though
Even
Board members serve an essen-
independent
source
of the Commissioner’s
function, they
tial
examiner-employ-
are but
rulemaking
that,
authority,
although
PTO,
ees of the
authority
the ultimate
may
Board,
Commissioner
sit on the
“in that
regarding
granting
patents
lies with
capacity
any
he serves as
other member.”
example,
if
For
.Commissioner.10
Fund,
Legal
Animal
manner over the
whole,
APA,
Title
to
35 as
given
Alappat
is not offensive
does not
issues
clearly
not intend
Congress
did
given
actions,
this
an issue
these
is not
contest
any and all
independent
to
of
the Board
may
sponte.
this court
raise sua
which
e.g.
oversight by
See
the Commissioner.
Moreover,
germane
of these
neither
issues
992-93,
Brenner,
Lindberg v.
jurisdictional
issue
raised
this court
(D.C.1968).
plain
158
381-82
i.e.,
sponte,
whether
Board’s recon-
sua
wording
§of
unambiguous
7 intertwin-
statutorily
constituted a
sideration decision
Board and the Com-
ing
powers
§ 141
decision under 35
over
valid
Congress
did
clearly indicates
missioner
may
subject matter
this court
exercise
complete
to have such
not intend the Board
to
jurisdiction
pursuant
28 U.S.C.
independence.
1294(a)(4)(A).
(e)
(0
suggests that
Amicus Curiae FCBA
practices in
redesignation
Commissioner’s
Finally,
acknowledge
we
the consid
process
case
due
this
violated
among
concern
erable debate and
Block,
citing
Packing Co.
781
rights,
Utica
regarding
and certain Board
bar
members
Cir.1986).
(6th
addition,
an issue
F.2d 71
ability
limited
control
the Commissioner’s
argument
as to whether
was raised
oral
authority
through his
to des
Board decisions
designation practices are
the Commissioner’s
ignate
panels.11
responsibility,
Board
Our
of
Adminis-
governed
any provisions
however, merely
adjudge
whether
so,
(APA),
if
Act
trative Procedure
designation practices
they
Commissioner’s
in this
the Commissioner’s actions
whether
applied
particular
in this
ease resulted
were
provisions.
any
these
We
case violated
of
may
over which
court
in a valid decision
this
of
issues.
not
either
these
need
address
jurisdiction,
not to
exercise
standing
not
does
have
FCBA
pub
assess whether
were sound from
argument, see Broad
process
to make a due
legisla
policy standpoint.
lic
We leave to the
Oklahoma,
93 S.Ct.
rick v.
413 U.S.
whether
restrictions
ture
determine
any
(1973) (“constitu
2908, 2915, 37
830
L.Ed.2d
placed
on the Commissioner’s au
should
may
rights
personal and
not be
tional
thority
any congres
regard.
in this
Absent
vicariously”)
Parcel Ser
asserted
and United
restrictions,
impose such
we
sional intent to
vice,
Mitchell,
2, 101
Inc. v.
451 U.S.
60 n.
sponte.
to do
sua
decline
so
(1981)
1562 n.
presented THE II. MERITS any process argument acquiescing due appealed that the deci- Our conclusion is actions in case. the Commissioner’s this appealed should be reversed because the sion Thus, controversy there is case or before no claims are “machine” which directed alleged respect court with due categories named in one of 35 U.S.C. also case or process violation. There is no controversy panel held. as the first the Board to whether the Commission- (1992); Sought e.g. En Consider Comments on Commission- 11. See Banc Federal Circuit Will Case, Boards, Alappat Appeals PTCJ Relationship Appellate Board Issues in 44 PTCJ er’s with (1992); Changes Urged Op- (1992); in Structure and Auton- PTO’s Automation and Board Board, (1992); Appeals PTO eration PTCJ Hearing Budget, omy at Issue in House on PTO Appeals Independence the Board Patent (1992); Correspondence Between PTCJ Journal, Interferences, Circuit Bar Vol. Federal and PTO Commissioner on Board Board Members (1992); pg. Highlights, No CLE Weekend (1992); Independence, 44 PTCJ 43 Members of (1992); NYPTC Bull. 6 Patent and Trademark Appeals Complain Board about Interference S16, Act, Cong.Rec. Authorization Office (1992); Independence, 44 PTCJ 33 Michael (1992); (1992), reprinted 44 PTCJ Re- 618-19 Blommer, Appeals and W. The Board Patent Appeal Proce- view Patent and Trademark Office Interferences, Bulletin AIPLA dure, (1992), reprinted 44 PTCJ 57 FR 34123 *11 Alappat’s A. Invention portions cause of the waveform to oscillate contiguous between pixel rows when the generally invention relates to a magnitude input of the signal lies between creating means for a smooth waveform dis- represented by values the elevations of the play digital oscilloscope. in a The screen of Moreover, two rows. the vertical resolution oscilloscope an cathode-ray is the front of a display may of the be limited the number (CRT), tube, picture tube which is like a TV pixels of rows of on the screen. The noticea- screen, operation, presents whose when in an bility appearance of these effects is (or raster) array pixels arranged at inter- aliasing. known as sections of vertical columns horizontal rows, pixel being spot on the screen effects, To overcome these Alappat’s in- which directing illuminated an employs vention an anti-aliasing system spot, electron beam to that inas TV. Each wherein making each vector up the waveform array column in represents a different represented by modulating the illumination period, represents time and each row a dif- intensity pixels having points center magnitude. input signal ferent An bounding trajectory of the vector. The oscilloscope sampled digitized pro- intensity at which each pixels of the is illumi- (vector list), sequence vide a waveform data depends upon nated the distance of the cen- wherein each successive element of the se- point pixel ter of each trajectory from the quence represents magnitude the vector. Pixels lying squarely on the successively waveform at a later time. The waveform trace receive maximum illumina- sequence waveform data processed is then tion, pixels whereas lying along edge an provide map, a bit which is stored data the trace receive decreasing illumination in array indicating pixels are to illumi- intensity proportional to the in increase ultimately displayed nated. The waveform distance of the center point pixel from vectors, group formed wherein each trajectory. the vector Employing this anti- straight vector trajectory has a line between aliasing technique any apparent eliminates points two repre- the screen at elevations discontinuity, jaggedness, or oscillation in the senting magnitudes of two successive in- waveform, giving appearance thus the visual put signal samples positions and at horizontal a smooth short, continuous In waveform. representing timing samples. of the two terms, lay and in improve- invention is an Because a CRT screen contains a finite oscilloscope comparable ment to a TV pixels, rapidly number of rising falling having a picture. clearer portions of a appear can waveform disconti- jagged Fig. nuous or applica- due to differences in Reference to 5A the ’792 tion, horizontally elevation of contiguous pixels reproduced in- below, better illustrates addition, cluded waveform. the manner which a appearing smooth wave- presence of input signal “noise” can form is created. *12 equals 7 example, this difference In this represents figure square in this Each the center- units, representing one unit each with intensity at which and the level
pixel, Then, pixels. adjacent in distance hexadeci- to-center is indicated is illuminated pixel pixel pixel 55 above letter found the number the elevation notation mal determined, is 2 in case notation which square. Hexadecimal in each (Ayy) then characters, are Ay¡ 0-9 values the numbers The and Ayy sixteen units. 10, B as A-F, represents A “normalized,” Alappat wherein describes which letters represents D represents values larger represents C values to converting these represents F represents cal- E in' mathematical use are easier to pixel is illuminat- at which each intensity example, The a barrel Alappat’s In culations. Accordingly, from 0 F. increases binary input ed is used to shift shifter (zero) pixel represents a in a 0 it square with to set the required of bits the number left illumination, square having no (leftmost) output bit of significant most having maximum pixel represents F in values Ay¡ and “1.” The signal Ayy Although notation hexadecimal illumination. equation into a mathematical plugged then intensity represent figure in is used intensity which the determining the stored illumination, intensity level is In this be illuminated. particular pixel system a 4-bit Alappat’s as map of bit = I’(i, j) equation [1 example, the particular pix- number, representing a with 0000 binary - (A ]F, F is hexade- y¡) A y¡y wherein represent- having illumination and no el intensity pix- notation, suffices. cimal illumination. having maximum ing pixel calculat- example would thus in this el 55 represent Fig. 5A 54 and 52 Points ed follows: as the screen points on observation successive ~ - = = (or B). the benefit oscilliscope. Without &i) (ft)15 10.71 [1 ]15 anti-aliasing system, points 54 Accordingly, pixel 55 is illuminated % separate, appear on the screen 52 would in which observa- intensity pixels Alappat’s system, the spots. unconnected discloses Alappat 52 lie. 54 and points tion intensity which each of level at different vary will formula particular used appearance produces pixels is illuminated shape of waveform. depending on 48, a vector. line so-called Rejected B. The Claims pixel is to be intensity each at which only independent claim Claim follows, using determined illuminated is issue, reads: First, the example. vertical as an pixel 55 list converting vector rasterizer A y coordinates obser- distance between of an sample magnitudes representing data 52(Ay¡) is determined. points 54 vation input waveform into pixel anti-aliased illu- suant 35 U.S.C. paragraph six ¶ intensity (§ mination displayed data to 6), *13 as corresponding to the respec- display comprising: a means tive structures disclosed in specification
(a) determining application, for means equivalents vertical endpoints distance thereof. between of each of list; in the vectors data decision, its reconsideration the five- (b) determining means for the elevation member majority expanded, eight- pixels of a row of spanned by that is the member Board panel “modified” the decision
vector; original panel and affirmed the Exam (c) normalizing means for the vertical § iner’s 101 rejection. majority The held elevation; distance and ¶ that the § PTO not apply need 112 6 in (d) outputting for means in- illumination rendering patentability determinations, tensity predetermined data as a function of characterizing this court’s statements to the normalized vertical distance and eleva- contrary Iwahashi, in In re tion. 1375, USPQ2d 1908, (Fed.Cir.1989), dicta,” “as and dismissing this court’s discus Each depends of claims 16-19 directly ¶ sion of 112 6 in Arrhythmia Research from claim specifically 15 and more defines Technology, Inc. Corp., Corazonix an element of the rasterizer claimed therein. F.2d 22 USPQ2d 1033, (a) Claim 16 recites means for determin- (Fed.Cir.1992)on the basis that the rules of claim ing the vertical distance between the end- construction in infringement actions differ points of list, each the vectors in the data from the interpretation rules claim for during Ay¡ above, comprises described an arithme- prosecution in the PTO. majority The stated logic tic configured circuit perform that, during examination, gives the PTO absolute value function. Claim 17 recites means-plus-function clauses in claims their (b) that means for determining the elevation interpretation broadest impute and does not of a pixels row spanned by limitations specification from the into the vector, above, comprises described Ayy claims. Applicability See the Last Para logic arithmetic configured circuit per- graph 35 USC 112 to Patentability De form an absolute value function. Claim 18 terminations the Patent Trade (c) recites that means normalizing for Before Office, mark (1992); 1134 TMOG 633 Notice vertical distance and comprises elevation Interpreting In (Fed.Cir.1989), Re Iwahashi pair barrel Finally, claim 19 shifters. 1112 OG 16 Accordingly, majori (d) recites that means outputting for com- ty held that each of the means recited in prises only (ROM) memory read contain- claim 15 reads on and every means for ing intensity illumination As data. the first performing particular function recited. panel found, (a)-(d) Board each of was a device in known the electronics arts before majority that, further held because Alappat made his invention. claim 15 is completely written in “means for” language and because these means clauses C. Rejection The Examiner’s and Board are read broadly encompass PTO to Reviews each every means for performing the rejection The Examiner’s final functions, of claims recited claim 15 amounts to noth- 15-19 was under 35 U.S.C. ing “because process more than a claim wherein each the claimed statutory invention is non subject means represents only clause step in that matter,” original and the process. three-member majority stated that each of panel Board rejection. reversed this steps That postulated process this claim panel that, Board held although claim 15 recites a operation, mathematical steps recites a algorithm, mathematical the claim combine to algorithm form “mathematical as a whole is directed to a machine and computing pixel information,” thus for Alappat, 23 statutory subject USPQ2d that, named “when the claim In reaching decision, original panel steps viewed without the of this mathemat- construed the means clauses in claim pur- algorithm, ical other steps no elements or statutory USPQ2d following the mandate of at 1346. The frorn Alappat,
