MISSING FOOTNOTES AND DISSENTS
Judicial decision on patent and/or copyrights
33 F.3d 1526
31 USPQ2d 1545
July 1994
In re Alappat
U.S. Court of Appeals Federal Circuit
Decided July 29, 1994
Appeal from the U.S. Patent and Trademark Office, Board of Patent Appeals and
Interferences; 23 USPQ2d 1340.
Application, serial no. 07/149,792, filed by Kuriappan P. Alappat, Edward E.
Averill, and James G. Larsen. From reconsideration decision of the Board of
Patent Appeals and Interferences sustaining examiner's rejection of claims,
applicants appeal. Reversed.
Before Archer, chief judge, and Rich, Nies, Newman, Mayer, Michel, Plager,
Lourie, Clevenger, Rader, and Schall, circuit judges.
Rich, J., with whom:
as to Part I (Jurisdiction): Newman, Lourie, and Rader, JJ., join; Archer,
C.J., Nies, and Plager, JJ., concur in conclusion; and Mayer, Michel,
Clevenger, and Schall, JJ., dissent; and
as to Part II (Merits): Newman, Lourie, Michel, Plager, and Rader, JJ., join;
Archer, C.J., and Nies, J., dissent; and Mayer, Clevenger, and Schall, JJ.,
take no position.
Kuriappan P. Alappat, Edward E. Averill, and James G. Larsen (collectively
Alappat) appeal the April 22, 1992, reconsideration decision of the Board of
Patent Appeals and Interferences (Board) of the United States Patent and
Trademark Office (PTO), Ex Parte Alappat, 23 USPQ2d 1340 (BPAI, 1992), which
sustained the Examiner's rejection of claims 15-19 of application Serial No.
07/149,792 ('792 application) as being unpatentable under 35 U.S.C. Section
101 (1988).
I. JURISDICTION
This court must determine whether the Board's reconsideration decision
constitutes a valid decision over which this court may exercise subject matter
jurisdiction pursuant to 28 U.S.C. Section 1295(a)(4)(A) (1988) and 35 U.S.C.
Section 141 (1988). As discussed below, the legality of the Board panel which
issued the reconsideration decision is in question, thus raising the issue of
the validity of the decision itself and consequently our authority to review
that decision. Therefore, before addressing the merits, it is appropriate that
we first determine that the decision was rendered by a legally constituted
panel to ensure that a jurisdictional cloud does not hang over our holding on
the merits. See In re Bose Corp., 772 F.2d 866, 869, 227 USPQ 1, 3-4
(Fed. Cir. 1985).{1}
Although Alappat does not contest the validity of the Board's reconsideration
decision, jurisdiction cannot be conferred on this court by waiver or
acquiescence. Coastal Corp. v. United States, 713 F.2d 728, 730 (Fed. Cir.
1983). This court therefore has raised the issue of jurisdiction sua sponte,
as is its duty. See Mansfield, Coldwater & Lake Mich. Ry. Co. v. Swan, 111
U.S. 379, 382 (1884); Wyden v. Commissioner of Patents & Trademarks, 807 F.2d
934, 935, 231 USPQ 918, 919 (Fed. Cir. 1986); see also 5 WRIGHT & MILLER,
FEDERAL PRACTICE AND PROCEDURE Section 1393 (1990). To this end, this court,
having decided to hear the case in banc, issued an Order on December 3, 1992,
requesting briefing on the following three questions:
(1) When a three-member panel of the Board has rendered its decision, does
the Commissioner have the authority to constitute a new panel for purposes
of reconsideration?
(2) If the Commissioner lacks such authority, is the decision of such a new
panel a decision of the Board for purposes of 28 U.S.C. Section 1295(a)(4)(A)?
If not, does this court have jurisdiction to reach the merits of the appealed
decision?
(3) What is the relationship, if any, between the "reconsideration" action
taken in this case and "rehearings" by the Board provided for in 35 U.S.C.
Section 7(b)?
