(92) Legal Analysis to Support Proposed Examination
Guidelines for Computer-Implemented Inventions
October 3, 1995
Patent and Trademark Office
United States Department of Commerce
TABLE OF CONTENTS
I. Introduction [Guidelines I.A.]
II. Determine What Applicant Has Invented and Is Seeking to Patent
[Guidelines I.B.1.]
A. Identify and Understand the Practical Utility Asserted for the
Invention [Guidelines I.B.1.(a)]
B. Review the Detailed Disclosure and Specific Embodiments of the
Invention to Determine What the Applicant Has Invented [Guidelines
I.B.1(a)]
C. Analyze the Claims [Guidelines I.B.1.(b)]
III. Assess Claimed Invention for Compliance with 35 U.S.C. 101
[Guidelines I.B.1.(c)]
A. Determine Whether The Invention is "Useful"
B. Classify the Invention as to Its Proper Statutory Category
1. Non-Statutory Subject Matter [Guidelines I.B.1.(c)(i) & (ii)]
(a) "Data Structures" Per Se or Computer Programs
Per Se
(b) Non-Functional Information
(c) Natural Phenomena Such as Electricity and Magnetism
2. Statutory Subject Matter
(a) Statutory Products
(i) Product Claims--Claims Directed to Machines and Manufactures
(ii) Claims that Encompass Any Machine or Manufacture Embodiment of a
Process
(b) Statutory Processes [Guidelines I.B.1.(c)(iii)]
(i) Appropriate Subject Matter for Manipulation Steps of a Process
(ii) Transformation or Reduction to a Different State or Thing
(iii) Examples of Statutory Computer-Implemented Processes
3. Non-Statutory Processes
(a) Mathematical Algorithm That Defines a Law of Nature or Natural
Phenomenon or Describes an Abstract Idea
(b) Evaluation of Certain Language Related to Mathematical Operation
Steps of a Process
(i) Intended Use or Field of Use Statements
(ii) Necessary Antecedent Step to Performance of A Mathematical
Operation or Independent Limitation on a Claimed Process
(iii) Post-Mathematical Operation Step Uses Solution or Merely Conveys
Result of Operation
(c) Manipulation of Abstract Ideas Without A Practical Application
IV. Issues Related to Compliance with Section 112, First and Second
Paragraphs [Guidelines I.B.2.]
A. Specification Fails to Show How to Make or Use Programmed Computer
Element of Invention [Guidelines I.B.2.(b)]
B. Programmed Computer Is Defined As Composite of Functional Elements
C. Elements of a Machine Defined Using Means Plus Function Language
[Guidelines I.B.2.(a) & (b)]
D. Claim Does Not Define Applicant's Invention [Guidelines
I.B.2.(a)]
E. Claim Defined Using Only Computer Program Code [Guidelines
I.B.2.(a)]
V. Issues Related to Compliance with 103 [Guidelines I.B.3.]
VI. Conclusion
Legal Analysis to Support Proposed Examination
Guidelines for Computer-Implemented Inventions
I. Introduction [Guidelines I.A.]
The Office has developed Proposed Examination Guidelines for
Computer-Implemented Inventions1 and this legal analysis (collectively,
the "guidelines") to assist Office personnel in the examination of
applications drawn to computer-implemented inventions. The guidelines
are based on the Office's current understanding of the law, and
represent the official policy of the Patent and Trademark Office. Office
personnel are to rely on these guidelines in the event of any
inconsistent treatment of issues between these guidelines and any
earlier provided guidance from the Office.
The guidelines alter the procedures Office personnel shall employ to
examine applications drawn to computer-implemented inventions.
The guidelines also clarify the Office's position on certain
patentability standards related to this field of technology. The
positions set forth in these guidelines are believed to be fully
consistent with the binding precedent of the Supreme Court, and the
Federal Circuit and its predecessor courts.
The Freeman-Walter-Abele2 test, while of limited value, may still be
relied upon in analyzing claims directed solely to a process for solving
a mathematical algorithm. "Business methods" are to be analyzed the same
way as any other process.
The appendix includes the proposed guidelines and a graphic overview
of how Office personnel will conduct an examination to determine
statutory subject matter.
II. Determine What Applicant Has Invented and Is Seeking to Patent
[Guidelines I.B.1.]
It is essential that patent applicants obtain a prompt yet complete
examination of their applications. Thus, Office personnel must raise any
issue that may affect patentability in the initial action on the merits.
Under the principles of compact prosecution, each claim should be
reviewed for compliance with every statutory requirement of
patentability in the initial review of the application, even if one or
more claims is found to be deficient with respect to one statutory
requirement. Deficiencies should be explained clearly, particularly when
they serve as a basis for a rejection. Where possible, Office personnel
should indicate how rejections may be overcome and problems resolved. A
failure to follow this approach can lead to unnecessary delays in the
prosecution of the application.
Prior to focusing on any specific statutory requirements, Office
personnel must begin examination by determining what, precisely, the
applicant has invented and is seeking to patent,3 and how the claims
relate to and define that invention. Consequently, Office personnel will
no longer begin examination by determining if a claim recites a
"mathematical algorithm." Rather, they will review the complete
specification, including the detailed description of the invention, any
specific embodiments that have been disclosed, the claims and the
specific utility that has been asserted for the invention.
A. Identify and Understand the Practical Utility Asserted for the
Invention [Guidelines I.B.1.(a)]
The subject matter sought to be patented must be a "useful" process,
machine, manufacture or composition of matter. Accordingly, a complete
disclosure should contain some indication of why the applicant believes
the claimed invention is "useful." This "usefulness" of the invention is
called the "specific" or "practical" utility of the invention. Specific
or practical utility is simply a shorthand way of attributing "real
world" value to the claimed subject matter, i.e., assuring there is some
benefit to the public.4 An invention that has some practical application
satisfies the utility requirement.5
The applicant is in the best position to explain why an invention is
believed useful. Office personnel should therefore focus their efforts
on identifying statements made in the specification that identify a
practical application for the invention. Office personnel should rely on
such statements throughout the examination when assessing the invention
for compliance with all statutory criteria. Deficiencies under the
utility requirement will be rare, however. Further guidance in
evaluating an asserted specific utility for compliance with 101 is
provided below and in the Utility Examination Guidelines.6 If the
applicant asserts a practical utility for the invention, Office
personnel should review the entire disclosure to determine the features
necessary to accomplish the asserted practical utility.
B. Review the Detailed Disclosure and Specific Embodiments of the
Invention to Determine What the Applicant Has Invented [Guidelines
I.B.1(a)]
The written description will provide the clearest explanation of the
applicant's invention, by exemplifying the invention, explaining how it
relates to the prior art and by explaining the relative significance of
various features of the invention. Accordingly, Office personnel should
begin their evaluation of a computer-implemented invention as follows:
-- determine what the programmed computer does when it performs the
processes dictated by the software (i.e., the functionality of the
programmed computer);7
-- determine how the computer is to be configured to provide that
functionality (i.e., what elements constitute the programmed computer
and how are those elements to be configured to provide the specified
functionality); and
-- if applicable, determine the relationship of the programmed computer
to other subject matter that constitutes the invention (e.g., machines,
devices, materials, or process steps other than those that are part of
or performed by the programmed computer).8
Patent applicants can assist the Office by preparing applications
that clearly set forth these aspects of a computer-implemented invention.
C. Analyze the Claims [Guidelines I.B.1.(b)]
The claims define the property rights provided by a patent, and thus
require careful scrutiny. The goal of claim analysis is to identify the
boundaries of the protection sought by the applicant and to understand
how the claims relate to and define what the applicant has indicated is
the invention. Office personnel must analyze the language of a claim
before determining if the claim complies with each statutory requirement
for patentability.
Office personnel should begin claim analysis by identifying and
evaluating each claim element. For processes, the claim elements will
define steps or acts to be performed. For products, i.e., machines and
articles of manufacture, the claim elements will define discrete
physical structures. The discrete physical structures may be comprised
of hardware or a combination of hardware and software.
As provided in the guidelines, Office personnel are to correlate each
claim element to that portion of the disclosure that describes the claim
element. This is to be done in all cases, i.e., whether or not the
claimed invention is defined using means or step plus function language.
The correlation step will ensure that Office personnel clearly
understand the meaning and scope of each claim limitation.
The subject matter of a properly construed claim is defined by the
terms that limit its scope, and it is this subject matter that must be
examined. As a general matter, the grammar and intended meaning of terms
used in a claim will dictate whether the language limits the claim
scope. Language that suggests or makes optional but does not require
steps to be performed or does not limit a claim to a particular
structure does not limit the scope of a claim or claim element.
Office personnel must rely on the applicant's disclosure to properly
determine the meaning of terms used in the claims.9 An applicant is
entitled to be his or her own lexicographer, and in many instances will
provide an explicit definition for certain terms used in the claims.