found.” ¶ 6, § 112 which reads: that the claim was majority concluded thus subject matter.12 nonstatutory directed in claim a combination An element step a means or expressed majority stated: analysis, further In its specified function without the performing a significant that claim as It is further structure, material, or acts recital computer drafted, digital on a reads thereof, support and such claim shall steps various un- perform “means” corresponding to cover construed case, it is In such a program der control. *14 structure, material, in or acts described as if drawn to a to the claim proper treat equivalents specification and thereof. presume that a will not method. We digital computer is not program (1988) 112, (empha- stored 6 paragraph 35 U.S.C. ¶ range equivalents added).15 6 of § 112 within the majority The sis Board therefore specifica- in the of structure disclosed refusing apply of in erred as matter law ALU, ¶ and shift tion. The disclosed ROM rendering patentable 6 in 101 112 all elements of registers common subject matter determination. computers. digital Even if program stored disclosure, it Given was er willing to admit that a appellants were majority interpret ror for Board each computer digital were not program stored broadly of the means clauses in claim 15 so ¶ equivalents, 112 2 range within any every as to “read on and means for clearly apparent from requires that this be recited, performing the functions” as it said upon limitations recited claims based doing, then to conclude that claim was and claims. nothing process 15 more than claim USPQ2d at 1345.13 The Board Alappat, 23 represents step each means clause wherein dependent claims majority also stated process. Contrary suggestions by for consideration were not before them 16-19 Commissioner, precedents this court’s do argued Alap- had not been because partic support view not the Board’s pat thus the Examiner and not addressed apparatus ular at in this case claims issue panel. original three-member Board nothing process be viewed as more than USPQ2d 1341 n. I.14 Alappat, 23 upon by claims. eases relied Com Abele, missioner, 902, namely, In re 684 F.2d Analysis D. (CCPA 1982), Pardo, USPQ 214 682 In re (1) 112, Paragraph Six Section (CCPA 1982), 912, USPQ 214 673 684 F.2d 789, Meyer, USPQ In recently explained As in In re Don re 688 F.2d 215 193 (CCPA Walter, 1189, 1845, 1982), 758, aldson, 1193, USPQ2d 29 In re 618 F.2d 205 16 F.3d (CCPA (Fed.Cir.1994), 1980), USPQ In re exempt 1050 the PTO is not 397 Mau- Thus, tion, pg. specific 4. even if structures also and Trademark Practice Re- See Patent 245, (1993); dependent 45 246 had in- Day, PTCJ recited claims 16-19 been IP viewed at PTO 15, corporated presum- claim the Attempt Adapt Changes into Examiner New Tech- Laws (1993); ably 45 49 would 15 PTCJ have found claim to be directed nologies, Federal Circuit Will Banc, 45 PTCJ 56 nonstatutory Alappat matter. Hear In Re Case En (1992); Claim Non-Statuto- “Means For” Recites Claim, 44 ry Algorithm Treated as Method When 831, 833, 15 15. Accord, Bond, 910 F.2d In re (1992); §MPEP 2110. PTCJ 69 1566, (Fed.Cir.1990); USPQ2d 1568 Inrelwaha 1370, 1375, 1908, shi, USPQ2d 888 F.2d 12 1912 796, (Fed.Cir.1989); 789, Report Subject 13. See also PTO on Patentable F.2d Meyer, 688 In re Computer (CCPA1982); Algorithms USPQ Matter: Mathematical 215 199 re In Knowl (1989), 1357, 1366, 1106 TMOG 5 in 38 Programs, reprinted ton, USPQ 481 178 F.2d 492-93 (1989). (CCPA1973); PTCJ 563 Foster, F.2d In re (CCPA1971); Bemhart, USPQ In re 1395, 1399, USPQ Nevertheless, we note that Examiner stat- (CCPA1969); Prater, F.2d re during prosecution: physical In use ele- ed “the (CCPA1969). crunching' 551-52 provide See also the 'number ments to Moy, patentable. display R. Carl generally Interpretation The mere illu- considered Prosecution, signifi- intensity JPOS Expressions During data is not considered mination Means activity." post cant solution ac- 12/05189 Office (CCPA corps, (e) F.2d pair [a shifters, barrel equiva- 1979), Abele, differ from the instant ease. lents thereof] for normalizing the vertical Pardo, Walter, elevation; distance given apparent lack (d) supporting specifica- structure [a read only (ROM) memory con- corresponding tion taining to the claimed “means” data, illumination intensity or an elements, equivalent court reasonably thereof] concluded for outputting illumina- intensity tion that the predetermined claims issue were in data as a nothing effect function of the more than normalized process guise claims in the vertical distance and elevation. apparatus clearly claims. This is not the case now us. Maucorps before As to evident, As is claim 15 unquestionably re- Meyer, despite suggestions therein to the machine, cites a apparatus, up made of a contrary, means-plus-function the claimed el- combination of circuitry known electronic ele- ements at issue in those cases were ments. construed as limited to those means disclosed Despite suggestions by the Commissioner *15 specification in equivalents the thereof. to contrary, the dependent each of claims 16- Donaldson, As in reaffirmed such claim con- 19 serves to limit claim 15. Section farther improper, therefore, struction is those ¶ 112 requires 6 that each of the means cases are of limited value dealing in with the in independent recited claim 15 be construed presently issue before us. We further note to cover least the structure in disclosed that Maucorps dealt with a business method- specification the corresponding ology deciding for how salesmen should best “means.” Each of dependent claims 16-19 is respective handle Meyer in- customers in fact limited to one of the structures dis- “system” volved a aiding for neurologist in in specification. closed the diagnosing patients. Clearly, neither of the (2) Section 101
alleged “inventions” in those eases falls with- any § in category. 101 The reconsideration majority Board affirmed the rejection Examiner’s of claims independent When claim 15 is construed in 15-19 on the basis that these claims are not ¶ 6, § accordance claim 15 as reads directed to statutory subject matter as de follows, subject the matter in repre- brackets § fined in which reads: senting the Alappat structure which discloses Whoever any invents discovers new specification in his corresponding to process, machine, and useful manufacture, respective means language recited in the composition matter, any new and claims: improvement thereof, useful may obtain a patent therefor, A subject rasterizer to converting [a “machine”] the conditions requirements vector of this [Emphasis list data title. representing sample mag- ours.] nitudes input of an waveform into anti- pixel aliased intensity illumination to data II.D.(l), As discussed in section supra, displayed
be
display
on a
compris-
means
claim
properly construed, claims a ma-
ing:
chine, namely, a rasterizer “for converting
list
vector
data representing sample magni-
(a) [an arithmetic logic
config-
circuit
an input
tudes of
waveform into anti-aliased
perform
ured to
function,
absolute value
pixel
intensity
illumination
data to be dis-
equivalent
or an
thereof] for determining
played
means,”
display
on a
which machine is
the vertical distance
endpoints
between
of,
up
least,
made
very
specific
of each
list;
of the vectors in the data
structures
disclosed in
specification
(b) [an
logic
arithmetic
config-
circuit
corresponding to
means-plus-function
el-
perform
ured to
function,
an absolute value
(a)-(d)
ements
in
recited
the claim. Accord-
equivalent
or an
determining
thereof] for
ing
Alappat,
to
per-
the claimed rasterizer
the elevation of
pixels
a row of
that
forms the same
function
prior
overall
art
spanned
vector;
by the
rasterizers,16 but
way,
does so in a different
Representative
examples
prior
4,215,414,
art rasteriz-
ers are illustrated U.S. Patent
No.
expansive
112. The
term
combination of
use
represented
which
means-plus-function
represents Congress’s
§in
“any”
intent
claimed
four elements
subject
place
15 is directed
on
terminology.17
claim
not to
restrictions
Because
“machine,”
may
patent
is one of
four
be obtained
which
which a
to
subject
matter enu-
categories
patentable
beyond
specifically recited
101 and
those
appears
Indeed,
claim 15
parts
other
of Title
merated
subject
§ 101
matter.
acknowledged
face
be directed
Con
Supreme Court has
gress
“anything
intended
extend
analysis,
quite end the
This does not
Dia
under
sun that is made
man.”
however,
majority argues
the Board
because
303, 309,
Chakrabarty, 447
mond v.
U.S.
subject matter falls within a
claimed
2204, 2208,
(1980), quot
S.Ct.
L.Ed.2d
exception
judicially
created
Sess.,
S.Rep.
Cong.,
ing
No.
82nd
2nd
majority
to as the “mathematical
refers
(1952); H.R.Rep.
Cong.,
No.
82nd
2nd
exception. Although
PTO
algorithm”
Sess.,
Thus,
improper
it is
to read
premise
support
the “math
failed
§ 101
as to the
mat
into
limitations
applies to
algorithm” exception
true
ematical
patented
may
legisla
ter that
where the
claims,
recognize that our own
apparatus
we
Congress
history does not indicate that
tive
suggests that this
case.
precedent
clearly intended such limitations. See Chak
Johnson, 589 F.2d
In re
See
rabarty,
(a)
Diehr,
175,
1048,
450 U.S.
101 S.Ct.
67
unambiguous
(1981),
plain
meaning L.Ed.2d
recent case ad
155
most
101,
any
process,
dressing
Supreme
explained
useful
of
101 is that
new and
Court
manufacture,
machine,
subject
composition
categories
of
there are
of
or
three
matter,
any
may
patent
improvement
and useful
matter
which one
not obtain
or
new
thereof,
namely
nature,
may
protection,
if it
“laws of
patented
be
meets the
natural
Diehr,
phenomena,
forth in
requirements
patentability
set
abstract ideas.”
450
35,
102, 103,
185,101
§§
at
at
Title
those found
U.S.
S.Ct.
1056.18 Of relevance
such
4,540,938,
course,
machine, manufacture,
process,
U.S.
U.S. Patent No.
or
Patent No.
nature,
4,672,369.
4,586,037,
composition
employing
matter
a law of
and U.S. Patent No.
phenomenon,
natural
or abstract idea
be
nature,
though
patentable
even
law of
natural
Alappat
notes that the Examiner found
further
phenomenon,
employed
idea
would
abstract
pat-
particularly
to be
claimed combination
not,
itself,
protection.
be
to such
See
entitled
entably
prior art
distinct from
rasterizers.