Consistent with our discussion below, we hold that the answer to the first
question is yes. Consequently, we need not address the second question. As
to the third question, we hold, for the reasons explained later, that the
"reconsideration" by the Board was a "rehearing" as provided for in
35 U.S.C. Section 7(b) (1988).
A. Background
In an Office Action mailed December 5, 1989, the Examiner finally rejected
claims 15-19 under 35 U.S.C. Section 101 as being directed to non-statutory
subject matter. Alappat appealed this rejection to the Board pursuant to 35
U.S.C. Section 134 (1988), and a three-member panel made up of
Examiners-in-Chief Lindquist, Thomas, and Krass reversed the Examiner's
non-statutory subject matter rejection in a decision mailed June 26, 1991. The
Examiner then requested reconsideration of this decision, pursuant to section
1214.04 of the Manual of Patent Examining Procedure(MPEP), stating that the
panel's decision conflicted with PTO policy. The Examiner further requested
that such reconsideration be carried out by an expanded panel.
An expanded eight-member panel, acting as the Board, granted both of the
Examiner's requests. The expanded panel was made up of PTO Commisioner
Manbeck, PTO Deputy Commissioner Comer, PTO Assistant Commissioner Samuels,
Board Chairman Serota, Board Vice-Chairman Calvert, and the three members of
the original panel. On April 22, 1992, the five new members of the expanded
panel issued the majority decision now on appeal, authored by Chairman Serota,
in which they affirmed the Examiner's Section 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.
B. Discussion
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, 490 U.S. 581,
592 (1989); Hoechst Aktiengesellschaft v. Quigg, 917 F.2d 522, 526, 16
USPQ2d 1549, 1552 (Fed. Cir. 1990). In this case, the composition of
the Board and its authority to reconsider its own decisions, and the
Commissioner's authority over the Board, are governed by 35 U.S.C.
Section 7, which reads:
(a) The examiners-in-chief shall be persons of competent legal knowledge
and scientific ability, who shall be appointed to the competitive service.
The Commissioner, the Deputy Commissioner, the Assistant Commissioners,
and the examiners-in-chief shall constitute the Board of Patent Appeals
and Interferences.
(b) The Board of Patent Appeals and Interferences shall, on written appeal
of an applicant, review adverse decisions of examiners upon applications
for patents and shall determine priority and patentability of invention in
interferences declared under section 135(a) of this title. Each appeal and
interference shall be heard by at least three members of the Board of
Appeals and Interferences, who shall be designated by the Commissioner.
Only the Board of Patent Appeals and Interferences has the authority to
grant rehearings.
35 U.S.C. Section 7 (1988) (emphasis added).
For the reasons set forth below, we hold that Section 7 grants the
Commissioner the authority to designate the members of a panel to consider
a request for reconsideration of a Board decision. This includes, as in
this case, the Commissioner designating an expanded panel made up of the
members of an original panel, other members of the Board, and himself as
such, to consider a request for reconsideration of a decision rendered by
that original panel. The Board's reconsideration decision therefore
constituted a valid decision over which this court may exercise subject
matter jurisdiction.
(a)
At the outset, we note that Section 7(a) plainly and unambiguously
provides that the Commissioner, the Deputy Commissioner, and the Assistant
Commissioners are members of the Board. Section 7(b) plainly and
unambiguously requires that the Commissioner designate "at least three"
Board members to hear each appeal. By use of the language "at least
three", Congress expressly granted the Commissioner the authority to
designate expanded Board panels made up of more than three Board
members.{2}
There is no evidence in the legislative history of Section 7, or Title
35 as a whole, clearly indicating that Congress intended to impose any
statutory limitations regarding which Board members the Commissioner may
appoint to an expanded panel or when the Commissioner may convene such a
panel.{3} The Commissioner thus has the authority to convene an expanded
panel which includes, or as in this case is predominately made up of,
senior executive officers of the PTO such as the Deputy Commissioner,
the Assistant Commissioner, the Board's Chairman and Vice-Chairman, and
himself.{4}
(b)
The focus of the jurisdictional inquiry in this case is the last sentence
of Section 7(b) which provides: "Only the Board of Patent Appeals and
Interferences has the authority to grant rehearings". The Commissioner
contends that the reconsideration action taken in this case constituted a
type of "rehearing" as mentioned in the last sentence of Section 7(b). For
the reasons set forth below, we find the Commissioner's interpretation
of Section 7 to be a reasonable one entitled to deference, given that
neither the statute itself nor the legislative history thereof
indicates Congressional intent to the contrary.