Where an explicit definition is provided by the applicant for a term,
that definition will control interpretation of the term as it is used in
the claim. Office personnel should determine if the original disclosure
provides a definition consistent with the applicant's assertions.10 If
the applicant asserts that a term has a meaning that conflicts with the
term's art-accepted meaning, Office personnel should encourage the
applicant to amend the claim to better reflect what applicant intends to
claim as the invention.
Office personnel are to give claims their broadest reasonable
interpretation in light of the supporting disclosure.11 With the
exception of claim elements defined in means or step plus function
terminology, positive limitations on the scope of a claim cannot be read
into the claims based on comments or explanations provided in the
disclosure.12 While it is appropriate to use the specification to
determine what applicant intended a term to mean, a positive limitation
from the specification cannot be read into a claim that does not impose
that limitation. A broad interpretation of the claims by the Office will
reduce the possibility that the claim, when issued, will be interpreted
more broadly than is justified or intended. An applicant always has the
opportunity to amend the claims during prosecution to better reflect the
intended scope of the claim.
Finally, when evaluating the scope of a claim, every limitation in
the claim must be considered.13 Office personnel may not dissect a
claimed invention into discrete elements and then evaluate the elements
in isolation. Instead, each claimed element of the invention must be
considered in the context of the claim as a whole.
III. Assess Claimed Invention for Compliance with 35 U.S.C. 101
[Guidelines I.B.1.(c)]
As the Supreme Court has held, Congress chose the expansive language
of 101 so as to include "anything under the sun that is made by man."
Accordingly, 101 of title 35, United States Code, provides:
Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof, may obtain a patent therefor, subject to the conditions and
requirements of this title.15
As cast, 101 defines four categories of inventions that Congress
deemed to be the appropriate subject matter of a patent; namely,
processes, machines, manufactures or compositions of matter. The latter
three categories define "things" while the process category defines
inventions that consist of "actions" (i.e., a series of steps or acts to
be performed).16
Federal courts have held that 101 does have certain limits. First,
the phrase "anything under the sun that is made by man" is limited by
the text of 101, meaning that one may only patent something that is a
machine, manufacture, composition of matter or a process.17 Second,
101 requires that the subject matter sought to be patented be a "useful"
invention. Accordingly, a complete definition of the scope of 101,
reflecting Congressional intent, is that any new and useful process,
machine, manufacture or composition of matter under the sun that is made
by man is the proper subject matter of a patent. Subject matter not
within one of the four statutory invention categories or which is not
"useful" in a patent sense, accordingly, is not eligible to and cannot
be patented.
The subject matter courts have found to be outside the four statutory
categories of invention is limited to abstract ideas, laws of nature and
natural phenomena. While this is easily stated, determining whether an
applicant is seeking to patent an abstract idea, a law of nature or a
natural phenomenon has proven to be challenging. These three exclusions
recognize that subject matter that is not a practical application or use
of an idea, a law of nature or a natural phenomenon is not patentable.18
Courts have expressed a concern over "preemption" of ideas, law of
natures or natural phenomena.19 The concern over preemption serves to
bolster and justify the prohibition against the patenting of such
subject matter. Such concerns are only relevant to claiming a scientific
truth or principle. Thus, a claim to an "abstract" idea is non-statutory
because it does not represent a practical application of the idea, not
because it would preempt the idea.
A. Determine Whether The Invention is "Useful"
To be patentable, an invention must be "useful" (i.e., it must have a
practical application). The purpose of this requirement is to limit
patent protection to inventions that possess a certain level of "real
world" value, as opposed to subject matter that represents nothing more
than an idea or concept, or is simply a starting point for future
investigation or research.20 The utility of an invention must be within
the "technological" arts.21 This requirement can be discerned from the
variously phrased prohibitions against the patenting of abstract ideas,
laws of nature or natural phenomenon. Courts have indicated that any
technological or utilitarian purpose may serve as an appropriate
utility.22
Office personnel should confirm that the utility asserted for an
invention is a practical application of the invention. If the utility of
an "invention" is only as an object of philosophical inquiry or to be
appreciated in terms of its literary or artistic value, the claimed
invention should be rejected under 101.
Additionally, Office personnel have struggled with claims directed to
methods of doing business. A method of doing business is to be treated
like any other process.
B. Classify the Invention as to Its Proper Statutory Category
To properly assess compliance with the statutory invention
requirements of 101, Office personnel should classify each
specifically claimed invention into one statutory or non-statutory
category. If the subject matter falls into a non-statutory category,
that should not preclude complete examination of the application for all
other conditions of patentability. This classification is only an
initial finding at this point in the examination process that will be
again assessed after the examination for compliance with 112, 102
and 103 and before issuance of any Office action.
1. Non-Statutory Subject Matter [Guidelines I.B.1.(c)(i) & (ii)]
Claims that are clearly non-statutory are those that define:
-- a "data structure" per se or computer program per se, i.e.,
information rather than a computer-implemented process or specific
machine or computer readable memory manufacture;
-- a compilation or arrangement of non-functional information or a
known machine-readable storage medium that is encoded with such
information;
-- natural phenomena such as electricity and magnetism.
Claims in this form are indistinguishable from abstract ideas, laws
of nature and natural phenomena and may not be patented. Claims to
processes that do nothing more than solve mathematical problems or
manipulate abstract ideas or concepts are more complex to analyze and
are addressed below. See section 3.
(a) "Data Structures" Per Se or Computer Programs Per Se
Computers manage data by arranging the data in a particular order or
sequence. The relationship that exists among the ordered data elements
(i.e., the individual facts or data) is called a "data structure." Data
structures in this sense are not statutory products because they are not
physical "things" nor are they statutory processes, as they are not
"acts" being performed.23 In other words, when defined without any
physical structure, a "data structure" is nothing more than information
that explains a relationship that exists among ordered data, and
therefore is non-statutory. In contrast, a memory circuit whose
structure represents a practical application or use of a data structure
is a statutory manufacture. Accordingly, it is important to distinguish
claims that define information per se from claims that define statutory
inventions that are based on or use non-statutory information.
Similarly, computer programs per se are not physical "things," nor
are they statutory processes, as they are not "acts" being performed. In
contrast, a computer process that is implemented using a computer
program, a specific computer reconfigured by a computer program, or a
memory circuit whose structure is defined by a computer program are
statutory.
If a computer program is recited in a claim, Office personnel should
determine if the computer program is being used to describe the physical
structure of a manufacture or machine, or steps to be performed by a
computer, or is intended to be the object of the patent, per se.
If it is clear that the claim uses the computer program elements to
define actions to be performed by a computer, Office personnel should
treat the claim as a process claim. If the computer program elements are
recited in conjunction with a physical structure, such as a computer
memory, the claim should be treated as a product claim. If the claimed
subject matter cannot be treated as a process and does not have any
physical structure, then it is non-statutory "information."
If an applicant challenges the Office's classification of a claim
containing computer program elements without any physical structure as a
process rather than a product, the claim should be rejected under
101. Office personnel should also object to the specification under 37
CFR 1.71(b) if such an assertion is made, as the complete invention
contemplated by the applicant has not been cast precisely as being an
invention within one of the statutory categories.
(b) Non-Functional Information
The term "information" is the "communication of data." It is also
used to mean signals representing data. It is the latter definition that
is used in these guidelines.
Certain information, such as music, literature, art, and photographs,
as well as mere facts or data,24 cannot impart functionality to a
computer. Such "information" is not a process, machine, manufacture or
composition of matter.
The policy that precludes the patenting of non-functional data would
be easily frustrated if the same data could be patented as an article of
manufacture. For example, music is commonly sold to consumers in the
format of a compact disc. In such cases, the known compact disc acts as
nothing more than a carrier for non-functional data.
The non-functional content (e.g., words, images, or other
information) cannot provide the practical utility for the manufacture.
Function-imparting information is necessary to create a functional and
useful physical manufacture (e.g., a computer memory encoded with data
that causes a computer to function in a particular manner). If the
utility for the encoded medium is dependent upon a human appreciating
the artistic or other value of the information content, the claimed
invention should be rejected under 101.
(c) Natural Phenomena Such as Electricity and Magnetism
Claims that recite nothing but the physical characteristics of a form
of energy, such as a specific radio frequency, voltage, or the strength
of a magnetic field, define energy or magnetism, per se, and as such are
non-statutory. A claim directed to a natural phenomenon such as energy
or magnetism, which does not recite the practical application of that
phenomenon in a process or a product, is to be rejected under 101.
2. Statutory Subject Matter
(a) Statutory Products
If a claim defines a useful machine or manufacture by identifying the
physical structure of the machine or manufacture in terms of its
hardware or hardware and software combination, it defines a statutory
product.25
(i) Product Claims--Claims Directed to Machines and Manufactures
Claims that define a computer-implemented invention as a specific
machine or article of manufacture must define the physical structure of
the machine or manufacture in terms of its hardware and associated
functional software. The applicant may define the physical structure of
a programmed computer or its hardware or software components in any
manner that can be clearly understood by a person skilled in the
relevant art. Generally a claim drawn to a particular programmed
computer should identify the elements of the computer and indicate how
those elements are configured in either hardware or a combination of
hardware and software.
