IN RE ALAPPAT No. 92-1381.
33 F.3d 1526 (1994)
In re Kuriappan P. ALAPPAT, Edward E. Averill and James G. Larsen.
United States Court of Appeals, Federal Circuit.
July 29, 1994.
Alexander C. Johnson, Jr., Marger, Johnson, McCollom & Stolowitz, P.C., Portland, OR, argued for appellants. With him on the brief was Peter J. Meza. Also on the brief was Francis I. Gray, Tektronix, Inc., Wilsonville, OR. Allen M. Sokal, Finnegan, Henderson, Farabow, Garrett & Dunner, of Washington, DC, argued for amicus curiae, Federal Circuit Bar Association. With him on the brief were Gerald H. Bjorge, Herbert H. Mintz and George E. Hutchinson.
Fred E. McKelvey, Solicitor, Office of the Sol., Arlington, VA, argued for appellee. With him on the brief were Lee E. Barrett and Richard E. Schafer, Associate Sol. Of counsel were Albin F. Drost and John W. Dewhirst.
Herbert C. Wamsley and Richard C. Witte, Intellectual Property Owners, Inc., Washington, DC, were on the brief for amicus curiae, Intellectual Property Owners, Inc.
Richard H. Stern, Graham & James, Washington, DC, was on the brief for amicus curiae, Seagate Technology, Inc. Also on the
brief was Edward P. Heller, III, Patent Counsel.
Fred I. Koenigsberg and Nancy J. Linck, Cushman, Darby & Cushman, Washington, DC, were on the brief for amicus curiae, American Intellectual Property Law Association. Also on the brief were Harold C. Wegner and H. Ross Workman, Wegner, Cantor, Mueller & Player, Washington, DC. of counsel was William S. LaFuze.
Before ARCHER, Chief Judge, and RICH, NIES, NEWMAN, MAYER, MICHEL, PLAGER, LOURIE, CLEVENGER, RADER and SCHALL, Circuit Judges.
RICH, Circuit Judge, with whom:
Kuriappan P. Alapatt, 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. § 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. § 1295(a)(4)(A) (1988) and 35 U.S.C. § 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.,
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,
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. § 7(b) (1988).
In an Office Action mailed December 5, 1989, the Examiner finally rejected claims 15-19 under 35 U.S.C. § 101 as being directed to non-statutory subject matter. Alappat appealed this rejection to the Board pursuant to 35 U.S.C. § 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 Commissioner 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 § 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.
(1) The Legality of the Board's Rehearing Panel
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,
35 U.S.C. § 7 (1988) (emphasis added).
For the reasons set forth below, we hold that § 7 grants the Commissioner the
At the outset, we note that § 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.
There is no evidence in the legislative history of § 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.
The focus of the jurisdictional inquiry in this case is the last sentence of § 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 § 7(b). For the reasons set forth below, we find the Commissioner's interpretation of § 7
We interpret the term "rehearings" in § 7 as encompassing any reconsideration by the Board of a decision rendered by one of its panels. The fact that § 7 refers to "rehearings" whereas 37 C.F.R. 1.197 (PTO Rule 197)
We also interpret the Commissioner's express statutory authority to designate the members of a panel hearing an appeal as extending to designation of a panel to consider a request for a rehearing pursuant to § 7(b).
The last sentence of § 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 § 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 § 7(b). Act of March 2, 1927, ch. 273, § 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.
S.Rep. No. 1313, 69th Cong., 2d Sess. 4 (1927) (emphasis added). Fenning expressed 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 § 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 § 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
35 U.S.C. § 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. § 6 (1988), cause an examination to be made of an application, 35 U.S.C. § 131 (1988), declare an interference, 35 U.S.C. § 135 (1988), and issue a patent when authorized by law, 35 U.S.C. §§ 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.
One also should not overlook the asymmetry of § 141, which grants applicants, but not the Commissioner, the right to appeal a decision of the Board to this court. Since Congress has reenacted § 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 § 7 and in view of his rulemaking authority pursuant to § 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,
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 Board members how to vote. The Commissioner's limited control in this
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,
The FCBA does not have standing to make a due process argument, see Broadrick v. Oklahoma,
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.
II. THE MERITS
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. § 101, as the first panel of the Board held.
A. Alappat's Invention
Alappat's invention relates generally to a means for creating a smooth waveform display in a digital oscilloscope. The screen of an oscilloscope 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 inter-sections 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, 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.
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 oscilloscope. 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 pixel is to be illuminated is determined as follows, using pixel 55 as an example. First, the vertical distance between the y coordinates of observation points 54 and 52(▴ y
[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.
B. The Rejected Claims
Claim 15, the only independent claim in issue, reads:
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, ▴ y
C. The Examiner's Rejection and Board Reviews
The Examiner's final rejection of claims 15-19 was under 35 U.S.C. § 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 § 101. In reaching this decision, the original panel construed the means clauses in claim 15 pursuant to 35 U.S.C. § 112, paragraph six (§ 112 ¶ 6), as corresponding to the respective structures disclosed in the specification of Alappat's application, and equivalents thereof.
In its reconsideration decision, the five-member majority of the expanded, eight-member Board panel "modified" the decision of the original panel and affirmed the Examiner's § 101 rejection. The majority held that the PTO need not apply § 112 ¶ 6 in rendering patentability determinations, characterizing this court's statements to the contrary in In re Iwahashi,
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 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
In its analysis, the majority further stated:
Alappat, 23 USPQ2d at 1345.
(1) Section 112, Paragraph Six
As recently explained in In re Donaldson,
35 U.S.C. § 112, paragraph 6 (1988) (emphasis added).
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,
When independent claim 15 is construed in accordance with § 112 ¶ 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:
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 ¶ 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.
(2) Section 101
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 § 101, which reads:
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,
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 § 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 to true apparatus claims, we recognize that our own precedent suggests that this may be the case. See In re Johnson,
The plain and unambiguous meaning of § 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 §§ 102, 103, and 112. The use of the expansive term "any" in § 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 § 101 and the other parts of Title 35. Indeed, the Supreme Court has acknowledged that Congress intended § 101 to extend to "anything under the sun that is made by man." Diamond v. Chakrabarty,
Despite the apparent sweep of § 101, the Supreme Court has held that certain categories of subject matter are not entitled to patent protection. In Diamond v. Diehr,
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:
Diehr, 450 U.S. at 192, 101 S.Ct. at 1059-60 (emphasis added). In re Iwahashi, 888 F.2d at 1375, 12 USPQ2d at 1911; In re Taner,
Given the foregoing, the proper inquiry in dealing with the so called mathematical subject matter exception to § 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,
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.
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 antialiased 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
Under the Board majority's reasoning, a programmed general purpose computer could never be viewed as patentable subject matter under § 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, 93 S.Ct. at 257. 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
ARCHER, Chief Judge,
I. OUR JURISDICTION
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 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. § 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. § 1295(a)(4)(A); see also 35 U.S.C. § 141, and that therefore the merits of Alappat's
Issues arising out of the combination of adjudicative and administrative functions within a single administrative agency, such
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.
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.,
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,
We followed Wiechert in later cases. In In re Marriott-Hot Shoppes, Inc.,
411 F.2d at 1029, 162 USPQ at 110 (emphasis added, footnote and original emphasis omitted).
And lastly, in In re Bose Corp.,
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. § 1295(a)(4)(A). Wiechert is binding precedent unless we overrule it in banc. South Corp. v. United States,
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. §§ 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. § 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. § 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. § 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. § 141. This court has "jurisdiction ... of an appeal from a decision of ... the Board of Patent Appeals and Interferences." 28 U.S.C. § 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. § 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. § 7(a),
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.