We interpret the term "rehearings" in Section 7 as encompassing any
reconsideration by the Board of a decision rendered by one of its panels.
The fact that Section 7 refers to "rehearings" whereas 37 C.F.R. 1.197
(PTO Rule 197){5} refers to "reconsideration" is of no significance. The
differing terminology appears to be nothing more than the result of
imprecise regulation drafting.{6} We have been unable to find any evidence
suggesting that, in promulgating Rule 197, the PTO intended to create a
review process separate and distinct from that provided by statute. In
addition, our interpretation finds support in In re Schmidt, 377 F.2d 639,
641, 153 USPQ 640, 642 (CCPA 1967), wherein the CCPA accepted, without
criticism, the PTO's treatment of a Board reconsideration pursuant to
Rule 197, on an examiner's request, as a "rehearing" provided for in
Section 7(b).{7}
We also interpret the Commissioner's express statutory authority to
designate the members of a panel hearing an appeal as extending to
designation of a panel to consider a request for a rehearing pursuant
to Section 7(b).{8} There is no indication to the contrary in the
statute, and we have found no legislative history indicating a clear
Congressional intent that the Commissioner's authority to designate
the members of a Board panel be limited to the designation of an
original panel or that the Board be limited to exercising its rehearing
authority only through the panel which rendered an original decision.
In those cases where a different panel of the Board is reconsidering
an earlier panel decision, the Board is still the entity reexamining
that earlier decision; it is simply doing so through a different panel.
The last sentence of Section 7(b) is nothing more than an exclusionary
statement vesting the Board with the sole authority to grant a rehearing.
Thus, for example, the Commissioner cannot personally grant a rehearing,
notwithstanding the general authority that he has over the operation of
the PTO. For a general history of the Board and of appeals within and
from the PTO, see Michael W. Blommer, The Board of Patent Appeals and
Interferences, AIPLA Bulletin 188 (1992), P.J. Federico, The Board of
Appeals 1861-1961, 43 JPOS 691 (1961), and Evolution of Patent Office
Appeals, 22 JPOS 838-64, 920-49 (1940).
The predecessor of Section 7 was section 482 of the Revised Statutes, as
amended by the Act of March 2, 1927. The 1927 Act added to the Board the
Commissioner, the First Assistant Commissioner, and the Assistant
Commissioner. It also eliminated the right of an applicant to appeal to
the Commissioner from an adverse Board decision, by adding to the statute
the language "[t]he the Board of Appeals shall have sole power to grant
rehearings," essentially the same provision as in today's Section 7(b).
Act of March 2, 1927, ch. 273, Section 3, 44 Stat. 1335. Prior to this
amendment, the Commissioner acted on petitions for rehearing of adverse
Board decisions. Through this amendment, Congress effectively eliminated
the onerous burden placed on the Commissioner regarding reviewing such
appeals, instead steering applicants to the Board with such requests.
The events surrounding the enactment of the 1927 Act do not indicate any
Congressional intent to lessen the great supervisory power that the
Commissioner possessed over the PTO prior to that Act.{9} Indeed, at the
end of the 1926 House and Senate hearings during which the last sentence
of what is now Section 7(b) was discussed, the Senate Committee on
Patents concluded:
One lawyer [remarks of Fenning, chairman of the committee on laws and
rules of the American Patent Law Association, Procedure in the Patent
Office, Hearing on S. 4812 Before the Committee on Patents, United States
Senate, 69th Con. 2d Sess. 19, 21-22 (1926)] has expressed the fear that
in providing in lines 16-17, page 2 (sec. 482) [the precursor to section
7(b)], that the board of appeals shall have the sole power to grant
"rehearings", the bill may lessen the present supervisory power of the
commissioner, but it was agreed by the other lawyers at the hearing, and
the Committee on Patents concurs in this view, that the supervisory power
of the commissioner, as it has existed for a number of decades, remains
unchanged by the bill.
