In re Alappat
U.S. Court of Appeals Federal Circuit
July 29, 1994
33 F.3d 1526, 31 USPQ2d 1545
[Editor's note: This case is discussed in Legal Protection of Digital Information in:
Chapter 5, Section II.B. (A New Clarity: The Alappat Decision),
Chapter 5, Section IV. (Other Ways of Claiming), and
Chapter 5, Section V. (Printed Matter and Computer Software).]
Rich, J., with whom: as to Part I (Jurisdiction): Newman, Lourie, and Rader, JJ., join; Archer, C.J., Nies, and Plager, JJ., concur in conclusion; and Mayer, Michel, Clevenger, and Schall, JJ., dissent; and as to Part II (Merits): Newman, Lourie, Michel, Plager, and Rader, JJ., join; Archer, C.J., and Nies, J., dissent; and Mayer, Clevenger, and Schall, JJ., take no position.
Kuriappan P. Alappat, Edward E. Averill, and James G. Larsen (collectively Alappat) appeal the April 22, 1992, reconsideration decision of the Board of Patent Appeals and Interferences (Board) of the United States Patent and Trademark Office (PTO), Ex Parte Alappat, 23 USPQ2d 1340 (BPAI, 1992), which sustained the Examiner’s rejection of claims 15-19 of application Serial No. 07/149,792 (‘792 application) as being unpatentable under 35 U.S.C. Section 101 (1988).
This court must determine whether the Board’s reconsideration decision constitutes a valid decision over which this court may exercise subject matter jurisdiction pursuant to 28 U.S.C. Section 1295(a)(4)(A) (1988) and 35 U.S.C. Section 141 (1988). As discussed below, the legality of the Board panel which issued the reconsideration decision is in question, thus raising the issue of the validity of the decision itself and consequently our authority to review that decision. Therefore, before addressing the merits, it is appropriate that we first determine that the decision was rendered by a legally constituted panel to ensure that a jurisdictional cloud does not hang over our holding on the merits. See In re Bose Corp., 772 F.2d 866, 869, 227 USPQ 1, 3-4 (Fed. Cir. 1985).1
Although Alappat does not contest the validity of the Board’s reconsideration decision, jurisdiction cannot be conferred on this court by waiver or acquiescence. Coastal Corp. v. United States, 713 F.2d 728, 730 (Fed. Cir. 1983). This court therefore has raised the issue of jurisdiction sua sponte, as is its duty. See Mansfield, Coldwater & Lake Mich. Ry. Co. v. Swan, 111 U.S. 379, 382 (1884); Wyden v. Commissioner of Patents & Trademarks, 807 F.2d 934, 935, 231 USPQ 918, 919 (Fed. Cir. 1986); see also 5 WRIGHT & MILLER, FEDERAL PRACTICE AND PROCEDURE Section 1393 (1990). To this end, this court, having decided to hear the case in banc, issued an Order on December 3, 1992, requesting briefing on the following three questions:
(1) When a three-member panel of the Board has rendered its decision, does the Commissioner have the authority to constitute a new panel for purposes of reconsideration?
(2) If the Commissioner lacks such authority, is the decision of such a new panel a decision of the Board for purposes of 28 U.S.C. Section 1295(a)(4)(A)? If not, does this <33 F.3d 1531> court have jurisdiction to reach the merits of the appealed decision?
(3) What is the relationship, if any, between the “reconsideration” action taken in this case and “rehearings” by the Board provided for in 35 U.S.C. Section 7(b)?
Consistent with our discussion below, we hold that the answer to the first question is yes. Consequently, we need not address the second question. As to the third question, we hold, for the reasons explained later, that the “reconsideration” by the Board was a “rehearing” as provided for in 35 U.S.C. Section 7(b) (1988).
In an Office Action mailed December 5, 1989, the Examiner finally rejected claims 15-19 under 35 U.S.C. Section 101 as being directed to non-statutory subject matter. Alappat appealed this rejection to the Board pursuant to 35 U.S.C. Section 134 (1988), and a three-member panel made up of Examiners-in-Chief Lindquist, Thomas, and Krass reversed the Examiner’s non-statutory subject matter rejection in a decision mailed June 26, 1991. The Examiner then requested reconsideration of this decision, pursuant to section 1214.04 of the Manual of Patent Examining Procedure (MPEP), stating that the panel’s decision conflicted with PTO policy. The Examiner further requested that such reconsideration be carried out by an expanded panel.
An expanded eight-member panel, acting as the Board, granted both of the Examiner’s requests. The expanded panel was made up of PTO Commisioner Manbeck, PTO Deputy Commissioner Comer, PTO Assistant Commissioner Samuels, Board Chairman Serota, Board Vice-Chairman Calvert, and the three members of the original panel. On April 22, 1992, the five new members of the expanded panel issued the majority decision now on appeal, authored by Chairman Serota, in which they affirmed the Examiner’s Section <31 USPQ2d 1547> 101 rejection, thus ruling contrary to the decision of the original three-member panel. The three members of the original panel dissented on the merits for the reasons set forth in their original opinion, which they augmented in a dissenting opinion.
The majority stated that its reconsideration decision was a “new decision” for purposes of requesting reconsideration or seeking court review of that decision. It did not, however, vacate the original three-member panel decision. Instead, the majority indicated that the original, three-member panel decision was only “modified to the extent indicated.” Alappat, 23 USPQ2d at 1347. That “modification” was, however, a de facto reversal of the original panel’s decision, affirming instead of reversing the examiner.
When statutory interpretation is at issue, the plain and unambiguous meaning of a statute prevails in the absence of clearly expressed legislative intent to the contrary. See Mansell v. Mansell, 490 U.S. 581, 592 (1989); Hoechst Aktiengesellschaft v. Quigg, 917 F.2d 522, 526, 16 USPQ2d 1549, 1552 (Fed. Cir. 1990). In this case, the composition of the Board and its authority to reconsider its own decisions, and the Commissioner’s authority over the Board, are governed by 35 U.S.C. Section 7, which reads:
(a) The examiners-in-chief shall be persons of competent legal knowledge and scientific ability, who shall be appointed to the competitive service. The Commissioner, the Deputy Commissioner, the Assistant Commissioners, and the examiners-in-chief shall constitute the Board of Patent Appeals and Interferences.
(b) The Board of Patent Appeals and Interferences shall, on written appeal of an applicant, review adverse decisions of examiners upon applications for patents and shall determine priority and patentability of invention in interferences declared under section 135(a) of this title. Each appeal and interference shall be heard by at least three members of the Board of Appeals and Interferences, who shall be designated by the Commissioner. Only the Board of Patent Appeals and Interferences has the authority to grant rehearings.
35 U.S.C. Section 7 (1988) (emphasis added).
For the reasons set forth below, we hold that Section 7 grants the Commissioner the <33 F.3d 1532> authority to designate the members of a panel to consider a request for reconsideration of a Board decision. This includes, as in this case, the Commissioner designating an expanded panel made up of the members of an original panel, other members of the Board, and himself as such, to consider a request for reconsideration of a decision rendered by that original panel. The Board’s reconsideration decision therefore constituted a valid decision over which this court may exercise subject matter jurisdiction.
At the outset, we note that Section 7 (a) plainly and unambiguously provides that the Commissioner, the Deputy Commissioner, and the Assistant Commissioners are members of the Board. Section 7(b) plainly and unambiguously requires that the Commissioner designate “at least three” Board members to hear each appeal. By use of the language “at least three,” Congress expressly granted the Commissioner the authority to designate expanded Board panels made up of more than three Board members.2 <31 USPQ2d 1548>
There is no evidence in the legislative history of Section 7, or Title 35 as a whole, clearly indicating that Congress intended to impose any statutory limitations regarding which Board members the Commissioner may appoint to an expanded panel or when the Commissioner may convene such a panel.3 The Commissioner thus has the authority to convene an expanded panel which includes, or as in this case is predominately made up of, senior executive officers of the PTO such as the Deputy Commissioner, the Assistant Commissioner, the Board’s Chairman and Vice-Chairman, and himself.4
The focus of the jurisdictional inquiry in this case is the last sentence of Section 7(b) which provides: “Only the Board of Patent Appeals and Interferences has the authority to grant rehearings.” The Commissioner contends that the reconsideration action taken in this case constituted a type of “rehearing” as mentioned in the last sentence of Section 7(b). For the reasons set forth below, we find the Commissioner’s interpretation of Section 7 <33 F.3d 1533> to be a reasonable one entitled to deference, given that neither the statute itself nor the legislative history thereof indicates Congressional intent to the contrary.
We interpret the term “rehearings” in Section 7 as encompassing any reconsideration by the Board of a decision rendered by one of its panels. The fact that Section 7 refers to “rehearings” whereas 37 C.F.R. 1.197 (PTO Rule 197)5 refers to “reconsideration” is of no significance. The differing terminology appears to be nothing more than the result of imprecise regulation drafting.6 We have been unable to find any evidence suggesting that, in promulgating Rule 197, the PTO intended to create a review process separate and distinct from that provided by statute. In addition, our interpretation finds support in In re Schmidt, 377 F.2d 639, 641, 153 USPQ 640, 642 (CCPA 1967), wherein the CCPA accepted, without criticism, the PTO’s treatment of a Board reconsideration pursuant to Rule 197, on an examiner’s request, as a “rehearing” provided for in Section 7(b).7
We also interpret the Commissioner’s express statutory authority to designate the <31 USPQ2d 1549> members of a panel hearing an appeal as extending to designation of a panel to consider a request for a rehearing pursuant to Section 7(b).8 There is no indication to the contrary in the statute, and we have found no legislative history indicating a clear Congressional intent that the Commissioner’s authority to designate the members of a Board panel be limited to the designation of an original panel or that the Board be limited to exercising its rehearing authority only through the panel which rendered an original decision. In those cases where a different <33 F.3d 1534> panel of the Board is reconsidering an earlier panel decision, the Board is still the entity reexamining that earlier decision; it is simply doing so through a different panel.
The last sentence of Section 7(b) is nothing more than an exclusionary statement vesting the Board with the sole authority to grant a rehearing. Thus, for example, the Commissioner cannot personally grant a rehearing, notwithstanding the general authority that he has over the operation of the PTO. For a general history of the Board and of appeals within and from the PTO, see Michael W. Blommer, The Board of Patent Appeals and Interferences, AIPLA Bulletin 188 (1992), P.J. Federico, The Board of Appeals 1861-1961, 43 JPOS 691 (1961), and Evolution of Patent Office Appeals, 22 JPOS 838-64, 920-49 (1940).