Consequently § 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 through people, its members. Thus, the language of the last sentence of § 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.
Finally, the legislative history of § 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, § 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.,
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, § 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:
W. Robinson, The Law of Patents § 583 (1890).
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, § 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. § 7, the act applicable today.
The events surrounding the enactment of the 1927 Act do not indicate that Congress 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 § 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.
II. THE SECTION 101 REJECTION
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. § 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. § 101 because Alappat has not shown that he invented or discovered a machine within § 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:
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. § 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, § 8, cl. 8.
Congress has implemented this limited grant of power in 35 U.S.C. § 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. § 101 (1988). The terms used in § 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,
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,
Thus patent law rewards persons for inventing technologically useful applications, instead of for philosophizing unapplied research and theory. Brenner v. Manson,
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. § 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, 101 S.Ct. at 1056, 209 USPQ at 7 ("[E]very discovery is not embraced within the statutory terms." (emphasis added)); In re Schrader,
In addition to the basic principles embodied in the language of § 101, the section has a pragmatic aspect. That subject matter must be new (§ 102) and nonobvious (§ 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 § 101. Diehr, 450 U.S. at 190, 101 S.Ct. at 1058, 209 USPQ at 10. Section 101 must be satisfied before any of the other provisions apply, and in this way § 101 lays the predicate for the other provisions of the patent law. See Flook, 437 U.S. at 593, 98 S.Ct. at 2527, 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, 101 S.Ct. at 1058, 209 USPQ at 9 ("[s]pecific conditions for patentability follow" § 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?
Consider for example the discovery or creation of music, a new song. Music of course is 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
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 § 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 § 102. Because the patent law cannot examine music for "nonobviousness," the Patent and Trademark Office could not make a showing of obviousness under § 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, 98 S.Ct. at 2525, 198 USPQ at 197.
1. Discoveries and inventions in the field of digital electronics are analyzed according to the aforementioned principles as any other subject matter. In re Walter,
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, 101 S.Ct. at 1057 n. 11, 209 USPQ at 9 n. 11; accord In re Maucorps,
In the first case, Gottschalk v. Benson,
In the second case, Parker v. Flook,
In the third case, Diamond v. Diehr,
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, 101 S.Ct. at 1060 n. 14, 209 USPQ at 10 n. 14; see also id. at 186, 101 S.Ct. at 1056, 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, 101 S.Ct. at 1057, 209 USPQ at 8; see also id. at 192 n. 14, 101 S.Ct. at 1060 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, 101 S.Ct. at 1060 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, 101 S.Ct. at 1060 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
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.
2. Every case involving a § 101 issue must begin with this question: What, if anything, is it that the applicant for a patent "invented or discovered"? In re Abele,
In considering claimed subject matter for eligibility under § 101, "it must be determined whether a scientific principle, law of 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,
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, 101 S.Ct. at 1060 n. 14, 209 USPQ at 10 n. 14. To come within the purview of § 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. § 101." Meyer, 688 F.2d at 795, 215 USPQ at 198.
1. The Claimed Invention or Discovery.
Alappat's specification discloses a digital oscilloscope. See Alappat 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
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:
The specification depicts the "rasterizer" 40 in Figure 3 with the following circuit diagram:
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: ▴ y
A second ALU 80 calculates the "elevation." The elevation is the distance between the starting y value and a particular y value
The vertical distance and elevation are each then "normalized" in barrel shifters 84 and 88, respectively, to make the values larger, and the results are stored in a fifth register 90. Id. at 13, ll. 3-16. Normalization means in this context multiplying in base two.
A read-only-memory (ROM) 92 operates on the stored "vertical distance" and "elevation." The ROM contains a table of values, namely "intensity" data as a function of the elevation and vertical distance data. Id. at 13, ll. 27-32. The mathematical function for calculating the intensity data is described generally as follows:
The most basic formula for selecting the pixel intensity is given as follows: I'(ij) = [1 - (▴ y
Figure 5 provides an example of what the "rasterizer" does. The input to the rasterizer is given as two consecutive y coordinates, i = 0 and i + 1 = 7.
i j I i + l j I 0 7 0 1 7 15 0 6 2 1 6 13 0 5 5 1 5 10 0 4 7 1 4 8 0 3 9 1 3 6 0 2 11 1 2 4 0 1 13 1 1 2 0 0 15 1 0 0
According to the preamble of the claim the data is to be displayed on a display means. The specification gives as an example a cathode-ray-tube. The "I" data produced above by "rasterizing" is "anti-aliased" when a cathode-ray-tube is illuminated according to the data. This means that there would be no discontinuity, jaggedness, or oscillation that might otherwise appear had merely a line been attempted to be graphed. There is no discussion in the specification of the structure of the means for actually displaying the data or of the oscilloscope.
2. The Original Panel Decision
The examiner rejected claims 15-19 as not being directed to an invention or discovery within § 101. As the majority notes, the examiner rejected the claims even though he recognized that claim 15 recited "physical elements" to perform number crunching and an output of the data for eventual display.
On appeal to the board, the original panel found that "[e]ach clause of the body of claim 15 recites a mathematical operation and they are recited to operate together to reach a numeric value or pure number as the end product of the claim." The original panel also found that the claim does not include display of the output data on a cathode-ray-tube but simply a transmission of the result of the mathematical operations. That panel decided, however, that the "critical analysis" for whether claimed subject matter including a mathematical algorithm is within § 101 is whether the claims on their face recite "specific apparatus distinct from other apparatus capable of performing the identical [mathematic] function." (Emphasis added.)
Applying this rule, the original panel found that the structures disclosed in the specification as corresponding to the means were two ALUs, two barrel shifters, and a ROM. It concluded that these were "specific apparatus" because they were "clearly disclosed to be conventional structure in the art" and were not simply "rectangular block diagrams" that "may not be ascertained to be disclosed as conventional structure in the art," nor were they means described in a "very broad, generic sense." The original panel therefore concluded that the claimed invention or discovery was within § 101 and reversed the examiner's contrary rejection of claims 15-19.
3. The Decision of the Reconsideration Panel
The reconsideration panel of the board also felt that the dispositive issue under § 101 was whether the claims recited "specific apparatus." Ex Parte Alappat, 23 USPQ2d 1340, 1341 (BPAI 1992). The reconsideration panel, however, applied this test to an opposite conclusion. First it reasoned that the means-for-function clauses must be interpreted as covering every structure for performing the recited function, and the burden was on the applicant to prove otherwise. Id. at 1343; see In re Donaldson Co.,
Alternatively, the reconsideration panel found that a "general purpose digital computer" was within the range of equivalents contemplated by § 112, ¶ 6. It reasoned that in such cases the claimed structure should be treated as a method. Id. at 1345.
In passing, the reconsideration panel rejected the original panel's holding that claims containing means-for-function clauses are nonstatutory only when the corresponding structure in the specification is so generic as to be illusory, although it recognized that where the structure is illusory, the claim would be to the mathematic function and would fail under § 101.
Applying the "method" analysis, the reconsideration panel agreed with the original panel that each element of the claim recited a mathematical operation and that the displaying of the waveform on a cathode-ray-tube was not claimed. It found that the specification did not disclose, nor was it claimed, where the input data — the vector list — was to come from or how it was to be generated. The reconsideration panel concluded that the claimed invention was simply a method of computing a set of numbers from another set of numbers, and therefore was a nonstatutory claim to a mathematical algorithm. Id. at 1346-47.