Flook,
584, 590,
e.g. Parker v.
437 U.S.
98 S.Ct.
2522, 2526,
("a
(1978)
process
451
57 L.Ed.2d
is
phenomena
and natural
are
18. Laws of nature
unpatentable simply because it contains a
not
[i.e.,
essence "manifestations of ... nature
not
algorithm.”);
law of nature or a mathematical
"new”],
exclusively
and reserved
free
all men
Seed,
130,
at
Bros.
333 U.S.
1547
§ 7. The stated reason
parties
was that the
amply clear” that he is not challenging the
had not properly raised the
composition.
issue
board
in the
appeal from the merits of that board’s deci-
lastly,
And
in In re
Corp.,
Bose
772 F.2d
Citing
sion.
Tucker Truck Lines we held:
866,
USPQ
227
(Fed.Cir.1985),
1
appel-
appointment
“[A]n invalid
[of board mem-
challenged
lant
the composition of the Trade-
ber
the Commissioner] would not so viti-
mark Trial
Appeal
Board as part of its
ate a board’s decision that neither
nor
waiver
appeal on the merits.
appeal-
addition to
abandonment of the
possi-
defect would be
ing from the board
merits,
decision on its
6,
ble.” Id. at 936 n.
USPQ
152
at 253 n. 6.4 appellant argued that that
improp-
board was
expressly
Wiechert
holds that a defect
erly constituted because the Commissioner
composition of the board is a waivable mat-
substituted one of the three members for
ter.
another member
argument
oral
after
but be-
fore the
decision
permit-
board.6 We
We followed Wiechert in later cases. In In
appellant
ted the
challenge
the composi-
Inc.,
re Marriott-Hot Shoppes,
411 F.2d
board,
tion of the
following Marriott and
1025,
(CCPA
USPQ
162
1969),
106
the Court
Wiechert, and stated: “The matter of the
of Customs and
Appeals
Patent
refused to
board’s composition is ...
inseparable from
question
consider the
whether
the Trade-
the merits and can be raised in
appeal
mark Trial
Appeal
Board was
statute
from the board’s
decision.” 772 F.2d at
regulation
required
composed
of all
Finally, legislative history of 7 does clearly advance interpreta- the narrowest application allowance of an by tion of the Commissioner’s powers. examiner, Al- the examiners-in-chief though legislative history upon shows trans- appeal, oblige does not the Commis- fer of some from functions the Commissioner grant sioner to for which it 9. Under either interpretations, § of these rehearing actual itself. guidance would still offer no whatsoever on the *23 the Patent in appeal. Procedure him to withhold empowers Office: law The prays. Comm, on Pat- the Senate Hearing the judgment in- his whenever Before patent a (“Sen- (1926) 22-23 ents, 2d Sess. Cong., 69th of issue or the patentable, not is invention discussed, ”). the previously As Hearing statutes, ate by the is forbidden patent the the on is unclear statute language of the be probably would granted if patent the grant to “power exercising the of manner courts. the invalid held rehearing on the rehearings,” and silent § 583 Patents Robinson, Law
W. of expression is what of clear This lack itself. (1890).10 to Senate House and the have enabled could ap- of increasing number theWith permitting legislation as prospective the view appeal filed, of levels the two being plications the full less than the full board either to be thought were Office the Patent within notwithstanding the case, a to rehear board H.R.Rep. No. procedure.” “antiquated an words, In other the word “sole.” of inclusion (1927); S.Rep. 1-2 1889, Cong., Sess. 2d 69th the formal to “board” be the by requiring (1927). By 1313, 2d Sess. Cong., 69th No. rehearings, instead on body act to to appeal of two levels the ofAct —first reposing time Commissioner, same yet at the Commissioner—-were to the then a board discretionary power to Commissioner in the of mixing the flavor appeal into one combined con- express within certain that board define to a be had appeal could an earlier two: the “something that fines, statute created the given the was board the Appeals; Board of supra, at 23. Hearing, flexible,” Senate of rehearings.” Act grant to power “sole report that able to way, the was Senate this 273, § Stat. eh. March Commissioner, the power of supervisory “the 1927, the of But, the Act under 1335-36. decades, number it existed the members one of the was Commissioner No. Report unchanged.” Senate remains given the was board, the Commissioner added). (emphasis 4at members least three designate at power to the act as would together who board in this case appealed the decision Because Act of appeal. The hear each board in contravention clear obtained was not to 35 U.S.C. corresponds substance in it agree that parties because today. applicable act be that should board a decision was analyze further reviewed, I decline would surrounding the enactment events so, By doing composition issue. Congress the board that not indicate do 1927 Act announcing as does not be would pow- this court great entirely to eliminate intended approves it respects in all majority that by the possessed been have er understood rehearing was which example, the manner For to the act. prior Commissioner similar in case or another in this granted Representa- House during debate does condemning as it be Nor would case. did statute agreed tives was or board Commissioner the dissent membership of the board entire require unfairly a treating prejudicing supposedly every rehearing, and decide act on any preju- complained of has not party who unmanageable. Proce- be of course would may be that It well mistreatment. dice or Hearing Patent in the dure Before Office: proce- successfully challenge Comm, party could Patents, Cong., 2d 69th on House to hear composing the board Barnett, used dures (statement (1926) of Mr. 19-29 Sess. one, for ease similar appeal an Law Associa- Patent President, American Commissioner, by petition example, hand, in the tion). discussions other On the in a Act Procedure Administrative under the ability stat- under the focused Senate appeal from court, part than district cases more appropriate to have ute That, decision, etc.11 board’s merits panel rehear three-member original believed the Commissioner decide, 10. to redo what Congress order Although we need might fact-finding be well present historical plenary under the be incorrect it still intend capricious. Report arbitrary No. infra, Senate deemed statute. See Commis- which the example, case in For case in panel rehear a designated sioner however, should appropriately be left for an- The direct control of man over matter day. other consists, therefore, in placing particles in new relations. This is all actual-
II. THE ly done, SECTION 101 or that can done, REJECTION namely, to particles cause the of matter existing in *24 A. the universe change their places, former by them, moving disagree I with muscular majority’s power the or conclusion some other force. Alappat’s “rasterizer,” But as soon they which is are all that brought relations, into new is issue, claimed in the is at claims once constitutes perceived that there are vast invention or latent discovery forces within 35 U.S.C. nature, in which come to man, 101. I the of would affirm aid the board’s decision and enable produce him to sustaining the effects rejection and examiner’s of claims results of a wholly character, new 15-19 to far the be- rasterizer under 35 U.S.C. yond the fact placing mere of particles the Alappat because not shown that in- he in positions. new He moves parti- certain vented or discovered a machine within cles of matter into a new juxtaposition, and George Curtis gen- made certain agencies chemical and affinities called eral patent law, observations about scope into action produce new contact a patentable of being matter possessed substance of new properties and heart. He stated them with such force and powers, to which given has been the name eloquence, in my and view such have of gunpowder. He takes a stalk of flax relevance to the today, issue we face that I from ground, splits it great into repeat them as follows: filaments, number of together, twists them It necessary is ... to have clear and and laying numbers of the threads thus correct notions of scope the true pat- of a formed other, across each cloth, forms a right ent ... may which assist, found to which is together held by the tenacity or particular cases, in the solution of the force of in particles, cohesion which question, whether particular invention or brings nature to his aid. He moves into discovery is patentable law a subject. new positions and relations parti- certain In this inquiry it is necessary com- cles iron, of wood and in forms, various mence with process exclusion; of and produces complicated machine, by although, in their acceptation, widest which he is to accomplish able a certain terms “invention” and “discovery” include purpose, only because properties of the whole variety vast objects of on which cohesion and gravitation the force of cause the human may exercised, intellect so it to adhere together and enable the differ- in poetry, in music, in painting,, in parts ent to operate upon each other and astronomy, in metaphysics, and in every to transmit applied them, forces department of thought, human men con- according to the laws of motion. It stantly discover, invent or highest evident, therefore, the whole of the and sense, the strictest their invention, inventions act of department of use- and discoveries in departments these arts, are ful embraces more than the new ar- subjects of the patent law.... rangement particles of matter in new patent The law relates great and relations. purpose of such new ar- comprehensive class of discoveries in- and rangements produce is to some new effect ventions of some new and useful effect result, or or by calling activity into some la- matter, result in not referable to the law, de- force, tent or property, or by means of partment of the fine arts. The matter of which, in a application, new the new effect globe which our composed is the materi- result be accomplished. In every upon al which the and creative inventive form in used, which matter is in every faculties of man exercised, are pro- production of ingenuity man, he duction of whatever ministers to his conve- upon relies the laws of nature and the nience or his wants. Over the existence of properties matter, and seeks for new matter itself he has no control.... and effects through results agency their thereof, may obtain improvement and useful alone Merely inert
and aid.
therefor, subject
conditions
patent
works.
he
with
material
the sole
title.” 35
of this
requirements
forces,
powers,
supplies
Nature
§ 101
have
(1988).
terms used
§ 101
particles
as the
as well
properties,
active
years
hundred
over two
forces,
used
been
—since
powers,
matter,
these
law-—to
of American
beginnings
subjects
constantly the
properties
subject matter
extent
define
a view
experiment,
study, inquiry,
Chatfield,
In re
See
invention.
patentable
effect
new
some
production
736-37
in matter.
result
J.,
1 D.
1976) (Rich,
dissenting);
(CCPA
therefore,
description,
Any definition
§ 1.01
Chisum, Patents
*25
the
invention,
excludes
which
the act of
of
law,
or
power,
terms
or
usage of these
the natural
with the
of
application
Coexistent
the inventor
obtain
matter,
person
which
cannot
a
on
rule that
of
the
been
property
has
idea,
a new
of
discovery
an abstract
production
of
the
for
for
patent
has relied
a
application,
nature,
natural
of such
object
force,
of
or
effect,
law
and
principle
arrangement
or dis-
invent
precise
to the
rather must
but
phenomenon,
and confines
may
he
a useful
which
“application”
matter
practical
particles
a
cover
of
of
185,
175,
Diehr,
be erroneous.
must
450 U.S.
together,
brought
v.
Diamond
have
end.
1057,
1056,
1048,
67
187-88, 101 S.Ct.
Patents
the Law
Curtis, A Treatise
G.
of
(1981) (citing,
1,
155,
USPQ 7-9
209
L.Ed.2d
(4th ed.
xxiii-xxv
Inventions
Useful
for
v. How-
Rubber-Tip
Co.
Pencil
example,
for
added).
1873) (emphasis
Wall.) 498, 507,
410
(20
22 L.Ed.
ard, U.S.
87
ele-
circuit
arranged known
has
Alappat
589,
584,
Flook, 437 U.S.
(1874));
v.