The predecessor of Section 7 was section 482 of the Revised Statutes, as amended by the Act of March 2, 1927. The 1927 Act added to the Board the Commissioner, the First Assistant Commissioner, and the Assistant Commissioner. It also eliminated the right of an applicant to appeal to the Commissioner from an adverse Board decision, by adding to the statute the language “ [t]he the Board of Appeals shall have sole power to grant rehearings,” essentially the same provision as in today’s Section 7(b). Act of March 2, 1927, ch. 273, Section 3, 44 Stat. 1335. Prior to this amendment, the Commissioner acted on petitions for rehearing of adverse Board decisions. Through this amendment, Congress effectively eliminated the onerous burden placed on the Commissioner regarding reviewing such appeals, instead steering applicants to the Board with such requests.
The events surrounding the enactment of the 1927 Act do not indicate any Congressional intent to lessen the great supervisory power that the Commissioner possessed over the PTO prior to that Act.9 Indeed, at the end of the 1926 House and Senate hearings during which the last sentence of what is now Section 7(b) was discussed, the Senate Committee on Patents concluded:
One lawyer [remarks of Fenning, chairman of the committee on laws and rules of the American Patent Law Association, Procedure in the Patent Office, Hearing on S. 4812 Before the Committee on Patents, United States Senate, 69th Con. 2d Sess. 19, 21-22 (1926)] has expressed the fear that in providing in lines 16-17, page 2 (sec. 482) [the precursor to section 7(b)], that the board of appeals shall have the sole power to grant “rehearings,” the bill may lessen the present supervisory power of the commissioner, but it was agreed by the other lawyers at the hearing, and the Committee on Patents concurs in this view, that the supervisory power of the commissioner, as it has existed for a number of decades, remains unchanged by the bill.
S. Rep. No. 1313, 69th Cong., 2d Sess. 4 (1927) (emphasis added). Fenning expressed <31 USPQ2d 1550> the same concerns to the House Committee on Patents. 1926 House Hearing at 22-23. The House Committee Report, H.R. No. 1889, 69th Cong., 2d Sess. (1927), is silent on the issue, thus suggesting that the House did not intend to give the last sentence of Section 7(b) a different meaning than was ascribed to it by the Senate. We believe the foregoing illustrates the lack of intent on the part of Congress in enacting the last sentence of Section 7(b) to place any limitations on the Commissioner’s ability to designate Board panels, including Board panels for “rehearing” purposes.
Our holding is consistent with the broad supervisory authority that Congress has granted the Commissioner under <33 F.3d 1535> Title 35 regarding the operation of the PTO. Exemplary thereof is Section 6(a), which reads in pertinent part:
The Commissioner, under the direction of the Secretary of Commerce, shall superintend or perform all duties required by law respecting the granting and issuing of patents.
35 U.S.C. Section 6(a) (1988) (emphasis added). The Commissioner also may establish regulations not inconsistent with the law, with the approval of the Secretary of Commerce, 35 U.S.C. Section 6 (1988), cause an examination to be made of an application, 35 U.S.C. Section 131 (1988), declare an interference, 35 U.S.C. Section 135 (1988), and issue a patent when authorized by law, 35 U.S.C. Sections 131, 145 (1988), 151 (1988), 153 (1988).
Moreover, the Commissioner is not bound by a Board decision that an applicant is entitled to a patent. Only a court can order the Commissioner to act, not the Board. Even though Board members serve an essential function, they are but examiner-employees of the PTO, and the ultimate authority regarding the granting of patents lies with the Commissioner.10 For example, if the Board rejects an application, the Commissioner can control the PTO’s position in any appeal through the Solicitor of the PTO; the Board cannot demand that the Solicitor attempt to sustain the Board’s position. Conversely, if the Board approves an application, the Commissioner has the option of refusing to sign a patent; an action which would be subject to a mandamus action by the applicant. The Commissioner has an obligation to refuse to grant a patent if he believes that doing so would be contrary to law. The foregoing evidences that the Board is merely the highest level of the Examining Corps, and like all other members of the Examining Corps, the Board operates subject to the Commissioner’s overall ultimate authority and responsibility.
One also should not overlook the asymmetry of Section 141, which grants applicants, but not the Commissioner, the right to appeal a decision of the Board to this court. Since Congress has reenacted Section 141 several times since the 1927 debates about the Board’s independence, see 1926 House Hearing at 22-29, it is safe to infer that Congress believed the Commissioner did not need a right of appeal in view of his limited control over the Board pursuant to Section 7 and in view of his rulemaking authority pursuant to Section 6(a).
Contrary to suggestions by Amicus Curiae Federal Circuit Bar Association (FCBA), our holding does not conflict with this court’s previous statements in Animal Legal Defense Fund v. Quigg, 932 F.2d 920, 928-29, 18 USPQ2d 1677, 1684 (Fed. Cir. 1991), that the Board is not the alter ego or agent of the Commissioner. In that case, this court merely pointed out that the Board derives its adjudicatory authority from a statutory source independent of the Commissioner’s rulemaking authority, and that, although the Commissioner may sit on the Board, “in that capacity he serves as any other member.” Animal Legal Defense Fund, 932 F.2d at 929 n.10, 18 USPQ2d at 1684 n.10. In other words, the Commissioner has but one vote on any panel on which he sits, and he may not control the way any individual member of a Board panel votes on a particular matter. However, the present statutory scheme does allow the Commissioner to determine the composition of Board panels, and thus he may convene a Board panel which he knows or hopes will render the decision he desires, even upon rehearing, as he appears to have done in this case.
Such a result does not reduce the Board to an alter ego or agent of the Commissioner. To the contrary, the fact remains that the Commissioner may not unilaterally overturn a decision of a Board panel or instruct other <31 USPQ2d 1551> Board members how to vote. The Commissioner’s limited control in this <33 F.3d 1536> manner over the Board and the decisions it issues is not offensive to Title 35 as a whole, given that Congress clearly did not intend the Board to be independent of any and all oversight by the Commissioner. See e.g. Lindberg v. Brenner, 399 F.2d 990, 992-93, 158 USPQ 380, 381-82 (D.C. 1968). The plain and unambiguous wording of Section 7 intertwining the powers of the Board and the Commissioner clearly indicates that Congress did not intend the Board to have such complete independence.
Amicus Curiae FCBA suggests that the Commissioner’s redesignation practices in this case violated Alappat’s due process rights, citing Utica Packing Co. v. Block, 781 F.2d 71 (6th Cir. 1986). In addition, an issue was raised at oral argument as to whether the Commissioner’s designation practices are governed by any provisions of the Administrative Procedure Act (APA), and if so, whether the Commissioner’s actions in this case violated any of these provisions. We need not address either of these issues.
The FCBA does not have standing to make a due process argument, see Broadrick v. Oklahoma, 413 U.S. 601, 610 (1973) (“constitutional rights are personal and may not be asserted vicariously”) and United Parcel Service, Inc. v. Mitchell, 451 U.S. 56, 60 n.2 (1981) (amicus may not rely on new arguments not presented below), and Alappat has waived any due process argument by acquiescing to the Commissioner’s actions in this case. Thus, there is no case or controversy before this court with respect to any alleged due process violation. There also is no case or controversy as to whether the Commissioner’s actions in this case violated any provision of the APA, given that Alappat does not contest these actions, and this is not an issue which this court may raise sua sponte. Moreover, neither of these issues is germane to the jurisdictional issue this court raised sua sponte, i.e., whether the Board’s reconsideration decision constituted a statutorily valid decision under 35 U.S.C. Section 141 over which this court may exercise subject matter jurisdiction pursuant to 28 U.S.C. Section 1294(a)(4)(A).
Finally, we acknowledge the considerable debate and concern among the patent bar and certain Board members regarding the Commissioner’s limited ability to control Board decisions through his authority to designate Board panels.11 Our responsibility, however, is merely to adjudge whether the Commissioner’s designation practices as they were applied in this particular case resulted in a valid decision over which this court may exercise subject matter jurisdiction, not to assess whether they were sound from a public policy standpoint. We leave to the legislature to determine whether any restrictions should be placed on the Commissioner’s authority in this regard. Absent any congressional intent to impose such restrictions, we decline to do so sua sponte.
Our conclusion is that the appealed decision should be reversed because the appealed claims are directed to a “machine” which is one of the categories named in 35 U.S.C. Section l0l, as the first panel of the Board held.<33 F.3d 1537>
Alappat’s invention relates generally to a means for creating a smooth waveform display in a digital oscilloscope. The screen of an oscillosope is the front of a cathode-ray tube (CRT), which is like a TV picture tube, whose screen, when in operation, presents an array (or raster) of pixels arranged at intersections of vertical columns and horizontal rows, a pixel being a spot on the screen which may be illuminated by directing an electron beam to that spot, as in TV. Each column in the array represents a different time period, <31 USPQ2d 1552> and each row represents a different magnitude. An input signal to the oscilloscope is sampled and digitized to provide a waveform data sequence (vector list), wherein each successive element of the sequence represents the magnitude of the waveform at a successively later time. The waveform data sequence is then processed to provide a bit map, which is a stored data array indicating which pixels are to be illuminated. The waveform ultimately displayed is formed by a group of vectors, wherein each vector has a straight line trajectory between two points on the screen at elevations representing the magnitudes of two successive input signal samples and at horizontal positions representing the timing of the two samples.
Because a CRT screen contains a finite number of pixels, rapidly rising and falling portions of a waveform can appear discontinuous or jagged due to differences in the elevation of horizontally contiguous pixels included in the waveform. In addition, the presence of “noise” in an input signal can cause portions of the waveform to oscillate between contiguous pixel rows when the magnitude of the input signal lies between values represented by the elevations of the two rows. Moreover, the vertical resolution of the display may be limited by the number of rows of pixels on the screen. The noticeability and appearance of these effects is known as aliasing.