4. The Majority's Decision in this Case
The majority of this court first recognizes that the reconsideration panel erred by refusing to interpret the means-for-function clauses as not being directed to the specific structures disclosed in the specification — two ALUs, two barrel shifters, and a ROM — and their equivalents, and that the original panel was correct in its construction of claim 15. Thus, pursuant to § 112, ¶ 6, and in view of the specification, the claims do recite specific digital circuitry structures.
Finally, the court concludes that if the claimed "rasterizer" were equivalent to a "general purpose digital computer" programmed to perform the calculations performed by the rasterizer, such programmed computer would be the invention of a "new machine" within § 101. Page 1545.
1. Of course, I agree that the means-for-function elements in claim 15 must be construed to cover the corresponding structure described in Alappat's specification and equivalents thereof. 35 U.S.C. § 112, ¶ 6; see In re Donaldson Co.,
Further, pursuant to 35 U.S.C. § 112, ¶ 6, elements (a)-(d) also cover equivalents of the two ALUs, the two barrel shifters, and the ROM.
Because the "means" clauses of claim 15 correspond to structure described in the specification, under Donaldson the reconsideration panel of the board erred in failing to construe the claims to recite that structure and equivalents.
2. The § 112, ¶ 6, issue, however, is a red herring in this case. Although the reconsideration panel erred by ignoring specific structure recited in the claims, Alappat's claimed invention still is not the invention or discovery of a machine. The presence of structure on the face of the claims does not ipso facto make the claimed invention or discovery one of statutory subject matter.
To hold that a claim reciting structure necessarily defines an invention within § 101, the majority implicitly resurrects long-dead precedent of the Court of Customs and Patent Appeals in direct conflict with Supreme Court precedent and subsequent precedent of that court. Early precedent of the Court of Customs and Patent Appeals held that a claimed invention or discovery is outside § 101 only if the claim on its face recites in its entirety mathematics, because claims like that would wholly preempt the mathematical operation at issue. That was the extent of the boundaries of the patent law under § 101. E.g., In re Bernhart,
However, the Supreme Court expressly reversed the court's wholesale preemption test in Parker v. Flook,
Although the wholesale preemption test became outmoded, the inquiry into specific structure has survived, and indeed has been elevated to the inquiry under § 101, as this case evidences. See also In re Iwahashi,
The Supreme Court has held that a claimed invention may represent merely the discovery of a law of nature and be outside the patent law, even though the claim entirely recites a specific and complete structure. See Funk Bros. Seed Co., 333 U.S. at 130, 68 S.Ct. at 441, 76 USPQ at 281 (claim to species of bacteria represented discovery of law of nature and was outside § 101). The Supreme Court has also held that a claimed process may be non-statutory even if it implements a principle in a "specific fashion." Flook, 437 U.S. at 593, 98 S.Ct. at 2527, 198 USPQ at 198. And the Supreme Court has held that a claimed invention may represent the discovery of mathematics alone and be outside § 101 even though the claim recites specific structural limitations. E.g., Benson, 409 U.S. at 64, 73, 93 S.Ct. at 254, 258, 175 USPQ at 674, 677.
In addition, this court's predecessor court has expressly stated that a "claimed computing system" does not necessarily reflect the invention or discovery of a "machine" within § 101. In re Maucorps,
Furthermore, the statute does not support a simple "structure" test. 35 U.S.C. § 101 plainly refers to several classes of subject matter having longstanding usage in the patent law and requires that the applicant have "invent[ed] or discover[ed]" a new and useful one of them. "Structure" is not one of these classes. Nor does § 101 simply require a claim that recites structure. Finally, there is no reason to suppose that § 101 should depend only on the adequacy of disclosure when specificity of disclosed and claimed structure is expressly required in 35 U.S.C. § 112.
As the Supreme Court and this court have said, and as the majority says now, the claimed subject matter must be considered as a whole to determine whether the invention or discovery is within § 101. A claim may thus include a limitation directed to a "mathematical formula, computer program or digital computer," and yet the invention or discovery will be within § 101 so long as the claimed invention in total represents an application of such formula, program, or computer. See Diehr, 450 U.S. at 187, 101 S.Ct. at 1057, 209 USPQ at 8. Likewise, a claim may include the recitation of something physical (i.e., structure), and yet the invention or discovery is essentially only mathematical. See In re Grams,
3. So what did Alappat invent or discover? Alappat's specification clearly distinguishes between an "oscilloscope" and a "rasterizer," and Alappat claims his invention in claims 15-19 to be only the "rasterizer."
The "rasterizer" as claimed is an arrangement of circuitry elements for converting data into other data according to a particular mathematical operation. The rasterizer begins with vector "data" — two numbers. "[I]t does not matter how they are ascertained." Brief for Alappat at 39. The two numbers, as they might to any algebra student, "represent" endpoints of a line.
The claimed "rasterizer" ends with other specific "data" — an array of numbers, as the original and reconsideration panels of the board both expressly agreed. See Diehr, 450 U.S. at 186, 101 S.Ct. at 1056, 209 USPQ at 8 ("The claims [in Flook] were drawn to a method for computing an `alarm limit.' An `alarm limit' is simply a number...."); Abele, 684 F.2d at 909, 214 USPQ at 688 (the "claim presents no more than the calculation of a number and display of the result"); Walter, 618 F.2d at 768, 205 USPQ at 407 ("if the end-product of a claimed invention is a pure number, as in Benson and Flook, the invention is nonstatutory"). The end-data of the "rasterizer" are a predetermined and claimed mathematic function of the two input numbers.
Alappat admits that each of the circuitry elements of the claimed "rasterizer" is old. He says they are merely "form." Thus, they are only a convenient and basic way of electrically representing the mathematical operations to be performed, that is, converting vector data into matrix or raster data. In Alappat's view, it is the new mathematic operation that is the "substance" of the claimed invention or discovery. Claim 15 as a whole thus claims old circuitry elements in an arrangement defined by a mathematical operation, which only performs the very mathematical operation that defines it. Rather than claiming the mathematics itself,
The questions are properly answered thusly: "No," in Alappat's claimed "rasterizer" it really does not matter how the mathematics is implemented, and "Yes," assigning § 101 significance to the disclosed structure would be exalting form over substance. So where the claimed structure does not matter and the invention or discovery is only of a "new, useful, and nonobvious" process for solving a mathematical formula, Benson, Flook, Diehr, and years of precedent command that the patent law shall not exalt form over substance, but rather recognize that the substance is outside § 101.
The subject matter of claim 15, as in Flook, "has no substance apart from the calculations involved. The calculations are the beginning and end of the claim." Walter, 618 F.2d at 769, 205 USPQ at 409. Also as in Flook, the oscilloscope disclosed in Alappat's specification presents a general technological environment for the claimed "rasterizer," insignificant in relation to it. Claim 15 is not even limited to the environment of an oscilloscope. See Abele, 684 F.2d at 909, 214 USPQ at 688. The claimed rasterizer mathematical function presumably has application in conjunction with any current or future device that prints in an x-y coordinate grid, such as oscilloscopes, computer monitors, televisions, laser printers, mechanical printing devices, etc.
This is not to say that digital circuitry cannot be an element in an otherwise statutory machine. Under Diehr, it can.
