[Federal Register Volume 61, Number 40 (Wednesday, February 28, 1996)]
[Notices]
[Pages 7478-7492]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 96-4140]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
[Docket No. 950531144-5304-02]
RIN 0651-XX02
Examination Guidelines for Computer-Related Inventions
AGENCY: Patent and Trademark Office, Commerce.
ACTION: Notice.
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SUMMARY: The Patent and Trademark Office (``Office'') is publishing the
final version of the guidelines to be used in
[[Page 7479]]
examination of computer-related inventions.
EFFECTIVE DATE: March 29, 1996.
FOR FURTHER INFORMATION CONTACT:
Karen A. Buchanan by telephone at (703) 305-8607, by facsimile at (703)
305-9373, by electronic mail at buchanan@uspto.gov, or by mail marked
to her attention addressed to Office of the Solicitor, P.O. Box 15667,
Arlington, VA 22215.
SUPPLEMENTARY INFORMATION:
A. Discussion of Public Comments
The Office received forty-six comments in response to the ``Request
for Public Comment on the Proposed Examination Guidelines for Computer-
Implemented Inventions'' published on June 2, 1995 (60 FR 28778) and
the supporting legal analysis issued on October 3, 1995. The Office has
carefully considered all of the comments, and a number of changes have
been made in response.
These changes include: (1) Merging the guidelines and the legal
analysis in support of the guidelines into a single document, (2)
changing the subject title of the document from ``computer-
implemented'' inventions to ``computer-related'' inventions, (3)
clarifying the legal requirements for statutory subject matter, (4)
segmenting the guidelines into separate statutory requirements for
patentability, and (5) ensuring that the guidelines treated computer-
related inventions in the same manner as inventions in other
technologies to avoid creation of an artificial distinction between
hardware-implemented and software-implemented inventions.
Several suggestions have not been adopted. These include: (1)
Determining that claims for data structures per se and computer
programs per se are statutory subject matter, (2) determining that
claims for non-functional descriptive material embodied on computer-
readable media are statutory subject matter, and (3) treating claims
that infer functional descriptive material is embodied on computer-
readable medium as claims limited to computer-readable medium embodying
the functional descriptive material. The first two suggestions are
addressed in detail in Section IV.B.1(a)-(c) and the last suggestion is
addressed in detail in Section IV.B.2(d).
Several commentors encouraged the Office to improve its ability to
conduct effective prior art searches. Such encouragement is consistent
with the current Office plan to use automated search tools to
effectively conduct such prior art searches.
B. Examination Guidelines for Computer-Related Inventions
I. Introduction
These ``Examination Guidelines for Computer-Related Inventions''
\1\ (``Guidelines'') are to assist Office personnel in the examination
of applications drawn to computer-related inventions.\2\ The Guidelines
are based on the Office's current understanding of the law and are
believed to be fully consistent with binding precedent of the Supreme
Court, the Federal Circuit and the Federal Circuit's predecessor
courts.
* Footnotes to appear at end of docket.
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These Guidelines do not constitute substantive rulemaking and hence
do not have the force and effect of law. These Guidelines have been
designed to assist Office personnel in analyzing claimed subject matter
for compliance with substantive law. Rejections will be based upon the
substantive law and it is these rejections which are appealable.
Consequently, any failure by Office personnel to follow the Guidelines
is neither appealable nor petitionable.
The Guidelines alter the procedures Office personnel will follow
when examining applications drawn to computer-related inventions and
are equally applicable to claimed inventions implemented in either
hardware or software. The Guidelines also clarify the Office's position
on certain patentability standards related to this field of technology.
Office personnel are to rely on these Guidelines in the event of any
inconsistent treatment of issues between these Guidelines and any
earlier provided guidance from the Office.
The Freeman-Walter-Abele \3\ test may additionally be relied upon
in analyzing claims directed solely to a process for solving a
mathematical algorithm.
Office personnel have had difficulty in properly treating claims
directed to methods of doing business. Claims should not be categorized
as methods of doing business. Instead, such claims should be treated
like any other process claims, pursuant to these Guidelines when
relevant.\4\
The appendix includes a flow chart of the process Office personnel
will follow in conducting examinations for computer-related inventions.
II. Determine What Applicant Has Invented and Is Seeking To Patent
It is essential that patent applicants obtain a prompt yet complete
examination of their applications. Under the principles of compact
prosecution, each claim should be reviewed for compliance with every
statutory requirement for patentability in the initial review of the
application, even if one or more claims are found to be deficient with
respect to some statutory requirement. Thus, Office personnel should
state all reasons and bases for rejecting claims in the first Office
action. Deficiencies should be explained clearly, particularly when
they serve as a basis for a rejection. Whenever practicable, Office
personnel should indicate how rejections may be overcome and how
problems may be resolved. A failure to follow this approach can lead to
unnecessary delays in the prosecution of the application.
Prior to focusing on specific statutory requirements, Office
personnel must begin examination by determining what, precisely, the
applicant has invented and is seeking to patent,\5\ and how the claims
relate to and define that invention. Consequently, Office personnel
will no longer begin examination by determining if a claim recites a
``mathematical algorithm.'' Rather, they will review the complete
specification, including the detailed description of the invention, any
specific embodiments that have been disclosed, the claims and any
specific utilities that have been asserted for the invention.
A. Identify and Understand Any Practical Application Asserted for the
Invention
The subject matter sought to be patented must be a ``useful''
process, machine, manufacture or composition of matter, i.e., it must
have a practical application. The purpose of this requirement is to
limit patent protection to inventions that possess a certain level of
``real world'' value, as opposed to subject matter that represents
nothing more than an idea or concept, or is simply a starting point for
future investigation or research.\6\ Accordingly, a complete disclosure
should contain some indication of the practical application for the
claimed invention, i.e., why the applicant believes the claimed
invention is useful.
The utility of an invention must be within the ``technological''
arts.\7\ A computer-related invention is within the technological arts.
A practical application of a computer-related invention is statutory
subject matter. This requirement can be discerned from the variously
phrased prohibitions against the patenting of abstract ideas, laws of
nature or natural phenomena. An invention that has a practical
application in the technological arts satisfies the utility
requirement.\8\
[[Page 7480]]
The applicant is in the best position to explain why an invention
is believed useful. Office personnel should therefore focus their
efforts on pointing out statements made in the specification that
identify all practical applications for the invention. Office personnel
should rely on such statements throughout the examination when
assessing the invention for compliance with all statutory criteria. An
applicant may assert more than one practical application, but only one
is necessary to satisfy the utility requirement. Office personnel
should review the entire disclosure to determine the features necessary
to accomplish at least one asserted practical application.
B. Review the Detailed Disclosure and Specific Embodiments of the
Invention To Determine What the Applicant Has Invented
The written description will provide the clearest explanation of
the applicant's invention, by exemplifying the invention, explaining
how it relates to the prior art and explaining the relative
significance of various features of the invention. Accordingly, Office
personnel should begin their evaluation of a computer-related invention
as follows:
--Determine what the programmed computer does when it performs the
processes dictated by the software (i.e., the functionality of the
programmed computer); \9\
--Determine how the computer is to be configured to provide that
functionality (i.e., what elements constitute the programmed computer
and how those elements are configured and interrelated to provide the
specified functionality); and
--If applicable, determine the relationship of the programmed computer
to other subject matter outside the computer that constitutes the
invention (e.g., machines, devices, materials, or process steps other
than those that are part of or performed by the programmed
computer).\10\
Patent applicants can assist the Office by preparing applications that
clearly set forth these aspects of a computer-related invention.
C. Review the Claims
The claims define the property rights provided by a patent, and
thus require careful scrutiny. The goal of claim analysis is to
identify the boundaries of the protection sought by the applicant and
to understand how the claims relate to and define what the applicant
has indicated is the invention. Office personnel must thoroughly
analyze the language of a claim before determining if the claim
complies with each statutory requirement for patentability.
Office personnel should begin claim analysis by identifying and
evaluating each claim limitation. For processes, the claim limitations
will define steps or acts to be performed. For products,\11\ the claim
limitations will define discrete physical structures. The discrete
physical structures may be comprised of hardware or a combination of
hardware and software.
Office personnel are to correlate each claim limitation to all
portions of the disclosure that describe the claim limitation. This is
to be done in all cases, i.e., whether or not the claimed invention is
defined using means or step plus function language. The correlation
step will ensure that Office personnel correctly interpret each claim
limitation.
The subject matter of a properly construed claim is defined by the
terms that limit its scope. It is this subject matter that must be
examined. As a general matter, the grammar and intended meaning of
terms used in a claim will dictate whether the language limits the
claim scope. Language that suggests or makes optional but does not
require steps to be performed or does not limit a claim to a particular
structure does not limit the scope of a claim or claim limitation.\12\
Office personnel must rely on the applicant's disclosure to
properly determine the meaning of terms used in the claims.\13\ An
applicant is entitled to be his or her own lexicographer, and in many
instances will provide an explicit definition for certain terms used in
the claims. Where an explicit definition is provided by the applicant
for a term, that definition will control interpretation of the term as
it is used in the claim. Office personnel should determine if the
original disclosure provides a definition consistent with any
assertions made by applicant.\14\ If an applicant does not define a
term in the specification, that term will be given its ``common
meaning.'' \15\
If the applicant asserts that a term has a meaning that conflicts
with the term's art-accepted meaning, Office personnel should encourage
the applicant to amend the claim to better reflect what applicant
intends to claim as the invention. If the application becomes a patent,
it becomes prior art against subsequent applications. Therefore, it is
important for later search purposes to have the patentee employ
commonly accepted terminology, particularly for searching text-
searchable databases.