S. Rep. No. 1313, 69th Cong., 2d Sess. 4 (1927) (emphasis added). Fenning
expressed the same concerns to the House Committee on Patents. 1926 House
Hearing at 22-23. The House Committee Report, H.R. No. 1889, 69th Cong.,
2d Sess. (1927), is silent on the issue, thus suggesting that the House
did not intend to give the last sentence of Section 7(b) a different
meaning than was ascribed to it by the Senate. We believe the foregoing
illustrates the lack of intent on the part of Congress in enacting the
last sentence of Section 7(b) to place any limitations on the
Commissioner's ability to designate Board panels, including Board panels
for "rehearing" purposes.
(c)
Our holding is consistent with the broad supervisory authority that
Congress has granted the Commissioner under Title 35 regarding the
operation of the PTO. Exemplary thereof is Section 6(a), which reads
in pertinent part:
The Commissioner, under the direction of the Secretary of Commerce, shall
superintend or perform all duties required by law respecting the granting
and issuing of patents.
35 U.S.C. Section 6(a) (1988) (emphasis added). The Commissioner also may
establish regulations not inconsistent with the law, with the approval of
the Secretary of Commerce, 35 U.S.C. Section 6 (1988), cause an
examination to be made of an application, 35 U.S.C. Section 131 (1988),
declare an interference, 35 U.S.C. Section 135 (1988), and issue a patent
when authorized by law, 35 U.S.C. Sections 131, 145 (1988), 151 (1988),
153 (1988).
Moreover, the Commissioner is not bound by a Board decision that an
applicant is entitled to a patent. Only a court can order the Commissioner
to act, not the Board. Even though Board members serve an essential
function, they are but examiner-employees of the PTO, and the ultimate
authority regarding the granting of patents lies with the
Commissioner.{10} For example, if the Board rejects an application, the
Commissioner can control the PTO's position in any appeal through the
Solicitor of the PTO; the Board cannot demand that the Solicitor attempt
to sustain the Board's position. Conversely, if the Board approves an
application, the Commissioner has the option of refusing to sign a patent;
an action which would be subject to a mandamus action by the applicant.
The Commissioner has an obligation to refuse to grant a patent if he
believes that doing so would be contrary to law. The foregoing evidences
that the Board is merely the highest level of the Examining Corps, and
like all other members of the Examining Corps, the Board operates subject
to the Commissioner's overall ultimate authority and responsibility.
One also should not overlook the asymmetry of Section 141, which grants
applicants, but not the Commissioner, the right to appeal a decision of
the Board to this court. Since Congress has reenacted Section 141 several
times since the 1927 debates about the Board's independence, see 1926
House Hearing at 22-29, it is safe to infer that Congress believed the
Commissioner did not need a right of appeal in view of his limited control
over the Board pursuant to Section 7 and in view of his rulemaking
authority pursuant to Section 6(a).
(d)
Contrary to suggestions by Amicus Curiae Federal Circuit Bar Association
(FCBA), our holding does not conflict with this court's previous
statements in Animal Legal Defense Fund v. Quigg, 932 F.2d 920, 928-29, 18
USPQ2d 1677, 1684 (Fed. Cir. 1991), that the Board is not the alter ego or
agent of the Commissioner. In that case, this court merely pointed out
that the Board derives its adjudicatory authority from a statutory source
independent of the Commissioner's rulemaking authority, and that, although
the Commissioner may sit on the Board, "in that capacity he serves as any
other member". Animal Legal Defense Fund, 932 F.2d at 929 n.10, 18 USPQ2d
at 1684 n.10. In other words, the Commissioner has but one vote on any
panel on which he sits, and he may not control the way any individual
member of a Board panel votes on a particular matter. However, the present
statutory scheme does allow the Commissioner to determine the composition
of Board panels, and thus he may convene a Board panel which he knows or
hopes will render the decision he desires, even upon rehearing, as he
appears to have done in this case.
Such a result does not reduce the Board to an alter ego or agent of the
Commissioner. To the contrary, the fact remains that the Commissioner may
not unilaterally overturn a decision of a Board panel or instruct other
Board members how to vote. The Commissioner's limited control in this
manner over the Board and the decisions it issues is not offensive to
Title 35 as a whole, given that Congress clearly did not intend the Board
to be independent of any and all oversight by the Commissioner. See e.g.