A computer-related "manufacture" will typically be a component of a
specific computer, such as a logic circuit or a computer memory. A
manufactured computer memory containing a physical structure
representing encoded computer-readable instructions, such as a computer
program, is a statutory article of manufacture because the encoded
computer-readable instructions give the manufactured memory a new form
or structure, and new qualities or properties (e.g., the ability to
cause a computer to function in a particular, predefined manner).
To adequately define a computer memory with a particular
functionality, the claim must identify the physical characteristics of
the memory (e.g., a logic circuit or a storage medium), and the
functionality of the memory. A computer memory may be defined in a claim
as:
-- a logic circuit that results when a programmed computer performs a
series of steps dictated by a computer program;26
-- a memory defined by its functional and/or structural
characteristics;27 or
-- a memory whose physical structure is defined by the act of storing
computer-executable program code on the memory.
(ii) Claims that Encompass Any Machine or Manufacture Embodiment of a
Process
A claim cast in product claim format that, when read in light of the
specification, encompasses any computer implementation of a process
should be examined on the basis of the underlying process. Such a claim
can be recognized as it will:
-- define the physical characteristics of a computer or computer
component exclusively as functions or steps to be performed on or by a
computer, and
-- encompass any product in the stated class (e.g., computer,
computer-readable memory) configured in any manner to perform that
process.
The following hypotheticals illustrate this distinction. Assume two
applicants present a claim to the following process:
A process for determining and displaying the structure of a chemical
compound comprising:
(a) solving the wavefunction parameters for the compound to determine
the structure of a compound;
(b) displaying the structure of the compound determined in step (a).
In addition, each applicant claims an apparatus, and provides the noted
disclosure to support the claims.
Applicant A Applicant B
Apparatus Claim A computer system for A computer system for
determining the three determining the three
dimensional structure of dimensional structure of a
a chemical compound chemical compound
comprising: comprising:
(a) means for determining (a) means for determining
the three dimensional the three dimensional
structure of a compound; structure of a compound;
(b) means for creating and (b) means for displaying
displaying an image the structure of the
representing a three- compound determined in
dimensional perspective of step (a).
the compound.
Disclosure The disclosure describes This disclosure states that
computer program code it would be a matter of
segments that are to be routine skill to select an
employed in configuring a appropriate computer system
general purpose micro- and implement the claimed
processor to create specific process on that computer
logic circuits. These system. No specific
circuits are indicated to be disclosure is made
the "means" corresponding to regarding the two "means"
the claimed means elements. elements recited in the
claim (i.e., no computer
program or logic circuit is
described that can perform
the indicated functions).
The disclosure does provide
an explanation of how to
solve the wavefunction
equations of a chemical
compound, and indicates that
the solutions of those
wavefunction equations can
be employed to determine
the physical structure of
the corresponding compound.
Result Claim defines specific Claim encompasses any
computer, patentability computer embodiment of
stands independently from process claim; patent
process claim. ability stands or falls with
process claim.
Explanation Disclosure identifies the In this scenario, the
specific machine capable of applicant has not provided
performing the indicated any information that can
functions. serve to distinguish the
"implementation" of the
process on a computer from
the factors that will govern
the patentability determina-
tion of the process per se.
As such, the patentability
of this apparatus claim will
stand or fall with that of
the process claim.
Office personnel are reminded that finding a product claim to
encompass any product embodiment a "process" invention simply means that
the Office will presume that the product claim encompasses any product
in the stated class that performs the specified set of functions.
Because this is interpretive and nothing more, it does not provide any
information as to the patentability of the applicant's underlying
invention or the product claim.
If a claim is found to encompass any product embodiment of the
underlying process, and if the underlying process is statutory, the
product claim should be classified as a statutory product. By the same
token, if the underlying process invention is found to be non-statutory,
Office personnel should classify the "product" claim as a "non-statutory
product." If the product claim is classified as being a non-statutory
product on the basis of the underlying process, Office personnel should
emphasize that they have considered all claim limitations and are basing
their finding on the analysis of the underlying process.
(b) Statutory Processes [Guidelines I.B.1.(c)(iii)]
A claim that requires one or more acts to be performed defines a
process. Not all processes, however, are processes
that fall within the definition of a statutory process under 101. A
statutory process is a series of one or more acts that manipulate
physical matter or energy resulting in some form of a physical
transformation.28 Accordingly, a claimed process is statutory if it:
-- manipulates some form of physical matter or energy; and
-- results in a transformation or reduction of the subject matter
manipulated into a different state or into a different thing to achieve
a practical application.
(i) Appropriate Subject Matter for Manipulation Steps of a Process
Consistent with the expansive Congressional intent behind 101,
Office personnel shall consider any form of physical "matter" or
"energy" to be the appropriate subject matter of the manipulation steps
of a process. Importantly, the subject matter manipulated by a process
does not have to be a physical object; it may be "intangible subject
matter representative of or constituting physical activity or
objects."29 Thus, an electrical signal representing data corresponding
to a physical object or physical activity is appropriate subject matter
for manipulation by a process. If the "acts" of a process manipulate
only numbers, abstract concepts or ideas, the acts are not being applied
to appropriate subject matter. Thus, a process consisting solely of
mathematical operations does not manipulate appropriate subject matter
and thus cannot constitute a statutory process.
(ii) Transformation or Reduction to a Different State or Thing
To be statutory, the claimed process when practiced must physically
transform the subject matter manipulated--something must happen other
than manipulating concepts or converting numbers to different numbers.
The required transformation can take place during any step of the
process (e.g., if a process requires three "acts" and only the last
"act" transforms the subject matter to a different state or thing, a
sufficient transformation has occurred). If the process does not result
in any physical transformation, it is not statutory.
(iii) Examples of Statutory Computer-Implemented Processes
Three exemplary computer-performed processes that fully satisfy the
requirements of 101:
-- A process that requires physical acts to be performed independent of
the steps to be performed by a programmed computer, where those acts
involve the manipulation of tangible physical objects and result in the
object having a different physical attributes or structure;30
-- A process that requires acts to be performed on the physical
components of a computer (i.e., the process manipulates the components
of the computer rather than data representing something external to the
computer system) and the effect of the process is that the computer
operates differently (such as an operating system process); and
-- A process that requires acts to be performed by a computer on data in
the form of an electrical or magnetic signal, where the data represents
a physical object or activities external to the computer system (e.g.,
physical characteristics of a chemical compound or a person's heart
rate), and where the process causes some transformation of the physical
but intangible representation of the physical object or activities.31
3. Non-Statutory Processes
In practical terms, claims define non-statutory processes if they:
-- consist solely of mathematical operations (i.e., a "mathematical
algorithm"); or
-- simply manipulate abstract ideas without some practical application
(e.g., a bid, a bubble hierarchy).
(a) Mathematical Algorithm That Defines a Law of Nature or Natural
Phenomenon or Describes an Abstract Idea
A process that consists solely of mathematical operations is
non-statutory. Mathematical algorithms do not manipulate physical matter
and cannot cause a physical effect. Courts have, however, recognized a
distinction between types of mathematical algorithms, namely, some
define a "law of nature" in mathematical terms and others merely
describe an "abstract idea."
Certain mathematical algorithms have been held non-statutory because
they represent a mathematical definition of a law of nature or a natural
phenomenon. For example, the formula E=mc2 is a "law of nature"--it
defines a "fundamental scientific truth" (i.e., the relationship between
energy and mass). To comprehend how the law of nature relates to any
object, one invariably has to perform certain steps (e.g., multiplying a
number representing the mass of an object by the square of a number
representing the speed of light). If an applicant defines a process to
consist solely of those steps that one must follow to solve the
mathematical representation of the law of nature, the "process" is
indistinguishable from the law of nature and would "preempt" the law of
nature. A patent cannot be granted on such a process.
Other mathematical algorithms have been held non-statutory because
they merely describe an abstract idea. An "abstract idea" may simply be
any sequence of mathematical operations that are combined to solve a
mathematical problem. The concern addressed by holding such subject
matter non-statutory is that the mathematical operations merely describe
an idea and do not define a process that represents a practical
application of the idea.
Accordingly, when a claim is found to define non-statutory subject
matter because of a mathematical algorithm, it is important to determine
whether the subject matter is a law of nature or natural phenomenon or
abstract idea. A rejection under 101 should indicate the type of
deficiency relied upon to support the rejection.
(b) Evaluation of Certain Language Related to Mathematical Operation
Steps of a Process
(i) Intended Use or Field of Use Statements
Claim language that simply specifies an intended use or field of use
for the invention generally will not limit the scope of a claim. Such
language often will be presented in the preamble of claim, but may
appear elsewhere in the body of the claim. Intended or field of use
language appearing in the preamble will in most instances not limit the
claim scope, and as such, Office personnel should be careful to properly
interpret such language. For example, a claimed mathematical process "to
be used in seismic prospecting..." is not limited by the seismic
prospecting use statement (i.e., none of the steps were explicitly or
implicitly limited to application to seismic prospecting activities).33
In such a case, Office personnel should identify the claim language that
constitutes the intended use or field of use statements and provide the
basis for their findings. This will shift the burden to applicant to
demonstrate otherwise.