Office personnel must always remember to use the perspective of one
of ordinary skill in the art. Claims and disclosures are not to be
evaluated in a vacuum. If elements of an invention are well known in
the art, the applicant does not have to provide a disclosure that
describes those elements. In such a case the elements will be construed
as encompassing any and every art-recognized hardware or combination of
hardware and software technique for implementing the defined requisite
functionalities.
Office personnel are to give claims their broadest reasonable
interpretation in light of the supporting disclosure.\16\ Where means
plus function language is used to define the characteristics of a
machine or manufacture invention, claim limitations must be interpreted
to read on only the structures or materials disclosed in the
specification and ``equivalents thereof.'' \17\ Disclosure may be
express, implicit or inherent. Thus, at the outset, Office personnel
must attempt to correlate claimed means to elements set forth in the
written description. The written description inlcudes the specification
and the drawings. Office personnel are to give the claimed means plus
function limitations their broadest reasonable interpretation
consistent with all corresponding structures or materials described in
the specification and their equivalents. Further guidance in
interpreting the scope of equivalents is provided in the ``Examination
Guidelines For Claims Reciting A Means or Step Plus Function Limitation
In Accordance With 35 U.S.C. 112, 6th, 6th Paragraph'' (``Means Plus
Function Guidelines'').\18\
While it is appropriate to use the specification to determine what
applicant intends a term to mean, a positive limitation from the
specification cannot be read into a claim that does not impose that
limitation. A broad interpretation of a claim by Office personnel will
reduce the possibility that the claim, when issued, will be interpreted
more broadly than is justified or intended. An applicant can always
amend a claim during prosecution to better reflect the intended scope
of the claim.
Finally, when evaluating the scope of a claim, every limitation in
the claim must be considered.\19\ Office personnel may not dissect a
claimed invention into discrete elements and then evaluate the elements
in isolation. Instead, the claim as a whole must be considered.
III. Conduct a Thorough Search of the Prior Art
Prior to classifying the claimed invention under Sec. 101, Office
personnel are expected to conduct a thorough search of the prior art.
Generaly, a
[[Page 7481]]
thorough search invovles reviewing both U.S. and foreign patents and
nonpatent literature. In may cases, the result of such a search will
contribute to Office personnel's understanding of the invention. Both
claimed and unclaimed aspects of the invention described in the
specification should be searched if there is a reasonable expectation
that the unclaimed aspects may be later claimed. A search must take
into account any structure or material described in the specification
and its equivalents which correspond to the claimed means plus function
limitation, in accordance with 35 U.S.C. Sec. 112, sixth paragraph and
the Means Plus Function Guidelines.\20\
IV. Determine Whether the Claimed Invention Complies With 35 U.S.C.
101
A. Consider the Breadth of 35 U.S.C. Sec. 101 Under Controling Law
As the Supreme Court has held, Congress chose the expansive
language of Sec. 101 so as to include ``anything under the sun that is
made by man.'' \21\ Accordingly, Sec. 101 of title 35, United States
Code, provides:
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.\22\
As cast, Sec. 101 defines four categories of inventions that Congress
deemed to be the appropriate subject matter of a patent; namely,
processes, machines, manufactures and compositions of matter. The
latter three categories define ``things'' while the first category
defines ``actions'' (i.e., inventions that consist of a series of steps
or acts to be performed).\23\
Federal courts have held that Sec. 101 does have certain limits.
First, the phrase ``anything under the sun that is made by man'' is
limited by the text of Sec. 101, meaning that one may only patent
something that is a machine, manufacture, composition of matter or a
process.\24\ Second, Sec. 101 requires that the subject matter sought
to be patented be a ``useful'' invention. Accordingly, a complete
definition of the scope of Sec. 101, reflecting Congressional intent,
is that any new and useful process, machine, manufacture or composition
of matter under the sun that is made by man is the proper subject
matter of a patent. Subject matter not within one of the four statutory
invention categories or which is not ``useful'' in a patent sense is,
accordingly, not eligible to be patented.
The subject matter courts have found to be outside the four
statutory categories of invention is limited to abstract ideas, laws of
nature and natural phenomena. While this is easily stated, determining
whether an applicant is seeking to patent an abstract idea, a law of
nature or a natural phenomenon has proven to be challenging. These
three exclusions recognize that subject matter that is not a practical
application or use of an idea, a law of nature or a natural phenomenon
is not patentable.\25\
Courts have expressed a concern over ``preemption'' of ideas, laws
of nature or natural phenomena.\26\ The concern over preemption serves
to bolster and justify the prohibition against the patenting of such
subject matter. In fact, such concerns are only relevant to claiming a
scientific truth or principle. Thus, a claim to an ``abstract idea'' is
non-statutory because it does not represent a practical application of
the idea, not because it would preempt the idea.
B. Classify the Claimed Invention as to Its Proper Statutory Category
To properly determine whether a claimed invention complies with the
statutory invention requirements of Sec. 101, Office personnel should
classify each claim into one or more statutory or non-statutory
categories. If the claim falls into a non-statutory category, that
should not preclude complete examination of the application for
satisfaction of all other conditions of patentability. This
classification is only an initial finding at this point in the
examination process that will be again assessed after the examination
for compliance with Secs. 112, 102 and 103 is completed and before
issuance of any Office action on the merits.
If the invention as set forth in the written description is
statutory, but the claims define subject matter that is not, the
deficiency can be corrected by an appropriate amendment of the claims.
In such a case, Office personnel should reject the claims drawn to non-
statutory subject matter under Sec. 101, but identify the features of
the invention that would render the claimed subject matter statutory if
recited in the claim.
1. Non-Statutory Subject Matter
Claims to computer-related inventions that are clearly non-
statutory fall into the same general categories as non-statutory claims
in other parts, namely natural phenomena such as magnetism, and
abstract ideas or laws of nature which constitute ``descriptive
material.'' Descriptive material can be characterized as either
``functional descriptive material'' or ``non-functional descriptive
material.'' In this context, ``functional descriptive material''
consists of data structures \27\ and computer programs which impart
functionality when encoded on a computer-readable medium. ``Non-
functional descriptive material'' includes but is not limited to music,
literary works and a compilation or mere arrangement of data.
Both types of ``descriptive material'' are non-statutory when
claimed as descriptive material per se. When functional descriptive
material is recorded on some computer-readable medium it becomes
structurally and functionally interrelated to the medium and will be
statutory in most cases.\28\ When non-functional descriptive material
is recorded on some computer-readable medium, it is not structurally
and functionally interrelated to the medium but is merely carried by
the medium. Merely claiming non-functional descriptive material stored
in a computer-readable medium does not make it statutory. Such a result
would exalt form over substance.\29\ Thus, non-statutory music does not
become statutory by merely recording it on a compact disk. Protection
for this type of work is provided under the copyright law.
Claims to processes that do nothing more than solve mathematical
problems or manipulate abstract ideas or concepts are more complex to
analyze and are addressed below. See sections IV.B.2(d) and IV.B.2(e).
(a) Functional Descriptive Material: ``Data Structures''
Representing Descriptive Material Per Se or Computer Programs
Representing Computer Listings Per Se. Data structures not claimed as
embodied in computer-readable media are descriptive material per se and
are not statutory because they are neither physical ``things'' nor
statutory processes.\30\ Such claimed data structures do not define any
structural and functional interrelationships between the data structure
and other claimed aspects of the invention which permit the data
structure's functionality to be realized. In contrast, a claimed
computer-readable medium encoded with a data structure defines
structural and functional interrelationships between the data structure
and the medium which permit the data structure's functionality to be
realized, and is thus statutory.
Similarly, computer programs claimed as computer listings per se,
i.e., the descriptions or expressions of the programs, are not physical
``things,'' nor are they statutory processes, as they are not ``acts''
being performed. Such claimed computer programs do not define any
structural and functional interrelationships between the computer
program and other claimed aspects of
[[Page 7482]]
the invention which permit the computer program's functionality to be
realized. In contrast, a claimed computer-readable medium encoded with
a computer program defines structural and functional interrelationships
between the computer program and the medium which permit the computer
program's functionality to be realized, and is thus statutory.
Accordingly, it is important to distinguish claims that define
descriptive material per se from claims that define statutory
inventions.
Computer programs are often recited as part of a claim. Office
personnel should determine whether the computer program is being
claimed as part of an otherwise statutory manufacture or machine. In
such a case, the claim remains statutory irrespective of the fact that
a computer program is included in the claim. The same result occurs
when a computer program is used in a computerized process where the
computer executes the instructions set forth in the computer program.
Only when the claimed invention taken as a whole is directed to a mere
program listing, i.e., to only its description or expression, is it
descriptive material per se and hence non-statutory.
Since a computer program is merely a set of instructions capable of
being executed by a computer, the computer program itself is not a
process and Office personnel should treat a claim for a computer
program, without the computer-readable medium needed to realize the
computer program's functionality, as non-statutory functional
descriptive material. When a computer program is claimed in a process
where the computer is executing the computer program's instructions,
Office personnel should treat the claim as a process claim. See
Sections IV.B.2(b)-(e). When a computer program is recited in
conjunction with a physical structure, such as a computer memory,
Office personnel should treat the claim as a product claim. See Section
IV.B.2(a).