Lindberg v. Brenner, 399 F.2d 990, 992-93,158 USPQ 380, 381-82 (D.C.
1968). The plain and unambiguous wording of Section 7 intertwining the
powers of the Board and the Commissioner clearly indicates that Congress
did not intend the Board to have such complete independence.
(e)
Amicus Curiae FCBA suggests that the Commissioner's redesignation
practices in this case violated Alappat's due process rights, citing Utica
Packing Co. v. Block, 781 F.2d 71 (6th Cir. 1986). In addition, an issue
was raised at oral argument as to whether the Commissioner's designation
practices are governed by any provisions of the Administrative Procedure
Act (APA), and if so, whether the Commissioner's actions in this case
violated any of these provisions. We need not address either of these
issues.
The FCBA does not have standing to make a due process argument, see
Broadrick v. Oklahoma, 413 U.S. 601, 610 (1973) ("constitutional rights
are personal and may not be asserted vicariously") and United Parcel
Service, Inc. v. Mitchell, 451 U.S. 56, 60 n.2 (1981) (amicus may not rely
on new arguments not presented below), and Alappat has waived any due
process argument by acquiescing to the Commissioner's actions in this
case. Thus, there is no case or controversy before this court with respect
to any alleged due process violation. There also is no case or controversy
as to whether the Commissioner's actions in this case violated any
provision of the APA, given that Alappat does not contest these actions,
and this is not an issue which this court may raise sua sponte. Moreover,
neither of these issues is germane to the jurisdictional issue this court
raised sua sponte, i.e., whether the Board's reconsideration decision
constituted a statutorily valid decision under 35 U.S.C. Section 141 over
which this court may exercise subject matter jurisdiction pursuant to
28 U.S.C. Section 1294(a)(4)(A).
(f)
Finally, we acknowledge the considerable debate and concern among the
patent bar and certain Board members regarding the Commissioner's limited
ability to control Board decisions through his authority to designate
Board panels.{11} Our responsibility, however, is merely to adjudge
whether the Commissioner's designation practices as they were applied in
this particular case resulted in a valid decision over which this court
may exercise subject matter jurisdiction, not to assess whether they were
sound from a public policy standpoint. We leave to the legislature to
determine whether any restrictions should be placed on the Commissioner's
authority in this regard. Absent any congressional intent to impose such
restrictions, we decline to do so sua sponte.
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. Section l0l, 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 oscillosope
is the front of a cathode-ray tube (CRT), which is like a TV picture tube,
whose screen, when in operation, presents an array (or raster) of pixels
arranged at intersections of vertical columns and horizontal rows, a pixel
being a spot on the screen which may be illuminated by directing an
electron beam to that spot, as in TV. Each column in the array represents
a different time period,
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 oscilliscope. Without the benefit of Alappat's anti-aliasing
system, points 54 and 52 would appear on the screen as separate,
unconnected spots. In Alappat's system, the different intensity level at
which each of the pixels is illuminated produces the appearance of the
line 48, a so-called vector.
The intensity at which each 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 (Yi) is
determined. In this example, this difference equals 7 units, with one unit
representing the center-to-center distance of adjacent pixels. Then, the
elevation of pixel 55 above pixel 54 (Yij) is determined, which in this
case is 2 units. The Yi and Yij values are then "normalized", which
Alappat describes as converting these values to larger values which are
easier to use in mathematical calculations. In Alapat's example, a barrel
shifter is used to shift the binary input to the left by the number of
bits required to set the most significant (left-most) bit
of its output signal to "1". The Yi and Yij values are then plugged into
a mathematical equation for determining the intensity at which the
particular pixel is to be illuminated. In this particular example, the
equation I'(i,j) = [1 - (Yij/Yi)]F, wherein F is 15 in hexadecimal
notation, suffices. The intensity of pixel 55 in this example would thus
be calculated as follows: [1-(2/7)]15 = (5/7)15 = 10.71 = 11 (or B).
Accordingly, pixel 55 is illuminated at 11/15 of the intensity of the
pixels in which observation points 54 and 52 lie. Alappat discloses that
the particular formula used will vary depending on the shape of the
waveform.