Parker
nothing
than
other
accomplish
ments
2526,
2525,
L.Ed.2d
2522,
57
591, 98 S.Ct.
equation
mathematical
particular
solving
aof
193,
USPQ
197-98
451, 198
of his
reader
of
mind
in
represented
for in
persons
law rewards
patent
Thus
forest
sight of the
Losing
application.
patent
applications,
technologically useful
venting
trees,
majority
of the
the structure
for
re
unapplied
philosophizing
of
instead
reciting
precise
any claim
today
holds
Manson, 383
v.
theory. Brenner
search
35 U.S.C.
satisfies
structure
arrangement of
1041-42,
1033,
534-35,
519,
86 S.Ct.
demonstrate,
U.S.
the rationale
I shall
§
As
(“Un
(1966)
689,
USPQ
69, 148
L.Ed.2d
majori-
and the
conclusion
to this
leads
devel
refined and
process is
until
less and
repre-
rasterizer
holding
ty’s
benefit
specific
point
oped to this
illogical,
machine
of a
—where
invention
sents
form —there
currently available
exists
sound
with
precedent
inconsistent
aof
the reward
for”
justification
insufficient
untold
law,
have
and will
patent
of
principles
Co., 383
Deere
John
Graham
patent.);
consequences.
545,
684, 687, 15 L.Ed.2d
1, 5, 86 S.Ct.
U.S.
(1966)
pat
(“the federal
USPQ
B.
of
promotion
...
is limited
power
ent
em-
the Constitution
of
Clause
The Patent
”);
Meyer,
In re
arts’
‘useful
in the
advances
Prog-
“promote the
Congress to
(CCPA
powers
193, 197
789, 795,
F.2d
limit-
securing for
Arts, by
... useful
of
(15
ress
Morse, 56 U.S.
1982)
O’Reilly v.
(quoting
right
the exclusive
Inventors
to ...
ed Times
(1853) (Grier,
How.)
132-33,
L.Ed.
Const,
I,
art.
U.S.
...
their
Discoveries.”
Chisum, Patents
D.
concurring)); 1
J.,
8, cl. 8.
(“[I]n
(1993)
enacting
1.01,
n. 9
at 1-5 &
confined
Congress is
legislation,
patent
limited
this
implemented
Congress has
arts,’
‘science’
the ‘useful
of
promotion
by enu-
§ 101
35 U.S.C.
power
grant
general
(i.e., knowledge)
general_
matter,
inven-
subject
merating certain
subject
statutory
classes
purpose
one to
may entitle
discovery of which
tion or
protection
patent
limit
is to
any matter
or discovers
invents
patent: “Whoever
the United
technology, what
applied
field
machine, manufac-
process,
useful
new
arts.’”).
useful
‘the
calls
constitution
States
matter,
any new
ture,
composition
Additionally, unapplied research, abstract
In addition to the basic principles embod-
ideas, and theory continue to be the “basic
ied in
language
the section has
tools of scientific
technological work,”
a pragmatic aspect.
That
persons
are free to
(§
trade in
102)
and to must be new
(§ 103)
and nonobvious
upon
build
pursuit
among
other
in order
patentable
to be
is of
course
things
Flook,
useful inventions.
separate
U.S.
requirement for patentability, and
98 S.Ct. at
at 197 does not determine
applicant’s
whether the
omitted).12
(quotations
patent
Even after a
purported invention or discovery is within
new,
useful,
been
awarded
Diehr,
justing an
7,
USPQ
8.
1059,
at
1057,
209
at
589-
at
S.Ct.
See id.
formula.
according
to
ed
Court,
sub-
claimed
Therefore,
The
held
USPQ at 197.
2525, 198
at
90, 98 S.Ct.
protec-
patent
for
eligible
was
alarm
updating
ject
that
reasoned
Court
known,
was well
processes
tion.19
chemical
in
limits
to invent
purported
Flook
that
all
its deci-
distinguished
Diehr
in
The Court
a com-
coupled to
formula
a new
was
claim
claims
cases involved
Both
in Flook.
sion
(limited
post-
to certain
doing so
puter
per-
to be
formulae
including mathematical
technological environ-
a
activity in
solution
electronics,
application
with
digital
formed
2527-28,
594-95,
at
S.Ct.
ment).
98
at
Id.
appli-
patent
Flook’s
processes.
chemical
in
186,
Diehr,
at
450 U.S.
199; see
USPQ at
explain
however,
purport
cation,
“did
(“the Court
USPQ at 8
1056,209
at
S.Ct.
were
in
formula
used
variables
how
appli-
[patent]
that the
]
[in Flook
concluded
n.
Diehr,
at 192
450 U.S.
to be selected.”
for com-
formula
a
protect
sought
cation
14;
n.
USPQ at 10
n.
at 1060
S.Ct.
14, 101
n.
number”);
id. at
[a]
puting
1056, 209
at
S.Ct.
at
id.
see also
USPQ
10 n. 14.
at
n.
at
S.Ct.
did
application
Flook’s
USPQ
at
that
facts,
reasoned
the Court
these
On
relating to
any disclosure
“contain
alleged
discovery was an
invention
claimed
monitoring
work, the
at
processes
chemical
formula,
mathematical
newly discovered
setting
variables,
the means
process
‘discover[y]’ that
kind
“not the
was
Diehr, 450 U.S. at
system.”
an alarm
off
Flook,
protect.”
enacted
was
statute
8;
see
at
187,
1557
computer), thereby placing
subject
mat- mined whether a scientific principle, law of
patent
ter
nature,
outside the
law.
idea, or
process,
mental
which
represented
be
by a
algorithm,
mathematical
Benson, Flook,
Under
pos-
Diehr the
is
subject
included in the
matter” claimed as
ing and solution of a mathematic function is
the invention
discovery.
or
Meyer,
re
In
688
nonstatutory subject matter.
It is nonstatu-
789, 795,
F.2d
USPQ 193,
(CCPA
tory
particular
even if the
mathematics is
1982). When the claimed invention or dis-
performance
limited to
in digital electronic
covery
(or
includes “a mathematical formula
circuitry
general purpose
or a
digital comput-
scientific principle
phenomenon
nature),
or
er, even if
operations
the mathematic
inquiry
be
must
made into whether the
alleged generally to have
application
some
claim is seeking patent protection for that
technologies,
one or various
and even if the
abstract,” Diehr,
formula in the
450 U.S. at
solution of the function is
generally
said
191,
1059,
101 S.Ct. at
USPQ
10,
at
or
“represent” something
physical
or techno-
whether the “claim
containing
logic
mathemati-
hand,
relevance. On the other
an in-
cal
implements
formula
or applies that for-
discovery
vention or
process
product
of a
or
mula in a
process which,
structure or
when
which a
operation
mathematic
practical-
is
whole,
considered as a
is performing a
ly
func-
applied may
statutory subject
matter.
patent
tion which the
laws were designed to
The fact that one element of the claimed
protect,”
id.
101 S.Ct. at
process
product
programmed
or
is a
digital
USPQ at 10.
computer
digital
or
performing
electronics
mathematic function
necessarily
does not
dispositive
Thus the
issue is not whether
preclude patent protection
process
for the
the claim recites on its face something more
product.
way,
In this
open
door remains
physical
just
than
abstract mathematics.
If
of technologies by
advancement
were,
Benson
Flook would have come
incorporation
digital
electronics. But the
out the
way
other
and Diehr would have
digital
mere association of
electronics or a
very
been a
opinion.
short
dispositive
general purpose digital computer with a new-
issue is whether the
discovery
invention or
ly
operation
discovered mathematic
does not
patent
an award of
sought
per
bring
se
operation
that mathematic
with-
just
more than
a discovery in abstract mathe
patent
in the
law.
matics. Where the invention
discovery
only mathematics,
Every
the invention or
involving
ease
discov
101 issue
ery is not the
discovery
“kind” of
begin
What,
patent
must
question:
with this
any-
if
law
designed
protect
was
thing, is it
and even
applicant
patent
for a
narrowly
Diehr,
most
drawn claim
Abele,
“invented or
must fail.
discovered”?
re
14, 101
U.S. at 192 n.
(CCPA
F.2d
S.Ct.
1060 n.
1982),
at 10 n. 14. To
quoted
Grams,
come within
in In re
purview §
law,
of 101
patent
and the
a math
USPQ2d
(Fed.Cir.1989);
ematical
operation
formula or
Bank,
see
must
Schuylkill
“ap
Kneass
14 F.Cas.
plied in
(C.C.Pa.1820) (No.
an invention of a
7875)
type set forth
in 35
(Washing-
J.).
ton,
Meyer,
101.”
688 F.2d at
To resolve
inquiry,
USPQ at 198.
patent application
must be reviewed and
matter claimed
the invention
*30
.
discovery
“must
D.
be considered as a
Diehr,
188,
whole.”
above. The “elevation” is stored in a fourth
register 82. Id. 11. at 27-31.