(ii) Necessary Antecedent Step to Performance of A Mathematical
Operation or Independent Limitation on a Claimed Process
In rare situations, certain acts of "collecting" or "selecting" data
for use in a process consisting of one or more mathematical operations
will not further limit a claim beyond the specified mathematical
operation step(s). Such acts "merely determine values for the variables
used in the mathematical operations used in making the calculations."34
In other words, the acts are dictated by nothing other than the
performance of a mathematical operation.35
If a claim requires acts to be performed to create data that will
then be used in a process representing a practical application of one or
more mathematical operations, those acts must be treated as further
limiting the claim beyond the mathematical operation(s) per se. Such
acts are data gathering steps not dictated by the algorithm but by other
limitations which require certain antecedent steps and as such
constitute an independent limitation on the claim.
Examples of acts that independently limit a claimed process involving
mathematical operations include:
-- a method of conducting seismic exploration which requires generating
and manipulating signals from seismic energy waves before "summing" the
values represented by the signals;36 and
-- a method of displaying X-ray attenuation data as a signed gray scale
signal in a "field" using a particular anti-aliasing algorithm, where
the antecedent steps require generating the data using a particular
machine (e.g., a computed tomography scanner).37
Examples of steps that do not independently limit one or more
mathematical operation steps include:
-- "perturbing" the values of a set of process inputs, where the subject
matter "perturbed" was a number and the act of "perturbing" consists of
substituting the numerical values of variables;38 and
-- selecting a set of "arbitrary measurement point" values.39 Such steps
do not impose independent limitations on the scope of the claim beyond
those required by the mathematical operation limitation.
(iii) Post-Mathematical Operation Step Uses Solution or Merely Conveys
Result of Operation
In rare instances, certain kinds of post-solution "acts" will not
further limit a process claim beyond the performance of the preceding
mathematical operation step even if the acts are recited in the body of
a claim. If, however, the claimed acts represent some use of the
solution, those acts will invariably impose an independent limitation on
the claim. Thus, if a claim requires that the direct result of a
mathematical operation be evaluated and transformed into something else,
Office personnel cannot treat the subsequent steps as being
indistinguishable from the performance of the mathematical operation and
thus not further limiting on the claim. For example, acts that require
the conversion of a series of numbers representing values of a
wavefunction equation for a chemical compound into values representing
an image that conveys information about the three dimensional structure
of the compound cannot be treated as being part of the mathematical
operations that yield the wavefunction numbers. Office personnel should
be especially careful when reviewing claim language that requires the
performance of "post-solution" steps to ensure that actual claim
limitations are not ignored.
Examples of steps found not to independently limit a process
involving one or more mathematical operation steps include:
-- step of "updating an alarm limit" found to constitute changing the
number value of a variable to represent the result of the calculation;40
-- final step of "magnetically recording" the result of a calculation;41
-- final step of "equating" the process outputs to the values of the
last set of process inputs found to constitute storing the result of
calculations;42
-- final step of displaying result of a calculation "as a shade of gray
rather than as simply a number" found to not constitute distinct step
where the data were numerical values that did not represent anything;43
and
-- step of "transmitting electrical signals representing" the result of
calculations.44
Office personnel are reminded to rely on the applicant's
characterization of the significance of the "acts" being assessed to
resolve questions related to their relationship to the mathematical
operations recited in the claim and the invention as a whole.45
(c) Manipulation of Abstract Ideas Without A Practical Application
A process that consists solely of the manipulation of an abstract
idea without any limitation to a practical application is
non-statutory.46
In order to determine whether the claim is limited to a practical
application of an idea, Office personnel must analyze the claim as a
whole, in light of the specification, to understand what subject matter
is being manipulated and how it is being manipulated. During this
procedure, Office personnel must evaluate any statements of intended use
or field of use, any data gathering step and any post-manipulation
activity. See section (b) above.
IV. Issues Related to Compliance with Section 112, First and Second
Paragraphs [Guidelines I.B.2.]
Section 112 serves to ensure that the claims are clearly defined and
are fully supported by the disclosure. Office personnel should focus
their assessment of applications for compliance with 112 on
determining if the disclosure and claims clearly convey what the
applicant has invented, permit others to determine what rights have been
provided to the patentee, and enable one skilled in the art to the
practice the invention without undue experimentation.
When evaluating applications, Office personnel must always remember
to use the perspective of one of ordinary skill in the art. Claims and
disclosures are not to be evaluated in a vacuum. If elements of an
invention are well known in the art, the applicant does not have to
provide a disclosure that describes those elements.
Similarly, the applicant need not explicitly recite in the claims
every feature of the invention. Rather, if the claims, interpreted in
light of the disclosure reasonably apprise those of ordinary skill in
the art what the invention is, they satisfy the requirements of 112,
second paragraph. For example, if an applicant indicates that the
invention is a particular computer, the claim does not have to recite
every element or feature of the computer. In fact, it is preferable for
the claim to be drafted in a form that emphasizes what the applicant has
invented (e.g., what is new rather than old).47
If deficiencies are discovered with respect to 112, Office
personnel must be careful to rely on the appropriate paragraph of
112. Deficiencies under the second paragraph of 112 exist if it is
unclear what the claim defines (i.e., the claim fails to particularly
point out and distinctly claim the invention),48 or the claim as cast
does not define what applicant has indicated to be the invention.49
Deficiencies under the first paragraph of 112 can arise where there
is not an adequate written description that serves to identify what the
applicant has invented, or the disclosure does not enable one skilled in
the art to make and use the invention as claimed without undue
experimentation. Deficiencies related to disclosure of the best mode for
carrying out the claimed invention are not usually encountered during
initial examination of an application.
A. Specification Fails to Show How to Make or Use Programmed Computer
Element of Invention [Guidelines I.B.2.(b)]
The disclosure must enable a person skilled in the art to configure
the computer to possess the requisite functionality, and, if relevant,
integrate the computer with other elements to yield the claimed
invention, without the exercise of undue experimentation. If the
specification fails to identify how to configure a computer to possess
the requisite functionality or how to integrate the programmed computer
with other elements of the invention, the claim is likely to be
deficient under 112, first paragraph.
For many computer-implemented inventions, it is not unusual for the
claimed invention to involve more than one field of technology. For such
inventions, the disclosure must satisfy the enablement standard for each
aspect of the invention.50 As such, the disclosure must teach a person
skilled in each art how to make and use the relevant aspect of the
invention without undue experimentation. For example, to enable a claim
to a programmed computer that determines and displays the
three-dimensional structure of a chemical compound, the disclosure must
-- enable a person skilled in the art of molecular modeling to
understand and practice the underlying molecular modeling processes; and
-- enable a person skilled in the art of computer programming to create
a program that directs a computer to create and display the image
representing the three-dimensional structure of the compound.
In other words, the disclosure corresponding to each aspect of the
invention must be enabling to a person skilled in each respective art.
B. Programmed Computer Is Defined As Composite of Functional Elements
In many instances, an applicant will describe a programmed computer
by outlining the significant elements of the programmed computer using a
functional block diagram. Office personnel should review the
specification to ensure that along with the functional block diagram the
disclosure provides information that adequately describes each "element"
in hardware or software. If the functionally labeled elements of a
programmed computer are not described further in the specification and
one skilled in the art would not know what the elements are or how to
make or use them to yield the claimed invention, a claim defining an
invention requiring the use of that programmed computer is likely to be
deficient under one or more requirements of 112.
C. Elements of a Machine Defined Using Means Plus Function Language
[Guidelines I.B.2.(a) & (b)]
Where means plus function language is used to define the characteristics
of a machine or manufacture invention, claim elements must be
interpreted to read on only the structures or materials disclosed in the
specification, and "equivalents thereof."51 Thus, at the outset Office
personnel must attempt to correlate means elements to some description
of the elements in the written specification and drawings.
As noted earlier, there are many appropriate ways of describing the
elements of a programmed computer. If the description makes it clear
that a means element corresponds to the physical structure of a computer
or computer component, that description will sufficiently define the
claimed means element. Thus, a means element may be defined to be:
-- a programmed computer with a particular functionality;
-- a logic circuit or other component of a programmed computer that
performs a series of specifically identified operations dictated by a
computer program; or
-- a computer memory encoded with executable instructions representing a
computer program that can cause a computer to function in a particular
fashion.
A claim patterned after a functional block diagram and defined using
means plus function language may fail to particularly point out and
distinctly claim the invention if the disclosure does not describe the
specific materials or structures that correspond to the means elements.
The scope of a "means" element is defined as the corresponding structure
or material (e.g., a specific logic circuit) set forth in the written
description and its equivalents. Where no structure or material is
disclosed, the claim fails to particularly point out and distinctly
claim the invention. For example, if the applicant discloses only the
function to be performed and provides no description of hardware or
software that performs the function, the application has not disclosed
any "structure" to correspond to the means. Such a claim should be
rejected under 112, second paragraph. In contrast, if the
corresponding structure is disclosed to be a memory or logic circuit
that has been configured in some manner to perform that function (e.g.,
using a computer program), the claim satisfies 112, second paragraph.