B. The Rejected Claims
Claim 15, the only independent claim in issue, reads:
A rasterizer for converting vector list data representing sample
magnitudes of an input waveform into anti-aliased pixel illumination
intensity data to be displayed on a display means comprising:
(a) means for determining the vertical distance between the endpoints of
each of the vectors in the data list;
(b) means for determining the elevation of a row of pixels that is spanned
by the vector;
(c) means for normalizing the vertical distance and elevation; and
(d) means for outputting illumination intensity data as a predetermined
function of the normalized vertical distance and elevation.
Each of claims 16-19 depends directly from claim 15 and more specifically
defines an element of the rasterizer claimed therein. Claim 16 recites
that means (a) for determining the vertical distance between the endpoints
of each of the vectors in the data list, described above, comprises an
arithmetic logic circuit configured to perform an absolute value function.
Claim 17 recites that means (b) for determining the elevation of a row of
pixels that is spanned by the vector, j described above, comprises an
arithmetic logic circuit configured to perform an absolute value function.
Claim 18 recites that means (c) for normalizing the vertical distance and
elevation comprises a pair of barrel shifters. Finally, claim 19 recites
that means (d) for outputting comprises a read only memory (ROM)
containing illumination intensity data. As the first Board panel found,
each of (a)-(d) was a device known in the electronics arts before Alappat
made his invention.
C. The Examiner's Rejection and Board Reviews
The Examiner's final rejection of claims 15-19 was under 35 U.S.C. Section
101 "because the claimed invention is non statutory subject matter," and
the original three-member Board panel reversed this rejection. That Board
panel held that, although claim 15 recites a mathematical algorithm, the
claim as a whole is directed to a machine and thus to statutory subject
matter named in Section 101. In reaching this decision, the original panel
construed the means clauses in claim 15 pursuant to 35 U.S.C. Section 112,
paragraph six (Section 112 Para. 6), as corresponding to the respective
structures disclosed in the specification of Alappat's application, and
equivalents thereof.
In its reconsideration decision, the five member majority of the expanded,
eight-member Board panel "modified" the decision of the original panel and
affirmed the Examiner's Section l0l rejection. The majority held that the
PTO need not apply Section 112 Para. 6 in rendering patentability
determinations, characterizing this court's statements to the contrary in
In re Iwahashi, 888 F.2d 1370, 1375, 12 USPQ2d 1908, 1912 (Fed. Cir.
1989), "as dicta", and dismissing this court's discussion of Section 112
Para. 6 in Arrhythmia Research Technology, Inc. v. Corazonix Corp., 958
F.2d 1053, 1060, 22 USPQ2d 1033, 1038 (Fed. Cir. 1992) on the basis that
the rules of claim construction in infringement actions differ from the
rules for claim interpretation during prosecution in the PTO. The majority
stated that, during examination, the PTO gives means-plus-function clauses
in claims their broadest interpretation and does not impute limitations
from the specification into the claims. See Applicability of the Last
Paragraph of 35 USC Section 112 to Patentability Determinations Before the
Patent and Trademark Office, 1134 TMOG 633 (1992); Notice Interpreting In
Re Iwahashi (Fed. Cir. 1989), 1112 OG 16 (1990). Accordingly, the majority
held that each of the means recited in claim 15 reads on any and every
means for performing the particular function recited.
The majority further held that, because claim 15 is written completely in
"means for" language and because these means clauses are read broadly in
the PTO to encompass each and every means for performing the recited
functions,
Page 1554
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 found". Alappat, 23 USPQ2d at 1346. The
majority thus concluded that the claim was directed to nonstatutory
subject matter.{12}
In its analysis, the majority further stated:
It is further significant that claim 15, as drafted, reads on a digital
computer "means" to perform the various steps under program control. In
such a case, it is proper to treat the claim as if drawn to a method. We
will not presume that a stored program digital computer is not within the
Section 112 Para. 6 range of equivalents of the structure disclosed in the
specification. The disclosed ALU, ROM and shift registers are all common
elements of stored program digital computers. Even if appellants were
willing to admit that a stored program digital computer were not within
the range of equivalents, Section 112 Para. 2 requires that this be
clearly apparent from the claims based upon limitations recited in the
claims.