Thus unlike the rubber curing process in Diehr, the claimed rasterizer here is not an application of mathematics in an otherwise statutory process or product. The rasterizer is simply the mathematical conversion of data. In Diehr, the input data were derived by a claimed component of the overall rubber curing process — the press and thermocouple — which fed data to the claimed computer. Here, however, as the specification and claims indicate, the waveform data converted by the claimed rasterizer are not required to come from a particular machine connected up to the rasterizer, and, as Alappat admits, it does not matter how the data are selected. The sets of waveform numbers converted by the claimed rasterizer could come simply from the mind and hand of a person. The end product of the claimed rasterizer is not
Rejection under § 101 is especially important for the following reason. The examination of Alappat's "rasterizer" must focus on, as Alappat says, the "process" of the circuit elements — the mathematic function performed by them. Because the patent law does not examine abstract mathematics, if the "rasterizer" is held to be within § 101, there can be no meaningful examination for compliance with § 103, and other sections of the patent statute become inapplicable. The practical result is that there is patentability so long as the mathematics is "new." This is reflected in Alappat's statement that the rasterizer is a "novel combination of conventional electronic circuits which, as functionally defined in the claims, is patentably distinct from prior art rasterizers." Brief for Alappat at 7 (emphasis added). But standing alone, "the novelty of the mathematical algorithm is not a determining factor at all." Flook, 437 U.S. at 591, 98 S.Ct. at 2526, 198 USPQ at 198.
4. Finally, a "general purpose computer" issue has been raised as an aside in this case. The parties agree that each of the "means" elements in claim 15 would find an "equivalent" within the meaning of 35 U.S.C. § 112, ¶ 6, in a "general purpose digital computer." Alappat goes so far as to plead emphatically for recognition of equivalency, saying, "Any employable circuit designer could readily design around claims ... limited" to two ALUs, two barrel shifters, and one ROM. Brief for Alappat at 21.
Yet Alappat also concedes that a claim drawn to "a method which amounted to a mathematical algorithm [without] any disclosed hardware or structure, other than a programmed general purpose computer," is nonstatutory. Br. for Alappat at 22; see Majority Opinion at Page 1540 (agreeing with this premise). Alappat's argument is that "bona fide hardware supporting the `means plus function' recitals" in claim 15 renders the claimed subject matter statutory, but then the claim may cover general purpose digital computers as equivalents through § 112, ¶ 6, even though that subject matter could not be claimed outright. Br. for Alappat at 22.
Alappat cannot have it both ways. If a programmed general purpose digital computer is not statutory subject matter, then a claim cannot be drawn to that subject matter whether outright or by application of equivalents under 35 U.S.C. § 112, ¶ 6. Paragraph 6 of § 112 is not a magical way to expand patent protection into nonstatutory subject matter.
As to equivalency, finding equivalency in a programmed general purpose computer proves the nonstatutory nature of Alappat's purported invention or discovery. Alappat argues that the electrical circuitry of the "rasterizer" is equivalent to a programmed general purpose computer because "powerful, inexpensive microprocessors" are equivalent to "discrete digital components, such as AND, OR, NAND, etc., gates, registers, latches, and the like" are equivalent to "analog components, such as transistors, operational amplifiers, and resistors." They are all equivalents, in Alappat's view, because they all may achieve the same effect: performing the particular mathematics that is the claimed rasterizer.
A patent is awarded only "for the discovery or invention of some practical method or means of producing a beneficial result or effect, ... and not for the result or effect itself." Diehr, 450 U.S. at 183 n. 7, 101 S.Ct. at 1055 n. 7, 209 USPQ at 7 n. 7 (quoting Corning v. Burden, (15 How.) 252, 268, 14 L.Ed. 683 (1854)) (emphasis added). The
If Alappat's claimed rasterizer represents statutory subject matter, which I do not believe it does, then Alappat's claims must be strictly construed. Mackay Radio & Tel. Co. v. Radio Corp. of Am.,
Getting back to the music analogy, Alappat is like a composer who claims his song on a compact disc, and then argues that the compact disc is equivalent to a player piano or a music box with the song on a roll or even sheet music because they all represent the same song. The composer is thus clearly asking for (and getting from the majority) a patent for the discovery of a song and a patent covering every physical manifestation of the song.
In any event, even if a programmed general purpose computer is "equivalent" to the rasterizer, it cannot be deemed to be within § 101 by simply reasoning as does the majority that it is a "new machine." See Page 1545. Alappat posits that a "programmed digital computer becomes a special purpose digital computer to perform the function specified by the software.
Thus, a known circuit containing a light bulb, battery, and switch is not a new machine when the switch is opened and closed to recite a new story in Morse code, because the "invent[ion] or discover[y]" is merely a new story, which is nonstatutory subject matter.
Digitronics Corp. v. New York Racing Ass'n, Inc., 187 USPQ 602, 640, 1975 WL 21112 (E.D.N.Y.1975), aff'd on other grounds,
Finally, a claim formally to a general purpose computer running a certain program cannot be deemed to satisfy § 101 simply because the computer is a physical, tangible device. As the invalidated claims in Flook and Benson demonstrate, and consistent with my earlier discussion, a computer program for use in a physical electronic thing called a computer may nevertheless be held to be nonstatutory subject matter. It is illogical to say that although a claim to a newly discovered mathematical operation to be performed by a computer is merely a nonstatutory discovery of mathematics, a claim to any computer performing that same mathematics is a statutory invention or discovery. Our precedent has rejected reasoning that way. See Abele, 684 F.2d at 909, 214 USPQ at 688; Walter, 618 F.2d at 768, 205 USPQ at 408; Maucorps, 609 F.2d at 485, 203 USPQ at 815-16; Freeman, 573 F.2d at 1247, 197 USPQ at 472; accord Noll, 545 F.2d at 152, 191 USPQ at 730 (Lane, J., joined by Rich, J., dissenting). Furthermore, the broad statement that a computer using any program is patentable subject matter trivializes the principles and distinctions wrestled with in Benson, Flook, and Diehr, and the case law thereunder.
In summary, it cannot be said that Alappat's circuit means each find equivalents in a programmed general purpose digital computer. If it can be said that Alappat's claimed circuit elements are each equivalent to a programmed general purpose computer just because they will perform the same claimed mathematics, then this demonstrates that Alappat's claimed circuitry does not represent the invention or discovery of statutory subject matter. As to the programmed general purpose computer itself, there is no justification for saying that it must constitute statutory subject matter. When a particular claim directed to an isolated general purpose digital computer instructed to store, compute, or retrieve information comes before us, the claimed invention or discovery must be analyzed as a whole by reference to the Supreme Court cases, cases of this court, and
This opinion discusses several contexts involving inventions or discoveries in the field of digital electronics: One might invent or discover a new and useful product or process that includes as an element therein digital electronics performing mathematics, such as the rubber curing process in Diamond v. Diehr, or the improved washing machine mentioned by Alappat. One might invent or discover a mode of operation of a digital electronic device, capable ultimately of being used to perform mathematics, such as an improved transistor, chip, or computer. Or, one might discover a particular mathematic operation and claim the use of digital electronics to perform the mathematic operation, such as the methods of calculating numbers in Gottschalk v. Benson and Parker v. Flook, and the rasterizer for converting numbers claimed by Alappat. This last category, however, is at best newly discovered mathematics which is not being "implement[ed] or applie[d] ... in a structure or process which, when considered as a whole," Diehr, 450 U.S. at 192, 101 S.Ct. at 1059, 209 USPQ at 10 (emphasis added), represents an invention or discovery of a machine or process (as in the case of Diehr) for which one may obtain a patent pursuant to § 101.
The majority's holding is dangerous in the following way. First, it reasons that one can obtain a patent for a discovery in mathematics as long as some structure is formally recited on the face of the claim. Under this aspect of the holding, many of the requirements for patentability other than "newness," such as nonobviousness, make no sense and cannot be meaningfully applied. Thus, mathematical patents will be easier to obtain than other patents. Moreover, the patent law will now engage in the charade wherein claims directed to a particular method of calculating numbers (for use in a computer) are unpatentable, but claims directed to a computer (performing a particular method of calculating numbers) are patentable.