(b) Non-Functional Descriptive Material. Descriptive material that
cannot exhibit any functional interrelationship with the way in which
computing processes are performed does not constitute a statutory
process, machine, manufacture or composition of matter and should be
rejected under Sec. 101. Thus, Office personnel should consider the
claimed invention as a whole to determine whether the necessary
functional interrelationship is provided.
Where certain types of descriptive material, such as music,
literature, art, photographs and mere arrangements or compilations of
facts or data,\31\ are merely stored so as to be read or outputted by a
computer without creating any functional interrelationship, either as
part of the stored data or as part of the computing processes performed
by the computer, then such descriptive material alone does not impart
functionality either to the data as so structured, or to the computer.
Such ``descriptive material'' is not a process, machine, manufacture or
composition of matter.
The policy that precludes the patenting of non-functional
descriptive material would be easily frustrated if the same descriptive
material could be patented when claimed as an article of
manufacture.\32\ For example, music is commonly sold to consumers in
the format of a compact disc. In such cases, the known compact disc
acts as nothing more than a carrier for non-functional descriptive
material. The purely non-functional descriptive material cannot alone
provide the practical application for the manufacture.
Office personnel should be prudent in applying the foregoing
guidance. Non-functional descriptive material may be claimed in
combination with other functional descriptive material on a computer-
readable medium to provide the necessary functional and structural
interrelationship to satisfy the requirements of Sec. 101. The presence
of the claimed non-functional descriptive material is not necessarily
determinative of non-statutory subject matter. For example, a computer
that recognizes a particular grouping of musical notes read from memory
and upon recognizing that particular sequence, causes another defined
series of notes to be played, defines a functional interrelationship
among that data and the computing processes performed when utilizing
that data, and as such is statutory because it implements a statutory
process.
(c) Natural Phenomena Such as Electricity and Magnetism.--Claims
that recite nothing but the physical characteristics of a form of
energy, such as a frequency, voltage, or the strength of a magnetic
field, define energy or magnetism, per se, and as such are non-
statutory natural phenomena.\33\ However, a claim directed to a
practical application of a natural phenomenon such as energy or
magnetism is statutory.\34\
2. Statutory Subject Matter
(a) Statutory Product Claims \35\.--If a claim defines a useful
machine or manufacture by identifying the physical structure of the
machine or manufacture in terms of its hardware or hardware and
software combination, it defines a statutory product.\36\
A machine or manufacture claim may be one or two types: (1) A claim
that encompasses any and every machine for performing the underlying
process or any and every manufacture that can cause a computer to
perform the underlying process, or (2) a claim that defines a specific
machine or manufacture. When a claim is of the first type, Office
personnel are to evaluate the underlying process the computer will
perform in order to determine the patentability of the product.
(i) Claims That Encompass Any Machine or Manufacture Embodiment of
a Process. Office personnel must treat each claim as a whole. The mere
fact that a hardware element is recited in a claim does not necessarily
limit the claim to a specific machine or manufacture.\37\ If a product
claim encompasses any and every computer implementation of a process,
when read in light of the specification, it should be examined on the
basis of the underlying process. Such a claim can be recognized as it
will:
--Define the physical characteristics of a computer or computer
component exclusively as functions or steps to be performed on or by a
computer, and
--Encompass any and every product in the stated class (e.g., computer,
computer-readable memory) configured in any manner to perform that
process.
Office personnel are reminded that finding a product claim to
encompass any and every product embodiment of a process invention
simply means that the Office will presume that the product claim
encompasses any and every hardware or hardware platform and associated
software implementation that performs the specified set of claimed
functions. Because this is interpretative and nothing more, it does not
provide any information as to the patentability of the applicant's
underlying process or the product claim.
When Office personnel have reviewed the claim as a whole and found
that it is not limited to a specific machine or manufacture, they shall
identify how each claim limitation has been treated and set forth their
reasons in support of their conclusion that the claim encompasses any
and every machine or manufacture embodiment of a process. This will
shift the burden to applicant to demonstrate why the claimed invention
should be limited to a specific machine or manufacture.
If a claim is found to encompass any and every product embodiment
of the
[[Page 7483]]
underlying process, and if the underlying process is statutory, the
product claim should be classified as a statutory product. By the same
token, if the underlying process invention is found to be non-
statutory, Office personnel should classify the ``product'' claim as a
``non-statutory product.'' If the product claim is classified as being
a non-statutory product on the basis of the underlying process, Office
personnel should emphasize that they have considered all claim
limitations and are basing their finding on the analysis of the
underlying process.
(ii) Product Claims--Claims Directed to Specific Machines and
Manufactures. If a product claim does not encompass any and every
computer-implementation of a process, then it must be treated as a
specific machine or manufacture. Claims that define a computer-related
invention as a specific machine or specific article of manufacture must
define the physical structure of the machine or manufacture in terms of
its hardware or hardware and ``specific software.'' 38 The
applicant may define the physical structure of a programmed computer or
its hardware or software components in any manner that can be clearly
understood by a person skilled in the relevant art. Generally a claim
drawn to a particular programmed computer should identify the elements
of the computer and indicate how those elements are configured in
either hardware or a combination of hardware and specific software.
To adequately define a specific computer memory, the claim must
identify a general or specific memory and the specific software which
provides the functionality stored in the memory.
A claim limited to a specific machine or manufacture, which has a
practical application in the technological arts, is statutory. In most
cases, a claim to a specific machine or manufacture will have a
practical application in the technological arts.
(iii) Hypothetical Machine Claims Which Illustrate Claims of the
Types Described in Sections IV.B.2(a) (i) and (ii). Two applicants
present a claim to the following process:
A process for determining and displaying the structure of a
chemical compound comprising:
(a) Solving the wavefunction parameters for the compound to
determine the structure of a compound; and
(b) Displaying the structure of the compound determined in step
(a).
Each applicant also presents a claim to the following apparatus:
A computer system for determining the three dimensional structure
of a chemical compound comprising:
(a) Means for determining the three dimensional structure of a
compound; and
(b) Means for creating and displaying an image representing a
three-dimensional perspective of the compound.
In addition, each applicant provides the noted disclosures to
support the claims:
------------------------------------------------------------------------
Applicant A Applicant B
------------------------------------------------------------------------
Disclosure:
The disclosure describes specific The disclosure states that it would
software, i.e., specific program be a matter of routine skill to
code segments, that are to be select an appropriate conventional
employed to configure a general computer system and implement the
purpose microprocessor to create claimed process on that computer
specific logic circuits. These system. The disclosure does not
circuits are indicated to be the have specific disclosure that
``means'' corresponding to the corresponds to the two ``means''
claimed means limitations. limitations recited in the claim
(i.e., no specific software or
logic circuit). The disclosure does
have an explanation of how to solve
the wavefunction equations of a
chemical compound, and indicates
that the solutions of those
wavefunction equations can be
employed to determine the physical
structure of the corresponding
compound.
Result:
Claim defines specific computer, Claim encompasses any computer
patentability stands embodiment of process claim;
independently from process claim. patentability stands or falls with
process claim.
Explanation:
Disclosure identifies the specific Disclosure does not provide any
machine capable of performing the information to distinguish the
indicated functions. ``implementation'' of the process
on a computer from the factors that
will govern the patentability
determination of the process per
se. As such, the patentability of
this apparatus claim will stand or
fall with that of the process
claim.
------------------------------------------------------------------------
(b) Statutory Process Claims. A claim that requires one or more
acts to be performed defines a process. However, not all processes are
statutory under Sec. 101. To be statutory, a claimed computer-related
process must either: (1) Result in a physical transformation outside
the computer for which a practical application in the technological
arts is either disclosed in the specification or would have been known
to a skilled artisan (discussed in (i) below,\39\) or (2) be limited by
the language in the claim to be practical application within the
technological arts (discussed in (ii) below).\40\ The claimed practical
application must be a further limitation upon the claimed subject
matter if the process is confined to the internal operations of the
computer. If a physical transformation occurs outside the computer, it
is not necessary to claim the practical application. A disclosure that
permits a skilled artisan to practice the claimed invention, i.e., to
put it to a practical use, is sufficient. On the other hand, it is
necessary to claim the practical application if there is no physical
transformation or if the process merely manipulates concepts or
converts one set of numbers into another.
A claimed process is clearly statutory if it results in a physical
transformation outside the computer, i.e., falls into one or both of
the following specific categories (``safe harbors'').
(i) Safe Harbors
-- Independent Physical Acts (Post-Computer Process Activity)
A process is statutory if it requires physical acts to be performed
outside the computer independent of and following the steps to be
performed by a programmed computer, where those acts involve the
manipulative of tangible physical objects and result in the object
having a different physical attribute or structure.\41\ Thus, if a
process claim includes one or more post-computer process steps that
result in a physical transformation outside the computer (beyond merely
conveying the direct result of the computer operation, see Section
IV.B.2(d)(iii) below), the claim is clearly statutory.
Examples of this type of statutory process include the following:
--A method of curing rubber in a mold which relies upon updating
process
[[Page 7484]]
parameters, using a computer processor to determine a time period for
curing the rubber, using the computer processor to determine when the
time period has been reached in the curing process and then opening the
mold at that stage.
--A method of controlling a mechanical robot which relies upon storing
data in a computer that represents various types of mechanical
movements of the robot, using a computer processor to calculate
positioning of the robot in relation to given tasks to be performed by
the robot, and controlling the robot's movement and position based on
the calculated position.