To overcome these effects, Alappat’s invention employs an anti-aliasing system wherein each vector making up the waveform is represented by modulating the illumination intensity of pixels having center points bounding the trajectory of the vector. The intensity at which each of the pixels is illuminated depends upon the distance of the center point of each pixel from the trajectory of the vector. Pixels lying squarely on the waveform trace receive maximum illumination, whereas pixels lying along an edge of the trace receive illumination decreasing in intensity proportional to the increase in the distance of the center point of the pixel from the vector trajectory. Employing this anti-aliasing technique eliminates any apparent discontinuity, jaggedness, or oscillation in the waveform, thus giving the visual appearance of a smooth continuous waveform. In short, and in lay terms, the invention is an improvement in an oscilloscope comparable to a TV having a clearer picture.
Reference to Fig. 5A of the ‘792 application, reproduced below, better illustrates the manner in which a smooth appearing waveform is created.
<33 F.3d 1538> [Figure omitted.]
Each square in this figure represents a pixel, and the intensity level at which each pixel is illuminated is indicated in hexadecimal notation by the number or letter found in each square. Hexadecimal notation has sixteen characters, the numbers 0-9 and the letters A-F, wherein A represents 10, B represents 11, C represents 12, D represents 13, E represents 14, and F represents 15. The intensity at which each pixel is illuminated increases from 0 to F. Accordingly, a square with a 0 (zero) in it represents a pixel having no illumination, and a square with an F in it represents a pixel having maximum illumination. Although hexadecimal notation is used in the figure to represent intensity illumination, the intensity level is stored in the bit map of Alappat’s system as a 4-bit binary number, with 0000 representing a pixel having no illumination and 1111 representing a pixel having maximum illumination.
Points 54 and 52 in Fig. 5A represent successive observation points on the screen of an oscilliscope. Without the benefit of Alappat’s anti-aliasing system, points 54 and 52 would appear on the screen as separate, unconnected spots. In Alappat’s system, the different intensity level at which each of the pixels is illuminated produces the appearance of the line 48, a so-called vector.
The intensity at which each pizel is to be illuminated is determined as follows, using pizel 55 as an example. First, the vertical distance between the Y coordinates of observation points 54 and 52 ( Yi) is determined. In this example, this difference equals 7 units, with one unit representing the center-to-center distance of adjacent pixels. Then, the elevation of pixel 55 above pixel 54 ( Yij) is determined, which in this case is 2 units. The Yi and Yij values are then “normalized,” which Alappat describes as converting these values to larger values which are easier to use in mathematical calculations. In Alapat’s example, a barrel shifter is used to shift the binary input to the left by the number of bits required to set the most significant (left-<31 USPQ2d 1553> most) bit of its output signal to “1.” The Yi and Yij values are then plugged into a mathematical equation for determining the intensity at which the particular pixel is to be illuminated. In this particular example, the equation I’(i,j) = [1 - ( Yij / Yi)] F, wherein F is 15 in hexadecimal notation, suffices. The intensity of pixel 55 in this example would thus be caultated as follows: [1-(2/7)]15 = (5/7)15 = 10.71 = 11 (or B).
Accordingly, pixel 55 is illuminated at 11/15 of the intensity of the pixels in which observation points 54 and 52 lie. Alappat discloses that the particular formula used will vary depending on the shape of the waveform.
Claim 15, the only independent claim in issue, reads:
A rasterizer for converting vector list data representing sample magnitudes of an <33 F.3d 1539> input waveform into anti-aliased pixel illumination intensity data to be displayed on a display means comprising:
(a) means for determining the vertical distance between the endpoints of each of the vectors in the data list;
(b) means for determining the elevation of a row of pixels that is spanned by the vector;
(c) means for normalizing the vertical distance and elevation; and
(d) means for outputting illumination intensity data as a predetermined function of the normalized vertical distance and elevation.
Each of claims 16-19 depends directly from claim 15 and more specifically defines an element of the rasterizer claimed therein. Claim 16 recites that means (a) for determining the vertical distance between the endpoints of each of the vectors in the data list, described above, comprises an arithmetic logic circuit configured to perform an absolute value function. Claim 17 recites that means (b) for determining the elevation of a row of pixels that is spanned by the vector, j described above, comprises an arithmetic logic circuit configured to perform an absolute value function. Claim 18 recites that means (c) for normalizing the vertical distance and elevation comprises a pair of barrel shifters. Finally, claim 19 recites that means (d) for outputting comprises a read only memory (ROM) containing illumination intensity data. As the first Board panel found, each of (a)-(d) was a device known in the electronics arts before Alappat made his invention.
The Examiner’s final rejection of claims 15-19 was under 35 U.S.C. Section 101 “because the claimed invention is non statutory subject matter,” and the original three-member Board panel reversed this rejection. That Board panel held that, although claim 15 recites a mathematical algorithm, the claim as a whole is directed to a machine and thus to statutory subject matter named in Section 101. In reaching this decision, the original panel construed the means clauses in claim 15 pursuant to 35 U.S.C. Section 112, paragraph six (Section 112 Para. 6), as corresponding to the respective structures disclosed in the specification of Alappat’s application, and equivalents thereof.
In its reconsideration decision, the fivemember majority of the expanded, eight-member Board panel “modified” the decision of the original panel and affirmed the Examiner’s Section l0l rejection. The majority held that the PTO need not apply Section 112 Para. 6 in rendering patentability determinations, characterizing this court’s statements to the contrary in In re Iwahashi, 888 F.2d 1370, 1375, 12 USPQ2d 1908, 1912 (Fed. Cir. 1989), “as dicta,” and dismissing this court’s discussion of Section 112 Para. 6 in Arrhythmia Research Technology, Inc. v. Corazonix Corp., 958 F.2d 1053, 1060, 22 USPQ2d 1033, 1038 (Fed. Cir. 1992) on the basis that the rules of claim construction in infringement actions differ from the rules for claim interpretation during prosecution in the PTO. The majority stated that, during examination, the PTO gives means-plus-function clauses in claims their broadest interpretation and does not impute limitations from the specification into the claims. See Applicability of the Last Paragraph of 35 USC Section 112 to Patentability Determinations Before the Patent and Trademark Office, 1134 TMOG 633 (1992); Notice Interpreting In Re Iwahashi (Fed. Cir. 1989), 1112 OG 16 (1990). Accordingly, the majority held that each of the means recited in claim 15 reads on any and every means for performing the particular function recited.
The majority further held that, because claim 15 is written completely in “means for” language and because these means clauses are read broadly in the PTO to encompass each and every means for performing the recited functions, claim 15 amounts <31 USPQ2d 1554> to nothing more than a process claim wherein each means clause represents only a step in that process. The majority stated that each of the steps in this postulated process claim recites a mathematical operation, which steps combine to form a “mathematical algorithm for computing pixel information,” Alappat, 23 USPQ2d at 1345, and that, “when the claim is viewed without the steps of this mathematical algorithm, no other elements or steps are <33 F.3d 1540> found.” Alappat, 23 USPQ2d at 1346. The majority thus concluded that the claim was directed to nonstatutory subject matter.12
In its analysis, the majority further stated:
It is further significant that claim 15, as drafted, reads on a digital computer “means” to perform the various steps under program control. In such a case, it is proper to treat the claim as if drawn to a method. We will not presume that a stored program digital computer is not within the Section 112 Para. 6 range of equivalents of the structure disclosed in the specification. The disclosed ALU, ROM and shift registers are all common elements of stored program digital computers. Even if appellants were willing to admit that a stored program digital computer were not within the range of equivalents, Section 112 Para. 2 requires that this be clearly apparent from the claims based upon limitations recited in the claims.
Alappat, 23 USPQ2d at 1345.13 The Board majority also stated that dependent claims 16-19 were not before them for consideration because they had not been argued by Alappat and thus not addressed by the Examiner or the original three-member Board panel. Alappat, 23 USPQ2d at 1341 n.1.14
As recently explained in In re Donaldson, 16 F.3d ll89, 1193, 29 USPQ2d 1845, 1050 (Fed. Cir. 1994), the PTO is not exempt from following the statutory mandate of Section 112 Para. 6, which reads:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
35 U.S.C. Section 112, paragraph 6 (1988) (emphasis added).15 The Board majority therefore erred as a matter of law in refusing to apply Section 112 Para. 6 in rendering its Section 101 patentable subject matter determination.
Given Alappat’s disclosure, it was error for the Board majority to interpret each of the means clauses in claim 15 so broadly as to “read on any and every means for performing the functions” recited, as it said it was doing, and then to conclude that claim 15 is nothing more than a process claim wherein each means clause represents a step in that process. Contrary to suggestions by the Commissioner, this court’s precedents do not support the Board’s view that the particular apparatus claims at issue in this case may be viewed as nothing more than process claims. The cases relied upon by the Commissioner, namely, In re Abele, 684 F.2d 902, 214 USPQ 682 (CCPA 1982), In re Pardo, 684 F.2d 912, 214 USPQ 673 (CCPA 1982), In re Meyer, 688 F.2d 789, 215 USPQ 193 (CCPA 1982), In re Walter, 618 F.2d 758, 205 USPQ 397 (CCPA 1980), and In re Maucorps, <33 F.3d 1541> 609 F.2d 481, 203 USPQ 812 (CCPA 1979), differ from the instant case. In Abele, Pardo, and Walter, <31 USPQ2d 1555> given the apparent lack of any supporting structure in the specification corresponding to the claimed “means” elements, the court reasonably concluded that the claims at issue were in effect nothing more than process claims in the guise of apparatus claims. This is clearly not the case now before us. As to Maucorps and Meyer, despite suggestions therein to the contrary, the claimed means-plus-function elements at issue in those cases were not construed as limited to those means disclosed in the specification and equivalents thereof. As reaffirmed in Donaldson, such claim construction is improper, and therefore, those cases are of limited value in dealing with the issue presently before us. We further note that Maucorpsdealt with a business methodology for deciding how salesmen should best handle respective customers and Meyer involved a “system” for aiding a neurologist in diagnosing patients. Clearly, neither of the alleged “inventions” in those cases falls within any Section 101 category.
When independent claim 15 is construed in accordance with Section 112 Para. 6, claim 15 reads as follows, the subject matter in brackets representing the structure which Alappat discloses in his specification as corresponding to the respective means language recited in the claims:
A rasterizer [a “machine”] for converting vector list data representing sample magnitudes of an input waveform into anti-aliased pixel illumination intensity data to be displayed on a display means comprising:
(a) [an arithmetic logic circuit configured to perform an absolute value function, or an equivalent thereof] for determining the vertical distance between the endpoints of each of the vectors in the data list;
(b) [an arithmetic logic circuit configured to perform an absolute value function, or an equivalent thereof] for determining the elevation of a row of pixels that is spanned by the vector;
(c) [a pair of barrel shifters, or equivalents thereof] for normalizing the vertical distance and elevation; and
(d) [a read only memory (ROM) containing illumination intensity data, or an equivalent thereof] for outputting illumination intensity data as a predetermined function of the normalized vertical distance and elevation.