Alappat, 23 USPQ2d at 1345.{13} The Board majority also stated that
dependent claims 16-19 were not before them for consideration because they
had not been argued by Alappat and thus not addressed by the Examiner or
the original three-member Board panel. Alappat, 23 USPQ2d at 1341 n.1.{14}
D. Analysis
(1) Section 112, Paragraph Six
As recently explained in In re Donaldson, 16 F.3d ll89, 1193, 29 USPQ2d
1845, 1050 (Fed. Cir. 1994), the PTO is not exempt from following the
statutory mandate of Section 112 Para. 6, which reads:
An element in a claim for a combination may be expressed as a means or
step for performing a specified function without the recital of structure,
material, or acts in support thereof, and such claim shall be construed to
cover the corresponding structure, material, or acts described in the
specification and equivalents thereof.
35 U.S.C. Section 112, paragraph 6 (1988) (emphasis added).{15} The Board
majority therefore erred as a matter of law in refusing to apply Section
112 Para. 6 in rendering its Section 101 patentable subject matter
determination.
Given Alappat's disclosure, it was error for the Board majority to
interpret each of the means clauses in claim 15 so broadly as to "read on
any and every means for performing the functions" recited, as it said it
was doing, and then to conclude that claim 15 is nothing more than a
process claim wherein each means clause represents a step in that process.
Contrary to suggestions by the Commissioner, this court's precedents do
not support the Board's view that the particular apparatus claims at issue
in this case may be viewed as nothing more than process claims. The cases
relied upon by the Commissioner, namely, In re Abele, 684 F.2d 902, 214
USPQ 682 (CCPA 1982), In re Pardo, 684 F.2d 912, 214 USPQ 673 (CCPA 1982),
In re Meyer, 688 F.2d 789, 215 USPQ 193 (CCPA 1982), In re Walter, 618
F.2d 758, 205 USPQ 397 (CCPA 1980), and In re Maucorps, 609 F.2d 481, 203
USPQ 812 (CCPA 1979), differ from the instant case. In Abele, Pardo, and
Walter,
Page 1555
given the apparent lack of any supporting structure in the specification
corresponding to the claimed "means" elements, the court reasonably
concluded that the claims at issue were in effect nothing more than
process claims in the guise of apparatus claims. This is clearly not the
case now before us. As to Maucorps and Meyer, despite suggestions therein
to the contrary, the claimed means-plus-function elements at issue in
those cases were not construed as limited to those means disclosed in the
specification and equivalents thereof. As reaffirmed in Donaldson, such
claim construction is improper, and therefore, those cases are of limited
value in dealing with the issue presently before us. We further note that
Maucorps dealt with a business methodology for deciding how salesmen
should best handle respective customers and Meyer involved a "system" for
aiding a neurologist in diagnosing patients. Clearly, neither of the
alleged "inventions" in those cases falls within any Section 101 category.
When independent claim 15 is construed in accordance with Section 112
Para. 6, claim 15 reads as follows, the subject matter in brackets
representing the structure which Alappat discloses in his specification as
corresponding to the respective means language recited in the claims:
A rasterizer [a "machine"] for converting vector list data representing
sample magnitudes of an input waveform into anti-aliased pixel
illumination intensity data to be displayed on a display means comprising:
(a) [an arithmetic logic circuit configured to perform an absolute value
function, or an equivalent thereof] for determining the vertical distance
between the endpoints of each of the vectors in the data list;
(b) [an arithmetic logic circuit configured to perform an absolute value
function, or an equivalent thereof] for determining the elevation of a row
of pixels that is spanned by the vector;
(c) [a pair of barrel shifters, or equivalents thereof] for normalizing
the vertical distance and elevation; and
(d) [a read only memory (ROM) containing illumination intensity data, or
an equivalent thereof] for outputting illumination intensity data as a
predetermined function of the normalized vertical distance and elevation.
As is evident, claim 15 unquestionably recites a machine, or apparatus,
made up of a combination of known electronic circuitry elements.