The vertical distance and elevation are
each then in “normalized” barrel shifters 84 88, respectively, to make the larg- values According preamble to the of the claim the er, and the are results stored a fifth data is displayed to be display on a means. register 90. Id. at 11.3-16. Normaliza- specification gives example as an a ea- tion means this context multiplying in base thode-ray-tube. produced The “I” data two. above “rasterizing” is “anti-aliased” when (ROM) A read-only-memory operates a cathode-ray-tube is illuminated according on the stored “vertical distance” and “eleva- to the data. This means that there would be values, tion.” The ROM contains a table of discontinuity, no jaggedness, or oscillation namely “intensity” data as a function of the might otherwise appear merely had elevation and vertical distance data. Id. at line attempted been graphed. There is 13, 11.27-32. The mathematical function for no specification discussion in the of the struc- calculating intensity data is described ture of the actually means for displaying the generally as follows: data or of the oscilloscope. [ie., trajectory When the vector line
that would have been had starting 2. Original Panel Decision coordinates passes been connected] rejected The examiner claims 15-19 as not through very pixel near the center of a being directed to an or discovery invention point consideration], [the under pixel within § 101. majority notes, As the given maximum intensity.... When the rejected examiner though claims even he ... distance point between center of a recognized that claim “physical 15 recited pixel trajectory greater vector perform elements” crunching number equal than or to the ... distance between output of the data for eventual display. points center contiguous pixels, pixel intensity is set pixels having For On appeal board, original panel points center intermediate distance from found that body “[e]ach clause of claim trajectory, pixel vector intensity is se- operation a mathematical recites lected to be roughly proportion inverse operate are together recited to reach a to such [Spec, distance. 11.23-33.] numeric pure value or number as the end product of the original panel claim.” The The most basic selecting formula for also found that the claim does not include = pixel intensity given I’(i,j) as follows: [1 display output cathode-ray- on a data - = 4- F, Ay,) x] F (Ayy where Id. simply tube but transmission of the result 1. 18. operations. mathematical panel That Figure provides example decided, however, of what the analysis” “critical input “rasterizer” does. The to the rasteriz- for whether claimed matter including given er is y coordinates, two consecutive i algorithm mathematical is within 101 is = = (The i + 7.21 “vertical dis- whether the “spe- claims on face their recite - = 7.) tance” therefore is 7 The rasteriz- apparatus apparatus distinct from other cific outputs er following array capable “I” data performing identical [mathe- (vector endpoints emphasized): added.) (Emphasis matic] function.” digital discussion, 21. The numbers in the circuit are of my For I shall refer to the decimal (base two) binary course in figure format. The equivalent. specification (base 16). in the uses hexadecimal *32 Thus, panel this thereof. claiming equivalents and about rule general From every struc- towas the claim that concluded that where reasoned structure, panel the mathematic the recited performing ture func- for performing for “means recites claim ana- to be claim was functions, the and that § is within invention tions,” the claimed to a actually was directed it though lyzed so as are means functionally-defined the unless per- functions the comprising “every for “method” encompass means they that broad USPQ2d means. by the claimed func- formed [mathematical] recited the performing at 1344-45. construed be must the means Since tions.” in disclosed structures to the correspond to panel Alternatively, reconsideration the per 35 equivalents their and specification the comput- digital purpose “general found that test original board’s the § con- equivalents range the within er” was discovery was an invention whether ¶ in that It reasoned 6. templated on the depended § 101 in type enumerated be should structure the claimed cases such specification. in the disclosure quantity 1345. Id. a method. as treated panel found rule, original the Applying this panel re- the reconsideration passing, specifica- in the disclosed the structures that claims holding that original panel’s jected the two were to the means corresponding tion as clauses containing means-for-function It shifters, a ROM. and ALUs, barrel two corresponding the nonstatutory only when appara- “specific were these that concluded as generic sois specification in the structure to “clearly disclosed they were tus” because recognized that although it illusory, to be the art” structure conventional be illusory, the claim the structure where dia- block “rectangular simply not were function mathematic would be to be “may be ascertained not grams” that § 101. fail under would in the structure conventional disclosed the analysis, recon- the “method” Applying in a described means art,” nor were pan- original agreed with panel sideration original The broad, generic sense.” “very recited of the claim each element el that claimed that concluded therefore panel display- and that operation mathematical discovery was within invention cathode-ray-tube on a ing the waveform rejection contrary examiner’s reversed specifica- that It found claimed. was not claims 15-19. claimed, disclose, it nor was tion did list —was vector input data —the where the Reconsideration The Decision generated. or how was come from Panel concluded panel The reconsideration board panel reconsideration The simply a method was claimed invention under issue dispositive felt also set another from of numbers computing set “specif recited the claims § 101was whether a nonstatuto- numbers, was and therefore Alappat, Ex Parte apparatus.” ic algorithm. Id. to a mathematical ry claim 1992). (BPAI re The USPQ2d 1346-47. however, applied this panel, consideration it rea First opposite conclusion. test in this Case Majority’s Decision 4. The clauses the means-for-function soned recognizes first this court majority of covering every struc interpreted must by re- panel erred function, reconsideration that the recited performing ture means-for-function interpret fusing to prove applicant to was on the burden specific being directed as not clauses 1343; re Donaldson see In Id. at otherwise. specification disclosed USPQ2d structures 1192, 1193-94, Co., —two F.3d shifters, a ROM—and banc) ALUs, (in barrel two (Fed.Cir.1994) 1847-48, original panel and that equivalents, applying their practice of (discussing PTO of claim construction panel was correct ¶ 112, 6, during prosecution). ¶ view Thus, pursuant interpret the means-for-function refused specific do recite the claims specification, cir corresponding as limited to clauses circuitry structures. digital specification in disclosed structure cuit *33 1561 majority (a) concludes that ALU; because the a first structures, claim recites connected the claim (b) ALU; a second “unquestionably Page recites machine.” (c) shifters; two barrel Although stating 1541. unquestion- that it is (d) a ROM. able, the court asks whether the claimed Further, ¶ pursuant § 35 U.S.C. apparatus is not a § machine within 101 be- (a)-(d) elements also equivalents cover “judicially-created” cause of one of the excep- ALUs, two shifters, two barrel and the tions called algorithm” the “mathematical ex- ROM. ception. Page majority 1542. The explains in answering question that the “claim as Because the “means” of claim clauses 15 analyzed, whole” must por- and that a correspond to structure described in the tion thereof dispositive. is not The court specification, under Donaldson the reconsid- first subject concludes that the claimed mat- panel eration of the board erred in failing to ter is not a “disembodied mathematical con- construe the claims to recite that structure cept” because the claim recites a “combina- equivalents. [circuitry] tion of interrelated elements” for ¶ 112, 6, issue, § 2. The however, is a red converting Page data into data. 1544. Sec- herring in this case. Although the reconsid- ond, majority reasons that because the panel eration erred ignoring specific claim is specific limited to structural ele- claims, structure recited ments, not “wholly preempt” would claimed invention still is not the invention or algorithm mathematical contained therein. discovery of a machine. presence Page Third, 1544. majority holds that structure on the face of the claims does not the word “rasterizer” in the preamble is not ipso make the claimed invention or facto limitation, mere “field-of-use” but limits the discovery one statutory subject matter. claimed production matter to the To hold claim reciting structure “output illumination data.” Id. necessarily defines an § invention within Finally, the court concludes that if the majority implicitly long-dead resurrects claimed equivalent were “rasterizer” to a precedent of the Court of Customs and Pat “general purpose digital computer” pro- Appeals ent in direct conflict Supreme grammed perform per- calculations precedent Court subsequent precedent rasterizer, formed programmed such Early of that precedent court. of the Court computer would be the of a invention “new of Appeals Customs and Patent held that a § machine” 101. Page within claimed discovery invention or is outside only 101 if the claim on its face recites E. entirety mathematics, because claims like course, 1. Of agree I that the means-for- wholly would preempt the mathematical function elements claim must be con- 15 operation at issue. That was the extent of strued to corresponding cover structure boundaries of the law under described Alappat’s specification Bernhart, E.g., In re 417 F.2d ¶ equivalents 112, 6; thereof. 35 U.S.C. 1399, 163 (CCPA USPQ 611, 1969); In re Co., see In 1189, 1195, re Donaldson 16 F.3d Chatfield, 152, 156, F.2d (Fed.Cir.1994) USPQ2d (in (CCPA 1976); Freeman, In re 573 F.2d banc). Accordingly, Alappat correctly ar- 1237, 1245, (CCPA USPQ 464, 1978). gues majority properly holds that corollary, As a the court if reasoned that when the “means” elements of the claim are structure, claim does recite claim neces ¶ 112, 6, construed under 35 para- sarily “wholly does not preempt” an abstract (a) (d) graphs of the claim read as follows Noll, E.g., idea. 141, 148, In re 545 F.2d (the preamble has been shortened for brevi- (CCPA USPQ 721, 1976) (“The instant ty): claims, however, are drawn physical struc A converting rasterizer vector fist ture and not to an abstract” mathematical data ... ... pixel into formula.); Johnston, illumination intensi- In re ty displayed data to (CCPA ... comprising: 1974) (“the in- *34 test preemption Although the wholesale form, claim do not claims, apparatus stant specific outmoded, into inquiry nature, the a mathematical became of encompass a law or origi- survived, indeed has been (emphasis has formula, algorithm” or an structure 101, Dann § sub nom. this grounds as nal)), inquiry on other under rev’d elevated 1393, 47 219, Iwahashi, 96 S.Ct. Johnston, 425 U.S. 888 v. In re also See ease evidences. (1976). USPQ 257 692, (Fed. 189 1908, 1911 L.Ed.2d 1370, 1375, 12USPQ2d F.2d (The is a Cir.1989) subject matter expressly re claimed However, Supreme Court the test be preemption or “manufacture” wholesale “machine” statutory court’s the versed 584, 98 S.Ct. Flook, specific 437 U.S. with “apparatus v. in Parker claim is cause the USPQ 451, 193 198 2522, L.Ed.2d claim 57 and the “defines limitations” structural concluded Supreme Court There combination in the form a apparatus nonstatutory even discovery was claimed means.”). However, majori interrelated wholly not did claim applicant’s though the simply looks 101 under ty’s test involved. function the mathematic preempt is claimed specific structure whether 2525-26, 198 589-90, at 98 S.Ct. at 437 U.S. precedent Supreme Court inconsistent Diekr, at 192 450 197; U.S. USPQ at accord test. preemption wholesale 14, USPQ at 10 209 14, 101 1060 n. S.Ct. at n. 767, USPQ at 205 Walter, at 14; F.2d 618 a n. held that Supreme Court has be out subject can (under matter Flook 407 merely the may represent invention claimed preemption”). “literal without § 101 side outside a of nature discovery of law that satisfac made clear have should Flook though the claim entire- law, patent even patent for the 101, eligibility tion of complete structure. specific and a ly recites judgment that requires general, reward 130, Co., 68 at 333 U.S. Bros. Funk Seed See actually in has patent applicant for (claim spe- 441, USPQ at 281 at 76 S.Ct. something in the useful or discovered vented discovery lawof represented of bacteria cies deserving of exclu- that reason for arts and 101). The Su- outside nature and was whether To determine rights. patent sive claimed has also held preme Court or discovered invented has applicant it im- non-statutory if even may be process law, no it makes patent something within “specific fashion.” in a principle plements a be, “Does question the sole for sense 2527, 593, 198 at Flook, 98 S.Ct. at 437 U.S. in the structure to recite happen applicant has Court USPQ Supreme at 198. And Flook, Diehr, Ben- not?” See claims may represent claimed invention that a held (no discov- patent for son, II.C.l. supra part alone and discovery of mathematics function); Bros. Funk ery of mathematical recites though the claim § 101 even outside 127, Co., 333 U.S. Inoculant v. Kalo Seed Co. Benson, E.g., limitations. specific structural 588, USPQ 280 76 440, L.Ed. 68 S.Ct. 258, 254, 73, 64, at 93 S.Ct. at 409 U.S. naturally discovery (no (1948) for patent 674, Manson, USPQ Brenner occurring phenomenon); 69, 1033, L.Ed.2d 86 S.Ct. 383 U.S. court addition, predecessor court’s (no (1966) creation patent USPQ 689 comput- “claimed that a expressly stated discovering specific product without necessarily reflect system” ing does it) (discussed part supra utility practical within discovery of a “machine” invention Corp., 416 v. Bicron U.A.); Co. Kewanee Oil F.2d Maucorps, 609 re § 101. In 1885-86, 480-81, 94 S.Ct. U.S. 1979) (claimed (CCPA (dis- (1974) L.Ed.2d though nonstatutory even apparatus was policy of the practical generally the cussing hard-wired dedicated a disclosed referred law). preemp- wholesale Because 796, 215 F.2d at circuit); Meyer, 688 also see the nature nothing about cares tion test (claimed nonstatuto- apparatus USPQ at 199 discovery,22the Su- alleged invention computer to a though it was limited ry even rejected it. surprisingly preme Court patent applica appellants in their Bernhart, [disclosed See, F.2d e.g., tion]."). here ("To in issue the claims allow USPQ at 616 equations prohibit [the] all uses would not performing the claimed opera- guishes mathematical between an “oscilloscope” and a result). displaying tions and “rasterizer,” Alappat claims his invention in claims 15-19 only to be the “rasterizer.”
Furthermore,
support
statute does not
simple
“structure” test. 35 U.S.C.