As is evident, claim 15 unquestionably recites a machine, or apparatus, made up of a combination of known electronic circuitry elements.
Despite suggestions by the Commissioner to the contrary, each of dependent claims 16-19 serves to further limit claim 15. Section 112 Para. 6 requires that each of the means recited in independent claim 15 be construed to cover at least the structure disclosed in the specification corresponding to the “means.” Each of dependent claims 16-19 is in fact limited to one of the structures disclosed in the specification.
The reconsideration Board majority affirmed the Examiner’s rejection of claims 15-19 on the basis that these claims are not directed to statutory subject matter as defined in Section 101, which reads:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title. [Emphasis ours.]
As discussed in section II.D.(1), supra, claim 15, properly construed, claims a machine, namely, a rasterizer “for converting vector list data representing sample magnitudes of an input waveform into anti-aliased pixel illumination intensity data to be displayed on a display means,” which machine is made up of, at the very least, the specific structures disclosed in Alappat’s specification corresponding to the means-plus-function elements (a)-(d) recited in the claim. According to Alappat, the claimed rasterizer performs the same overall function as prior art rasterizers,16 but does so in a different way, <33 F.3d 1542> which is represented by the combination of four elements claimed in means-plus-function terminology.17 Because claim 15 is directed to a “machine,” which is one of the four categories of patentable subject matter enumerated in Section 101, claim 15 appears on its face to be directed to Section 101 subject matter.
This does not quite end the analysis, however, because the Board majority argues that the claimed subject matter falls within a judicially created exception to Section 101 which the majority refers to as the “mathematical algorithm” exception. Although the PTO has failed to support the premise that the “mathematical algorithm” exception applies <31 USPQ2d 1556> to true apparatus claims, we recognize that our own precedent suggests that this may be the case. See In re Johnson, 589 F.2d 1070, 1077, 200 USPQ 199, 206 (CCPA 1978) (“ Benson [referring to Gottschalk v. Benson, 409 U.S. 63 [175 USPQ 548] (1972)] applies equally whether an invention is claimed as an apparatus or process, because the form of the claim is often an exercise in drafting.”). Even if the mathematical subject matter exception to Section 101 does apply to true apparatus claims, the claimed subject matter in this case does not fall within that exception.
The plain and unambiguous meaning of Section 101 is that any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may be patented if it meets the requirements for patentability set forth in Title 35, such as those found in Sections 102, 103, and 112. The use of the expansive term “any” in Section 101 represents Congress’s intent not to place any restrictions on the subject matter for which a patent may be obtained beyond those specifically recited in Section 101 and the other parts of Title 35. Indeed, the Supreme Court has acknowledged that Congress intended Section 101 to extend to “anything under the sun that is made by man.” Diamond v. Chakrabarty, 447 U.S. 303, 309 [206 USPQ 193] (1980), quoting S. Rep. No. 1979, 82nd Cong., 2nd Sess., 5 (1952); H.R. Rep. No. 1923, 82nd Cong., 2nd Sess., 6 (1952). Thus, it is improper to read into Section 101 limitations as to the subject matter that may be patented where the legislative history does not indicate that Congress clearly intended such limitations. See Chakrabarty, 447 U.S. at 308 (“We have also cautioned that courts ‘should not read into the patent laws limitations and conditions which the legislature has not expressed.’ “), quoting United States v. Dubilier Condenser Corp., 289 U.S. 178, 199 [17 USPQ 154] (1933).
Despite the apparent sweep of Section 101, the Supreme Court has held that certain categories of subject matter are not entitled to patent protection. In Diehr, its most recent case addressing Section 101, the Supreme Court explained that there are three categories of subject matter for which one may not obtain patent protection, namely “laws of nature, natural phenomena, and abstract ideas.” Diehr, 450 U.S. at 185.18 Of relevance <33 F.3d 1543> to this case, the Supreme Court also has held that certain mathematical subject matter is not, standing alone, entitled to patent protection. See Diehr, 450 U.S. 175 [209 USPQ 1]; Parker v. Flook, 437 U.S. 584 [198 USPQ 193]; Gottschalk v. Benson, 409 U.S. 63 [175 USPQ 548].19 A close analysis of Diehr, Flook, and Benson reveals that the Supreme Court never intended to create an overly broad, fourth category of subject matter excluded from Section 101. Rather, at the core of the Court’s analysis in each of these cases lies an attempt by the Court to explain a rather straightforward concept, namely, that certain types of mathematical subject matter, standing alone, represent nothing more than abstract ideas until reduced to some <31 USPQ2d 1557> type of practical application, and thus that subject matter is not, in and of itself, entitled to patent protection.20
Diehr also demands that the focus in any statutory subject matter analysis be on the claim as a whole. Indeed, the Supreme Court stated in Diehr:
[W]hen a claim containing a mathematical formula [, mathematical equation, mathematical algorithm, or the like,] implements or applies that formula [, equation, algorithm, or the like,] in a structure or process which, when considered as a whole, is performing a function which the patent laws were designed to protect (e.g., transforming or reducing an article to a different state or thing), then the claim satisfies the requirements of Section 101.
Diehr, 450 U.S. at 192 (emphasis added). In re Iwahashi, 888 F.2d at 1375, 12 USPQ2d at 1911; In re Taner, 681 F.2d 787, 789, 214 USPQ 678, 680 (CCPA 1982). It is thus not necessary to determine whether a claim contains, as merely a part of the whole, any mathematical subject matter which standing alone would not be entitled to patent protection. Indeed, because the dispositive inquiry is whether the claim as a whole is directed to statutory subject matter, it is irrelevant that a claim may contain, as part of the whole, subject matter which would not be patentable by itself.21 “A claim <33 F.3d 1544> drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula, [mathematical equation, mathematical algorithm,] computer program or digital computer.” Diehr, 450 U.S. at 187.
Given the foregoing, the proper inquiry in dealing with the so called mathematical subject matter exception to Section 101 alleged herein is to see whether the claimed subject matter as a whole is a disembodied mathematical concept, whether categorized as a mathematical formula, mathematical equation, mathematical algorithm, or the like, which in essence represents nothing more than a “law of nature,” “natural phenomenon,” or “abstract idea.” If so, Diehr precludes the patenting of that subject matter. That is not the case here.
Although many, or arguably even all,22 of the means elements recited in claim 15 represent circuitry elements that perform mathematical calculations, which is essentially true of all digital electrical circuits, the claimed invention as a whole is directed to a combination of interrelated elements which combine to form a machine for converting discrete waveform data samples into anti-aliased pixel illumination intensity data to be displayed on a display means.23 This is not a disembodied mathematical concept which may be characterized as an “abstract idea,” but rather a specific machine to produce a useful, concrete, and tangible result. <31 USPQ2d 1558>
The fact that the four claimed means elements function to transform one set of data to another through what may be viewed as a series of mathematical calculations does not alone justify a holding that the claim as a whole is directed to nonstatutory subject matter. See In re Iwahashi, 888 F.2d at 1375, 12 USPQ2d at 1911.24 Indeed, claim 15 as written is not “so abstract and sweeping” that it would “wholly pre-empt” the use of any apparatus employing the combination of mathematical calculations recited therein. See Benson, 409 U.S. at 68-72 (1972). Rather, claim 15 is limited to the use of a particularly claimed combination of elements performing the particularly claimed combination of calculations to transform, i.e., rasterize, digitized waveforms (data) into anti-aliased, pixel illumination data to produce a smooth waveform.
Furthermore, the claim preamble’s recitation that the subject matter for which Alappat seeks patent protection is a rasterizer for creating a smooth waveform is not a mere field-of-use label having no significance. Indeed, the preamble specifically recites that the claimed rasterizer converts waveform data into output illumination data for a display, and the means elements recited in the body of the claim make reference not only to the inputted waveform data recited in the preamble but also to the output illumination data also recited in the preamble. Claim 15 thus defines a combination of elements constituting a machine for producing an anti-aliased waveform.
The reconsideration Board majority also erred in its reasoning that claim 15 is unpatentable merely because it “reads on a general purpose digital computer ‘means’ to perform the various steps under program control.”25 <33 F.3d 1545> Alappat, 23 USPQ2d at 1345. The Board majority stated that it would “not presume that a stored program digital computer is not within the Section 112 Para. 6 range of equivalents of the structure disclosed in the specification.”26 Alappat, 23 USPQ2d at 1345. Alappat admits that claim 15 would read on a general purpose computer programmed to carry out the claimed invention, but argues that this alone also does not justify holding claim 15 unpatentable as directed to nonstatutory subject matter. We agree. We have held that such programming creates a new machine, because a general purpose computer in effect becomes a special purpose computer once it is programmed to perform particular functions pursuant to instructions from program software. In re Freeman, 573 F.2d 1237, 1247 n.11, 197 USPQ 464, 472 n.11 (CCPA 1978); In re Noll, 545 F.2d 141, 148, 191 USPQ 721, 726 (CCPA 1976); In re Prater, 415 F.2d at 1403 n.29, 162 USPQ at 549 n.29.
Under the Board majority’s reasoning, a programmed general purpose computer could never be viewed as patentable subject matter under Section 101. This reasoning is without basis in the law. The Supreme Court has never held that a programmed computer may never be entitled to patent protection. Indeed, the Benson court specifically stated that its decision therein did not preclude “a patent for any program servicing a computer.” Benson, 409 U.S. at 71. Consequently, a computer operating pursuant to software may represent patentable subject matter, provided, of course, that the claimed subject matter meets all of the other requirements of Title 35. In any case, a computer, like a rasterizer, is apparatus not mathematics.
For the foregoing reasons, the appealed decision of the Board affirming the examiner’s rejection is
REVERSED.
Archer, C.J.,1 with whom NIES, J., joins, concurring in part and dissenting in part.