Further guidance in interpreting the scope of equivalents of means
elements is provided in the Examination Guidelines For Claims Reciting A
Means or Step Plus Function Limitation In Accordance With 35 U.S.C. 112,
6th Paragraph.52
D. Claim Does Not Define Applicant's Invention [Guidelines I.B.2.(a)]
To satisfy the second paragraph of 112, the claims must define the
invention in a manner consistent with the applicant's written
description of the invention. If the applicant asserts a practical
utility for the invention, Office personnel should review the entire
disclosure to determine the features necessary to accomplish the
asserted practical utility. When the claim recites a practical utility
but fails to recite the necessary features to accomplish the asserted
practical utility, the claim should be rejected under 112, second
paragraph. If a claim is so broad as to encompass non-statutory subject
matter, the claim should be rejected under 112 ô 2, as well as
101. For example, if applicant has described the invention as a
computer- implemented process, but the claim is broad enough to cover
the mental performance of the process, then it should be rejected under
both 112 ô 2 and 101.53
A claim as a whole that defines non-statutory subject matter is
deficient under 101, and under 112, second paragraph.Determining
the scope of a claim as a whole requires a clear understanding of what
the applicant regards as the invention. If the invention as disclosed in
the written description is statutory, but the claims define subject
matter that is not, the deficiency can be corrected by an appropriate
claim amendment. Therefore, reject the claims under 101 and 112,
second paragraph, but identify the features of the invention that, if
recited in the claim, would render the claimed subject matter statutory.
E. Claim Defined Using Only Computer Program Code [Guidelines
I.B.2.(a)]
A claim defined entirely in computer program code, whether in source or
object code format, may be deficient under 112 ô 2 if one of ordinary
skill in the art would not be able to ascertain the metes and bounds of
the claimed invention. Such a claim should also be objected to under 37
CFR 1.52(a).55 A computer programming language is not the English
language, despite the fact that English words may be used in that
language.
In certain circumstances, as where self-documenting programming code
is employed, use of programming language in a claim would be
permissible, since such program source code presents sufficiently
high-level language and descriptive identifiers to make it universally
understood to others in the art without the programmer having to insert
any comments.56
Applicants should be encouraged to functionally define the steps the
computer will perform rather than simply providing source or object code.
V. Issues Related to Compliance with 103 [Guidelines I.B.3.]
As is the case for inventions in any field of technology, assessment of
a claimed computer-implemented invention for compliance with 103
begins with a comparison of the claimed subject matter to what is known
in the prior art. Once distinctions are identified between the claimed
invention and the prior art, those distinctions must be assessed and
resolved in light of the knowledge possessed by a person of ordinary
skill in the art. Against this backdrop, one must determine whether the
invention would have been obvious at the time the invention was made. If
not, the claimed invention satisfies 103. Factors and considerations
dictated by law governing 103 apply without modification to
inventions in this field of technology.
If the difference between the prior art and the claimed invention is
limited to information stored on or employed by a machine, one must
determine what role the information plays with regard to the invention
considered as a whole. Where the information imparts some degree of
functionality to the claimed invention taken as a whole, it represents a
critical element of the invention. As such, the information must be
considered and addressed incident to application of 103. Thus, a
rejection of the claim as a whole under 103 is inappropriate unless
the functionality imparted by the information would have been suggested
by the prior art. To establish a prima facie case of obviousness, Office
personnel must explain why it would have been obvious to a person of
ordinary skill in the art, at the time the invention was made, to impart
the functionality of the programmed computer with that specific
information.
However, where the information imparts no functionality to achieve
the specific utility of the invention, it cannot serve to render the
claimed invention, considered as a whole, non-obvious. Generally
speaking, situations where information imparts no functionality will be
limited to the following:
-- a computer readable storage medium that differs from the prior art
solely with respect to information encoded on the medium that does not
alter its functionality considered as a whole,
-- a computer that differs from the prior art solely with respect to
information whose content does not alter how the machine functions
(i.e., the information does not reconfigure the computer), or
-- a process that differs from the prior art only with respect to
information that does not alter how the process steps are to be
performed to achieve the utility of the invention.
Thus, if the prior art suggests storing a song on a disk, merely
choosing a particular song to store on the disk would be presumed to
have been obvious as being well within the level of ordinary skill in
the art at the time the invention was made. Such a difference is simply
a rearrangement of non-functional information.
VI. Conclusion
Once Office personnel have concluded an analysis of the claimed
invention under all the statutory provisions, including 101, 112,
102 and 103, when composing any Official action, they should review all
the proposed rejections and their bases to confirm their correctness.
Only then should any rejection be imposed.
1 See Request for Comments on Proposed Examination Guidelines for
Computer-Implemented Inventions, 60 Fed. Reg. 28,778 (June 2, 1995).
2 In re Freeman, 573 F.2d 1237, 1245, 197 USPQ 464, 471 (CCPA 1978); In
re Walter, 618 F.2d 758, 767, 205 USPQ 397, 406-07 (CCPA 1980); In re
Abele, 684 F.2d 902, 905-07, 214 USP\Q 682, 685-87 (CCPA 1982).
3 As the courts have repeatedly reminded the Office: "The goal is to
answer the question "`What did applicants invent?'" In re Abele, 684
F.2d at 907, 214 USPQ at 687 (CCPA 1982). Accord, e.g., Arrhythmia
Research Tech. v. Corazonix Corp., 958 F.2d 1053, 1059, 22 USPQ2d 1033,
1038 (Fed. Cir. 1992).
4 See Brenner v. Manson, 383 U.S. 519, 534, 148 USPQ 689, 695 ("Whatever
weight is attached to the value of encouraging disclosure and of
inhibiting secrecy, we believe a more compelling consideration is that a
process patent in the chemical field, which has not been developed and
pointed to the degree of specific utility, creates a monopoly of
knowledge which should be granted only if clearly commanded by the
statute.")(emphasis added). See also Nelson v. Bowler, 626 F.2d 853,
856, 206 USPQ 881, 883 (CCPA 1980) (Specific utility is also called
"practical utility.").
5 E.g., In re Alappat, 33 F.3d 1526, 1543, 31 USPQ2d 1545, 1556-57 (Fed.
Cir. 1994) (in banc) (quoting Diamond v. Diehr, 450 U.S. 175, 192, 209
USPQ 1, 10 (1981)). See also id. at 1579 (Newman, J., concurring)
("unpatentability of the principle does not defeat patentability of its
practical applications") (citing O'Reilly v. Morse, 56 U.S. (15 How.) 62
(1854)); Arrhythmia 958 F.2d at 1057, 22 USPQ2d at 1036.
6 60 Fed. Reg. 36,263 (July 14, 1995).
7 Arrythmia, 958 F.2d at 1057, 22 USPQ2d at 1036:
It is of course true that a modern digital computer manipulates data,
usually in binary form, by performing mathematical operations, such as
addition, subtraction, multiplication, division, or bit shifting, on the
data. But this is only how the computer does what it does. Of importance
is the significance of the data and their manipulation in the real
world, i.e., what the computer is doing.
8 Many computer-implemented inventions do not consist solely of a
computer. Thus, Office personnel should identify those claimed elements
of the computer-implemented invention that are not part of the
programmed computer, and determine how those elements relate to the
programmed computer. Office personnel should look for specific
information that explains the role of the programmed computer in the
overall process or machine and how the programmed computer is to be
integrated with the other elements of the apparatus or used in the
process.
9 Markman v. Westview Instruments, 52 F.3d 967, 980, 34 USPQ2d 1321,
1330 (Fed. Cir. 1995) (in banc).
10 See, e.g., In re Paulsen, 30 F.3d 1475, 1480, 31 USPQ2d 1671, 1674
(Fed. Cir. 1994) (inventor may define specific terms used to describe
invention, but must do so "with reasonable clarity, deliberateness, and
precision" and, if done, must "`set out his uncommon definition in some
manner within the patent disclosure' so as to give one of ordinary skill
in the art notice of the change" in meaning) (quoting Intellicall, Inc.
v. Phonometrics, Inc., 952 F.2d 1384, 1387-1388, 21 USPQ2d 1383, 1386
(Fed. Cir. 1992)).
11 See, e.g., In re Zletz, 893 F.2d 319, 321-22, 13 USPQ2d 1320, 1322
(Fed. Cir. 1989) ("During patent examination the pending claims must be
interpreted as broadly as their terms reasonably allow . . . . The
reason is simply that during patent prosecution when claims can be
amended, ambiguities should be recognized, scope and breadth of language
explored, and clarification imposed. . . An essential purpose of patent
examination is to fashion claims that are precise, clear, correct, and
unambiguous. Only in this way can uncertainties of claim scope be
removed, as much as possible, during the administrative process.").
