*2 FRIEDMAN, Bеfore BALDWIN and SMITH, Judges. Circuit SMITH, Judge. EDWARD Circuit S. appeal This is an from the decision of the Patent and Trademark Office Board of U.S. Appeals sustaining under 35 1-4 and 6 of applica- U.S.C. of claims § 935,183, August tion serial No. filed Recreation- entitled “Educational and al Mathematical Device in the Form of a Band, We re- Ring Rings.” or Concentric verse.
I. object of the disclosed stated inven- exploit prоper- is to certain arithmetic
tion 5, P,1 larger all than prime ties of numbers magic of or to create semblance intriguing aspects respect educate number theory.
A. of the inven- physical configuration extremely simple.
tion is (1) key claims recite elements: three band, rings; (2) a ring, or set of concentric digits imprinted of individual plurality regularly inter- ring spaced the band or vals; (3) algоrithm by which the developed. are appropriate digits sup- it The band2 serves two functions: presents and it ports sequence digits with no sequence as an endless or end. band beginning discrete fabric, loop paper, preferably an endless specification, specification by appellant P in his The variable is defined in the 2. As stated ring, prime (an integer to mean a or sеt number not divisible band is intended by any except rings. without remainder number itself concentric unity) greater E.g., than 5. etc. Q subject to ma- Specific Finally, material. embodiments plastic specifica- of the invention set forth procedures in accordance with nipulation belt, tion and claims include specification produce set forth .to hatband, headband, border, skullcap nеck- series of nines. lace, ring, edge, table household device or Appellant digit quo- recommends the 180 utensil, jewelry, and other artifacts. *3 = Q (derived 181), tient from P because its digits integers, generated by mystical quali- is sufficient to lend length at intervals algorithm, displayed equal and of the band manipulation yet ties to the on the outer surface of the band. enough readily imprinted short to be Q, -the se- algorithm generating HAYIM, band. RING OF con- The MAGIC digits of on the is quence imprinted accordance with the structed in specification. also set forth in the claims, as set capable manipulation is of A of P-1 always row nines is divisible specification perform magic forth in the to give Q P to which is an by quotient various of num- display aspects tricks or to integral number. theory. ber Whenever is a smaller numbеr of nines by give quotient divisible P to an integral claims read as follows: Q, always the number will consist of some 1. An educational and recreational nines, integral part fractional of P-1 at least comprising mathematical device may designated which be as to adapted one band which is endless or P-1 an have ends thereof fastened to form ’n and a of individual plurality endless band intеger greater in n is an than which regularly digits imprinted on the band intervals, digits when all read spaced * * * It will be found that the number clockwise as a number con- consecutively Q digits quotient always of will dividing stituting quotient by obtained some fraction of P—1. integral P-1 or a number constituted of * * * 3 P-1 three specification qualities describes n sequence digits Q, subject of to ma- of number nines, prime which P is a in nipulation for recreational or educational at least integer than 5 and n is an greater First, digits “cyclic” have a purposes. 1, end of by adding P and to the lefthand Second, in digits nature.4 the number of zeros neces- any number of quotient said number prime P will fix the maximum digits of in to increase the number sary Q. digits appearing sequence of in in For example, quotient said Q, Q any multiple P is 2 of digits, or P-1 [I]f ’n Q of any multiple variation оf or cyclic Q, any cyclic variation of if reduced n selected that being so aforesaid, of original number P-1 sequence any will never contain any n * * * digits more than once. feature: 4. To illustrate this cyclic simplistically 3. To illustrate: = = (a greater 5); If If P P 7; than prime = = -s- then then 999,999 7; that is Q Q 142,857, = = 142,857. 285,714. Q 2Q the same in each The sequence = If P 13, the smallest number of di- starting nines has shift- number; merely position visible 13 that by yields inte- ed. grаl 6, quotient = -e thus 999,999 Q = 76,923. Q (Note in accordance with the specification, = = = (P-1) .13.) n where n and P is the on, nines minimum number nines [they substrate arranged not are] [do] by quotient divisible P so that said anis require any size relationship of sub- intergral number. strate, require particular [sic] not [do] effectively
2. Device substrate to according convey to claim in the infor- which said band is endless. mation. We are convinced that there is meaningful functional relationship be-
3. Device according to claim appellant’s tween indicia and the claimed which said band comprises an article of band. endless apparel. * * * 4. Device according claim opinion, loop In our the endless which part cap. said band is a hat or formed the hatband with numerical according
6. Device digits printed claim 1 in thereon is the same struc- jewelry. which said band is an article of ture by appellant claimed and the sole difference is in the content the printed *4 B. Accordingly, being material. no rejected relationship printed The examiner claims 1-4 and 6 functional of the ma- on grounds: substrate, two as not directed to statuto- terial to the as we have noted 101; matter, ry subject above, 35 as U.S.C. give § there is no reasons to [sic] Wittcoff,5 unpatentable over 35 U.S.C. patentable weight to the content of the the 103. board reversed section 101 § which, itself, printed by matter is non- rejection, finding that the claims define an subject statutory matter.