--Manipulation of Data Representing Physical Objects or Activities
(Pre-Computer Process Activity)
Another statutory process is one that requires the measurements of
physical objects or activities to be transformed outside of the
computer into computer data,\42\ where the data comprises signals
corresponding to physical objects or activities external to the
computer system, and where the process causes a physical transformation
of the signals which are intangible representations of the physical
objects or activities.\43\
Examples of this type of claimed statutory process include the
following:
--A method of using a computer processor to analyze electrical signals
and data representative of human cardiac activity by converting the
signals to time segments, applying the time segments in reverse order
to a high pass filter means, using the computer processor to determine
the amplitude of the high pass filter's output, and using the computer
processor to compare the value to a predetermined value. In this
example the data is an intangible representation of physical activity,
i.e., human cardiac activity. The transformation occurs when heart
activity is measured and an electrical signal is produced. This process
has real world value in predicting vulnerability to ventricular
tachycardia immediately after a heart attack.
--A method of using a computer processor to receive data representing
Computerized Axial Tomography (``CAT'') scan images of a patient,
performing a calculation to determine the difference between a local
value at a data point and an average value of the data in a region
surrounding the point, and displaying the difference as a gray scale
for each point in the image, and displaying the resulting image. In
this example the data is an intangible representation of a physical
object, i.e., portions of the anatomy of a patient. The transformation
occurs when the condition of the human body is measured with X-rays and
the X-rays are converted into electrical digital signals that represent
the condition of the human body. The real world value of the invention
lies in creating a new CAT scan image of body tissue without the
presence of bones.
--A method of using a computer processor to conduct seismic
exploration, by imparting spherical seismic energy waves into the earth
from a seismic source, generating a plurality of reflected signals in
response to the seismic energy waves at a set of receiver positions in
an array, and summing the reflection signals to produce a signal
simulating the reflection response of the earth to the seismic energy.
In this example, the electrical signals processed by the computer
represent reflected seismic energy. The transformation occurs by
converting the spherical seismic energy waves into electrical signals
which provide a geophysical representation of formations below the
earth's surface. Geophysical exploration of formations below the
surface of the earth has real world value.
If a claim does not clearly fall into one or both of the safe
harbors, the claim may still be statutory if it is limited by the
language in the claim to a practical application in the technological
arts.
(ii) Computer-Related Processes Limited to a Practical Application
in the Technological Arts. There is always some form of physical
transformation within a computer because a computer acts on signals and
transforms them during its operation and changes the state of its
components during the execution of a process. Even though such a
physical transformation occurs within a computer, such activity is not
determinative of whether the process is statutory because such
transformation alone does not distinguish a statutory computer process
from a non-statutory computer process. What is determinative is not how
the computer performs the process, but what the computer does to
achieve a practical application. \44\
A process that merely manipulates an abstract idea or performs a
purely mathematical algorithm is non-statutory despite the fact that it
might inherently have some usefulness.\45\ For such subject matter to
be statutory, the claimed process must be limited to a practical
application of the abstract idea or mathematical algorithm in the
technological arts.\46\ For example, a computer process that simply
calculates a mathematical algorithm that models noise is non-statutory.
However, a claimed process for digitally filtering noise employing the
mathematical algorithm is statutory.
Examples of this type of claimed statutory process include the
following:
--A computerized method of optimally controlling transfer, storage and
retrieval of data between cache and hard disk storage devices such that
the most frequently used data is readily available.
--A method of controlling parallel processors to accomplish multi-
tasking of several computing tasks to maximize computing
efficiency.\47\
--A method of making a word processor by storing an executable word
processing application program in a general purpose digital computer's
memory, and executing the stored program to impart word processing
functionality to the general purpose digital computer by changing the
state of the computer's arithmetic logic unit when program instructions
of the word processing program are executed.
--A digital filtering process for removing noise from a digital signal
comprising the steps of calculating a mathematical algorithm to produce
a correction signal and subtracting the correction signal from the
digital signal to remove the noise.
(c) Non-Statutory Process Claims. If the ``acts'' of a claimed
process manipulate only numbers, abstract concepts or ideas, or signals
representing any of the foregoing, the acts are not being applied to
appropriate subject matter. Thus, a process consisting solely of
mathematical operations, i.e., converting one set of numbers into
another set of numbers, does not manipulate appropriate subject matter
and thus cannot constitute a statutory process.
In practical terms, claims define non-statutory processes if they:
--Consist solely of mathematical operations without some claimed
practical application (i.e., executing a ``mathematical algorithm'');
or
--Simply manipulate abstract ideas, e.g., a bid \68\ or a bubble
hierarchy,\49\ without some claimed practical application.
A claimed process that consists solely of mathematical operations
is non-statutory whether or not it is performed on a computer. Courts
have recognized a distinction between types of mathematical algorithms,
namely, some define a ``law of nature'' in
[[Page 7485]]
mathematical terms and others merely describe an ``abstract idea.''
\50\
Certain mathematical algorithms have been held to be non-statutory
because they represent a mathematical definition of a law of nature or
a natural phenomenon. For example, a mathematical algorithm
representing the formula E=mc\2\ is a ``law of nature''--it defines a
``fundamental scientific truth'' (i.e., the relationship between energy
and mass). To comprehend how the law of nature relates to any object,
one invariably has to perform certain steps (e.g., multiplying a number
representing the mass of an object by the square of a number
representing the speed of light). In such a case, a claimed process
which consists solely of the steps that one must follow to solve the
mathematical representation of E=mc\2\ is indistinguishable from the
law of nature and would ``preempt'' the law of nature. A patent cannot
be granted on such a process.
Other mathematical algorithms have been held to be non-statutory
because they merely describe an abstract idea. An ``abstract idea'' may
simply be any sequence of mathematical operations that are combined to
solve a mathematical problem. The concern addressed by holding such
subject matter non-statutory is that the mathematical operations merely
describe an idea and do not define a process that represents a
practical application of the idea.
Accordingly, when a claim reciting a mathematical algorithm is
found to define non-statutory subject matter the basis of the Sec. 101
rejection must be that, when taken as a whole, the claim recites a law
of nature, a natural phenomenon, or an abstract idea.
(d) Certain Claim Language Related to Mathematical Operation Steps
of a Process. (i) Intended Use or Field of Use Statements. Claim
language that simply specifies an intended use or field of use for the
invention generally will not limit the scope of a claim, particularly
when only presented in the claim preamble. Thus, Office personnel
should be careful to properly interpret such language.\51\ When such
language is treated as non-limiting, Office personnel should expressly
identify in the Office action the claim language that constitutes the
intended use or field of use statements and provide the basis for their
findings. This will shift the burden to applicant to demonstrate why
the language is to be treated as a claim limitation.
(ii) Necessary Antecedent Step to Performance of a Mathematical
Operation or Independent Limitation on a Claimed Process. In some
situations, certain acts of ``collecting'' or ``selecting'' data for
use in a process consisting of one or more mathematical operations will
not further limit a claim beyond the specified mathematical operation
step(s). Such acts merely determine values for the variables used in
the mathematical formulae used in making the calculations.\52\ In other
words, the acts are dictated by nothing other than the performance of a
mathematical operation.\53\
If a claim requires acts to be performed to create data that will
then be used in a process representing a practical application of one
or more mathematical operations, those acts must be treated as further
limiting the claim beyond the mathematical operation(s) per se. Such
acts are data gathering steps not dictated by the algorithm but by
other limitations which require certain antecedent steps and as such
constitute an independent limitation on the claim.
Examples of acts that independently limit a claimed process
involving mathematical operations include:
--A method of conducting seismic exploration which requires generating
and manipulating signals from seismic energy waves before ``summing''
the values represented by the signals; \54\ and
--A method of displaying X-ray attenuation data as a signed gray scale
signal in a ``field'' using a particular algorithm, where the
antecedent steps require generating the data using a particular machine
(e.g., a computer tomography scanner).\55\
Examples of steps that do not independently limit one or more
mathematical operation steps include:
--``Perturbing'' the values of a set of process inputs, where the
subject matter ``perturbed'' was a number and the act of ``perturbing''
consists of substituting the numerical values of variables; \56\ and
--Selecting a set of arbitrary measurement point values.\57\
Such steps do not impose independent limitations on the scope of
the claim beyond those required by the mathematical operation
limitation.
(iii) Post-Mathematical Operation Step Using Solution or Merely
Conveying Result of Operation. In some instances, certain kinds of
post-solution ``acts'' will not further limit a process claim beyond
the performance of the preceding mathematical operation step even if
the acts are recited in the body of a claim. If, however, the claimed
acts represent some ``significant use'' of the solution, those acts
will invariably impose an independent limitation on the claim. A
``significant use'' is any activity which is more than merely
outputting the direct result of the mathematical operation. Office
personnel are reminded to rely on the applicant's characterization of
the significance of the acts being assessed to resolve questions
related to their relationship to the mathematical operations recited in
the claim and the invention as a whole.\58\ Thus, if a claim requires
that the direct result of a mathematical operation be evaluated and
transformed into something else, Office personnel cannot treat the
subsequent steps as being indistinguishable from the performance of the
mathematical operation and thus not further limiting on the claim. For
example, acts that require the conversion of a series of numbers
representing values of a wavefunction equation for a chemical compound
into values representing an image that conveys information about the
three-dimensional structure of the compound and the displaying of the
three-dimensional structure cannot be treated as being part of the
mathematical operations.
Office personnel should be especially careful when reviewing claim
language that requires the performance of ``post-solution'' steps to
ensure that claim limitations are not ignored.