The “rasterizer” as claimed is
arrange-
plainly
refers
several
classes
circuitry
ment of
elements for converting
having longstanding
usage
pat-
in the
data into other data according
particular
to a
*35
requires
ent law
applicant
that the
have
operation.
mathematical
The rasterizer be-
or
a
“invent[ed]
discover[ed]” new and useful
gins with vector “data” —two numbers. “[I]t
one of them. “Structure” is not one of these
does
they
not matter how
are ascertained.”
classes.
simply require
Nor does
a Brief for Alappat
numbers,
at 39. The two
claim that recites
Finally,
structure.
there is
they
might
any
algebra student, “repre-
no
suppose
reason to
that
101 should de-
sent” endpoints line.
a
pend only on
adequacy
of disclosure
The claimed “rasterizer” ends with other
specificity
when
of disclosed and claimed
specific
array
numbers,
“data” —an
as the
expressly required
structure is
in 35 U.S.C.
original and
panels
reconsideration
of the
§ 112.
board both expressly agreed.
Diehr,
See
Supreme
As the
Court and this court have
186, 101
U.S. at
at
USPQ
S.Ct.
at 8
said,
majority
now,
and as the
says
(“The claims [in
]
Flook were drawn to a
subject
claimed
matter must be considered
computing
method for
an ‘alarm limit.’ An
as a whole to determine whether the inven
‘alarm limit’
simply
number....”);
is
discovery
tion or
is within
101. A claim
Abele,
(the
684 F.2d
at
at 688
may thus include a limitation
to a
directed
presents
“claim
no more than the calculation
formula, computer program
“mathematical
or
of a
display
number and
result”);
digital computer,” and yet the invention or
Walter,
768, 205
(“if
618 F.2d at
USPQ at 407
discovery
will be within
long
so
as the
end-product
of a claimed
is a
invention
claimed invention in
represents
ap
total
an
number,
pure
Flook,
as in Benson and
plication
formula,
such
program,
or com
is nonstatutory”).
invention
The end-data of
Diehr,
puter.
See
just having some use for data does not make
closed
structure,
hardware
other than a
particular
patentable.
creation
data
programmed general purpose computer,” is
subject
Like the
matter
Flook and Ben
nonstatutory.
22;
Br. for Alappat at
see
son,
subject
Diehr,
and unlike the
matter
Majority Opinion
Page
(agreeing
Alappat’s claimed
newly
rasterizer is
discov
premise).
with this
Alappat’s argument
ered mathematics and not the invention or
that “bona fide hardware supporting the
discovery
process
product
of a
applying it.
plus
‘means
function’ recitals” in claim 15
(“The
Alappat,
USPQ2d
at 1345
Cf.
subject
renders the claimed
statutory,
claimed invention must be evaluated for what
but then
general
claim
cover
pur-
it is. The claimed invention is a mathemati
pose digital
computers
equivalents
algorithm
cal
computing
pixel informa
¶
through
though
even
(citation omitted)).
tion.”
though
Even
it matter could not be claimed outright. Br.
structure,
recites
rejected
claim 15 should be
Alappat
at 22.
under
Alappat
ways.
cannot have it both
If a
*37
Rejection
§
programmed
under
especially impor-
general
101 is
purpose digital comput-
tant for
following
statutory subject
the
er is not
matter,
reason. The examina-
then a
tion of
claim
Alappat’s
on,
cannot be
subject
“rasterizer” must
drawn to that
focus
Alappat says,
outright
as
whether
“process”
by application
equiva-
of the circuit
¶
112,
lents
§
under 35
elements —the mathematic
per-
Paragraph
function
6 of
112
magical
is
a
formed
them.
patent
way
expand
Because the
law
patent protection into
mathematics,
nonstatutory subject
does not examine abstract
if
matter.
101,
“rasterizer”
is held to be within
there can
meaningful
be no
examination for
As to equivalency, finding equivalency in a
compliance
103,
§with
and other sections of programmed
general purpose
computer
patent
statute
inapplicable.
become
The
proves
nonstatutory
Alappat’s
nature of
practical
is that
patentability
result
there is
purported invention or discovery. Alappat
long
so
as the mathematics is “new.” This is
argues that
circuitry
the electrical
Alappat’s
reflected in
statement
that
equivalent
“rasterizer” is
programmed
to a
rasterizer is a “novel
combination
conven- general purpose computer
“power-
because
which,
tional electronic circuits
as
ful, inexpensive
functional-
microprocessors”
equiva-
are
ly
claims,
in the
patentably
is
dis-
defined
digital
lent to “discrete
components, such as
tinct from prior art
Brief for
rasterizers.”
AND, OR, NAND, etc., gates,
registers,
Alappat
added).
(emphasis
at 7
But standing
latches, and
equivalent
the like” are
to “ana-
alone,
novelty
“the
algor-
mathematical
log components,
transistors,
such
opera-
ithm is
determining
not a
factor at all.”
amplifiers,
tional
They
and resistors.”
are
Flook,
591,
at
U.S.
S.Ct.
equivalents,
view,
all
Alappat’s
because
USPQ at 198.
all
per-
achieve
same effect:
forming
particular
is
mathematics
4. Finally,
“general
a
purpose computer”
the claimed rasterizer.
issue has
raised
been
aside in this ease.
parties agree
The
that each of the
patent
“means”
A
only
is awarded
“for the discov
elements in claim
“equiva-
15 would
ery
find
or invention of
practical
some
method or
lent” within
meaning
of 35 U.S.C.
producing
means of
a beneficial result or
¶ 6,
“general
purpose
effect,
a
digital computer.”
... and not for the
result
effect
Alappat goes
plead
Diehr,
so far as to
emphatically
7, 101
itself.”
Most
inventions
involve the
accordance with instructions that are
plication
principles
phenome-
generated electronically.
operation
of scientific
This
re-
specific purposes.
quires
na of nature to
It is these
several mathematical calculations that
sought
patented
computer
optimum
1. In Benson the invention
to be
was used in a
to calculate
process whereby
expressed
awas
a number
presence
cure time. The Court held that the
*41
binary coded decimal form was converted to the
algorithm
pat-
the mathematical
did not defeat
form,
expressed
binary
same number
in
for use
entability
process.
of the overall
In this context
digital computer.
in a
The Court held that such
case,
developed,
the CCPAand this court
case
patent
preempt
would
all uses of the Benson
jurisprudence
applies
that the court now
digital computers,
mathematical formula in
view-
Arrhythmia
invention. See
Research
ing
principle.
the formula as a form of scientific
Technology,
Corp.,
Inc. v.
Corazonix
(Fed.Cir.1992)
(di
USPQ2d
scussi
approved
patenting
In Diehr the Court
of a
Court, CCPA,
ng
Supreme
the evolution of
and
process
curing
rubber wherein a well known
Benson).
Federal Circuit decisions after
(the
equation
equation)
mathematical
Arrhenius
basic scientific
reactions follow
tions and
aid of microelectronic
with the
performed
are
monster to
is not a
digital
principles. Mathematics
performed
circuitry, and can
patent system,
out of
in
con-
down or
resides
be struck
structure
computer. The
whereby techno-
operates,
simply
another resource
the device
but
figuration
which
Alappat’s claim
indepen-
is achieved.
logical
is
advance
explained, and
has
Judge Rich
by speci-
that is characterized
configuration
provided.
to a rasterizer
that
dent of how
means of
functions and the
in
fied
reside
semiconductor
electronic
may
The structure
connections,
preempts
per-
them no more
performing
or be
chips and hardwired
to di-
that are used
form
formulae
in the electronic
mathematical
manently embedded
Chakrabarty’s
removably
functions than
memory, or
rect
did
read-only
these
designated
genetic theory.
designated
preempt
form
bacterium
in
electronic
embedded
memory.
It is not relevant
random-access
Ill
hard-
structure is
101 whether
section
machine-readable
programmed,
wired
by the
receptive attitude
An
inquiring
indeed the means-
manually
performed,
in
technologies finds a mandate
PTO new
style
claim accommodates
plus-function
has not
The text
section
statute.
alternatives.
these
change
changed
other than
since
simple
“process”. This
text
word “art”
by way
digital elec-
that work
Devices
and the
the industrial
revolution
served
patent
from the
tronics are
excluded
surely
elec-
age;
it can
modern
atomic
serve
their mechanism of
system simply because
Indeed,
Congress antici-
the First
tronics.
by mathemati-
represented
operation can be
ingenuity
human
pated
new fields of
that
output of an electronic
cal formulae. The
Act of
developed, for
Patent
would be
any
approximated to
may be
circuit
device or
description
the written
1790 stated
mathematical function
degree as a
required
the art of manu-
one “skilled in
should enable
inputs;
some
and its
current
of its
state
branch,
facture,
it
or wherewith
whereof
transistor, embody re-
devices,
as the
such
to make and
may
nearest connected”
func-
markably elementary mathematical
contemplated
use the invention. The Act
mathematics,
princi-
Principles
like
tions.
which
there would be inventions
of scientific
chemistry,
“basic tools
ples of
art, by referring to
there
no established
was
Benson, 409 U.S.
technological work”.
pro-
An Act to
connected”.
the art “nearest
principles are
255. Such
S.Ct.
Arts,
VII,
ch.
progress
mote
of the useful
pure science.
subject matter of
indeed the
(1789).
Stat.
ap-
But
are also
technology.
“If
plied
adapted
new needs:
is often
Old law
language
Congress
made a
has
choice
implement math-
Digital
devices
electronic
fairly brings
given situation within
signals,
manipulations of electronic
ematical
statute,
particular
unimportant that the
it is
imple-
and reactions
as chemical structures
contemplated
application
not have been
An
molecular behavior.
principles of
ment
States,
legislators.”
by the
Barr
United
perform spe-
configured to
apparatus that is
89 L.Ed.
65 S.Ct.
324 U.S.
procedures
accordance
cific electronic
Chakrabarty, 447
In Diamond v.
require numerical measure-
instructions
65 L.Ed.2d
100 S.Ct.
U.S.
no
and mathematical calculations
ments
(1980)
emphasized that
the Court
any
statutory
other combination
less
than
to serve all
patent system is available
A
steps
components.
combination
ingenuity.
of human
fruits
components, struc-
mechanical or chemical
policy
em-
public
intertwine
prin-
Law and
accordance with the
operate
tured to
scope
of section
bracing
fields
chemistry,
new
ciples
does
of mechanics
technological
nicely
Patent
fostered
law
nonstatutory because those interac-
become
therefor,
thereof, may
sub-
obtain a
patentable
ment
Inventions
3. 35 U.S.C.
requirements of this
ject
to the conditions
Whoever
or discovers
new
invents
*42
manufacture,
machine,
compo-
title.
process,
useful
or
matter,
improve-
any new and useful
sition of
States,
princi-
incentive in industrial
in the United
for its
innovation was the
advance
principal
factor
the formation of
particularly suited to a free market
the Fed-
ples are
It
governmental
appropriate
in-
eral Circuit.
is thus
system:
requires
it
neither
construc-
statute,
tively
apply
precedent,
to
provide
policy
in-
nor federal funds to
trusion
variety
innovation;
of inventions that
innova-
the informa-
for industrial
centive
age
generated,
tion
and to
consequence
remove the
is the direct
of the
tion incentive
may
cloud on whether these
par-
inventions
major technologi-
patent grant.
I know of no
ticipate
obligations
the benefits and
advance,
of the
industry
evolving
no new
cal
system..
patent
participated in the
technology, that has not
patent system.