Second, the majority accepts the argument that all digital electronic circuitry is statutory subject matter when it performs a mathematical operation, and it is all equivalent when the particular mathematical operation is the same. Under this aspect, the mathematical patents will create an enormous scope of technological exclusivity. The lack of meaningful examination and the breadth of exclusive rights conferred by patents for discoveries of bare mathematical operations are repugnant to Congress's careful statutory scheme for the promotion of the useful arts.
As the player piano playing new music is not the stuff of patent law, neither is the mathematics that is Alappat's "rasterizer." And the Supreme Court has in its decisions required it so. Alappat's claimed discovery is outside 35 U.S.C. § 101, and for this reason I would affirm the board's rejection. I dissent from the majority's decision on the merits to the contrary.
PAULINE NEWMAN, Circuit Judge, concurring.
I join the opinion authored for the court by Judge Rich. I write separately to state additional views on the basic question of this case: that of statutory subject matter. This question has been dominant in the PTO's administration of its responsibilities with respect to computer-related inventions. I explore this subject in the context of the statutory
The boundary between patentable and unpatentable subject matter is not always a bright line. A good example is the function of mathematics in modern technology. Mathematics is not only a set of abstract principles, but a powerful vehicle of applied technology — just as chemistry is both a set of scientific principles and a vehicle of applied technology. The Board's underlying error in its Alappat decision arose from failure to distinguish between abstract mathematical principles and their practical applications.
Phenomena of nature and abstract scientific and mathematical principles have always been excluded from the patent system. Some have justified this exclusion simply on the ground of lack of "utility"; some on the ground of lack of "novelty"; and some on the ground that laws of nature, albeit newly discovered, are the heritage of humankind. On whatever theory, the unpatentability of the principle does not defeat patentability of its practical applications. See, e.g., O'Reilly v. Morse, 56 U.S. (15 How.) 62, 14 L.Ed. 601 (1854).
Most technologic inventions involve the application of scientific principles and phenomena of nature to specific purposes. It is these purposes that are the subject matter of 35 U.S.C. § 101, and we need not decide such interesting epistemological questions as whether mathematical formulae exist in nature, or are created by mathematicians in the way that chemical compounds are created by chemists. However, the distinction between principle and practice was not observed in the Board's decision on Mr. Alappat's invention.
The theme underlying the Board's rejection of the Alappat claims was that since mathematical steps were involved, and were performable by computer, Alappat was claiming a mathematical algorithm such as was held unpatentable in Gottschalk v. Benson,
Alappat's rasterizer is an electronic device for displaying a smooth waveform by selective illumination of pixels. The Alappat rasterizer operates by performing a sequence of steps in accordance with instructions that are generated electronically. This operation requires several mathematical calculations that
Devices that work by way of digital electronics are not excluded from the patent system simply because their mechanism of operation can be represented by mathematical formulae. The output of an electronic device or circuit may be approximated to any required degree as a mathematical function of its current state and its inputs; some devices, such as the transistor, embody remarkably elementary mathematical functions. Principles of mathematics, like principles of chemistry, are "basic tools of scientific and technological work". Benson, 409 U.S. at 67, 93 S.Ct. at 255. Such principles are indeed the subject matter of pure science. But they are also the subject matter of applied technology.
Digital electronic devices implement mathematical manipulations of electronic signals, as chemical structures and reactions implement principles of molecular behavior. An apparatus that is configured to perform specific electronic procedures in accordance with instructions that require numerical measurements and mathematical calculations is no less statutory than any other combination of steps and components. A combination of mechanical or chemical components, structured to operate in accordance with the principles of mechanics or chemistry, does not become nonstatutory because those interactions and reactions follow basic scientific principles. Mathematics is not a monster to be struck down or out of the patent system, but simply another resource whereby technological advance is achieved. Alappat's claim to a rasterizer that is characterized by specified electronic functions and the means of performing them no more preempts the mathematical formulae that are used to direct these functions than did Chakrabarty's bacterium preempt genetic theory.
An inquiring and receptive attitude by the PTO to new technologies finds a mandate in the statute. The text of section 101
Old law is often adapted to new needs: "If Congress has made a choice of language which fairly brings a given situation within a statute, it is unimportant that the particular application may not have been contemplated by the legislators." Barr v. United States,
Law and public policy intertwine in embracing new fields in the scope of section 101. Patent law has nicely fostered technological
Blanchard v. Sprague, 3 F.Cas. 648, 650 (C.C.D.Mass.1839). The nation was forcefully reminded of this truth when our economic leadership faltered in the 1970s. In an address before the Economic Club of Detroit, Irving S. Shapiro, Chairman, E.I. duPont de Nemours & Co., discussing "Technology's Decline", stated:
XLV Vital Speeches of the Day, 360, 364 (1979). To bar such inventions as Alappat's rasterizer from access to the patent system is to eliminate the incentive provided by this law, disserving not only technological industry, but the public benefit of improved technology. One must have a powerful reason to exclude technology from the scope of Title 35. Indeed, the importance of the patent incentive in industrial innovation was the principal factor in the formation of the Federal Circuit. It is thus appropriate constructively to apply statute, precedent, and policy to the variety of inventions that the information age has generated, and to remove the cloud on whether these inventions may participate in the benefits and obligations of the patent system.
MAYER, Circuit Judge, with whom MICHEL, Circuit Judge, joins, dissenting.
I do not agree that we have jurisdiction over this appeal. The Commissioner exceeded his statutory authority in convening a new, expanded panel to reconsider the board's original decision in Alappat's appeal from the examiner. Because the Commissioner's acts were not in accordance with law, the reconsideration decision cannot be a "decision of the Board of Patent Appeals and Interferences" within the meaning of 28 U.S.C. § 1295(4)(A) (1988), and this court has no jurisdiction to address the merits of the appeal. See In re Bose Corp.,
The Patent Act provides that "[o]nly the Board of Patent Appeals and Interferences has the authority to grant rehearings." 35 U.S.C. § 7(b) (1988). The Solicitor argues that the statute is ambiguous, that it is unclear what the composition of the "Board" must be for the "Board" to "grant rehearings" or to actually rehear an appeal. Therefore, this court should defer to the Commissioner's interpretation of the meaning of this clause of section 7.
However, the Solicitor presents conflicting impressions of the board and its role. On one hand, he argues that the board is not an independent body, but is simply an extension of the former power of the Commissioner to
On the other hand, the Solicitor analogizes the board to a court. He says it regularly sits in panels of three, but is capable, as is this court, of sitting in expanded panels if certain criteria are met. He also compares the board to the Court of Appeals for the Ninth Circuit and its ability to sit en banc with less than the entire court. See 28 U.S.C. § 46(c) (1988); 9th Cir. Rule 35-3. The board also has this option, argues the Solicitor, and the use of limited "en banc" is discretionary with the Commissioner.
The Commissioner cannot have it both ways. Either the board is a quasi-judicial body, deciding each case by applying existing law to the facts before it, or the board is simply an extension of the Commissioner's office, making decisions on the basis of policy.