Examples of steps found not to independently limit a process
involving one or more mathematical operation steps include:
--Step of ``updating alarm limits'' found to constitute changing the
number value of a variable to represent the result of the calculation;
\59\
--Final step of magnetically recording the result of a calculation;
\60\
--Final step of ``equating'' the process outputs to the values of the
last set of process inputs found to constitute storing the result of
calculations; \61\
--Final step of displaying result of a calculation ``as a shade of gray
rather than as simply a number'' found to not constitute distinct step
where the data were numerical values that did not represent anything;
\62\
--Step of ``transmitting electrical signals representing'' the result
of calculations.\63\
(e) Manipulation of Abstract Ideas Without a Claimed Practical
Application. A process that consists solely of the manipulation of an
abstract idea without any limitation to a practical application is non-
statutory.\64\ Office personnel have the burden to establish a prima
facie case that the claimed invention taken as a whole is directed to
the manipulation of abstract ideas without a practical application.
[[Page 7486]]
In order to determine whether the claim is limited to a practical
application of an abstract idea, Office personnel must analyze the
claim as a whole, in light of the specification, to understand what
subject matter is being manipulated and how it is being manipulated.
During this procedure, Office personnel must evaluate any statements of
intended use or field of use, any data gathering step and any post-
manipulation activity. See section IV.B.2(d) above for how to treat
various types of claim language. Only when the claim is devoid of any
limitation to a practical application in the technological arts should
it be rejected under Sec. 101. Further, when such a rejection is made,
Office personnel must expressly state how the language of the claims
has been interpreted to support the rejection.
V. Evaluate Application for Compliance With 35 U.S.C. 112
Office personnel should begin their evaluation of an application's
compliance with Sec. 112 by considering the requirements of Sec. 112,
second paragraph. The second paragraph contains two separate and
distance requiremtns: (1) That the claim(s) set forth the subject
matter applicants regard as the invention, and (2) that the claim(s)
particularly point out and distinctly claim the invention. An
application will be deficient under Sec. 112, second paragraph when (1)
evidence including admissions, other than in the application as filed,
shows applicant has stated that he or she regards the invention to be
different from what is claimed, or when (2) the scope of the claims is
unclear.
After evaluation of the application for compliance with Sec. 112,
second paragraph, Office personnel should then evaluate the application
for compliance with the requirements of Sec. 112, first paragraph. The
first paragraph contains three separate and distinct requirements: (1)
Adequate written description, (2) enablement, and (3) best mode. An
application will be deficient under Sec. 112, first paragraph when the
written description is not adequate to identify what the applicant has
invented, or when the disclosure does not enable one skilled in the art
to make and use the invention as claimed without undue experimentation.
Deficiencies related to disclosure of the best mode for carrying out
the claimed invention are not usually encountered during examination of
an application because evidence to support such a deficiency is seldom
in the record.
If deficiencies are discovered with respect to Sec. 112, Office
personnel must be careful to apply the appropriate paragraph of
Sec. 112.
A. Determine Whether the Claimed Invention Complies With 35 U.S.C. 112,
Second Paragraph Requirements
1. Claims Setting Forth the Subject Matter Applicant Regards as
Invention
Applicant's specification must conclude with claim(s) that set
forth the subject matter which the applicant regards as the invention.
The invention set forth in the claims is presumed to be that which
applicant regards as the invention, unless applicant considers the
invention to be something different from what has been claimed as shown
by evidence, including admissions, outside the application as filed. An
applicant may change what he or she regards as the invention during the
prosecution of the application.
2. Claims Particularly Pointing Out and Distinctly Claiming the
Invention
Office personnel shall determine whether the claims set out and
circumscribe the invention with a reasonable degree of precision and
particularity. In this regard, the definiteness of the language must be
analyzed, not in a vacuum, but always in light of the teachings of the
disclosure as it would be interpreted by one of ordinary skill in the
art. Applicant's claims, interpreted in light of the disclosure, must
reasonably apprise a person of ordinary skill in the art of the
intervention. However, the applicant need not explicitly recite in the
claims every feature of the invention. For example, if an applicant
indicates that the invention is a particular computer, the claims do
not have to recite every element or feature of the computer. In fact,
it is preferable for claims to be drafted in a form that emphasizes
what the applicant has invented (i.e., what is new rather than old).
A means plus function limitation is distinctly claimed if the
description makes it clear that the means corresponds to well-defined
structure of a computer or computer component implemented in either
hardware or software and its associated hardware platform. Such means
may be defined as:
--A programmed computer with particular functionality implemented in
hardware or hardware and software;
--A logic circuit or other component of a programmed computer that
performs a series of specifically identified operations dictated by a
computer program; or
--A computer memory encoded with executable instructions representing a
computer program that can cause a computer to function in a particular
fashion.
The scope of a ``means'' limitation is defined as the corresponding
structure or material (e.g., a specific logic circuit) set forth in the
written description and equivalents.\65\ Thus, a claim using means plus
function limitations without corresponding disclosure of specific
structures or materials that are not well-know fails to particularly
point out and distinctly claim the invention. For example, if the
applicant discloses only the functions to be performed and provides no
express, implied or inherent disclosure of hardware or a combination of
hardware and software that performs the functions, the application has
not disclosed any ``structure'' which corresponds to the claimed means.
Office personnel should reject such claims under Sec. 112, second
paragraph. The rejection shifts the burden to the applicant to describe
at least one specific structure or material that corresponds to the
claimed means in question, and to identify the precise location or
locations in the specification where a description of least one
embodiment of that claimed means can be found. In contrast, if the
corresponding structure is disclosed to be a memory or logic circuit
that has been configured in some manner to perform that function (e.g.,
using a defined computer program), the application has disclosed
``structure'' which corresponds to the claimed means.
When a claim or part of a claim is defined in computer program
code, whether in source or object code format, a person of skill in art
must be able to ascertain the metes and bounds of the claimed
invention. In certain circumstances, as where a self-documenting
programming code is employed, use of programming language in a claim
would be permissible because such program source code presents
``sufficiently high-level language and descriptive identifiers'' to
make it universally understood to others in the art without the
programmer having to insert any comments.\66\ Applicants should be
encouraged to functionally define the steps the computer will perform
rather than simply reciting source or object code instructions.
[[Page 7487]]
B. Determine Whether the Claimed Invention Complies with 35 U.S.C. 112,
First Paragraph Requirements
1. Adequate Written Description
The satisfaction of the enablement requirement does not satisfy the
written description requirement.\67\ For the written description
requirement, an applicant's specification must reasonably convey to
those skilled in the art that the applicant was in possession of the
claimed invention as of the date of invention. The claimed invention
subject matter need not be described literally, i.e., using the same
terms, in order for the disclosure to satisfy the description
requirement.
2. Enabling Disclosure
An applicant's specification must enable a person skilled in the
art to make and use the claimed invention without undue
experimentation. The fact that experimentation is complex, however,
will not make it undue if a person of skill in the art typically
engages in such complex experimentation. For a computer-related
invention, the disclosure must enable a skilled artisan to configure
the computer to possess the requisite functionality, and, where
applicable, interrelate the computer with other elements to yield the
claimed invention, without the exercise of undue experimentation. The
specification should disclose how to configure a computer to possess
the requisite functionality or how to integrate the programmed computer
with other elements of the invention, unless a skilled artisan would
know how to do so without such disclosure.\68\
For many computer-related inventions, it is not unusual for the
claimed invention to involve more than one field of technology. For
such inventions, the disclosure must satisfy the enablement standard
for each aspect of the invention.\69\ As such, the disclosure must
teach a person skilled in each art how to make and use the relevant
aspect of the invention without undue experimentation. For example, to
enable a claim to a programmed computer that determines and displays
the three-dimensional structure of a chemical compound, the disclosure
must
--enable a person skilled in the art of molecular modeling to
understand and practice the underlying molecular modeling processes;
and
--enable a person skilled in the art of computer programming to create
a program that directs a computer to create and display the image
representing the three-dimensional structure of the compound.
In other words, the disclosure corresponding to each aspect of the
invention must be enabling to a person skilled in each respective art.
In many instances, an applicant will describe a programmed computer
by outlining the significant elements of the programmed computer using
a functional block diagram. Office personnel should review the
specification to ensure that along with the functional block diagram
the disclosure provides information that adequately describes each
``element'' in hardware or hardware and its associated software and how
such elements are interrelated.\70\
VI. Determine Whether the Claimed Invention Complies With 35 U.S.C.
102 and 103
As is the case for inventions in any field of technology,
assessment of a claimed computer-related invention for compliance with
sections 102 and 103 begins with a comparison of the claimed subject
matter to what is known in the prior art. If no differences are found
between the claimed invention and the prior art, the claimed invention
lacks novelty and is to be rejected by Office personnel under section
102. Once distinctions are identified between the claimed invention and
the prior art, those distinctions must be assessed and resolved in
light of the knowledge possessed by a person of ordinary skill in the
art. Against this backdrop, one must determine whether the invention
would have been obvious at the time the invention was made. If not, the
claimed invention satisfies section 103. Factors and considerations
dictated by law governing section 103 apply without modification to
computer-related inventions.