It is estimated that 85-90% MAYER,
Judge,
Circuit
with whom
technology
only in
of the world’s
is disclosed
MICHEL,
Judge, joins, dissenting.
Circuit
Story’s
patent documents. Justice
words at
I
agree
jurisdiction
do not
that we have
our nation’s industrialization
the threshold of
appeal.
over this
The Commissioner exceed
by experience:
have been reinforced
statutory authority
his
in convening
ed
treated
Patents for inventions
now
as
new, expanded panel
to reconsider
men,
just
ingenious
high-
reward to
and as
original
Alappat’s appeal
board’s
decision in
public,
only by
ly beneficial to the
from the examiner. Because the Commis
holding
encouragements
ge-
to
out suitable
law,
sioner’s acts were not in accordance with
enterprise; but as
nius and talents and
the reconsideration decision cannot be a “de
ultimately securing to the whole communi-
Appeals
cision of the Board of Patent
ty great advantages from the free commu-
meaning
Interferences” within the
of 28
secrets,
processes,
and ma-
nication of
1295(4)(A)(1988),
U.S.C.
and this court has
chinery,
may
important
be most
to
jurisdiction
no
to address the merits of the
great
society,
agricul-
all the
interests
appeal.
Corp.,
In re
See
Bose
ture,
manufactures,
to commerce and
(Fed.Cir.1985) (an
im
cause of science and art.
well as to the
may
properly constituted board
not render a
may
valid decision over which this court
ex
Sprague,
Blanchard v.
3 F.Cas.
jurisdiction).
ercise its review
As the Su
(C.C.D.Mass.1839).
nation
was forceful-
said,
preme Court has
“A court-martial [for
ly
truth
reminded of this
when our economic
which we
“board”]
substitute
is the crea
leadership
in the 1970s. In an
faltered
ad-
statute, and,
tribunal,
body
ture of
as a
Detroit,
Economic
dress before the
Club
must be convened and constituted in entire
Chairman,
Irving
Shapiro,
E.I.
S.
duPont de
statute,
conformity
provisions
with the
of the
Co., discussing “Technology’s
Nemours &
jurisdiction.”
or else it is without
McClau
Decline”, stated:
ghry Deming,
186 U.S.
S.Ct.
missing
country
What seems to be
our
(1902).
791,
directly hear a court. as it does those of an alterna- the same basis The board is on mary examiners.1 1324, 1326, See, King, F.2d 231 e.g., In re 801 through which the Commissioner tive avenue (“Our (Fed.Cir.1986) decisions, review USPQ of which as 138 “policy” make Office, question] final fact is finding anticipation [a he is the Patent of a head of the case, the Commis- the board being the whether it was made This the same arbiter. authority court.”); discretionary to re compare In has broad a district sioner panels keep 831, 833, redesignate, Bond, USPQ2d designate, or 15 910 F.2d contrary (Fed.Cir.1990) rendering ques decisions (anticipation from is a board 1567 Therefore, “Board” that ei- policy. his under the fact for the board reviewed tion of appeals is rehearings standard), or rehears grants ther with Linde- clearly erroneous the Commis- of members whatever collection v. American Gmbh mann Maschinenfabrik any stage designate 1452, 1458, Co., sioner chooses 221 Derrick 730 F.2d Hoist & final decision is en- proceeding (Fed.Cir.1984) before (applying USPQ 485 tered. to district clearly erroneous standard same In re finding anticipation); and court’s hand, analogizes the Solicitor On the other 411, 412, McCarthy, 763 F.2d says regularly it to a court. He the board (Fed.Cir.1985) (obviousness is reviewed three, capable, is as is panels but sits without deference to the legal correctness court, if sitting expanded panels determinations), with Gardner board’s compares are met. He also certain criteria Inc., 1338, 1344, 220 Systems, 725 F.2d TEC Appeals for the the board to the Court (district (Fed.Cir.1984) ability banc and its to sit en Ninth Circuit one of conclusion on obviousness “is court’s court. less than the entire See independent re to full and law 46(c) (1988); 9th Cir. Rule 35-3. court.”). in this view option, argues the The board also has this Solicitor, and the use of limited “en bane” readily appar of the board is also The role discretionary with the Commissioner. history of the Patent Office. ent from the cannot have it both The Commissioner ques primary task is answer The Office’s quasi-judicial ways. Either the board is patentability on the of inventions. tions by applying existing body, deciding each ease authority promul has the Commissioner it, before or the board law to the facts patent regulations with the gate consistent simply of the Commissioner’s an extension operation of the aid the efficient laws to office, poli- making on the basis of decisions 6(a) (1988); Ethicon, 35 U.S.C. see Office. cy. 1422, 1425, USPQ2d Quigg, Inc. v. (Fed.Cir.1988). 1152, 1154 The Patent Office unambiguous
I think the statute is individual responsibility to make also has power grant unarguably that it vests the patentability by examining itself, determinations from un- rehearings in the board free applications. particular 35 U.S.C. by the due interference Commissioner. (1988). Originally, these functions were colo- ego” of the is not the “alter board Commissioner, who Commissioner; adjudicative body cated in the Office of authority to “administer” the Office independently and has its had the functions stage final of decision authority. as well as to act as the separate and distinct See own by hearing appeals applications Quigg, Fund v. 932 on individual Legal Animal Defense (Fed. directly See M. Blom- 920, 928, USPQ2d from the examiners. F.2d mer, Cir.1991). Appeals and In may only in- The Board Patent The Commissioner (Octo voting terferences, AIPLA Bulletin 188 as a a decision when he sits fluence 1992); Federico, ber, Ap The Board in this role he P.J. member of the board and (1961) 1861-1961, J.Pat.Off.Soe’y 691 peals n. Id. at 929 serves as other member. (summarizing history of the board from USPQ2d at n. 10. It is on this ap- inception). in the number of routinely Growth assumption that this court has re- (BNA) board, (May reprinted in 44 PTCJ publicly forth this Commissioner has set 1. The 14, 1992). April letter to the members view in an *44 government. patent correspondingly appeals, ap- of of the Likewise the and plications give necessary peals the Commissioner board resolves conflicts made it between indi- the Board hearing appeals. help seeking in rights viduals exclusive to inventions created, and the Commission- Appeals was government’s promoting and the interest hearing appeals given the task er was exchange technology. free Both the board AIPLA decisions. 1992 from this board’s patent appeals2 appeals and the contract Bulletin at 190. grants function similar boards3 under of au- that, thority facially, at least are not limited up set
The Act of March
by
authority
agency.
of the head of the
authority in
the Patent Office
division
sense, “designated”
Both bodies are in some
by abolishing
essentially
today
it
exists
head,
by
agency
delegat-
and
their
but this does not mean
appeal
to the Commissioner
hearing appeals solely to the
ing
may
the task of
their decisions
be limited or controlled
newly expanded board. The Commissioner by
statutory
that official. Historical and
along
a member of the board
was made
explaining
authority
*45
board,
give the
in
decision-making power
Patent Act does
to a
even
the board.
authority
designate the
specific congressional
to
com
absence of
Commissioner
board,
here,
panels
mand,
on
of the
who will sit
he must
members
much less the situation
7(b),
cry from a
this is a far
independent
but
decisional au
respect
35 U.S.C.
then
acts for the Commis-
proviso that the board
from at
thority of the board and refrain
“through”
sioner,
acts
or the Commissioner
its decisions. United
tempting to influence
Shaughnessy,
the board.
Accardi
ex rel.
States
v.
260, 266,
499, 503,
Any new (1978), which two cases 57 L.Ed.2d matter, manufacture, composition non-statutory: inventions ruled the Court may thus receive improvements, including significantly definition petitioner’s] [The explicitly cov- Section protection. patent this Court em- definition broader than Further- and machines. processes both ers previous Flook. Our in Benson and ployed Court, “any” more, according Supreme “ patentability regarding decisions ‘any- encompassing expansive term an ” necessarily limited to the “algorithms” are by man.’ that is made the sun thing under by the employed definition more narrow 309, 303, Chakrabarty, 447 v. U.S. Diamond judgment Court, pass do not and we (1980) L.Ed.2d 100 S.Ct. falling the defi- processes outside whether 1979, Cong., 2d 82d Sess. S.Rep. No. (quoting Court, but previously used nition 1923, (1952); Cong., 2d H.R.Rep. No. 82d peti- offered within definition (1952)). suggest 101 does Section Sess. subject tioner, matter. patentable would to some sub- protection extends patent Diehr, at 1056 n. 101 S.Ct. at 186 processes or machines 450 U.S. categories of simply not extend Act n. 9. does others. inventions new and useful coverage to some Diehr, Thus, specifically con- the Court deny it to others. and Flook holdings of Benson fined Significantly, cases. Indeed, clarified the facts of those Supreme Court has classify algor- all says: any thereby refused it means what Court section Only subject matter. non-statutory entitled to ithms as and useful invention new merely represent discover- statutory remaining algorithms which subject to the protection, section principles excluded from See Diamond ed patentability. conditions and Flook involved in Benson Diehr, The inventions 101 S.Ct. 450 U.S. Benson, the invention determining In algorithms. such In 67 L.Ed.2d matter, mathe- subject simply way general to solve patentable was qualifies as what was a problem; in Flook invention the distinction matics Supreme has drawn Court Diehr, U.S. at number. way obtain a discoveries. inventions mere between pronouncing 185-86, 101 at 1056. In discovery fall “laws S.Ct. unpatentable side theOn deci- earlier nature, phenomena, and abstract confinement severe natural the Pat- sions, Diehr, Supreme at Court restored 101 S.Ct. U.S. at ideas.” processes and meaning that fall clear invention side ent Act’s patentable theOn subject handiwork, matter even patentable but machines are “not nature’s anything that is algorithm. In the wake Chakrabarty, an they 447 U.S. if include inventor’s] own.” [the Supreme Court Chakrabarty, Judge Rich Diehr at 2208. While 100 S.Ct. subject matter status patentable only to ma- principles denies correctly applies these fact, are, simply laws pro- chines, equal algorithms force to apply of nature. cesses. Moreover, mat drawn claim in- “a patentable dividing line between statutory become non- does not equally ter otherwise discovery applies and mere
vention
a mathemat
Diehr,
statutory simply because
uses
inventions.
algorithmic
towell
digital
formula,
computer program
cases,
al-
ical
special
indicated
Court
187, 101
Diehr,
S.Ct.
450 U.S. at
computer.”
nature”
to a
“law
is tantamount
gorithm
whole, if a
Diehr,
Viewing the claim as
at 1057.
non-statutory.
450 U.S.
therefore
define
its use
However,
digital circuit or
would
at 1056.
S.Ct.
the same
then
section
‘algorithm’ is
invention under
term
“[t]he
noted that
Court
*53
(quoting
invention described
terms of “a mathemat-
United States v. Dubilier Condenser
formula, computer program
digital
ical
Corp.,
U.S.
53 S.Ct.
computer”
statutory
(1933)).
should be
mat- L.Ed. 1114
This
ap
same counsel
circuit,
Alappat’s digital
ter as well. Neither
plies to the Board.
justifi
The Board has no
nor a mathematical algorithm
replaces
it
cation within
ignore
Act
algor
Patent
computer,
in a
is a “fundamental law of na-
processes
ithmic
or machines as “useful
scope
ture” excluded from
section 101. Arts” within the scope of section 101. U.S.
sum,
Const,
Alappat
section 101 is no bar to
I, §
art.