12 See, e.g., In re Paulsen, 30 F.3d at 1480, 31 USPQ2d at 1674
(although specification can be used to interpret what the patentee meant
by a word or phrase in the claim, cannot add extraneous limitation from
the specification when limitation is not needed to interpret any
particular words or phrases in the claim).
13 See, e.g., Diamond v. Diehr, 450 U.S. at 188-89, 209 USPQ at 9 ("In
determining the eligibility of respondents' claimed process for patent
protection under 101, their claims must be considered as a whole. It
is inappropriate to dissect the claims into old and new elements and
then to ignore the presence of the old elements in the analysis. This is
particularly true in a process claim because a new combination of steps
in a process may be patentable even though all the constituents of the
combination were well known and in common use before the combination was
made.").
14 Diamond v. Chakrabarty, 447 U.S. 303, 308-09, 206 USPQ 193, 196-97
(1980):
In choosing such expansive terms as "manufacture" and "composition of
matter," modified by the comprehensive "any," Congress plainly
contemplated that the patent laws would be given wide scope. The
relevant legislative history also supports a broad construction. The
Patent Act of 1793, authored by Thomas Jefferson, defined statutory
subject matter as "any new and useful art, machine, manufacture, or
composition of matter, or any new or useful improvement [thereof]." Act
of Feb. 21, 1793, 1, 1 Stat. 319. The Act embodied Jefferson's
philosophy that "ingenuity should receive a liberal encouragement." 5
Writings of Thomas Jefferson 75-76 (Washington ed. 1871). See Graham v.
John Deere Co., 383 U.S. 1, 7-10 (1966). Subsequent patent statutes in
1836, 1870, and 1874 employed this same broad language. In 1952, when
the patent laws were recodified, Congress replaced the word "art" with
"process," but otherwise left Jefferson's language intact. The Committee
Reports accompanying the 1952 Act inform us that Congress intended
statutory subject matter to "include anything under the sun that is made
by man." S. Rep. No. 1979, 82d Cong., 2d Sess. 5 (1952); H.R. Rep. No.
1923, 82d Cong., 2d Sess. 6 (1952).
This perspective has been embraced by the Federal Circuit:
The plain and unambiguous 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 . . . . Thus, it is improper to
read into 101 limitations as to the subject matter that may be
patented where the legislative history does not indicate that Congress
clearly intended such limitations. [In re Alappat, 33 F.3d at 1542,
31USPQ2d at 1556.]
15 35 U.S.C. 101 (1994).
16 See 35 U.S.C. 100(b) ("The term "process" means process, art, or
method, and includes a new use of a known process, machine, manufacture,
composition of matter, or material.").
17 E.g., In re Alappat, 33 F.3d at 1542, 31USPQ2d at 1556; In re
Warmerdam, 33 F.3d at 1358, 31USPQ2d at 1757.
18 See, e.g., Rubber-Tip Pencil v. Howard, 87 U.S. 498, 507 (1874)
("idea of itself is not patentable, but a new device by which it may be
made practically useful is"); Mackay Radio & Telegraph Co. v. Radio
Corp. of America, 306 U.S. 86, 94 (1939) ("While a scientific truth, or
the mathematical expression of it, is not a patentable invention, a
novel and useful structure created with the aid of knowledge of
scientific truth may be."); In re Warmerdam, 33 F.3d 1354, 1360, 31
USPQ2d 1754, 1759 (Fed. Cir. 1994) ("steps of `locating' a medial axis,
and `creating' a bubble hierarchy describe nothing more than the
manipulation of basic mathematical constructs, the paradigmatic
`abstract idea'").
19 The concern over preemption was expressed as early as 1852. See Le
Roy v. Tatham, 55 U.S. 156, 175 (1852)("A principle, in the abstract, is
a fundamental truth; an original cause; a motive; these cannot be
patented, as no one can claim in either of them an exclusive right.");
Funk Brothers Seed Co. v. Kalo Inoculant Co., 333 U.S. 127, 132, 76 USPQ
280, 282 (1988) (combination of six species of bacteria to be
non-statutory subject matter).
20 In re Ziegler, 992 F.2d 1197, 1200-03, 26 USPQ2d 1600, 1603-06 (Fed.
Cir. 1993); Brenner v. Manson, 383 U.S. at 528-36, 148 USPQ at 693-696.
21 See, e.g., In re Musgrave, 431 F.2d 882, 893, 167 USPQ 280, 289-90
(CCPA 1970), cited with approval in In re Schrader, 22 F3d 290, 297
(Fed. Cir. 1994) (Newman, J., dissenting). The definition of
"technology" is the "application of science and engineering to the
development of machines and procedures in order to enhance or improve
human conditions, or at least to improve human efficiency in some
respect." Computer Dictionary 384 (2d ed. Microsoft Press 1994).
22 E.g., In re Waldbaum, 457 F.2d 997, 1003, 173 USPQ 430, 434 (CCPA
1972) ("The phrase "technological arts," as we have used it, is
synonymous with the phrase "useful arts" as it appears in Article I,
Section 8 of the Constitution.").
23 See, e.g., In re Warmerdam, 33 F.3d at 1361, 31 USPQ2d at 1760
(holding non-statutory a claim to a data structure per se).
24 Computer Dictionary 210 (2d ed. Microsoft Press 1994):
The meaning of data, as it is intended to be interpreted by people. Data
consists of facts, which become information when they are seen in
context and convey meaning to people. Computers process data without any
understanding of what that data represents.
25 See, e.g., In re Lowry, 32 F.3d 1579, 1583, 32 USPQ2d 1031, 1034-35
(Fed. Cir. 1994); In re Warmerdam, 33 F.3d at 1361-62, 31 USPQ2d at 17
60.
26 In re Warmerdam, 33 F.3d at 1359, 31 USPQ2d at 1759 (claim to
computer having specific memory defined using product-by-process format).
27 In re Lowry, 32 F.3d at 1583-84, 32 USPQ2d at 1035.
28 Diamond v. Diehr, 450 U.S. at 183, 209 USPQ at 6 ("A statutory
process is . . . a mode of treatment of certain materials to produce a
given result. It is an act, or a series of acts, performed upon the
subject-matter to be transformed and reduced to a different state or
thing . . . The process requires that certain things should be done with
certain substances, and in a certain order; but the tools to be used in
doing this may be of secondary consequence.").
29 In re Schrader, 22 F.3d 290, 295, 30 USPQ2d 1455, 1459 (Fed. Cir.
1994).
30 Diamond v. Diehr, 450 U.S. at 187, 209 USPQ at 8.
31 Arrythmia, 958 F.2d at 1058-59, 22 USPQ2d at 1037-38.
32 See, e.g., In re Meyer, 688 F.2d 789, 794-95, 215 USPQ 193, 197 (CCPA
1982) ("Scientific principles, such as the relationship between mass and
energy, and laws of nature, such as the acceleration of gravity, namely,
a=32 ft/sec.2, can be represented in mathematical format. However, some
mathematical algorithms and formulae do not represent scientific
principles or laws of nature; they represent ideas or mental processes
and are simply logical vehicles for communicating possible solutions to
complex problems. The presence of a mathematical algorithm or formula in
a claim is merely an indication that a scientific principle, law of
nature, idea or mental process may be the subject matter claimed and,
thus, justify a rejection of that claim under 35 USC 101; but the
presence of a mathematical algorithm or formula is only a signpost for
further analysis."). Cf. In re Alappat, 33 F.3d at 1543 n.19, 31 USPQ2d
at 1556 n.19 in which the Federal Circuit recognized the confusion:
The Supreme Court has not been clear . . . as to whether such subject
matter is excluded from the scope of 101 because it represents laws
of nature, natural phenomena, or abstract ideas. See Diehr, 450 U.S. at
186 (viewed mathematical algorithm as a law of nature); Benson, 409 U.S.
at 71-72 (treated mathematical algorithm as an "idea"). The Supreme
Court also has not been clear as to exactly what kind of mathematical
subject matter may not be patented. The Supreme Court has used, among
others, the terms "mathematical algorithm," "mathematical formula," and
"mathematical equation" to describe types of mathematical subject matter
not entitled to patent protection standing alone. The Supreme Court has
not set forth, however, any consistent or clear explanation of what it
intended by such terms or how these terms are related, if at all.
33 In re Walter, 618 F.2d at 769, 205 USPQ at 409 ("Although the claim
preambles relate the claimed invention to the art of seismic
prospecting, the claims themselves are not drawn to methods of or
apparatus for seismic prospecting; they are drawn to improved
mathematical methods for interpreting the results of seismic
prospecting.").
34 In re Richman, 563 F.2d 1026, 1030, 195 USPQ 340, 343 (CCPA 1977)
("In the present case too, notwithstanding that the antecedent steps are
novel and unobvious, they merely determine values for the variables used
in the mathematical formulae used in making the calculations. Thus, such
antecedent steps do not suffice to render the claimed methods,
considered as a whole, statutory subject matter.").