If the difference between the prior art and the claimed invention
is limited to descriptive material stored on or employed by a machine,
Office personnel must determine whether the descriptive material is
functional descriptive material or non-functional descriptive material,
as described supra in Section IV. Functional descriptive material is a
limitation in the claim and must be considered and addressed in
assessing patentability under section 103. Thus, a rejection of the
claim as a whole under section 103 is inappropriate unless the
functional descriptive material would have been suggested by the prior
art. Non-functional descriptive material cannot render non-obvious an
invention that would have otherwise been obvious.\17\
Common situations involving non-functional descriptive material
are:
--A computer-readable storage medium that differs from the prior art
solely with respect to non-functional descriptive material, such as
music or a literary work, encoded on the medium,
--A computer that differs from the prior art solely with respect to
non-functional descriptive material that cannot alter how the machine
functions (i.e., the descriptive material does not reconfigure the
computer), or
--A process that differs from the prior art only with respect to non-
functional descriptive material that cannot alter how the process steps
are to be performed to achieve the utility of the invention.
Thus, if the prior art suggests storing a song on a disk, merely
choosing a particular song to store on the disk would be presumed to be
well within the level of ordinary skill in the art at the time the
invention was made. The difference between the prior art and the
claimed invention is simply a rearrangement of non-functional
descriptive material.
VII. Clearly Communicate Findings, Conclusions and Their Bases
Once Office personnel have concluded the above analyses of the
claimed invention under all the statutory provisions, including
sections 101, 112, 102 and 103, they should review all the proposed
rejections and their bases to confirm their correctness. Only then
should any rejection be imposed in an Office action. The Office action
should clearly communicate the findings, conclusions and reasons which
support them.
Notes
\1\ These Guidelines are final and replace the ``Proposed
Examination Guidelines for Computer-Implemented Inventions,'' 60 FR
28,778 (June 2, 1995) and the supporting legal analysis issued on
October 3, 1995.
\2\ ``Computer-related inventions'' include inventions
implemented in a computer and inventions employing computer-readable
media.
\3\ In re Abele, 684 F.2d 902, 905-07, 214 USPQ 682, 685-87
(CCPA 1982); In re Walter, 618 F.2d 758, 767, 205 USPQ 397, 406-07
(CCPA 1980); In re Freeman, 573 F.2d 1237, 1245, 197 USPQ 464, 471
(CCPA 1978).
\4\ See, e.g., In re Toma, 575 F.2d 872, 877-78, 197 USPQ 852,
857 (CCPA 1978); In re Musgrave, 431 F.2d 882, 893, 167 USPQ 280,
289-90 (CCPA 1970). See also In re Schrader, 22 F.3d 290, 297-98, 30
USPQ2d 1455, 1461-62 (Fed. Cir. 1994) (Newman, J., dissenting);
Paine, Webber, Jackson & Curtis, Inc. v. Merrill Lynch, Pierce,
Fenner & Smith, Inc., 564 F. Supp. 1358, 1368-69, 218 USPQ 212, 220
(D. Del. 1983).
[[Page 7488]]
\5\ As the courts have repeatedly reminded the Office: ``The
goal is to answer the question `What did applicants invent?' ''
Abele, 684 F.2d at 907, 214 USPQ at 687. Accord, e.g., Arrhythmia
Research Tech. v. Corazonix Corp., 958 F.2d 1053, 1059, 22 USPQ2d
1033, 1038 (Fed. Cir. 1992).
\6\ Brenner v. Manson, 383 U.S. 519, 528-36, 148 USPQ 689, 693-
96 (1966); In re Ziegler, 992 F.2d 1197, 1200-03, 26 USPQ2d 1600,
1603-06 (Fed. Cir. 1993).
\7\ See, e.g., Musgrave, 431 F.2d at 893, 167 USPQ at 289-90,
cited with approval in Schrader, 22 F.3d at 297, 30 USPQ2d at 1461
(Newman, J., dissenting). The definition of ``technology'' is the
``application of science and engineering to the development of
machines and procedures in order to enhance or improve human
conditions, or at least to improve human efficiency in some
respect.'' Computer Dictionary 384 (Microsoft Press, 2d ed. 1994).
\8\ E.g., In re Alappat, 33 F.3d 1526, 1543, 31 USPQ2d 1545,
1556-57 (Fed. Cir. 1994) (in banc) (quoting Diamond v. Diehr, 450
U.S. 175, 192, 209 USPQ 1, 10 (1981)). See also id. at 1569, 31
USPQ2d at 1578-79 (Newman, J., concurring) (``unpatentability of the
principle does not defeat patentability of its practical
applications'') (citing O'Reilly v. Morse, 56 U.S. (15 How.) 62,
114-19 (1854)); Arrhythmia, 958 F.2d at 1056, 22 USPQ2d at 1036;
Musgrave, 431 F.2d at 893, 167 USPQ at 289-90 (``All that is
necessary, in our view, to make a sequence of operational steps a
statutory `process' within 35 U.S.C. 101 is that it be in the
technological arts so as to be in consonance with the Constitutional
purpose to promote the progress of `useful arts.' Const. Art. 1,
sec. 8.'').
\9\ Arrhythmia, 958 F.2d at 1057, 22 USPQ2d at 1036: It is of
course true that a modern digital computer manipulates data, usually
in binary form, by performing mathematical operations, such as
addition, subtraction, multiplication, division, or bit shifting, on
the data. But this is only how the computer does what it does. Of
importance is the significance of the data and their manipulation in
the real world, i.e., what the computer is doing.
\10\ Many computer-related inventions do not consist solely of a
computer. Thus, Office personnel should identify those claimed
elements of the computer-related invention that are not part of the
programmed computer, and determine how those elements relate to the
programmed computer. Office personnel should look for specific
information that explains the role of the programmed computer in the
overall process or machine and how the programmed computer is to be
integrated with the other elements of the apparatus or used in the
process.
\11\ Products may be either machines, manufacturers or
compositions of matter. Product claims are claims that are directed
to either machines, manufacturers or compositions of matter.
\12\ Examples of language that may raise a question as to the
limiting effect of the language in a claim:
(a) statements of intended use or field of use,
(b) ``adapted to'' or ``adapted for'' clauses,
(c) ``wherein'' clauses, or
(d) ``whereby'' clauses.
This list of examples is not intended to be exhaustive.
\13\ Markman v. Westview Instruments, 52 F.3d 967, 980, 34
USPQ2d 1321, 1330 (Fed. Cir.) (in banc), cert. granted, 116 S. Ct.
40 (1995).
\14\ See, e.g., In re Paulsen, 30 F.3d 1475, 1480, 31 USPQ2d
1671, 1674 (Fed. Cir. 1994) (inventor may define specific terms used
to describe invention, but must do so ``with reasonable clarity,
deliberateness, and precision'' and, if done, must `` `set out his
uncommon definition in some manner within the patent disclosure' so
as to give one of ordinary skill in the art notice of the change''
in meaning) (quoting Intellicall, Inc. v. Phonometrics, Inc., 952
F.2d 1384, 1387-88, 21 USPQ2d 1383, 1386 (Fed. Cir. 1992)).
\15\ Id. at 1480, 31 USPQ2d at 1674.
\16\ See, e.g., In re Zletz, 893 F.2d 319, 321-22, 13 USPQ2D
1320, 1322 (Fed. Cir. 1989) (``During patent examination the pending
claims must be interpreted as broadly as their terms reasonably
allow. * * * The reason is simply that during patent prosecution
when claims can be amended, ambiguities should be recognized, scope
and breadth of language explored, and clarification imposed. * * *
An essential purpose of patent examination is to fashion claims that
are precise, clear, correct, and unambiguous. Only in this way can
uncertainties of claims scope be removed, as much as possible,
during the administrative process.'').
\17\ Two in banc decisions of the Federal Circuit have made
clear that the Office is to interpret means plus function language
according to 35 U.S.C. Sec. 112, sixth paragraph. In the first, In
re Donaldson, 16 F.3d 1189, 1193, 29 USPQ2d 1845, 1848 (Fed. Cir.
1994), the court held:
The plain and unambiguous meaning of paragraph six is that one
construing means-plus-function language in a claim must look to the
specification and interpret that language in light of the
corresponding structure, material, or acts described therein, and
equivalents thereof, to the extent that the specification provides
such disclosure. Paragraph six does not state or even suggest that
the PTO is exempt from this mandate, and there is no legislative
history indicating that Congress intended that the PTO should be.
Thus, this court must accept the plain and precise language of
paragraph six.
Consistent with Donaldson, in the second decision, Alappat, 33
F.3d at 1540, 31 USPQ2d at 1554, the Federal Circuit held:
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 function'' 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.
\18\ 1162 O.G. (May 17, 1994).
\19\ See, e.g. Diamond v. Diehr, 450 U.S. at 188-89, 209 USPQ at
9 (``In determining the eligibility of respondents' claimed process
for patent protection under Sec. 101, their claims must be
considered as a whole. It is inappropriate to dissect the claims
into old and new elements and then to ignore the presence of the old
elements in the analysis. This is particularly true in a process
claim because a new combination of steps in a process may be
patentable even though all the constituents of the combination were
well known and in common use before the combination was made.'').
\20\ See supra note 18 and accompanying text.
\21\ Diamond v. Chakrabarty, 447 U.S. 303, 308-09, 206 USPQ 193,
197 (1980):
In choosing such expansive terms as ``manufacture'' and
``composition of matter,'' modified by the comprehensive ``any,''
Congress plainly contemplated that the patent laws would be given
wide scope. The relevant legislative history also supports a broad
construction. The Patent Act of 1793, authored by Thomas Jefferson,
defined statutory subject matter as ``any new and useful art,
machine, manufacture, or composition of matter, or any new or useful
improvement [thereof].'' Act of Feb. 21, 1793, Sec. 1, 1 Stat. 319.