8. This court should not
whether his invention is a machine—which it
permit the Patent and Trademark Office to
process
is—or a
employs.
it
administratively
—which
emasculate research and de
velopment in
precluding
area
statuto
patentable subject
The limits on
ry protection
algorithmic
inventions.
within
depend
section 101 do not
on whether
expressed
an invention can be
as a mathe-
applicants
The
of the instant invention do
relationship
algorithm.
matical
Mathe-
not seek to
a mathematical formula.
simply
matics
expression
is
a form of
—a They
protection
seek
for an invention that
language.
predecessor point-
As this court’s
displays a smooth line on an oscilloscope.
ed out:
Although Alappat’s
process might
machine or
algorithms
[S]ome mathematical
and for-
employ
equation,
it
pre-empt
does not
represent
mulae do
principles
scientific
equation.
Consequently, whether the
nature;
they represent
or laws of
ideas or
invention is called
process
a machine or a
processes
mental
simply logical
and are
inconsequential.
reasons,
For these
agree
I
communicating possible
vehicles for
solu- with this court’s reversal of the reconstituted
problems.
complex
tions to
Board’s decision.
Meyer,
789, 794-95,
In re
(CCPA
1982).
SCHALL,
Judge,
Circuit
dissenting, with
Supreme
The
Court’s Diehr doctrine in
CLEVENGER,
whom
Judge, joins.
Circuit
recognizes
effect
that inventors are their own
respectfully
I
I
dissent.
believe that the
Therefore,
lexicographers.
inventors
decision on
reconsideration
invalid because
express
their
inventions
manner
grant
reconsideration was not
fit, including
symbols
see
mathematical
and
full membership of the Patent and Trade-
algorithms. Whether an inventor calls the
mark Office Board
Patent Appeals
process
invention a machine
aor
is not near-
(“Board”),
required by
Interferences
stat-
ly
important
Thus,
as the invention itself.
Accordingly,
jurisdiction
ute.
we are without
the inventor can describe the invention in
to hear
appeal because
is not
process
terms of a dedicated circuit or a
from a decision of the Board within the
Indeed,
emulates that circuit.
the line of
1295(a)(4)(A)(1988).
meaning
of 28 U.S.C.
demarcation between a dedicated circuit and
pertinent
The
statutory provisions are
computer algorithm
accomplishing the
7(a)
7(b) (1988):
§§
found at 35 U.S.C.
frequently
identical task is
blurred and is
becoming increasingly
technology
(a)
so as the
Commissioner,
....
Deputy
develops.
field,
In this
process
software
Commissioner, the Assistant Commission-
interchangeable
often
with a hardware cir-
ers, and the examiners-in-chief shall con-
Thus,
cuit.
the Board’s insistence on recon-
stitute the
Appeals
Board of Patent
struing Alappat’s
process-
machine claims as
Interferences.
misguided
es is
technology recog-
when the
(b)
Appeals
The Board of Patent
and In-
nizes no difference
the Patent Act
treats
shall,
appeal
terferences
on written
of an
patentable subject
both as
matter.
applicant, review adverse decisions of ex-
Supreme
frequently
Court has
upon applications
cau
aminers
patents....
tioned that “courts
appeal
‘should not read into the
Each
...
shall
heard
least
patent laws
limitations
conditions which
three members of the Board of Patent
”
legislature
expressed.’
Appeals
Interferences,
has not
Chakra
who shall be
barty,
designated by
U.S.
the Board the way to read no other simply can see rehear- authority to grant the has ences statute. ings. case, that, rehear- in this undisputed It is straightforward. statutory scheme The full mem- than the by less ing granted was appeal- an examiner of decision adverse An reason, the For this bership the Board. of Thereafter, Board the Board. ed to the Alappat which rehearing, from decision panel of at least through a appeal the hears is not and thus is invalid appealed, has by the designated members, are who three we whose merits the Board of decision panel’s deci- Following 869, the 866, Bose, F.2d 772 Commissioner. In re review. See Appeals (Fed.Cir.1985). of Patent sion, predicate Board A “[o]nly 1, the authority grant re- 28 U.S.C. jurisdiction under the has to this court’s Interferences appeal from “an provides there be § 1295 is that Finally, the statute hearings.”1 Appeals of ... the Board Patent of Inter- decision Appeals and Patent of the “Board that Interferences_” 28 U.S.C. Commissioner, “[t]he of consists ferences” (1988). Because, 1295(a)(4)(A) rea- for the § Commissioner, the Assistant Deputy above, appeal is sons stated Commissioners, examiners-in-chief.” and the Board, we are from a valid decision issue, is at statutory interpretation join portion that jurisdiction. I thus When without is clear concludes Mayer’s the statute dissent which language Judge “the of if of. appeal is Board on statute case, meaning of the the decision plain that fits statutorily rehearing was not invalid because Holding VE conclusive.” regarded as bewill authorized. Co., 917 Appliance Gas Corp. v. Johnson (Fed. 1614, 1618 USPQ2d 7(b) 1574, 1579, 16 of U.S.C. F.2d sentences The final two Cir.1990). Here, language of the plain 482 of directly from section are descended only Statutes, by Act conclusion as amended compels the Revised statute statute, 2, the final roughly 43 In that currently 1927. of March full Board —which Commissioner, (the Deputy sentences stated: two members by at least be heard appeal Commis shall Commissioner, two Assistant Each about appeals, of of the board three Examiners-in-C members sioners, about desig- hearing appeal to be such members rehearings. hief2) authority grant —has The board commissioner. nated word the critical present purposes, For power grant have sole appeals shall beginning of at the “Only,” appearing rehearings. 7(b). use of this The third sentence of 273, 3, 2, 1927, 44 Stat. ch. Act of March say to me in the statute and its location word 1335, 1336. a distinction to draw Congress intended appeals appeal— statute, hearing of an the board the initial In the between rehearings” con- grant power three mem having “at least “sole is to be heard Patents, the ..., designat Commissioner “[t]he sisted who shall the Board bers commissioner, the assistant rehearing— first assistant by the Commissioner” —and ed Patterson, U.S. Co. v. Tobacco American majority reconsidera- that the agree with I "rehearing” L.Ed.2d 748 S.Ct. case constituted action in this tion 7(b). (1982)). "ordinary meaning,” we look provided for in as For that See, v. dictionary. e.g., Educ. Board .examiners- who are the Board called “Administrative members of 2. The 226, 237, 110 S.Ct. Mergens, 496 U.S. Patent are now in-chief Judges.” (1990); Power Tech Best 110 L.Ed.2d Pat.Off. Official Gazette See 1158 Austin, F.2d Corp. nology v. Sales (Fed.Cir.1993). dictionary gives follow “Only.” the word not define statute does 3. "only” interpretation, when statutory for the word principle ing primary a basic definition It is however, solitary single terms a statute that undefined "la: adverb: used as an it is ordinarily understood their just to have deemed the one or occurrence: or instance fact James, See, meaning. e.g., States United nothing different: thing simple SIMPLY, more 92 L.Ed.2d 106 S.Ct. U.S. 483 MERELY, ... EXCLUSIVE JUST b: legislative (1986) (“[W]e assume that LY, New Interna Third Webster’s SOLELY.” meaning ordinary expressed purpose is Dictionary 1577 tional used.”) (alteration original) (quoting the words commissioner, examiners reasons, For foregoing I would hold time, chief....” Id. At that there were the Board’s reconsideration decision is *55 only examiners-in-ehief; thus, five the board invalid, and legal therefore a nullity. Be- patent appeals eight had a total of mem- I cause think jurisdiction this court lacks bers. Since the size of the Board pass on the appeal, merits of express I above, increased. As noted there are now no on the views merits. examiners-in-ehief, about 39 and the full roughly Board has 43 members. Time and
events have language overtaken the of the I recognize
statute. While that it unwieldy only
to have be that full membership grant
the Board can rehearings, that is the
result language which the com- statute
pels. This is a Congress, state of affairs that court, remedy.4 should dissent, Judge Mayer In his concludes not believe that the validity issue of the quasi-judicial body.” express Board is “a I no reconsideration upon decision turns how one However, question. regardless views on that views the Board. Board, the nature of the may grant "rehearings” the manner in which it governed by a statute reason, language whose is clear. For that I do notes of the boards Commissioner, First the Assis- Assistant appeals of contract state the boards act tant and the examiners-in- Commissioner independently, representative “not as a 69-690, No. 44 Stat. 1335 chief. See Pub.L. agency, agency contesting since the separated act the administrative The contractor’s entitlement relief.” running the Patent Office as- function of notes; § U.S.C.A. see also United States Commissioner, adjudi- signed from the to the Dynamics Corp., v. General catory deciding individual cases of function of (9th Cir.1987) (the “ASBCA is intended delegated to the board. This patentability, independent Department to be of the of De- Act. retained the 1952 Patent division was fense,” “strictly quasi- and its function is §§ 6 and 7. The additional See 35 U.S.C. judicial”). By virtue of its similar function shall be requirement that “examiners-in-chief statutory authority, patent appeals and competent legal knowledge and persons of “representative board cannot be viewed as a ability” suggests scientific the board is to Office, agency” of the because the Patent legal on and scientific render its decisions examiner, through the also the enti- contests independent poli- administrative and bases rejec- applicant by arguing of the tlement 7(a). § cy id. concerns. See patent application. tion of the independent character of the board Congress If intended to create a board arrangement comports with the of other ad- independent, that is not but judicatory in the executive branch. bodies head, policy-making authority agency of the agency example, Congress For has created specifically it have done so as it has would appeals given boards of contract them example, specified other contexts. For authority disputes arising on out to rule military depart- the secretaries government of contracts between the may military of an (1988). ments correct the records private parties. 41 U.S.C. by acting “through” a civilian individual preside These boards over cases (1988 Supp. board. See 10 U.S.C. & rights private individuals and en- contract 1993).4 statute, directly against By the the board acts as pitted tities are the interests IV (2) by Appeals agency, to a contract made Board of and Interferenc- relative "The Patent shall, agency agency appeal applicant, such or the Ad- es of an re- other when written designated agency upon appli- board to decisions of examiners ministrator has view adverse 607(d). priority appeal." patents decide the 41 U.S.C. cations for and shall determine patentability of invention in interferences 135(a) pertinent part, § 1552 reads as follows: 4.In declared under section of this title. Each appeal shall be heard at least interference (a)(1) Secretary military depart- of a Appeals the Board of Patent three members of any military ment correct record Interferences, designated by who shall Secretary Secretary’s department when the 7(b). Commissioner.” 35 necessary error or considers it to correct an injustice remove an ... such corrections shall through Secretary acting agency jurisdiction 3. "Each shall have be made board part any appeal the executive of that a decision of a contract- boards of civilians of decide from (1) department. military ing made officer relative to contract adjudicatory body, and assurance that would, it acts on his behalf. secretary body as a whole are free the situation of decisions of the sharply with contrasts This agency head appeals on which influence. Once an from undue the board of discretionary delegate one member of of his simply as some acts decides Commissioner