article by of manufacture covered 35 U.S.C. 101. § rejection 1 4 and of claims to In rejection, his section 103 the examiner under 35 U.S.C. 103 sustained. § [Em- stаted that the claims differed phasis supplied.] only from Wittcoff in the specific digits printed on the band. The examiner found giving We understand the board as not no relationship appellant’s digits between printed patentable weight the matter be- except and band the band is the sur- cause the board felt that there is no func- face on which the printed. The relationship printed tional examiner cited In re Miller6 for the propo- so, we doing matter and the substrate. In printed sition that matter can not “[m]ere interpret holding do not the board as impart patentable feature to a claim.” printed ignored the matter can be because Flook,7 Applying Parker v. the examiner itself, it, matter. by non-statutory subject applicant’s digits viewed as well known and analyzing authority The board cited no unable, therefore, to define over Wittcoff. lack of a functional the relevance of the
In affirming rejection, the 103 the board printed relationship, or of the status found meaningful relationship matter, no between non-statutory subject as matter the the type band of the indi- printed not to the matter its decision accord cated the court in Miller. Bеcause of the patentable weight. possible Miller, of its ambiguity Unlike the fact of the board’s articulation situation the the printed [convey] holding, compelled clarify indicia claimed herein we feel meaningful regard information in the distinction. Wittcoff, 2,796,680, patent corresponding aperture,
5. E. U.S. No. issued the answer is 1957, 25, “Novelty through aperture June Educational Hats.” the inside of from viеwed Wittcoff discloses a hat with an endless band the hat. having printed in information areas around both the inside and outside of the band. The 418 F.2d In re aperture hat has an at the base of the crown 1969). (Cust. Pat.App. & through which an area of the band is viewed. align any specific The band can be rotated to Flook, 437 U.S. 98 S.Ct. 7. Parker v. aperture. area of information with the When L.Ed.2d inquiry aligned an on the outside of the band is
Differences between an invention , suggest subject to disclose matter prior against claims, and the art cited it cannot be in the recited considered ignored merely because those differences whole, we reverse. in the the printed
reside content of matter.8 The sole is whether the board cor- issue Under section the board cannot dissect rejеction rectly appeal- affirmed the claim, it, printed excise the matter from as obvious in view of Wittcoff ed claims remaining portion and declare the 1Ú3. under 35 U.S.C. § unpatentable. mutilated claim to be claim must If be read as a whole.9 disregard princi
board meant to that basic II. ple interpretation, of claim we must reverse board, responding to appellant’s аr- as a matter of law. guments Miller,11 based In re found no If, instead, the board sought only functional relationship of the type present construe and Miller apply within the con in Miller. rejection, text of a section 103 we find no error board’s articulation of the law. printed
Where the
matter is not functional
A.
substrate,
ly related to the
the printed mat
from the
appeal
Miller
involved
distinguish
ter will not
the invention from
rejection of
board’s affirmance
prior
art
in terms of patentability.10
for use
measuring
to a
device
Although
printed
claims drawn
must be con
*5
sidered,
in that situation it may
recipes.
statutory ground
not be
No
fractioning
in
patentable weight. This,
entitled to
appar
rejec-
rejection
specified.
was
the
ently, was the board’s conclusion with re
that
the
Miller was on the basis
tion in
spect to Gulack’s invention.
required cooperative
“the
invention lacked
the
relationship necessary before
structural
However,
we
because
find that the
given patentable
of Gulack’s
can be
functionally
printed
invention are
relat-
matter
ed to the
because
and
Wittcoff fails weight.”12
“printed
rejection”
8. A
matter
upon
under
103
patentability
§
tions
рredicat-
which
can be
questionable legal
logical
stands on
ed.
foot-
ing. Standing alone,
description
the
of an ele-
9. 35
(1976) specifically
provides
U.S.C.