None of the parties has challenged at any time the legality of the composition of the board, and, in fact, both parties to this appeal defend the procedure by which the <31 USPQ2d 1559> board was composed. According to our precedent and that of the Supreme Court, a challenge to the validity of the board’s composition is a procedural matter that can be waived by the parties. It is not a “jurisdictional” matter. But even if some sua sponte jurisdictional inquiry into the composition of the board were permissible, it must be strictly limited to the single question whether 35 U.S.C. Section 7 has been clearly contravened.
Because we should not be deciding the so-called issue of “jurisdiction” at all in this case, and alternatively because I am not persuaded that the statute clearly has been violated, I concur in the conclusion of the majority that Alappat’s appeal is from a final decision of the board within the meaning of our jurisdictional statute, 28 U.S.C. Section 1295(a)(4)(A); see also 35 U.S.C. Section 141, and that therefore the merits of Alappat’s2 appeal are properly before us for disposition.
Issues arising out of the combination of adjudicative and administrative functions within a single administrative agency, such <33 F.3d 1546> as partiality of adjudicative officers and unfairness to parties, are by no means uncommonly litigated. See S. Breyer & R. Stewart, Administrative Law and Regulatory Policy 815-900 (3d ed. 1992); C. Koch, Administrative Practice and Procedure 324-75 (2d ed. 1991). Here, two questions have been raised arising out of such a combination of functions: (1) may an expanded panel of members of the Board of Patent Appeals and Interferences, designated by the Commissioner of Patents and Trademarks, grant an examiner’s petition for reconsideration; and (2) may that expanded panel rehear an appeal and render a decision thereon?
What makes this case unusual, however, is that only the court has raised these questions. The Patent and Trademark Office rendered what it viewed to be final action on Alappat’s appeal in his application for a patent – rejection of claims 15-19 – and Alappat and the Commissioner both desire judicial resolution of whether this action was correct on the merits. Regardless of our view, the party appealing from the agency action does not feel at all that the agency gave him inadequate process.3
Administrative agencies’ sole source of power to act is statutory; therefore any unlawful act of an administrative agency is in a sense performed without jurisdiction. But not every act of the Commissioner or the board that might possibly be contrary to a constitutional, statutory, or regulatory provision raises a jurisdictional matter that must be addressed in every case.
Beyond any constitutional restraints, there is good reason not to decide the procedural issues that are not disputed by the parties. Where the parties have not challenged the agency’s action, and when asked, both parties argue to support it, the court lacks the benefit of advocacy that a controversy otherwise engenders and should proceed with caution in setting out any very-broad rules. In addition, the agency has not been given an opportunity to resolve or consider the challenge in the first instance, and this court might be condemning the agency for action which, had objection been raised, it might not have taken or done differently.
Precedent precludes us from holding that the composition of the agency’s board is illegal where none of the parties has raised the issue. Therefore, we need not and should not address whether the board was composed according to law.
In United States v. L.A. Tucker Truck Lines, Inc., 344 U.S. 33 (1952), the Supreme Court held that a decision of the Interstate Commerce Commission rendered by an invalidly appointed hearing examiner was not an error “which deprives the Commission of power or jurisdiction, so that even in the absence of timely objection its order should be set aside as a nullity.” 344 U.S. at 38. The Supreme Court cautioned: “ [C]ourts should not topple over administrative decisions unless the administrative body not only has erred but has erred against objection made at the time appropriate under its practice.” Id.at 37. Tucker Truck Lines has recently been interpreted by Justice Scalia as holding “that, in the administrative context, the use of unauthorized personnel to conduct a hearing . . . would not justify reversal of the agency decision where no objection was lodged before the agency itself.”Freytag v. Commissioner of Internal Revenue, 501 <31 USPQ2d 1560> U.S. 868, n.3, 111 S. Ct. 2631, 2649 n.3 (1991) (Scalia, J., concurring).
Our predecessor court the Court of Customs and Patent Appeals expressly followed Tucker Truck Lines in a case involving a situation similar to Alappat’s, In re Wiechert, 370 F.2d 927, 152 USPQ 247 (CCPA 1967). Wiechert involved an appeal from a Patent Office Board of Appeals decision. The court in Wiechert refused to consider the question whether a board composed of an examiner-in-chief, a primary examiner, and a supervisory examiner of higher grade than a primary examiner, was illegal under 35 U.S.C. <33 F.3d 1547> Section 7. The stated reason was that the parties had not properly raised the issue in the appeal from the merits of that board’s decision. Citing Tucker Truck Lines we held: “[A]n invalid appointment [of a board member by the Commissioner] would not so vitiate a board’s decision that neither waiver nor abandonment of the defect would be possible.” Id. at 936 n.6, 152 USPQ at 253 n.6.4 Wiechertexpressly holds that a defect in the composition of the board is a waivable matter.
We followed Wiechert in later cases. In In re Marriott-Hot Shoppes, Inc., 411 F.2d 1025, 162 USPQ 106 (CCPA 1969), the Court of Customs and Patent Appeals refused to consider the question whether the Trademark Trial and Appeal Board was by statute or regulation required to be composed of all of its members in order to hear an appeal and render a decision, where the appellant had not appealed the merits of the allegedly improperly constituted board’s decision. The court stated:
While we might be able to reach that question [whether three-member panels of the board had or have jurisdiction to hear ex parte appeals in the sense of being legally constituted boards], if properly raised, in an appeal from one or more board decisions on the merits of the applications, In re Wiechert, 370 F.2d 927, 54 CCPA 957 (1967), appellant has made it amply clear that this is not such an appeal. . . .
411 F.2d at 1029, 162 USPQ at 110 (emphasis added, footnote and original emphasis omitted).5 So too here Alappat has “made it amply clear” that he is not challenging the board composition.
And lastly, in In re Bose Corp., 772 F.2d 866, 227 USPQ 1 (Fed. Cir. 1985), the appellant challenged the composition of the Trademark Trial and Appeal Board as part of its appeal on the merits. In addition to appealing from the board decision on its merits, the appellant argued that that board was improperly constituted because the Commissioner substituted one of the three members for another member after oral argument but before the decision of the board.6 We permitted the appellant to challenge the composition of the board, following Marriott and Wiechert, and stated: “The matter of the board’s composition is . . . inseparable from the merits and can be raised in the appeal from the board’s decision.” 772 F.2d at 869, 227 USPQ at 3. We characterized the alleged illegality of the board, not as a defect that could void the board decision, but merely as a “technical claim of procedural error” subject to the harmless error rule. Id.at 870, 227 USPQ at 4.
Under the Wiechert-Marriott-Bose decisions, a party can waive a challenge to the legality of the composition of the board. Since that has been done in this case, we are precluded from considering any composition question not raised in the appeal brought under 28 U.S.C. Section 1295(a)(4)(A). Wiechert is binding precedent unless we overrule it in banc. South Corp. v. United States, 690 F.2d 1368, 1369, 215 USPQ 657, 657 (Fed. Cir. 1982) (in banc). Although the other judges address the board composition questions that have not been raised by the parties, in apparent contravention of Wiechert, they do not <31 USPQ2d 1561><33 F.3d 1548> explain why they may do so.7 I believe that stare decisis demands that this court either adhere to Wiechert in this case or expressly justify its overruling. Therefore, I would not address the board composition question at all.
Even if it were permissible and appropriate to treat the composition of this board as a jurisdictional matter, I am not persuaded that any statutory provision has clearly been violated. 35 U.S.C. Sections 6 and 7 set out the administrative and adjudicative functions within the Patent and Trademark Office. They provide as follows: “The Commissioner [of Patents and Trademarks] . . . shall superintend or perform all duties required by law respecting the granting and issuing of patents . . . He may . . . establish regulations, not inconsistent with law, for the conduct of proceedings in the Patent and Trademark Office.” 35 U.S.C. Section 6(a). “The Commissioner, the Deputy Commissioner, the Assistant Commissioners, and the examiners-in-chief shall constitute the Board of Patent Appeals and Interferences.” Id. Section 7(a). “The Board of Patent Appeals and Interferences shall, on written appeal of an applicant, review adverse decisions of examiners upon applications for patents . . .”Id. Section 7(b). “Each appeal . . . shall be heard by at least three members of the Board of Patent Appeals and Interferences, who shall be designated by the Commissioner.” Id. “Only the Board of Patent Appeals and Interferences has the authority to grant rehearings.” Id.
Two other statutes are relevant: “An applicant dissatisfied with the decision in an appeal to the Board of Patent Appeals and Interferences . . . may appeal the decision to” this court. 35 U.S.C. Section 141. This court has “jurisdiction . . . of an appeal from a decision of . . . the Board of Patent Appeals and Interferences.” 28 U.S.C. Section 1295(a)(4)(A).
There is no question but that the board had subject matter jurisdiction of Alappat’s appeal, that the parties regard the expanded reconsideration board’s decision to be the final “decision in [Alappat’s] appeal to the Board,” 35 U.S.C. Section 141, and that that “decision of . . . the Board” was appealed to us. There is no question but that all the persons who sat as the expanded panel which rendered the appealed-from decision were statutory members of the board, 35 U.S.C. Section 7(a),8 and that the number of members was greater than two, id. Section 7(b). There has been no showing that these particular members were designated to act for the board by a person other than the Commissioner of Patents and Trademarks, id.Section 7(b). Finally, there is no question but that a group designated by the Commissioner to act for the board consisting of more than two statutory members of the board granted a petition so as to rehear an initial appeal, and that that group rendered a decision thereon.
The precise question then is whether the board that granted the rehearing and rendered a decision was designated by the Commissioner of Patents and Trademarks in a manner clearly prohibited by the enabling statute. In determining sua sponte whether there has been a “decision of . . . the Board,” we are not to be guided by general considerations of whether the board’s or Commissioner’s actions were fair or in compliance with due process, or the product of bias, prejudice, partiality, or the like. These are important procedural matters but only the parties may properly raise them; they are not matters for us to raise and impose on the parties.
<33 F.3d 1549> 35 U.S.C. Section 7(b) states expressly that for “each appeal” to the board, the persons that may hear that appeal and act as the board are to be designated by the Commissioner at his discretion (so long as he chooses at least three members from the set defined in Section 7(a)). The statute then says “ [o]nly” the board has authority to grant a rehearing. Then, the statute stops.