The Act embodied Jefferson's philosophy that ``ingenuity should
receive a liberal encouragement.'' 5 Writings of Thomas Jefferson
75-76 (Washington ed. 1871). See Graham v. John Deere Co., 383 U.S.
1, 7-10 (1966). Subsequent patent statutes in 1836, 1870, and 1874
employed this same broad language. In 1952, when the patent laws
were recodified, Congress replaced the word ``art'' with
``process,'' but otherwise left Jefferson's language intact. The
Committee Reports accompanying the 1952 Act inform us that Congress
intended statutory subject matter to ``include anything under the
sun that is made by man.'' S. Rep. No. 1979, 82d Cong., 2d Sess. 5
(1952); H.R. Rep. No. 1923, 82d Cong., 2d Sess. 6 (1952).
This perspective has been embraced by the Federal Circuit:
The plain and unambiguous of Sec. 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 Secs. 102, 103, and 112. The use of the expansive term
``any'' in Sec. 101 represents Congress' intent not to place any
restrictions on the subject matter for which a patent may be
obtained beyond those specifically recited in Sec. 101 and the other
parts of Title 35. * * * Thus, it is improper to read into Sec. 101
limitations as to the subject matter that may be patented where the
legislative history does not indicate that Congress clearly intended
limitations. [Alappat, 33 F.3d at 1542, 31 USPQ2D at 1556.]
\22\ 35 U.S.C. 101 (1994).
\23\ 35 U.S.C. Sec. 100(b) (``The term `process' means process,
art, or method, and includes a new use of a known process, machine,
manufacture, composition of matter, or material.'').
\24\ E.g., Alappat, 33 F.3d at 1542, 31 USPQ2d at 1556; In re
Warmerdam, 33 F.3d 1354, 1358, 31 USPQ2d 1754, 1757 (Fed. Cir.
1994).
[[Page 7489]]
\25\ See. e.g., Rubber-Tip Pencil Co. v. Howard, 87 U.S. 498,
507 (1874) (``idea of itself is not patentable, but a new device by
which it may be made practically useful is''); Mackay Radio &
Telegraph Co. v. Radio Corp. of America, 306 U.S. 86, 94 (1939)
(``While a scientific truth, or the mathematical expression of it,
is not patentable invention, a novel and useful structure created
with the aid of knowledge of scientific truth may be.''); Warmerdam,
33 F.3d at 1360, 31 USPQ2d at 1759 (``steps of `locating' a medical
axis, and `creating' a bubble hierarchy * * * describe nothing more
than a manipulation of basic mathematical constructs, the
paradigmatic `abstract idea' '').
\26\ The concern over preemption was expressed as early as 1852.
See Le Roy v. Tatham, 55 U.S. 156, 175 (1852) (``A principle, in the
abstract, is a fundamental truth; an original cause; a motive; these
cannot be patented, as no one can claim in either of them an
exclusive right.'')' Funk Brothers Seed Co. v. Kalo Inoculant Co.,
333 U.S. 127, 132, 76 USPQ 280, 282 (1948) (combination of six
species of bacteria held to be non-statutory subject matter).
\27\ The definition of ``data structure'' is ``a physical or
logical relationship among data elements, designed to support
specific data manipulation functions.'' The New IEEE Standard
Dictionary of Electrical and Electronics Terms 308 (5th ed. 1993).
\28\ Compare In re Lowry, 32 F.3d 1579, 1583-84, 32 USPQ2d 1031,
1035 (Fed. Cir. 1994) (claim to data structure that increases
computer efficiency held statutory) and Warmerdam, 33 F.3d at 1360-
61, 31 USPQ2d at 1759 (claim to computer having specific memory held
statutory product-by-process claim) with Warmerdam, 33 F.3d at 1361,
31 USPQ2d at 1760 (claim to a data structure per se held non-
statutory).
\29\ In re Sarkar, 588 F.2d 1330, 1333, 200 USPQ 132, 137 (CCPA
1978):
[E]ach invention must be evaluated as claimed; yet semantogenic
considerations preclude a determination based solely on words
appearing in the claims. In the final analysis under Sec. 101, the
claimed invention, as a whole, must be evaluated for what it is.
Quoted with approval in Abele, 684 F.2d at 907, 214 USPQ at 687.
See also In re Johnson, 589 F.2d 1070, 1077, 200 USPQ 199, 206 (CCPA
1978) (``form of the claim is often an exercise in drafting'').
\30\ See, e.g., Warmerdam, 33 F.3d at 1361, 31 USPQ2d at 1760
(claim to a data structure per se held non-statutory).
\31\ Computer Dictionary 210 (Microsoft Press, 2d ed. 1994):
Data consists of facts, which become information when they are
seen in context and convey meaning to people. Computers process data
without any understanding of what that data represents.
\32\ See supra note 29.
O'Reilly v. Morse, 56 U.S. (15 How.) at 112-14.
\34\ Id. at 114-19.
\35\ Products may be either machines, manufactures or
compositions of matter.
A machine is:
a concrete thing, consisting of parts or of certain devices and
combinations of devices.
Burr v. Duryee, 68 U.S. (1 Wall.) 531, 570 (1863).
A manufacture is:
the production of articles for use from raw or prepared
materials by giving to these materials new forms, qualities,
properties or combinations, whether by hand-labor or by machinery.
Diamond v. Chakrabarty, 447 U.S. at 308, 206 USPQ at 196-97
(quoting American Fruit Growers, Inc. v. Brogdex Co., 283 U.S. 1, 11
(1931).
A composition of matter is:
a composition[] of two or more substances [or] * * * a[]
composite article[], whether * * * [it] be the result of chemical
union, or of mechanical mixture, whether * * * [it] be [a] gas[],
fluid[], powder[], or solid[].
Diamond v. Chakrabarty, 447 U.S. at 308, 206 USPQ at 197
(quoting Shell Development Co. v. Watson, 149 F. Supp. 279, 280, 113
USPQ 265, 266 (D.D.C. 1957), aff'd per curiam, 252 F.2d 861, 116
USPQ 428 (D.C. Cir. 1958).
\36\ See, e.g., Lowry, 32 F.3d at 1583, 32 USPQ2d at 1034-35;
USPQ2d at 1760.
\37\ Cf. In re Iwahashi, 888 F.2d 1370, 1374-75, 12 USPQ2d 1908,
1911-12 (Fed. Cir. 1989), cited with approval in Alappat, 33 F.3d at
1544, n.24, 31 USPQ2d at 1558 n.24.
\38\ ``Specific software'' is defined as a set of instructions
implemented in a specific program code segment. See Computer
Dictionary 78 (Microsoft Press, 2d ed. 1994) for definition of
``code segment.''
\39\ See Diamond v. Diehr, 450 U.S. at 183-84, 209 USPQ at 6
(quoting Cochrane v. Deener, 94 U.S. 780, 787-88 (1877) (``A
[statutory] process is a mode of treatment of certain materials to
produce a given result. It is an act, or a series of acts, performed
upon the subject-matter to be transformed and reduced to a different
state or thing. * * * The process requires that certain things
should be done with certain substances, and in a certain order; but
the tools to be used in doing this may be of secondary
consequence.'').
\40\ See Alappat, 33 F.3d at 1543, 31 USPQ2d at 1556-57 (quoting
Diamond v. Diehr, 450 U.S. at 192, 209 USPQ at 10). See also id. at
1569, 31 USPQ2d at 1578-79 (Newman, J., concurring)
(``unpatentability of the principle does not defeat patentability of
its practical applicants'') (citing O'Reilly v. Morse, 56 U.S. (15
How.) at 114-19).
\41\ Diamond v. Diehr, 450 U.S. at 187, 209 USPQ at 8.
\42\ See In re Gelnovatch, 595 F.2d 32, 41 n.7, 201 USPQ 136,
145 n.7 (CCPA 1979) (data-gathering step did not measure physical
phenomenon).
\43\ Schrader, 22 F.3d at 294, 30 USPQ2d at 1459 citing with
approval Arrhythmia, 958 F.2d at 1058-59, 22 USPQ2d at 1037-38;
Abele, 684 F.2d at 909, 214 USPQ at 688; In re Taner, 681 F.2d 787,
790, 214 USPQ, 678, 681 (CCPA 1982).
\44\ See supra note 9.
\45\ In Sarkar, 588 F.2d at 1335, 200 USPQ at 139, the court
explained why this approach must be followed:
No mathematical equation can be used, as a practical matter,
without establishing and substituting values for the variables
expressed therein. Substitution of values dictated by the formula
has thus been viewed as a form of mathematical step. If the steps of
gathering and substituting values were alone sufficient, every
mathematical equation, formula, or algorithm having any practical
use would be per se subject to patenting as a ``process'' under
Sec. 101. Consideration of whether the substitution of specific
values is enough to convert the disembodied ideas present in the
formula into an embodiment of those ideas, or into an application of
the formula, is foreclosed by the current state of the law.
\46\ See supra note 40.
\47\ See, e.g., In re Bernhart, 417 F.2d 1395, 1400, 163 USPQ
611, 616 (CCPA 1969).
\48\ Schrader, 22 F.3d at 293-94, 30 USPQ2d at 1458-59.
\49\ Warmerdam, 33 F.3d at 1360, 31 USPQ2d at 1759.