I think the statute is unambiguous and that it unarguably vests the power to grant rehearings in the board itself, free from undue interference by the Commissioner. The patent board is not the "alter ego" of the Commissioner; it is an adjudicative body which functions independently and has its own separate and distinct authority. See Animal Legal Defense Fund v. Quigg,
The role of the board is also readily apparent from the history of the Patent Office. The Office's primary task is to answer questions on the patentability of inventions. The Commissioner has the authority to promulgate regulations consistent with the patent laws to aid the efficient operation of the Office. 35 U.S.C. § 6(a) (1988); see Ethicon, Inc. v. Quigg,
The Act of March 2, 1927, set up the division of authority in the Patent Office essentially as it exists today by abolishing the appeal to the Commissioner and delegating the task of hearing appeals solely to the newly expanded board. The Commissioner was made a member of the board along with the First Assistant Commissioner, the Assistant Commissioner and the examiners-in-chief. See Pub.L. No. 69-690, 44 Stat. 1335 (1927). The act separated the administrative function of running the Patent Office assigned to the Commissioner, from the adjudicatory function of deciding individual cases of patentability, delegated to the board. This division was retained in the 1952 Patent Act. See 35 U.S.C. §§ 6 and 7. The additional requirement that "examiners-in-chief shall be persons of competent legal knowledge and scientific ability" suggests the board is to render its decisions on legal and scientific bases independent of administrative and policy concerns. See id. § 7(a).
The independent character of the board comports with the arrangement of other adjudicatory bodies in the executive branch. For example, Congress has created agency boards of contract appeals and given them the authority to rule on disputes arising out of contracts between the government and private parties. 41 U.S.C. § 607 (1988). These boards preside over cases in which contract rights of private individuals and entities are directly pitted against the interests of the government. Likewise the patent appeals board resolves conflicts between individuals seeking exclusive rights to inventions and the government's interest in promoting free exchange of technology. Both the board of patent appeals
If Congress intended to create a board that is not independent, but subject to the policy-making authority of the agency head, it would have specifically done so as it has in other contexts. For example, it specified that the secretaries of the military departments may correct the military records of an individual by acting "through" a civilian board. See 10 U.S.C. § 1552 (1988 & Supp. IV 1993).
By way of another example, Congress specifically limited the independence of the Board of Veterans Appeals. See 38 U.S.C. § 7104 (1988). In addition to regulations of the department and precedent of the department's chief legal officer, instructions of the secretary are specifically made binding upon the board in making its decisions. Id. § 7104(c).
While the boards for the correction of military records and the Board of Veterans Appeals also serve a purpose similar to the boards of contract appeals and the patent board in that they preside over disputes with the government, their authority is significantly constrained by their subservience to the heads of those departments. Conversely, there is no similar limitation on the statutory authority of the patent appeals board in its adjudicatory role.
As a quasi-judicial adjudicatory body, the board is, or ought to be, imbued with certain court-like qualities. It accepts the submission of legal briefs, holds hearings, admits declarations, exhibits and affidavits upon a showing of good cause, issues written opinions, and has the power to remand cases to the examiner for action consistent with those opinions. See 37 C.F.R. § 1.191 et. seq. (1993). Inherent in this adjudicative posture are certain standards of conduct. Of primary importance are both the decisional independence of the individual members of the adjudicatory body, and assurance that the decisions of the body as a whole are free from undue influence. Once an agency head decides to delegate some of his discretionary decision-making power to a board, even in the absence of specific congressional command, much less the situation here, he must then respect the independent decisional authority of the board and refrain from attempting to influence its decisions. United States ex rel. Accardi v. Shaughnessy,
That courts and judges are to be free from outside influence in rendering decisions is unquestionably a basic concept of jurisprudence. See Chandler v. Judicial Council of Tenth Circuit,
Morgan v. United States,
Because the board is a quasi-judicial body, and its proceedings must conform to judicial standards and be free from undue influence by the Commissioner, there is no mistaking the meaning of 35 U.S.C. § 7(b). By its terms, the power to grant rehearings resides solely in the board and that power is separate and distinct from the powers of the Commissioner. Thus the decision to grant a rehearing must be made by the "Board" without interference by the Commissioner; he is limited to his membership on the board with a single vote. Although the Commissioner does have additional authority to designate panels, it is limited by the need to protect the board's decisional independence. See Ethicon, 849 F.2d at 1428, 7 USPQ2d at 1156 (Commissioner may conduct activities in the Patent Office "so long as he does not violate the statute."). In this respect the Commissioner holds a position on the board similar to a chief judge of a court, who has only one vote on a case, but has additional administrative authority.
In his dual role, as "rule-maker" for the Patent Office, and as "judge" when sitting on a panel of the board, the Commissioner is in a position similar to a federal judge on the United States Sentencing Commission. The Supreme Court has said it is not inherently impermissible for a judge to play such a dual role: "[T]he Constitution, ... does not forbid judges to wear two hats; it merely forbids them to wear both hats at the same time." Mistretta v. United States,
The procedure to grant rehearing, although not the subject of formal rule,
That the Commissioner "stacked" the board is abundantly clear. After the original panel rendered a decision favorable to Alappat, the Commissioner designated an expanded panel to rehear the case consisting of himself, the Deputy Commissioner, an Assistant Commissioner, the Chairman and Vice-Chairman of the board, and the original three panel members. With himself and the four other "command group" members making up a majority of the board rehearing the appeal, the outcome was assured. These five members voted together, and the original panel filed an emphatic dissent.
The Solicitor argues that the large size of the board, over forty members, would make it unwieldy to sit as a whole. According to the Solicitor, like the Ninth Circuit, the board has the power to sit in "limited en banc" panels, at the discretion of the Commissioner. The circuit courts, however, have express statutory authority to divide themselves into smaller "administrative units" to hear cases en banc if the circuit has more than fifteen active judges.
However, we always have jurisdiction to the extent necessary to determine the jurisdiction of our subordinate tribunals, as well as our own. Bender v. Williamsport Area School District,
The decision of the court to take jurisdiction nevertheless, raises another troubling issue. If the Commissioner is correct, as the court apparently thinks, the board must be seen as simply an extension of the Commissioner's policy-making authority and thus not independent. If this is so, the standard by which this court reviews decisions of the board is questionable. It is now the practice, dubious from the start, to review the board under the same standard as we review a district court. In re King, 801 F.2d at 1326, 231 USPQ at 138. Questions of law are reviewed de novo, while findings of fact are examined to determine whether they are clearly erroneous. E.g., In re McCarthy, 763 F.2d at 412, 226 USPQ at 100 (obviousness is reviewed for legal correctness without deference to the board's determinations); In re Bond, 910 F.2d at 833, 15 USPQ2d at 1567 (anticipation is a question of fact for the board reviewed under the clearly erroneous standard). But if the board is simply implementing policy set out by the Commissioner, its decisions cannot be considered "legal" but must be subject to review as statements of agency policy. How such agency policy decisions
The court seems inclined to let this matter slide, but I believe the decision today upholding jurisdiction puts the issue squarely before us, and the ramifications of that decision should not go quietly unnoticed. We should not pretend we are reviewing judicial decisions if they are really nothing more than policy actions. Even on a more deferential standard of review, however, I would still hold the Commissioner's manipulation of the board illegal.
PLAGER, Circuit Judge, concurring.
This case raises two significant issues. The first is whether, as a predicate for our review, there was a proper decision of the Board of Patent Appeals and Interferences. The second, which we can reach only if the answer to the first is yes, is how to dispose of the case on its merits. The first issue, the question of our jurisdiction over this appeal, is particularly troubling since it implicates the Commissioner's overall power and status within the agency, and particularly vis-a-vis the examining corps., and because the statutory provision, 35 U.S.C. § 7, is so remarkably vague and incomplete. I join the majority's conclusion that we have jurisdiction in these particular circumstances; I write to sharpen the focus on specific administrative law issues which I believe to be important to an understanding of the case, and to explain my disagreement with the reasoning found in the opinions which dissent on the question of our jurisdiction.
On the merits of the appeal, there is no doubt that the Board erred as a matter of law in refusing to apply § 112 ¶ 6 as we have instructed. I would have sent the matter back to the Board with instructions to do it right, but I recognize the validity in Lord Salisbury's famous dictum — if he had had more time, he might have delegated the work, but as he was pressed, he had to do it himself.