Consequently Section 7 says nothing about the rehearing itself. Unlike for “each appeal,” the statute does not expressly describe how “the board” is to grant rehearings and is totally silent on who may act as the board to rehear the appeal. The “board” must act <31 USPQ2d 1562> through people, its members. Thus, the language of the last sentence of Section 7(b) could be interpreted to mean that only all the members of the board acting together have authority to grant rehearings (and perhaps must also vote unanimously in order to decide the merits of the rehearing), or the statute could be interpreted to mean that only the members of the board who first heard the appeal have authority to grant rehearing.9 Or, if the “rehearing” is considered to be a form of “appeal,” the statute must be interpreted to mean that the Commissioner may designate members of the board who, acting together, are the only ones to have authority to grant rehearings and decide appeals. Though reasonable persons may disagree as to which of the above is the better or best interpretation, none is compelled or prohibited by the sparse language contained in the statute. In the backdrop of these possible interpretations are 35 U.S.C. Section 6, which gives the Commissioner broad administrative powers, and 35 U.S.C. Section 7, which contemplates that the Commissioner will play some but not a controlling role in the adjudicative aspect of the agency. See Lindberg v. Brenner, 399 F.2d 990, 158 USPQ 380 (D.C. Cir. 1968).
Finally, the legislative history of Section 7 does not clearly advance the narrowest interpretation of the Commissioner’s powers. Although the legislative history shows a transfer of some functions from the Commissioner to a Board of Patent Appeals, there is nothing indicating that the board was to be completely independent of the influence of the Commissioner. Originally, under the first patent act, a board composed of the Secretary of State, the Secretary of the Department of War, and the Attorney General, or any two of them, examined and issued patents. Act of April 10, 1790, ch. 7, Section 1, 1 Stat. 109, 109-10. The refusal of a petition for patent had no appeal. It was said that Thomas Jefferson, then Secretary of State, dominated the board with his high standards of patentability. W. Wyman, Thomas Jefferson and the Patent System, 1 J. Pat. Off. Soc’y 5 (1918), cited in R. Hantman, The Doctrine of Equivalents, 70 J. Pat. Off. Soc’y 511, 513 (1988); see Graham v. John Deere Co., 383 U.S. 1, 7-10, 148 USPQ 459, 463-64 (1966). In 1793, Congress dispensed with examination altogether: if a petition to the Secretary of State met the formal technical requirements of the statute, a patent was granted, leaving the responsibility for striking down invalid patents to the courts. Patent Act of 1793, ch. 11, Section 3, 1 Stat. 318-23. Concerned with the need for examination, the Patent Act of 1836, ch. 357, 5 Stat. 117, established the Patent Office as a distinct bureau with a Commissioner of Patents as its head. Until 1861, the Commissioner heard all appeals from applicants for patents dissatisfied with an ex parte rejection by an examiner.
In 1861, Congress established a board of three examiners-in-chief to hear appeals from examiners’ rejections in order to secure “greater uniformity of action in the grant and refusal of letters-patent” and to assist the Commissioner with appellate work. Act of March 12, 1861, ch. 88, Section 2, 12 Stat. 246. A further appeal could be taken from the board to “the Commissioner of Patents in person.” Id. The Commissioner’s power under this scheme was understood to be plenary:
The allowance of an application by the examiner, or by the examiners-in-chief upon appeal, does not oblige the Commissioner to grant the patent for which it <33 F.3d 1550> prays. The law empowers him to withhold a patent whenever in his judgment the invention is not patentable, or the issue of the patent is forbidden by the statutes, or the patent if granted would probably be held invalid by the courts.
W. Robinson, The Law of Patents Section 583 (1890).10
With the increasing number of patent applications being filed, the two levels of appeal within the Patent Office were thought to be an “antiquated procedure.” H.R. Rep. No. 1889, 69th Cong., 2d Sess. 1-2 (1927); S. Rep. No. 1313, 69th Cong., 2d Sess. 3 (1927). By Act of 1927, the two levels of appeal – first to a board then to the Commissioner – were combined into one appeal mixing the flavor of the earlier two: an appeal could be had to a Board of Appeals; the board was given the “sole power to grant rehearings.” Act of March 2, 1927, ch. 273, Section 3, 44 Stat. 1335, 1335-36. But, under the Act of 1927, the Commissioner was one of the members of the board, and the Commissioner was given the power to designate at least three members of the board who together would act as the board and hear each appeal. The Act of 1927 corresponds in substance to 35 U.S.C. Section 7, the act applicable today.
The events surrounding the enactment of the 1927 Act do not indicate that Congress <31 USPQ2d 1563> intended to eliminate entirely the great power understood to have been possessed by the Commissioner prior to the act. For example, during debate in the House of Representatives it was agreed that the statute did not require the entire membership of the board to act on and decide every rehearing, which of course would be unmanageable. Procedure in the Patent Office: Hearing Before the House Comm. on Patents, 69th Cong., 2d Sess. 19-29 (1926) (statement of Mr. Barnett, President, American Patent Law Association). On the other hand, discussions in the Senate focused on the ability under the statute to have in appropriate cases more than the original three-member panel rehear an appeal. Procedure in the Patent Office: Hearing Before the Senate Comm. on Patents, 69th Cong., 2d Sess. 22-23 (1926) (“ Senate Hearing “). As previously discussed, the language of the statute is unclear on the manner of exercising the “power to grant rehearings,” and is silent on the rehearing itself. This lack of clear expression is what could have enabled the House and Senate to view the prospective legislation as permitting either the full board or less than the full board to rehear a case, notwithstanding the inclusion of the word “sole.” In other words, by requiring the “board” to be the formal body to act on rehearings, instead of the Commissioner, yet at the same time reposing in the Commissioner discretionary power to define that board within certain express confines, the statute created “something that is flexible,” Senate Hearing, supra, at 23. In this way, the Senate was able to report that “the supervisory power of the Commissioner, as it has existed for a number of decades, remains unchanged.” Senate Report No. 1313, at 4 (emphasis added).
Because the decision appealed in this case was not obtained in clear contravention of Section 7, and because the parties agree that it was a decision of the board that should be reviewed, I would decline to analyze further the board composition issue. By doing so, this court would not be announcing as does the majority that in all respects it approves the manner by which the rehearing was granted in this case or in another similar case. Nor would it be condemning as does the dissent the Commissioner or board for supposedly prejudicing or treating unfairly a party who has not complained of any prejudice or mistreatment. It may well be that a party could successfully challenge the procedures used in composing the board to hear an appeal in a case similar to this one, for example, by petition to the Commissioner, under the Administrative Procedure Act in a district court, as part of an appeal from the merits of the board’s decision, etc.11 That, <33 F.3d 1551> however, should appropriately be left for another day.
I disagree with the majority’s conclusion that Alappat’s “rasterizer,” which is all that is claimed in the claims at issue, constitutes an invention or discovery within 35 U.S.C. Section 101. I would affirm the board’s decision sustaining the examiner’s rejection of claims 15-19 to the rasterizer under 35 U.S.C. Section 101 because Alappat has not shown that he invented or discovered a machine within Section 101.
In 1873, George Curtis made certain general observations about patent law, the scope of patentable subject matter being at its heart. He stated them with such force and eloquence, and in my view they have such relevance to the issue we face today, that I repeat them as follows:
It is necessary . . . to have clear and correct notions of the true scope of a patent right . . . which may be found to assist, in particular cases, the solution of the question, whether a particular invention or discovery is by law a patentable subject.
In this inquiry it is necessary to commence with the process of exclusion; for although, in their widest acceptation, the terms “invention” and “discovery” include the whole vast variety of objects on which the human intellect may be exercised, so that in poetry, in painting, in music, in astronomy, in metaphysics, and in every department of human thought, men constantly invent or discover, in the highest and the strictest sense, their inventions and discoveries in these departments are not the subjects of the patent law . . . The patent law relates to a great and comprehensive class of discoveries and inventions of some new and useful effect or result in matter, not referable to the department of the fine arts. The matter of which our globe is composed is the material upon which the creative and inventive faculties of man are exercised, in the production of whatever ministers to his convenience or his wants. Over the existence of matter itself he has no control . . .
The direct control of man over matter consists, therefore, in placing its particles in new relations. This is all that is actually<31 USPQ2d 1564> done, or that can be done, namely, to cause the particles of matter existing in the universe to change their former places, by moving them, by muscular power or some other force. But as soon as they are brought into new relations, it is at once perceived that there are vast latent forces in nature, which come to the aid of man, and enable him to produce effects and results of a wholly new character, far beyond the mere fact of placing the particles in new positions. He moves certain particles of matter into a new juxtaposition, and the chemical agencies and affinities called into action by this new contact produce a substance possessed of new properties and powers, to which has been given the name of gunpowder. He takes a stalk of flax from the ground, splits it into a great number of filaments, twists them together, and laying numbers of the threads thus formed across each other, forms a cloth, which is held together by the tenacity or force of cohesion in the particles, which nature brings to his aid. He moves into new positions and relations certain particles of wood and iron, in various forms, and produces a complicated machine, by which he is able to accomplish a certain purpose, only because the properties of cohesion and the force of gravitation cause it to adhere together and enable the different parts to operate upon each other and to transmit the forces applied to them, according to the laws of motion. It is evident, therefore, that the whole of the act of invention, in the department of useful arts, embraces more than the new arrangement of particles of matter in new relations. The purpose of such new arrangements is to produce some new effect or result, by calling into activity some latent law, or force, or property, by means of which, in a new application, the new effect or result may be accomplished. In every form in which matter is used, in every production of the ingenuity of man, he relies upon the laws of nature and the properties of matter, and seeks for new effects and results through their agency <33 F.3d 1552> and aid. Merely inert matter alone is not the sole material with which he works. Nature supplies powers, and forces, and active properties, as well as the particles of matter, and these powers, forces, and properties are constantly the subjects of study, inquiry, and experiment, with a view to the production of some new effect or result in matter.
Any definition or description, therefore, of the act of invention, which excludes the application of the natural law, or power, or property of matter, on which the inventor has relied for the production of a new effect, and the object of such application, and confines it to the precise arrangement of the particles of matter which he may have brought together, must be erroneous.
G. Curtis, A Treatise on the Law of Patents for Useful Inventions at xxiii-xxv (4th ed. 1873) (emphasis added).
Alappat has arranged known circuit elements to accomplish nothing other than the solving of a particular mathematical equation represented in the mind of the reader of his patent application. Losing sight of the forest for the structure of the trees, the majority today holds that any claim reciting a precise arrangement of structure satisfies 35 U.S.C. Section 101. As I shall demonstrate, the rationale that leads to this conclusion and the majority’s holding that Alappat’s rasterizer represents the invention of a machine are illogical, inconsistent with precedent and with sound principles of patent law, and will have untold consequences.