\50\ See, e.g., In re Meyer, 688 F.2d 789, 794-95, 215 USPQ 193,
197 (CCPA 1982) (``Scientific principles, such as the relationship
between mass and energy, and laws of nature, such as the
acceleration of gravity, namely, a=32 ft./sec.\2\, can be
represented in mathematical format. However, some mathematical
algorithms and formulae do not represent scientific principles or
laws of nature; they represent ideas or mental processes and are
simply logical vehicles or communicating possible solutions to
complex problems. The presence of a mathematical algorithm or
formula in a claim is merely an indication that a scientific
principle, law of nature, idea or mental process may be the subject
matter claimed and, thus, justify a rejection of that claim under 35
USC Sec. 101; but the presence of a mathematical algorithm or
formula is only a signpost for further analysis.''). Cf. Alappat, 33
F.3d at 1543 n.19, 31 USPQ2d at 1556 n.19 in which the Federal
Circuit recognized the confusion:
The Supreme Court has not been clear * * * as to whether such
subject matter is excluded from the scope of Sec. 101 because it
represents laws of nature, natural phenomena, or abstract ideas. See
Diehr, 450 U.S. at 186 (viewed mathematical algorithm as a law of
nature); Benson, 409 U.S. at 71-72 (treated mathematical algorithm
as an ``idea''). The Supreme Court also has not been clear as to
exactly what kind of mathematical subject matter may not be
patented. The Supreme Court has used, among others, the terms
``mathematical algorithm,'' ``mathematical formula,'' and
``mathematical equation'' to describe types of mathematical subject
matter not entitled to patent protection standing alone. The Supreme
Court has not set forth, however, any consistent or clear
explanation of what it intended such terms or how these terms are
related, if at all.
\51\ Walter, 618 F.2d at 769, 205 USPQ at 409 (Because none of
the claimed steps were explicitly or implicitly limited to their
application in seismic prospecting activities, the court held that
``[a]lthough the claim preambles relate the claimed invention to the
art of seismic prospecting, the claims themselves are not drawn to
methods of or apparatus for seismic prospecting; they are drawn to
improved mathematical methods for interpreting the results of
seismic
[[Page 7490]]
prospecting.''). Cf. Alappat, 33 F.3d at 1544, 31 USPQ2d at 1558.
\52\ Walter, 618 F.2d at 769-70, 205 USPQ at 409.
\53\ See supra note 45.
\54\ Taner, 681 F.2d at 788, 214 USPQ at 679.
\55\ Abele, 684 F.2d at 908, 214 USPQ at 687 (``The
specification indicates that such attenuation data is available only
when an X-ray beam is produced by a CAT scanner, passed through an
object, and detected upon its exist. Only after these steps have
been completed is the algorithm performed, and the resultant
modified data displayed in the required format.'').
\56\ Gelnovatch, 595 F.2d at 41 n.7, 201 USPQ at 145 n.7
(``Appellants' claimed step of perturbing the values of a set of
process inputs (step 3), in addition to being a mathematical
operation, appears to be a data-gathering step of the type we have
held insufficient to change a nonstatutory method of calculation
into a statutory process. * * * In this instance, the perturbed
process inputs are not even measured values of physical phenomena,
but are instead derived by numerically changing the values in the
previous set of process inputs.'').
\57\ Sarkar, 588 F.2d at 1331, 200 USPQ at 135.
\58\ See Sarkar, 588 F.2d at 1332 n.6, 200 USPQ at 136 n.6
(``post-solution'' construction that was being modeled by the
mathematical process not considered in deciding Sec. 101 question
because applicant indicated that such construction was not a
material element of the invention).
\59\ Parker v. Flook, 437 U.S. 584, 585, 198 USPQ 193, 195
(1978).
\60\ Walter, 618 F.2d at 770, 205 USPQ at 409 (``If Sec. 101
could be satisfied by the mere recordation of the results of a
nonstatutory process on some record medium, even the most unskilled
patent draftsman could provide for such a step.'').
\61\ Gelnovatch, 595 F.2d at 41 n.7, 201 USPQ at 145 n.7.
\62\ Abele, 684 F.2d at 909, 214 USPQ at 688 (``This claim
presents no more than the calculation of a number and display of the
result, albeit in a particular format. The specification provides no
greater meaning to `data in a field' than a matrix of numbers
regarding of by what method generated. Thus, the algorithm is
neither explicitly nor implicitly applied to any certain process.
Moreover, that the result is displayed as a shade of gray rather
than as simply a number provides no greater or better information,
considering the broad range of applications encompassed by the
claim.'').
\63\ In re De Castelete, 562 F.2d at 1236, 1244, 195 USPQ 439,
446 (CCPA 1977) (``That the computer is instructed to transmit
electrical signals, representing the results of its calculations,
does not constitute the type of `post solution activity' found in
Flook, [437 U.S. 584, 198 USPQ 193 (1978)], and does not transform
the claim into one for a process merely using an algorithm. The
final transmitting step constitutes nothing more than reading out
the result of the calculations.'').
\64\ E.g., Warmerdam, 33 F.3d at 1360, 31 USPQ2d at 1759. See
also Schrader, 22 F.3d at 295, 30 USPQ2d at 1459.
\65\ See supra note 18 and accompanying text.
\66\ Computer Dictionary 353 (Microsoft Press, 2d ed. 1994)
(definition of ``self-documenting code'').
\67\ See In re Barker, 559 F.2d 588, 591, 194 USPQ 470, 472
(CCPA 1977), cert. denied, Barker v. Parker, 434 U.S. 1064 (1978) (a
specification may be sufficient to enable one skilled in the art to
make and use the invention, but still fail to comply with the
written description requirement). See also In re DiLeone, 436 F.2d
1404, 1405, 168 USPQ 592, 593 (CCPA 1971).
\68\ See, e.g., Northern Telecom v. Datapoint Corp., 908 F.2d
931, 941-43, 15 USPQ 2d 1321, 1328-30 (Fed. Cir.), cert. denied,
Datapoint Corp. v. Northern Telecom, 498 U.S. 920 (1990) (judgment
of invalidity reversed for clear error where expert testimony on
both sides showed that a programmer of reasonable skill could write
a satisfactory program with ordinary effort based on the
disclosure); DeGeorge v. Bernier, 768 F.2d 1318, 1324, 226 USPQ 758,
762-63 (Fed. Cir. 1985) (superseded by statute with respect to
issues not relevant here) (invention was adequately disclosed for
purposes of enablement even though all of the circuitry of a word
processor was not disclosed, since the undisclosed circuitry was
deemed inconsequential because it did not pertain to the claimed
circuit); In re Phillips, 608 F.2d 879, 882-83, 203 USPQ 971, (CCPA
1979) (computerized method of generating printed architectural
specifications dependent on use of glossary of predefined standard
phrases and error-checking feature enabled by overall disclosure
generally defining errors); In re Donohue, 550 F.2d 1269, 1271, 193
USPQ 136, 137 (CCPA 1977) (``Employment of block diagrams and
descriptions of their functions is not fatal under 35 U.S.C.
Sec. 112, first paragraph, providing the represented structure is
conventional and can be determined without undue experimentation.'')
In re Knowlton, 481 F.2d 1357, 1366-68, 178 USPQ 486, 493-94 (CCPA
1973) (examiner's contention that a software invention needed a
detailed description of all the circuitry in the complete hardware
system reversed).
\69\ See In re Naquin, 398 F.2d 863, 866, 158 USPQ 317, 319
(CCPA 1968) (``When an invention, in its different aspects, involves
distinct arts, that specification is adequate which enables the
adepts of each art, those who have the best chance of being enabled,
to carry out the aspect proper to their specialty.'') Ex parte
Zechnall, 194 USPQ 461, 461 (Bd. App. 1973) (``appellants'
disclosure must be held sufficient if it would enable a person
skilled in the electronic computer art, in cooperation with a person
skilled in the fuel injection art, to make and use appellants'
invention'').
\70\ See In re Scarbrough, 500 F.2d 560, 565, 182 USPQ 298, 301-
02 (CCPA 1974) (``It is not enough that a person skilled in the art,
by carrying on investigations along the line indicated in the
instant application, and by a great amount of work eventually might
find out how to make and use the instant invention. The statute
requires the application itself to inform, not to direct others to
find out for themselves (citation omitted).''); Knowlton, 481 F.2d
at 1367, 178 USPQ at 493 (disclosure must constitute more than a
``sketchy explanation of flow diagrams or a bare group of program
listings together with a reference to a proprietary computer on
which they might be run''). See also In re Gunn, 537 F.2d 1123,
1127-28, 190 USPQ 402 (CCPA 1976); In re Brandstadter, 484 F.2d
1395, 1406-07, 17 USPQ 286, 294 (CCPA 1973); and In re Ghiron, 442
F.2d 985, 991, 169 USPQ 723, 727-28 (CCPA 1971).
\71\ Cf. In re Gulack, 703 F.2d 1381, 1385, 217 USPQ 401, 404
(Fed. Cir. 1983) (when descriptive material is not functionally
related to the substrate, the descriptive material will not
distinguish the invention from the prior art in terms of
patentability).
Appendix to Examination Guidelines for Computer-Related Inventions
BILLING CODE 3510-16-M
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Dated: February 16, 1996.
Bruce A. Lehman,
Assistant Secretary of Commerce and Commissioner of Patents and
Trademarks.
[FR Doc. 96-4140 Filed 2-27-96; 8:45 am]
BILLING CODE 3510-16-C