35 In In re Sarkar, 588 F.2d 1330, 1335, 200 USPQ 132, 139 (CCPA the
court explained why this approach must be followed:
No mathematical equation can be used, as a practical matter, without
establishing and substituting values for the variables expressed
therein. Substitution of values dictated by the formula has thus been
viewed as a form of mathematical step. If the steps of gathering and
substituting values were alone sufficient, every mathematical equation,
formula, or algorithm having any practical use would be per se subject
to parenting as a "process" under 101. Consideration of whether the
substitution of specific values is enough to convert the disembodied
ideas present in the formula into an embodiment of those ideas, or into
an application of the formula, is foreclosed by the current state of the
law.
36 In re Taner, 681 F.2d 787, 788, 214 USPQ 678, 679 (CCPA 1982).
37 In re Abele, 684 F.2d at 908, 214 USPQ at 687 ("The specification
indicates that such attenuation data is available only when an X-ray
beam is produced by a CAT scanner, passed through an object, and
detected upon its exit. Only after these steps have been completed is
the algorithm performed, and the resultant modified data displayed in
the required format.").
38 In re Gelnovatch, 595 F.2d 32, 41 n.7, 201 USPQ 136, 145 n.7 (CCPA
1979) ("Appellants' claimed step of perturbing the values of a set of
process inputs (step 3), in addition to being a mathematical operation,
appears to be a data-gathering step of the type we have held
insufficient to change a nonstatutory method of calculation into a
statutory process . . . . In this instance, the perturbed process inputs
are not even measured values of physical phenomena, but are instead
derived by numerically changing the values in the previous set of
process inputs.").
39 In re Sarkar, 588 F.2d at 1331, 200 USPQ at 135.
40 Parker v. Flook, 437 U.S. 584, 585, 198 USPQ 193, 195 (1978).
41 In re Walter, 618 F.2d at 770, 205 USPQ at 409 ("If 101 could be
satisfied by the mere recordation of the results of a nonstatutory
process on some record medium, even the most unskilled patent draftsman
could provide for such a step.").
42 In re Gelnovatch, 595 F.2d at 41 n.7, 201 USPQ at 145 n.7.
43 In re Abele, 684 F.2d at 909, 214 USPQ at 688 ("This claim presents
no more than the calculation of a number and display of the result,
albeit in a particular format. The specification provides no greater
meaning to "data in a field" than a matrix of numbers regardless of by
what method generated. Thus, the algorithm is neither explicitly nor
implicitly applied to any certain process. Moreover, that the result is
displayed as a shade of gray rather than as simply a number provides no
greater or better information, considering the broad range of
applications encompassed by the claim.").
44 In re de Castelet, 562 F.2d 1236, 1244, 195 USPQ 439, 446 (CCPA 1967)
("That the computer is instructed to transmit electrical signals,
representing the results of its calculations, does not constitute the
type of "post solution activity" found in Flook, supra, and does not
transform the claim into one for a process merely using an algorithm.
The final transmitting step constitutes nothing more than reading out
the result of the calculations.").
45 See In re Sarkar, 588 F.2d at 1332 n.6, 200 USPQ at 136 n.6
("post-solution" construction that was being modeled by the mathematical
process not considered in deciding 101 question because applicant
indicated that such construction was not a material element of the
invention).
46 E.g., In re Warmerdam, 33 F.3d at 1359, 31 USPQ2d at 1759. See also
Schrader, 22 F.3d at 295, 30 USPQ2d at 1458-59 (although the court
determined that the subject matter was simply a mathematical algorithm,
Schrader's process mere manipulated an abstract idea).
47 See, e.g., Northern Telecom, Inc. v. Datapoint Corp., 908 F.2d 931,
941-43, 15 USPQ 2d 1321, 1328-1330 (Fed. Cir. 1990) (judgment of
invalidity reversed for clear error where expert testimony on both sides
showed that a programer of reasonable skill could write a satisfactory
program with ordinary effort based on the disclosure); DeGeorge v.
Bernier, 768 F.2d 1318, 1334, 226 USPQ 758, 762-63 (Fed. Cir. 1985)
(invention was adequately disclosed for purposes of enablement even
though all of the circuitry of a word processor was not disclosed, since
the undisclosed circuitry was deemed inconsequential because it did not
pertain to the claimed circuit); In re Phillips, 608 F.2d 879, 882-83,
203 USPQ 971, 975 (CCPA 1979) (computerized method of generating printed
architectural specifications dependent on use of glossary of predefined
standard phrases and error-checking feature enabled by overall
disclosure generally defining errors); In re Donohue, 550 F.2d 1269,
1271, 193 USPQ 136, 137 (CCPA 1977) ("Employment of block diagrams and
descriptions of their functions is not fatal under 35 U.S.C. 112,
first paragraph, providing the represented structure is conventional and
can be determined without undue experimentation."); In re Knowlton, 481
F.2d 1357, 1366-68, USPQ 486, 493-94 (CCPA 1973) (examiner's contention
that a software invention needed a detailed description of all the
circuitry in the complete hardware system reversed).
48 See Miles Labs v. Shandon, Inc., 997 F.2d 870, 875, 27 USPQ2d 1123,
1126 (Fed. Cir. 1993) ("test for definiteness is whether one skilled in
the art would understand the bounds of the claim when read in light of
the specification").
49 In re Prater, 415 F.2d 1393, 1404, 162 USPQ 541, 550 (CCPA 1969)
(holding that claim did not comply with 35 U.S.C. 112 ô 2 because it
was admittedly beyond that which "applicant regard[ed] as his
invention").
50 See In re Naquin, 398 F.2d 86, 866, 158 USPQ 317, 319 (CCPA 1968)
("When an invention, in its different aspects, involves distinct arts,
that specification is adequate which enables the adepts of each art,
those who have the best chance of being enabled, to carry out the aspect
proper to their specialty."). See also Ex parte Zechnall, 194 USPQ 461,
461 (Bd. App. 1973) ("appellants' disclosure must be held sufficient if
it would enable a person skilled in the electronic computer art, in
cooperation with a person skilled in the fuel injection art, to make and
use appellants' invention").
51 Two in banc decisions of the Federal Circuit have made clear that the
Office is to interpret means plus function language according to 35
U.S.C. 112 ô 6. In the first, In re Donaldson, F.3d 1189, 1193, 29
USPQ2d 1845, 1848 (Fed. Cir. 1994), the court held:
The plain and unambiguous meaning of paragraph six is that one
construing means-plus-function language in a claim must look to the
specification and interpret that language in light of the corresponding
structure, material, or acts described therein, and equivalents thereof,
to the extent that the specification provides such disclosure. Paragraph
six does not state or even suggest that the PTO is exempt from this
mandate, and there is no legislative history indicating that Congress
intended that the PTO should be. Thus, this court must accept the plain
and precise language of paragraph six.
Consistent with Donaldson, in the second decision, In re Alappat, 33
F.3d at 1540, 31 USPQ2d at 1554, the Federal Circuit held:
Given Alappat's disclosure, it was error for the Board majority to
interpret each of the means clauses in claim 15 so broadly as to "read
on any and every means for performing the function" recited, as it said
it was doing, and then to conclude that claim 15 is nothing more than a
process claim wherein each means clause represents a step in that
process. Contrary to suggestions by the Commissioner, this court's
precedents do not support the Board's view that the particular apparatus
claims at issue in this case may be viewed as nothing more than process
claims.
52 1162 O.G. 59 (May 17, 1994).
53 For example, in In re Prater, 415 F.2d at 1403-04, 162 USPQ at
549-50, the court considered a claim that was found to encompass both
the mental and physical performance of a series of calculations (i.e.,
the claim was not limited to performance of a calculation on a machine).
The applicant had argued that the invention was to be practiced using a
machine. Id. The court found that while the claims defined a statutory
process, they were deficient under the second paragraph of 112. Id.
The court emphasized that:
[W]hen read in the light of the specification, claim 9 does read on a
mental process augmented by pencil and paper markings. We find no
express limitation in claim 9 which, even when interpreted in the light
of the specification, would support the conclusion that the claim is
limited to a "machine process" or "machine-implemented process." This is
particularly important in this case since the board noted that, in their
brief before the board, appellants acknowledged that "[though] not
practical for most of the needed applications, their method,
theoretically, can be practiced by hand." . . . Inasmuch as claim 9,
thus interpreted, reads on subject matter for which appellants do not
seek coverage, and therefore tacitly admit to be beyond that which
"applicant regards as his invention," we feel that the claim fails to
comply with 35 USC 112 which requires that "[the] specification shall
conclude with one or more claims particularly pointing out and
distinctly claiming the subject matter which the applicant regards as
his invention." (Emphasis added.) This is true notwithstanding
appellants' disclosure of a machine-implemented process. [Id.]
The basis of this type of rejection is that the claim, as cast, is
incomplete.
54 If the invention, both as disclosed and as claimed, is not statutory
subject matter, reject the claims under 101 for being drawn to
non-statutory subject matter, and under 112, second paragraph, for
failing to particularly point out and distinctly claim an invention
entitled to protection under U.S. patent law.