103
§
printed
ment of the invention as
matter tells
that:
nothing about the differences between the in-
* * *
patent may
“A
not be obtained
if the
prior
vention and the
art or about whether that
subject
differences
sought
matter
suggested by
prior
invention the
art. A
patented
prior
to be
and the
art are such that
printed
matter
is based on case law
subject
the
matter as a whole would have been
antedating
patent act, employing
the 1952
a
obvious at the time the invention was made to
point
novelty approach.
Sterling,
In re
70
person having ordinary
a
skill in the art
910,
(CCPA
F.2d
1934).
21
519
USPQ
The 1952
”
* * *
subject
pertains.
which said
matter
legislatively
act
approach through
revised that
(Emphasis supplied.)
requirement
its
that the claim be viewed as a
Graham,
1,
684,
See
383 U.S.
86 S.Ct.
15
determining
whole in
obviousness. Graham v.
545,
459; Flook,
L.Ed.2d
148
437 U.S. at
USPQ
Co.,
1,
John
684,
Deere
383 U.S.
86 S.Ct.
15
16,
16,
594 n.
weight.” so in claims. III. printed His characterization of matter as and the board Appellant agree “unpatentable” point; is beside the no the sole difference between the appealed attempt is here being patent made to claims Wittcoff resides in content matter as printed such. The fact declined, matter. printed The board printed patentable itself is not however, pat to accord that printed matter matter, subject non-statutory, because weight. entable no reason for ignoring it when claim discloses the application Wittcoff is directed Herе there combination. printed matter to a band. mat- printed is a new and unobvious functional rela- suggested by ter Wittcoff is data that is to tionship receptable, between measuring addition, to memory, be committed such as volumetric indicia indicating thereon vol- subtraction, dates, multiplication, history volume, ume in a certain ratio to actual personages, historical and the like. The legend ratio, indicating and a and in independent, bearing data no di- items judgment our proper- claims * * * rect relation to the other data entries on this ly relationship. define [Em- band. relationship Wittcoff’s original.] phasis Wittcoff data to the band is for purposes The court found that printed matter of display. *6 support and The data must be invention functionally Miller’s related the imprinted on band so that the answer to to the volume and re- measuring device inquiry displayed the on the outer surface rejection. versed the of the when from band visible viewed Witt- through aperture. inside the hat the B. band, an areas yet coff discloses endless the Similarly, in in examining Gulack’s of Wittcoff printed displayed matter on the vention, we find that a relation functional arranged any particular band are not exist ship printed does between the matter sequence. substrate. A and the functional relation ship precise type claims, hand, of the by found the CCPA appealed on the other substrate, in Miller —to size or to type require of or to be particular sequence digits of conveying information about substrate —is the a band. displayed on outside surface of required. not What is the exist required These are related to the in two band ence of differences appealed ways: (1) supports digits; the band the and claims and the prior (2) digits-— art sufficient to estab an sequence there is endless of patentability. lish presence The bare or in a digit residing unique position each holdings 13. The of the United States Court of 14. F.2d at at 48-49. USPQ Appeals Customs and Patent the and of United prece- adopted Court States of Claims were Id. at at 49. Appeals dent in the Court of the Federal for States, Corp. Circuit in South v. United 1368, 1370, (Fed.Cir. F.2d 1982). respect other every digit in an endless skill in ordinary developing algor- the art of Thus, loop. digits exploit applying the the endless ithms and their for product educa- nature purposes, of the band. tional or recreаtional it would have been obvious to the apply algorithm The differences between appealed by displaying the result of its solution on a claims and Wittcoff reside in appellant’s appellant continuous as the disclosed particular of sequence digits Q, in the and patent application. in his The Board cor- sequence digits. derivation of that rectly question аnswered that affirmative- These