On first — or even second — reading, the action of the Commissioner in reconstituting
Closer study of the applicable law, however, leads to a different conclusion. The statute defines the overall membership of the Board: "The Commissioner, the Deputy Commissioner, the Assistant Commissioners, and the examiners-in-chief shall constitute the Board of Patent Appeals and Interferences." 35 U.S.C. § 7(a) (1988). It gives the Commissioner authority to designate those particular members who shall constitute the Board in any given case: "Each appeal and interference shall be heard by at least three members of the Board of Patent Appeals and Interferences, who shall be designated by the Commissioner." 35 U.S.C. § 7(b). And it gives "the Board" exclusive authority to grant rehearings: "Only the Board of Patent Appeals and Interferences has the authority to grant rehearings." Id.
The regulations add nothing of help. After decision by the Board, "A single request for reconsideration or modification of the decision may be made if filed within one month...." 37 C.F.R. § 1.197(b) (1993).
The question before us, however, is not whether the statute could have been better drafted, or whether the Commissioner could or should have written more explicit regulations. The question is much narrower, and more basic — does this court have subject matter jurisdiction over the cause here on appeal. Our statute (28 U.S.C. § 1295(a) (1988)) directs that we shall have exclusive jurisdiction
Again the reference to "the Board," nowhere defined. The question, then, is, do we have a "decision of the Board" before us.
Judge Mayer, in his dissent, says no. He analogizes the Board to a court, and vests it with virtually complete independence from guidance, including policy guidance, from the Commissioner. The Board is imbued with "court-like qualities." Among these is freedom from outside influence in rendering decisions, including undue influence by the Commissioner. It follows then that Congress could not have intended the Commissioner to have the kind of power he claims to reconstitute the Board on a reconsideration. If the premise is correct, the conclusion indeed follows. I suggest, however, that the premise is not correct because it does not take into account the fundamental differences between administrative and judicial decision-making.
Courts, especially courts created under Article III of the Constitution, have a unique role — they stand as equal partners with the Executive and Legislative Branches, and, subject only to those restraints imposed by the Constitution, are wholly independent in their judicial function from the other two branches. Their mission is to ensure that the law is carried out in a just and proper way, consistent with the Constitution and statutes of the land.
Administrative judges and boards are quite a different thing. They stand as part of the agency which they serve, and represent the decisional authority of the official who is the administrative head of the agency. Their mission is, within the law, to promote and further the mission of the agency. The particular function they serve may be characterized as `quasi-judicial,' but this must be understood within the context in which they function.
An agency head could not today perform effectively all these functions without being able to delegate responsibility to various officials within the agency. In the case of the adjudicative function, a complex of individual-and board-adjudicators, like Topsy, has `growed up.'
Whoever they are, and however many of them there are in any given agency, they all have a common role — they stand in the shoes of the agency head and carry out specified duties which Congress has assigned to that agency. This does not mean that these agency adjudicators simply do what the agency head tells them. As a practical matter, no agency head has time or opportunity to monitor the daily work of these employees. Furthermore, the institutional distance between them has an important value — it serves to remove the adjudicative function from any improper political or personal bias that might otherwise infect the process if left exclusively in the hands of one individual. Another important value is to avoid having the agency activities of investigation, prosecution, and adjudication combined in the same person or office.
This separation is particularly important in fact-finding: the adjudicator is entitled to independence, i.e., freedom from interference, in determining the facts of the case. But `independence' in the administrative adjudicative function is not independence from the policies and program of the agency, the policies and programs of which are uniquely the responsibility of the agency head.
The dissent's parallel between agency adjudicators and courts demonstrates the inaptness of this analogy. For example, he states that "the Commissioner holds a position on the board similar to a chief judge of a court, who has only one vote on a case, but has additional administrative authority." Slip op. at 11. But a chief judge of an Article III court is not selected for that position by virtue of any particular talent for the job, or because of any particular policy-making skills; indeed, a chief judge is not `selected,' but inherits the job by virtue of a mathematical combination of seniority and longevity.
By contrast, the appointment of the head of a major administrative agency is a matter of considerable political and professional concern, and requires both Presidential selection and nomination and Senate confirmation for that particular post. The person selected is expected to have important skills in the role
The relative roles of a chief judge and an agency head reflect these differences. A chief judge has a purely administrative function by virtue of the office; policy making and adjudication lie elsewhere. The agency head, in this case the Secretary of Commerce, assisted by the Commissioner of Patents and Trademarks who holds office as an Assistant Secretary of Commerce, has, subject to direction from the President, all three of the functions and powers described. In this light, the majority's view of the statute governing the Board's organization and powers is more consistent with the proper role and authority of the Commissioner, who acts for the Secretary, than is the dissent's.
There no doubt are limits to the Commissioner's power over Board adjudications. The Commissioner is not free to unduly interfere with individual adjudications — that is, the application of established rules to independently found facts of a case. But this is not such a case. In this case the Board decision at bottom turned on an important issue of statutory interpretation — what is patentable subject matter under § 101 of the 1952 Patent Act. The Commissioner had a quite different view of how § 101 should be interpreted than did the Board that initially heard the case. While the Commissioner has various vehicles at his command for announcing official interpretations of the agency's organic legislation and for enunciating agency policy, there is nothing unusual about using the adjudicative process for that purpose.
The Commissioner has an obligation to ensure that all parts of the agency, including agency boards and adjudicative officials, conform to official policy of the agency, including official interpretations of the agency's organic legislation. Otherwise the citizenry would be subject to the whims of individual agency officials of whatever rank or level, and the Rule of Law would lose all meaning in the administrative law context. If Congress intended to transfer policy choice to the subordinate officials who constitute the normal membership of a Board, and remove from the agency head the fundamental responsibility for agency policy direction, it would have to make explicit such an extraordinary procedure before a court should countenance it.
Judge Schall in his dissent also says no to the question of whether we have before us a decision of "the Board." He bases his conclusion on an analysis different from that of Judge Mayer. Applying classic literal or `plain meaning' statutory analysis, Judge Schall concludes that the Board's reconsideration decision was invalid because the PTO panel was not the Board intended by the statute: "the Board" is all forty-plus members described, and nothing less. The technique of legal analysis employed by the dissent is certainly legitimate, and based on sound precedent. If it applies here, Judge Schall's treatment is hard to fault. However, I do not find the statute `plain', and am hard pressed to discern its `meaning' in this context.
One could ask how a literal reading of the statute is called for when the statute, literally read, is literally incomplete. The statute states that "only the Board ... has the authority to grant rehearings." And then it stops. It does not tell us, or even hint at an
Equally troubling is the impact this `plain meaning' interpretation will have on our prior cases (as well as future ones). A preliminary canvas of ex parte appeals to the Board in the FY 1990 — FY 1993 period (Oct. 1, 1990 — Sept. 30, 1993) indicates that the Board decided 17,132 appeals. Of these, 1,551 involved a "reconsideration" decision by the Board. The available data do not reveal whether these reconsideration decisions were always by the same board that rendered the initial decision, but presumably that would be true in most if not all of these cases. It is presumably also true that these rehearings were granted pursuant to the existing PTO regulations, which do not involve the Board as the authorizing entity.
If we were to adopt the plain meaning analysis offered by this dissent, what are we to think about all such prior rehearing decisions? A government act that is ultra vires is void, which means the defect in the appeal is not waived simply because the parties failed to raise it. Since there is no compelling reason to adopt such a radical result — as I say, I find the statute's plain meaning not so easily discerned — I conclude that the outcome called for by Judge Schall is not warranted. I would also note that under this analysis, the Commissioner by subsequent regulation could not clarify the circumstances and manner in which he intended to exercise this reconstitution power, since he would be without authority to exercise it.