55 See 37 CFR 1.52(a) ("The application, any amendments or
corrections thereto, and the oath or declaration must be in the English
language except as provided for in 1.69 and paragraph (d) of this
section . . . . ") .
56 See Computer Dictionary 353 (Microsoft Press 1994).
APPENDIX
I. Guidelines for Examination of Computer-Implemented Inventions
(Proposed)
60 Fed. Reg. 28,778 (June 2, 1995)
A. General Considerations
The following guidelines have been developed to assist Office
personnel in their review of applications drawn to computer-implemented
inventions. These guidelines respond to recent changes in the law that
governs the patentability of computer-implemented inventions, and set
forth the official policy of the Office regarding inventions in this
field of technology.
It is essential that patent applicants obtain a prompt yet complete
examination of their applications. The Office can best achieve this goal
by raising any issue that may affect patentability in the initial action
on the merits. Under the principles of compact prosecution, each claim
should be reviewed for compliance with every statutory requirement of
patentability in the initial review of the application, even if one or
more claims is found to be deficient with respect to one statutory
requirement. Deficiencies should be explained clearly, particularly when
they serve as a basis of a rejection. Where possible, examiners should
indicate how rejections may be overcome and problems resolved. A failure
to follow this approach can lead to unnecessary delays in the
prosecution of the application.
B. Procedures to be Followed When Evaluating Computer-Implemented
Inventions
The following procedures should be used when reviewing applications
drawn to computer-implemented inventions.
1. Determine what the applicant has invented by reviewing the written
description and the claims.
(a) Identify any specific embodiments of the invention that have been
disclosed, review the detailed description of the invention and note the
specific utility that has been asserted for the invention.
(b) Analyze each claim carefully, correlating each claim element to
the relevant portion of the written description that describes that
element. Give claim elements their broadest reasonable interpretation
that is consistent with the written description. If elements of a
claimed invention are defined in means plus function format, review the
written description to identify the specific structure, materials or
acts that correspond to each such element.
(c) Considering each claim as a whole, classify the invention defined
by each claim as to its statutory category (i.e., process, machine,
manufacture or composition of matter). Rely on the following
presumptions in making this classification.
(i) A computer or other programmable apparatus whose actions are
directed by a computer program or other form of "software" is a
statutory "machine."
(ii) A computer readable memory that can be used to direct a computer to
function in a particular manner when used by the computer [1] is a
statutory "article of manufacture".
(iii) A series of specific operational steps to be performed on or with
the aid of a computer is a statutory "process".
A claim that clearly defines a computer-implemented process but is
not cast as an element of a computer readable memory or as implemented
on a computer should be classified as a statutory "process." [2] If an
applicant responds to an action of the Office based on this
classification by asserting that subject matter claimed in this format
is a machine or an article of manufacture, reject the claim under 35
U.S.C. 112, second paragraph, for failing to recite at least one
physical element in the claims that would otherwise place the invention
in either of these two "product" categories. The Examiner should also
object to the specification under 37 CFR 1.71(b) if such an assertion is
made, as the complete invention contemplated by the applicant has not
been cast precisely as being an invention within one of the statutory
categories.
A claim that defines an invention as any of the following subject
matter should be classified as non-statutory:
-- a compilation or arrangement of data, independent of any physical
element;
-- a known machine-readable storage medium that is encoded with data
representing creative or artistic expression (e.g., a work of music, art
or literature) [3], [4];
-- a "data structure" independent of any physical element (i.e., not
as implemented on a physical component of a computer such as a computer
readable memory to render that component capable of causing a computer
to operate in a particular manner); or
-- a process that does nothing more than manipulate abstract ideas or
concepts (e.g., a process consisting solely of the steps one would
follow in solving a mathematical problem [5]).
Claims in this form are indistinguishable from abstract ideas, laws
of nature and natural phenomena and may not be patented. Non-statutory
claims should be handled in the manner described in section (2)(c) below.
2. Analyze each claim to determine if it complies with 112, second
paragraph, and with 112, first paragraph.
(a) Determine if the claims particularly point out and distinctly
claim the invention. To do this, compare the invention as claimed to the
invention as it has been described in the specification. Pay particular
attention to the specific utility contemplated for the
invention--features or elements of the invention that are necessary to
provide the specific utility contemplated for that invention must be
reflected in the claims. If the claims fail to accurately define the
invention, they should be rejected under 112, second paragraph. A
failure to limit the claim to reflect features of the invention that are
necessary to impart the specific utility contemplated may also create a
deficiency under 112, first paragraph.
If elements of a claimed invention are defined using "means plus
function" language, but it is unclear what structure, materials or acts
are intended to correspond to those elements, reject the claim under
112, second paragraph. A rejection imposed on this basis shifts the
burden to the applicant to describe the specific structure, material or
acts that correspond to the means element in question, and to identify
the precise location in the specification where a description of that
means element can be found. Interpretation of means elements for 112,
second paragraph purposed must be consistent with interpretation of such
elements for 102 and 103 purposes.
Computer program-related elements of a computer-implemented [6]
invention may serve as the specific structure, material or acts that
correspond to an element of an invention defined using a means plus
function limitation. For example, a series of operations performed by a
computer under the direction of a computer program may serve as
"specific acts" that correspond to a means element. Similarly, a
computer-readable memory encoded with data representing a computer
program that can cause a computer to function in a particular fashion,
or a component of a computer that has been reconfigured with a computer
program to operate in a particular fashion, can serve as the "specific
structure" corresponding to a means element.
Claims must be defined using the English language. See, 37 CFR
1.52(a). A computer programming language is not the English language,
despite the fact that English words may be used in that language. Thus,
an applicant may not use computer program code, in either source or
object format, to define the metes and bounds of a claim. A claim which
attempts to define elements of an invention using computer program code,
rather than the functional steps which are to be performed, should be
rejected under 112, second paragraph, and should be objected to under
37 CFR 1.52(a).
(b) Construe the scope of the claimed invention to determine if it is
adequately supported by an enabling disclosure. Construe any element
defined in means plus function language to encompass all reasonable
equivalents of the specific structure, material or acts disclosed in the
specification corresponding to that means element. Special care should
be taken to ensure that each claim complies with the written description
and enablement requirements of 35 U.S.C. 112.
(c) A claim as a whole that defines non-statutory subject matter is
deficient under 101, and under 112, second paragraph. Determining
the scope of a claim as a whole requires a clear understanding of what
the applicant regards as the invention. The review performed in step 1
should be used to gain this understanding.
(i) If the invention as disclosed in the written description is
statutory, but the claims define subject matter that is not, the
deficiency can be corrected by an appropriate claim amendment.
Therefore, reject the claims under 101 and 112, second paragraph,
but identify the features of the invention that, if recited in the
claim, would render the claimed subject matter statutory.
(ii) If the invention, both as disclosed and as claimed, is not
statutory subject matter, reject the claims under 101 for being drawn
to non-statutory subject matter, and under 112, second paragraph, for
failing to particularly point out and distinctly claim an invention
entitled to protection under U.S. patent law.
An invention is not statutory if it falls within any of the
non-statutory claim categories outlined in section (1)(c) above. Also,
in rare situations, a claim classified as a statutory machine or article
of manufacture may define non-statutory subject matter. Non-statutory
subject matter (i.e., abstract ideas, laws of nature and natural
phenomena) does not become statutory merely through a different form of
claim presentation. Such a claim will (a) define the "invention" not
through characteristics of the machine or article of manufacture claimed
but exclusively in terms of a non-statutory process that is to be
performed on or using that machine or article of manufacture, and (b)
encompass any product in the stated class (e.g., computer, computer
readable memory) configured in any manner to perform that process.
3. Determine if the claimed invention is novel and nonobvious under
102 and 103. When evaluating claims defined using "mean plus function"
language, refer to the specific guidance provided in the In re Donaldson
guidelines [1162 OG 59] and section (3)(a) above.
C. Notes on the Guidelines
[1] Articles of manufacture encompassed by this definition consist of
two elements: (1) a computer readable storage medium, such as a memory
device, a compact disc or a floppy disk, and (2) data encoded on that
storage medium in such a way that the storage medium causes a computer
to operate in a specific and predefined manner. The composite of the two
elements is a storage medium with a particular physical structure and
function (e.g., one that will impart the functionality represented by
the data onto a computer).
[2] For example, a claim that is cast as "a computer program" but which
then recites specific steps to be implemented on or using a computer
should be classified as a "process." A claim to simply a "computer
program" that does not define the invention in terms of specific steps
to be performed on or using a computer should not be classified as a
statutory process.
[3] The specific words or symbols that constitute a computer program
represent the expression of the computer program and as such are a
literary creation.
[4] A claim in this format should also be rejected under 103, as
being obvious over the known machine-readable storage medium standing
alone.
[5] A claim to a method consisting solely of the steps necessary to
converting one set of numbers to another set of numbers without reciting
any computer-implemented steps would be a non-statutory claim under this
definition.
[6] This includes the software and any associated computer hardware that
is necessary to perform the functions directed by the software.
[1180 OG 14]