The Patent Clause of the Constitution empowers the Congress to “promote the Progress of . . . useful Arts, by securing for limited Times to . . . Inventors the exclusive right to their . . . Discoveries.” U.S. Const. art. I, Section 8, cl. 8.
Congress has implemented this limited grant of power in 35 U.S.C. Section 101 by enumerating certain subject matter, the invention or discovery of which may entitle one to a patent: “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.” 35 U.S.C. Section 101 (1988). The terms used in Section 101 have been used for over two hundred years – since the beginnings of American patent law – to define the extent of the subject matter of patentable invention. See In re Chatfield, 545 F.2d 152, 159, 191 USPQ 730, 736-37 (CCPA 1976) (Rich, J., dissenting); 1 D. Chisum, Patents Section 1.01 (1993).
Coexistent with the usage of these terms has been the rule that a person cannot obtain a patent for the discovery of an abstract idea, principle or force, law of nature, or natural phenomenon, but rather must invent or discover a practical “application” to a useful end. Diamond v. Diehr, 450 U.S. 175, 185, 187-88, 209 USPQ 1, 7-9 (1981) (citing, for example, Rubber-Tip Pencil Co. v. Howard, 87 U.S. (20 Wall.) 498, 507 (1874)); Parker <31 USPQ2d 1565> v. Flook, 437 U.S. 584, 589, 591, 198 USPQ 193, 197-98 (1978).
Thus patent law rewards persons for inventing technologically useful applications, instead of for philosophizing unapplied research and theory. Brenner v. Manson, 383 U.S. 519, 534-35, 148 USPQ 689, 695 (1966) (“Unless and until a process is refined and developed to this point – where specific benefit exists in currently available form – there is insufficient justification for” the reward of a patent.); Graham v. John Deere Co., 383 U.S. 1, 5, 148 USPQ 459, 462 (1966) (“the federal patent power . . . is limited to the promotion of advances in the ‘useful arts”‘); In re Meyer, 688 F.2d 789, 795, 215 USPQ 193, 197 (CCPA 1982) (quoting O’Reilly v. Morse, 56 U.S. (15 How.) 62, 132-33 (1853) (Grier, J., concurring)); 1 D. Chisum, Patents Section 1.01, at 1-5 & n.9 (1993) (“ [I]n enacting patent legislation, Congress is confined to the promotion of the ‘useful arts,’ not ‘science’ ( i.e., knowledge) in general . . . The general purpose of the statutory classes of subject matter is to limit patent protection to the field of applied technology, what the United States constitution calls ‘the useful arts.’ “).
<33 F.3d 1553> Additionally, unapplied research, abstract ideas, and theory continue to be the “basic tools of scientific and technological work,” which persons are free to trade in and to build upon in the pursuit of among other things useful inventions. Flook, 437 U.S. at 589, 198 USPQ at 197 (quotations omitted).12 Even after a patent has been awarded for a new, useful, and nonobvious practical application of an idea, others may learn from the underlying ideas, theories, and principles to legitimately “design around” the patentee’s useful application. See Slimfold Mfg. Co. v. Kinkead Indus., Inc., 932 F.2d 1453, 1457, 18 USPQ2d 1842, 1845-46 (Fed. Cir. 1991).
The requirement of the patent law that an invention or discovery reside in the application of an abstract idea, law of nature, principle, or natural phenomenon is embodied in the language of 35 U.S.C. Section 101. A patent can be awarded to one who “invents or discovers” something within the enumerated classes of subject matter – “process,” “machine,” “manufacture,” “composition of matter.” These terms may not be read in a strict literal sense entirely divorced from the context of the patent law. Diehr, 450 U.S. at 185, 209 USPQ at 7 (“ [E]very discovery is not embraced within the statutory terms.” (emphasis added)); In re Schrader, 22 F.3d 290, 295-96 & n.11, 30 USPQ2d 1455, 1459-60 & n.11 (Fed. Cir. 1994) (use of terms of art in Section 101 is presumed to be in accord with their well-established meaning); cf. Stafford v. Briggs, 444 U.S. 527, 535 (1980) (statutory provisions should be considered in light of the entire statute and purpose). Rather they must be read as incorporating the longstanding and well-established limitation that the claimed invention or discovery must reside in a practical application.13
In addition to the basic principles embodied in the language of Section 101, the section has a pragmatic aspect. That subject matter must be new (Section 102) and nonobvious (Section 103) in order to be patentable is of course a separate requirement for patentability, and does not determine whether the applicant’s purported invention or discovery is within Section 101. Diehr, 450 U.S. at 190, 209 USPQ at 10. Section 101 must be satisfied before any of the other provisions apply, and in this way Section 101 lays the predicate for the other provisions of the patent law. See Flook, 437 U.S. at 593, 198 USPQ at 199 (The determination of “what type of discovery is sought to be patented must precede the determination of whether that discovery is, in fact, new or obvious.”); Diehr, 450 U.S. at 189, 209 USPQ at 9 (“ [s]pecific conditions for patentability follow” Section 101). When considering that the patent law does not allow patents merely for the discovery of ideas, principles, and laws of nature, ask whether, were it not so, the other provisions of the patent law could be applied at all. If Einstein could have obtained a patent for his discovery that the energy of an object at rest equals its mass times the speed of light squared, how would his discovery be meaningfully judged for nonobviousness, the sine qua non of patentable invention?14 35 U.S.C. Section 103. When is the abstract idea “reduced to practice” as opposed to being “conceived”? See id. Section 102(g). What conduct amounts to the “infringement” of another’s idea? See id. Section 271.
Consider for example the discovery or creation of music, a new song. Music of course is <31 USPQ2d 1566> not patentable subject matter; a composer cannot obtain exclusive patent rights for the original creation of a musical composition. But now suppose the new melody is recorded on a compact disc. In such case, the particular <33 F.3d 1554> musical composition will define an arrangement of minute pits in the surface of the compact disc material, and therefore will define its specific structure. SeeD. Macaulay, The Way Things Work 248-49 (Houghton Mifflin 1988). Alternatively suppose the music is recorded on the rolls of a player piano or a music box.
Through the expedient of putting his music on known structure, can a composer now claim as his invention the structure of a compact disc or player piano roll containing the melody he discovered and obtain a patent therefor? The answer must be no. The composer admittedly has invented or discovered nothing but music. The discovery of music does not become patentable subject matter simply because there is an arbitrary claim to some structure.
And if a claim to a compact disc or piano roll containing a newly discovered song were regarded as a “manufacture” and within Section 101 simply because of the specific physical structure of the compact disc, the “practical effect” would be the granting of a patent for a discovery in music. Where the music is new, the precise structure of the disc or roll would be novel under Section 102. Because the patent law cannot examine music for “nonobviousness,” the Patent and Trademark Office could not make a showing of obviousness under Section 103. The result would well be the award of a patent for the discovery of music. The majority’s simplistic approach of looking only to whether the claim reads on structure and ignoring the claimed invention or discovery for which a patent is sought will result in the awarding of patents for discoveries well beyond the scope of the patent law.
Patent cases involving the distinction between idea or principle may involve subtle distinctions. Flook, 437 U.S. at 589, 198 USPQ at 197.15 Section 101 embodies the very soul of the intangible nature of invention. Without particular claimed subject matter in mind, it is impossible to generalize with bright line rules the dividing line between what is in substance the invention or discovery of a useful application within Section 101 versus merely the discovery of an abstract idea or law of nature or principle outside Section 101. Each case presenting a question under Section 101 must be decided individually based upon the particular subject matter at issue. See In re Grams, 888 F.2d 835, 839, 12 USPQ2d 1824, 1828 (Fed. Cir. 1989) (Section 101 analysis “depends on the claims as a whole and the circumstances of each case.”). There are however answers in every Section 101 case. But they are found by applying precedent and principles of patent law to the particular claimed subject matter at issue.
Discoveries and inventions in the field of digital electronics are analyzed according to the aforementioned principles as any other subject matter. In re Walter, 618 F.2d 758, 765, 205 USPQ 397, 405 (CCPA 1980). Digital electronics, including so-called general purpose digital computers, often call into play Section 101 because digital electronic devices “operate [] on data expressed in digits, solving a problem by doing arithmetic as a person would do it by head and hand.” Gottschalk v. Benson, 409 U.S. 63, 65, 175 USPQ 673, 674 (1972). Applicants sometimes attempt to claim digital-electronic related subject matter by reference to the mathematical function performed by the digital electronic structure. See Walter, 618 F.2d at 764, 205 USPQ at 404 (Section 101 problems are a “natural consequence” of applicants’ use of mathematics to define their alleged inventions). However, like the discovery of a law of nature, abstract <33 F.3d 1555> idea, or principle, the discovery of mathematic functions, relationships, operations, or algorithms does not entitle a person to a patent therefor. Diehr, 450 U.S. at 191, 209 USPQ at 10 (“a mathematical formula as such is not accorded the protection of our patent laws”); see Walter, 618 F.2d at 770, 205 USPQ at 409 (pure mathematics is not an <31 USPQ2d 1567> art or technology).16 It does not matter how “original,” “inventive,” or “useful” the mathematics might be in the ordinary sense of those words.
The trilogy of Supreme Court cases in this area must be applied to determine whether an invention or discovery in the field of digital electronic related subject matter is within the scope of the patent law. These cases govern both product and process claims. Diehr, 450 U.S. at 188 n.11, 209 USPQ at 9 n.11; accord In re Maucorps, 609 F.2d 481, 485, 203 USPQ 812, 815 (CCPA 1979).
In the first case, Gottschalk v. Benson, 409 U.S. 63, 175 USPQ 673 (1972), the Supreme Court held that claims to a method of converting binary-coded decimal numbers into pure decimal numbers did not recite an invention or discovery within Section 101, and thus were ineligible for patent protection. In Benson, the claimed method was to be performed specifically in a general purpose digital computer, and one of the claims (claim 8) contained express digital electronic structure limitations by reciting “signals” and a “reentrant shift register.”17 409 U.S. at 64, 73, 175 USPQ at 674, 677. The Court found that the “practical effect” of a patent for the method would be the impermissible award of a patent for a discovery in mathematics because the whole of the subject matter sought to be patented was a mathematical formula that had “no substantial practical application except in connection with a digital computer.” Id. at 71-72, 175 USPQ at 676; see Diehr, 450 U.S. at 185-86, 209 USPQ at 8 (so interpreting Benson ).18 In Benson the Court made clear that it was “deal [ing] with a program only for digital computers.” 409 U.S. at 71, 175 USPQ at 676.