I conclude that Chief Judge Archer in his opinion comes closer to the answer to today's jurisdictional puzzle. Although there remains opportunity for attack should the Commissioner again reconstitute a board the way he did here — does he violate his own regulations, is there a due process question, what is the exact scope of the legislative grant of authority — that attack has not here been launched. A court must attend to its own jurisdiction, and the parties cannot grant jurisdiction by their consent. Nevertheless, the absence of challenge removes peripheral and secondary issues, and leaves only the basic jurisdictional question. I am unpersuaded by the arguments my colleagues make against jurisdiction. And while I do not necessarily agree with all that is said about it by those in support of jurisdiction, I do agree that there is sufficient basis in law for this court to conclude that we have before us on this record a decision of "the Board;" I concur in the court's decision to proceed to address the merits.
RADER, Circuit Judge, concurring.
I join Judge Rich's opinion holding that this court has subject matter jurisdiction over this appeal and reversing the reconstituted Board of Patent Appeals and Interferences' decision on the merits. While I fully agree with Judge Rich that Alappat's claimed invention falls squarely within the scope of 35 U.S.C. § 101 (1988), I write to clarify that this conclusion does not hinge on whether Alappat's invention is classified as machine or process under section 101.
The reconstituted Board determined that applicants' (Alappat's) invention is a process excluded from the subject matter of 35 U.S.C. § 101. The Board concluded that the invention is a "mathematical algorithm" rather than a patentable machine. The Board reached this conclusion by impermissibly expanding the scope of the claimed subject matter, thereby running afoul of 35 U.S.C. § 112, ¶ 6 (1988). See In re Donaldson Co.,
Judge Rich, with whom I fully concur, reads Alappat's application as claiming a machine. In fact, whether the invention is a process or a machine is irrelevant. The language of the Patent Act itself, as well as Supreme Court rulings, clarifies that Alappat's invention fits comfortably within 35 U.S.C. § 101 whether viewed as a process or a machine.
Section 101 of the Patent Act states:
Any new and useful process, machine, article of manufacture, or composition of matter, including improvements, may thus receive patent protection. Section 101 explicitly covers both processes and machines. Furthermore, according to the Supreme Court, "any" is an expansive term encompassing "`anything under the sun that is made by man.'" Diamond v. Chakrabarty,
Indeed, the Supreme Court has clarified that section 101 means what it says: any new and useful invention is entitled to patent protection, subject to the remaining statutory conditions for patentability. See Diamond v. Diehr,
The dividing line between patentable invention and mere discovery applies equally well to algorithmic inventions. In Diehr, the Court indicated that in special cases, an algorithm is tantamount to a "law of nature" and therefore non-statutory. Diehr, 450 U.S. at 186, 101 S.Ct. at 1056. However, the Court noted that "[t]he term `algorithm' is subject to a variety of definitions." Id. at 186 n. 9, 101 S.Ct. at 1056 n. 9. The Court refused to expand the term "algorithm" beyond the narrow definition employed in Gottschalk v. Benson,
Diehr, 450 U.S. at 186 n. 9, 101 S.Ct. at 1056 n. 9.
Thus, in Diehr, the Court specifically confined the holdings of Benson and Flook to the facts of those cases. Significantly, the Court thereby refused to classify all algorithms as non-statutory subject matter. Only algorithms which merely represent discovered principles are excluded from section 101. The inventions in Benson and Flook involved such algorithms. In Benson, the invention was simply a way to solve a general mathematics problem; in Flook the invention was a way to obtain a number. Diehr, 450 U.S. at 185-86, 101 S.Ct. at 1056. In pronouncing the severe confinement of the earlier decisions, the Supreme Court restored the Patent Act's clear meaning that processes and machines are patentable subject matter even if they include an algorithm. In the wake of Diehr and Chakrabarty, the Supreme Court only denies patentable subject matter status to algorithms which are, in fact, simply laws of nature.
Moreover, "a claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula, computer program or digital computer." Diehr, 450 U.S. at 187, 101 S.Ct. at 1057. Viewing the claim as a whole, if a digital circuit or its use would define an invention under section 101, then the same
The limits on patentable subject matter within section 101 do not depend on whether an invention can be expressed as a mathematical relationship or algorithm. Mathematics is simply a form of expression — a language. As this court's predecessor pointed out:
In re Meyer,
The Supreme Court's Diehr doctrine in effect recognizes that inventors are their own lexicographers. Therefore, inventors may express their inventions in any manner they see fit, including mathematical symbols and algorithms. Whether an inventor calls the invention a machine or a process is not nearly as important as the invention itself. Thus, the inventor can describe the invention in terms of a dedicated circuit or a process that emulates that circuit. Indeed, the line of demarcation between a dedicated circuit and a computer algorithm accomplishing the identical task is frequently blurred and is becoming increasingly so as the technology develops. In this field, a software process is often interchangeable with a hardware circuit. Thus, the Board's insistence on reconstruing Alappat's machine claims as processes is misguided when the technology recognizes no difference and the Patent Act treats both as patentable subject matter.
The Supreme Court has frequently cautioned that "courts `should not read into the patent laws limitations and conditions which the legislature has not expressed.'" Chakrabarty, 447 U.S. at 308, 100 S.Ct. at 2207 (quoting United States v. Dubilier Condenser Corp.,
The applicants of the instant invention do not seek to patent a mathematical formula. They seek protection for an invention that displays a smooth line on an oscilloscope. Although Alappat's machine or process might employ an equation, it does not pre-empt that equation. Consequently, whether the invention is called a machine or a process is inconsequential. For these reasons, I agree with this court's reversal of the reconstituted Board's decision.
SCHALL, Circuit Judge, dissenting, with whom CLEVENGER, Circuit Judge, joins.
I respectfully dissent. I believe that the decision on reconsideration is invalid because the grant of reconsideration was not by the full membership of the Patent and Trademark Office Board of Patent Appeals and Interferences ("Board"), as required by statute. Accordingly, we are without jurisdiction to hear Alappat's appeal because it is not from a decision of the Board within the meaning of 28 U.S.C. § 1295(a)(4)(A) (1988).
The pertinent statutory provisions are found at 35 U.S.C. §§ 7(a) and 7(b) (1988):
The statutory scheme is straightforward. An adverse decision of an examiner is appealed to the Board. Thereafter, the Board hears the appeal through a panel of at least three members, who are designated by the Commissioner. Following the panel's decision, "[o]nly the Board of Patent Appeals and Interferences has the authority to grant rehearings."
When statutory interpretation is at issue, if "the language of the statute is clear and fits the case, the plain meaning of the statute will be regarded as conclusive." VE Holding Corp. v. Johnson Gas Appliance Co.,
It is undisputed that, in this case, rehearing was granted by less than the full membership of the Board. For this reason, the decision on rehearing, from which Alappat has appealed, is invalid and thus is not a decision of the Board whose merits we may review. See In re Bose,
The final two sentences of 35 U.S.C. § 7(b) are descended directly from section 482 of the Revised Statutes, as amended by the Act of March 2, 1927. In that statute, the final two sentences stated:
Act of March 2, 1927, ch. 273, § 3, 44 Stat. 1335, 1336.
In the 1927 statute, the board of appeals having "sole power to grant rehearings" consisted of "[t]he Commissioner of Patents, the first assistant commissioner, the assistant
For the foregoing reasons, I would hold that the Board's reconsideration decision is invalid, and therefore a legal nullity. Because I think this court lacks jurisdiction to pass on the merits of this appeal, I express no views on the merits.
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