features are critical to the invention ly- disclosed by the claims. Wittcoff patent The Wittcoff teaches the use of a suggests neither discloses nor fea- either display as an hatband numbers “educa- ture. game-playing Although tional or device.” display there are differences between the IV. appellant’s numbers in invention and their reject We the board’s conclusion Wittcoff, display in it have been would ob- there is no functional relationship between vious from Wittcoff for one of ordinary printed the substrate of the skill in the art who wanted use the relationship claims. Such a does algorithm produced appel- numbers exist and it is different from the relation- purposes, lant’s on a display them contin- ship exhibited by corresрonding ele- Indeed, the appellant’s uous band. one of ments of the Wittcoff find reference. We subordinate claims displays numbers on suggestion ap- cited reference cap. a hat or pellant’s particular sequence Q or display of the on a band or numbers of that sequence. derivation other object permits them to be shown REVERSED. in a particular series without а beginning or end would have been even obvious without FRIEDMAN, Judge, dissenting. Circuit Wittcoff. The numbers can be used for the I would affirm Board’s sus- decision recreational and purposes educational taining inven- claimed appellant merely by arranging claims them tion as obvious under section 103. in a continuous series. do not They need to The appellant’s primary placed claim is for on an ap- “endless band” as the “[a]n educational recreational pellant fact, mathematical In oral argument claimed. device,” namely, upon appellant endless band the same conceded that result which imprinted numbers particu- accomplishes in a his invention could be also ac- lar sequence derived from the application numbers comрlished placing the in a an algorithm. Subordinate claims describe series cube upon continuous or other the band as an article of of a apparel, part even shape, by writing them a circle *7 cap, hat or or an article of jewelry. upon a flat surface. nature precise object placed on which the numbers The algorithm patentable is not and “is importance. only is thus little mat- though treated as it were a part familiar significance ter arrangement that is —the the prior Flook, art.” v. Parker 437 U.S. of the numbers as a continuous series— 584, 592, 2522, 2526, 98 S.Ct. 57 451 L.Ed.2d anyone would have been obvious to ordi- particular Similarly, numbers nary algor- skill art who knew produced by an abstract solution ithm. algorithm claimed, cannot al themselves be though the practicаl application Miller, USPQ of those In In re F.2d numbers may patentable. (Oust. In re as the Pat.App.1969), See & court 789, 215 Meyer, out, (Cust. 688 F.2d & points court determined Pat.App.1982); Abele, In re 684 F.2d was “a new and unobvious functional rela- (Cust. measuring & Pat.App.1982). tionship” recepta- whether, issue under legends section 103 is one of the descriptions cles and case, In the unlike I present them.
do not think that relation- “functional from
ship” resulting between the numbers applicаtion algorithm and their was new display upon the continuous band and unobvious. CARROLL, Petitioner,
Donna
v. DEPARTMENT OF HEALTH AND SERVICES, Respondent.
HUMAN Appeal No. 40-82. of Appeals, United States Court Stone, D.C., ar- Washington, Federal Circuit. William J. gued petitioner. for April Harris, City, argued New York Glenn E. With him on the United States. J. Paul Atty.
briefs were Asst. Gen. McGrath, D.C., Washington, David M. Co- hen, City, Spoon- New York P. Sandra er, Washington, D.C. COWEN, MILLER, Judge,
Before Circuit SMITH, Judge, and Circuit Senior Circuit Judge.
COWEN, Judge. Circuit Senior in this case seeks review of Petitioner Systems the Merit Protec- final decision of Board) (MSPB denying her tion Board increase. We hold within-grade pay we have the Board’s jurisdiction review decision, affirmed. and it is
Background I. appeal, relevant to this
At all times *8 autho- petitioner employed was as a benefit (GS-8) Program rizer at the Southeastern Center, Security Administra- Social Service tion, (SPSC). Birmingham, Alabama She and authoriz- responsible adjusting administered payment of benefits ing Security by the Social Administration,