In the second case, Parker v. Flook, 437 U.S. 584, 198 USPQ 193 (1978), the Court held that a claim to a method of updating “alarm limits” (numbers) did not recite an invention or discovery within Section 101, and thus was ineligible for patent protection. The claims in Flook did not “wholly preempt” the claimed mathematical formula because they did not cover every application of the formula. See 437 U.S. at 586, 589-90, 198 USPQ at 196, 197. The claimed method was expressly limited to operation “in a process comprising the catalytic chemical conversion of hydrocarbons,” and thereby to application in a particular technological environment. Id. at 586, 198 USPQ at 196. The claimed formula also was “primarily useful for computerized calculations.”Id. And the claim recited specific activity beyond the solution of the mathematical formula (so called “post-solution” activity), namely adjusting <33 F.3d 1556> an “alarm limit” to the figure computed according to the formula. See id. at 589-90, 198 USPQ at 197. The Court reasoned that the updating of alarm limits in chemical processes was well known, and all that Flook purported to invent and claim was a new formula coupled to a computer for doing so (limited to certain post-solution activity in a technological environment). Id. at 594-95, 198 USPQ at 199; see Diehr, 450 U.S. at 186, 209 USPQ at 8 (“the Court concluded [in Flook] that the [patent] application sought to protect a formula for computing [a] number”); id.at 192 n.14, 209 USPQ at 10 n.14. On these facts, the Court reasoned that the claimed invention or discovery was an alleged newly discovered mathematical formula, which was “not the kind of ‘discover [y]’ that the statute was enacted to protect.” Flook, 437 U.S. at 593-95, 198 USPQ at 198.
In the third case, Diamond v. Diehr, 450 U.S. 175, 209 USPQ 1 (1981), the Court held that a process for operating a rubber-molding press was within Section 101. An element of the claimed process was a digital computer programmed to perform a mathematical function. It was known that temperature <31 USPQ2d 1568> inside a rubber-molding press determined in part the time the press was required to remain closed. 450 U.S. at 177-79, 209 USPQ at 4. The problem faced in the art was that when the press opened during operation, it cooled, thereby changing the amount of time needed for curing. Id. By including a thermocouple or other temperature-detecting device for measuring temperature inside the press, feeding signals to a computer which would repeatedly calculate the cure time and then cause the press to open at the right moment, the applicant claimed to have invented a new, useful, and nonobvious precision method of curing rubber. Id. The Court reasoned that the claimed subject matter was, as a whole, a process for precision rubber curing that included a computer performing a mathematical formula; the totality of claimed subject matter was not just the mathematical formula. Id. at 187, 191, 209 USPQ at 7, 8. Therefore, held the Court, the claimed subject matter was eligible for patent protection.19
The Court in Diehr distinguished its decision in Flook. Both cases involved claims including mathematical formulae to be performed by digital electronics, with application in chemical processes. Flook’s patent application, however, “did not purport to explain how the variables used in the formula were to be selected.” Diehr, 450 U.S. at 192 n.14, 209 USPQ at 10 n.14; see also id. at 186, 209 USPQ at 8. Flook’s patent application did not “contain any disclosure relating to the chemical processes at work, the monitoring of process variables, or the means of setting off an alarm system.” Diehr, 450 U.S. at 187, 209 USPQ at 8; see also id. at 192 n.14, 209 USPQ at 10 n.14. In contrast, Diehr’s claims were neither to the mathematical formula nor to the “the isolated step of ‘programming a digital computer.’ “ Id. at 193 n.15, 209 USPQ at 11 n.15. They were to a process “beginning with the loading of [a] mold and ending with the opening of [a] press and the production of synthetic rubber product that has been perfectly cured – a result [t]heretofore unknown in the art.” Id. The chemical process in Flook was not the alleged invention or discovery but only was related tangentially to the mathematic formula; the applicant simply “limit [ed] the use of the formula to a particular technological environment” and claimed “insignificant postsolution activity.” Diehr, 450 U.S. at 192 n.14, 209 USPQ at 10 n.14. All this demonstrated that in Diehr the applicant was, in substance, asserting and claiming to have invented a new and useful chemical process, thereby qualifying the subject matter for examination under the remaining provisions of the patent law, while in Flook as in Benson the applicant was, in substance, asserting and claiming as his invention or discovery a mathematical function (to be performed by a <33 F.3d 1557> computer), thereby placing the subject matter outside the patent law.
Under Benson, Flook, and Diehr the posing and solution of a mathematic function is nonstatutory subject matter. It is nonstatutory even if the particular mathematics is limited to performance in digital electronic circuitry or a general purpose digital computer, even if the mathematic operations are alleged generally to have some application in one or various technologies, and even if the solution of the function is said generally to “represent” something of physical or technologic relevance. On the other hand, an invention or discovery of a process or product in which a mathematic operation is practically applied may be statutory subject matter. The fact that one element of the claimed process or product is a programmed digital computer or digital electronics performing a mathematic function does not necessarily preclude patent protection for the process or product. In this way, the door remains open to the advancement of technologies by the incorporation of digital electronics. But the mere association of digital electronics or a general purpose digital computer with a newly discovered mathematic operation does not per se bring that mathematic operation within the patent law.
Every case involving a Section 101 issue must begin with this question: What, if anything, is it that the applicant for a patent “invented or discovered”? In re Abele, 684 F.2d 902, 907, 214 USPQ 682, 687 (CCPA 1982), quoted in In re Grams, 888 F.2d 835, 839, 12 USPQ2d 1824, 1827 (Fed. Cir. 1989); see Kneass v. Schuylkill Bank, 14 F. Cas. 746, 748 (C.C. Pa. 1820) (No. 7875) (Washington, J.). To resolve this inquiry, the patent or patent application must be reviewed and the subject matter claimed as the invention or discovery “must be considered as a whole.” Diehr, 450 U.S. at 188, 209 USPQ at 9; Flook, 437 U.S. at 594, 198 USPQ at 199; Walter, 618 F.2d at 758, 205 USPQ at 405 (Inquiry under section 101 depends on “the relationship which the truth or principle bears to the substance of the invention as claimed.”).
In considering claimed subject matter for eligibility under Section 101, “it must be determined whether a scientific principle, law of <31 USPQ2d 1569> nature, idea, or mental process, which may be represented by a mathematical algorithm, is included in the subject matter” claimed as the invention or discovery. In re Meyer, 688 F.2d 789, 795, 215 USPQ 193, 198 (CCPA 1982). When the claimed invention or discovery includes “a mathematical formula (or scientific principle or phenomenon of nature), an inquiry must be made into whether the claim is seeking patent protection for that formula in the abstract,” Diehr, 450 U.S. at 191, 209 USPQ at 10, or whether the “claim containing a mathematical formula implements or applies that formula in a structure or process which, when considered as a whole, is performing a function which the patent laws were designed to protect,” id. at 192, 209 USPQ at 10.
Thus the dispositive issue is not whether the claim recites on its face something more physical than just abstract mathematics. If it were,Benson and Flook would have come out the other way and Diehr would have been a very short opinion. The dispositive issue is whether the invention or discovery for which an award of patent is sought is more than just a discovery in abstract mathematics. Where the invention or discovery is only of mathematics, the invention or discovery is not the “kind” of discovery the patent law was designed to protect and even the most narrowly drawn claim must fail. Diehr, 450 U.S. at 192 n.14, 209 USPQ at 10 n.14. To come within the purview of Section 101 and the patent law, a mathematical formula or operation must be “applied in an invention of a type set forth in 35 U.S.C. Section 101.” Meyer, 688 F.2d at 795, 215 USPQ at 198.
Alappat’s specification discloses a digital oscilloscope. SeeAlappat specification at 1-3. The majority is quite taken in by the structure and functioning of the oscilloscope. But as the majority recognizes, the oscilloscope is not claimed as Alappat’s invention. Rather the claimed invention is, as the majority says, “a means for creating a smooth waveform <33 F.3d 1558> display in a digital oscilloscope,” or an “anti-aliasing system” for an oscilloscope.
Thus, Alappat discloses a component of a digital oscilloscope to be a “display system,” see Fig. 1, and a component of the “display system” to be a “rasterizer,” see Fig. 2. Only the “rasterizer” and the immediate handling of its input and output are described in any structural detail.
In claim 15, Alappat claims his invention to be:
15. A rasterizer for converting vector list data representing sample magnitudes of an input waveform into anti-aliased pixel illumination intensity data to be displayed on a display means comprising:
(a) means for determining the vertical distance between the endpoints of each of the vectors in the data list;
(b) means for determining the elevation of a row of pixels that is spanned by the vector;
(c) means for normalizing the vertical distance and elevation; and
(d) means for outputting illumination intensity data as a predetermined function of the normalized vertical distance and elevation.
The specification depicts the “rasterizer” 40 in Figure 3 with the following circuit diagram:20 [Figure omitted]
<31 USPQ2d 1570> The claimed rasterizer is described to function as follows. It starts with “vector list” data which the specification states may be obtained by “sampling” and “digitizing” an analog input “signal.” See spec. at 2, ll. 16-18. Sequential pairs of “vector list” data are stored in registers 70 and 72. Id. at 11, ll. 30-33. Vector list data are thus simply a sequence of numbers (y coordinates on an x-y coordinate system).
With respect to each pair of data, a first arithmetic logic unit (ALU) 74 calculates their difference; the result is stored in another register 76. Id. at 11, l. 34, to 12, l. 6. This difference is called the “vertical distance.” The difference is calculated by the following formula: Yi = | | Yi - Y i + 1 | |, where i and i+1 are the sequential y coordinates.
A second ALU 80 calculates the “elevation.” The elevation is the distance between the starting y value and a particular y value <33 F.3d 1559> under consideration. It is calculated by the following formula: Yi = | | Y i - sj | |, where sj is distance of the point under consideration and yi is the “vertical distance” described above. The “elevation” is stored in a fourth register 82. Id. at 12, ll. 27-31.
The vertical dis