Despite suggestions by the Commissioner to the contrary, each of dependent
claims 16-19 serves to further limit claim 15. Section 112 Para. 6
requires that each of the means recited in independent claim 15 be
construed to cover at least the structure disclosed in the specification
corresponding to the "means." Each of dependent claims 16-19 is in fact
limited to one of the structures disclosed in the specification.
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 Section 101, which reads:
Whoever invents or discovers any new and useful process, machine, manufacture,
or composition of matter, or any new and useful improvement thereof, may
obtain a patent therefor, subject to the conditions and requirements of this
title. [Emphasis ours.]
As discussed in section II.D.(1), supra, claim 15, properly construed, claims
a machine, namely, a rasterizer "for converting vector list data representing
sample magnitudes of an input waveform into anti-aliased pixel illumination
intensity data to be displayed on a display means," which machine is made up
of, at the very least, the specific structures disclosed in Alappat's
specification corresponding to the means-plus-function elements (a)-(d)
recited in the claim. According to Alappat, the claimed rasterizer performs
the same overall function as prior art rasterizers,{16} but does so in a
different way, which is represented by the combination of four elements
claimed in means-plus-function terminology.{17} Because claim 15 is directed
to a "machine," which is one of the four categories of patentable subject
matter enumerated in Section 101, claim 15 appears on its face to be directed
to Section 101 subject matter.
This does not quite end the analysis, however, because the Board majority
argues that the claimed subject matter falls within a judicially created
exception to Section 101 which the majority refers to as the "mathematical
algorithm" exception. Although the PTO has failed to support the premise
that the "mathematical algorithm" exception applies
Page 1556
to true apparatus claims, we recognize that our own precedent suggests that
this may be the case. See In re Johnson, 589 F.2d 1070, 1077, 200 USPQ 199,
206 (CCPA 1978) ("Benson [referring to Gottschalk v. Benson, 409 U.S. 63 [175
USPQ 548](1972)] applies equally whether an invention is claimed as an
apparatus or process, because the form of the claim is often an exercise in
drafting."). Even if the mathematical subject matter exception to Section 101
does apply to true apparatus claims, the claimed subject matter in this case
does not fall within that exception.
(a)
The plain and unambiguous meaning of Section 101 is that any new and useful
process, machine, manufacture, or composition of matter, or any new and useful
improvement thereof, may be patented if it meets the requirements for
patentability set forth in Title 35, such as those found in Sections 102, 103,
and 112. The use of the expansive term "any" in Section 101 represents
Congress's intent not to place any restrictions on the subject matter for
which a patent may be obtained beyond those specifically recited in Section
101 and the other parts of Title 35. Indeed, the Supreme Court has
acknowledged that Congress intended Section 101 to extend to "anything under
the sun that is made by man". Diamond v. Chakrabarty, 447 U.S. 303, 309 [206
USPQ 193] (1980), quoting S. Rep. No. 1979, 82nd Cong., 2nd Sess., 5 (1952);
H.R. Rep. No. 1923, 82nd Cong., 2nd Sess., 6 (1952). Thus, it is improper to
read into Section 101 limitations as to the subject matter that may be
patented where the legislative history does not indicate that Congress clearly
intended such limitations. See Chakrabarty, 447 U.S. at 308 ("We have also
cautioned that courts 'should not read into the patent laws limitations and
conditions which the legislature has not expressed.'"), quoting United States
v. Dubilier Condenser Corp., 289 U.S. 178, 199 [17 USPQ 154] (1933).
Despite the apparent sweep of Section 101, the Supreme Court has held that
certain categories of subject matter are not entitled to patent protection.
In Diehr, its most recent case addressing Section 101, the Supreme Court
explained that there are three categories of subject matter for which one may
not obtain patent protection, namely "laws of nature, natural phenomena, and
abstract ideas". Diehr, 450 U.S. at 185.{18} Of relevance to this case, the
Supreme Court also has held that certain mathematical subject matter is not,
standing alone, entitled to patent protection. See Diehr, 450 U.S. 175 [209
USPQ 1]; Parker v. Flook, 437 U.S. 584 [198 USPQ 193]; Gottschalk v. Benson,
409 U.S. 63 [175 USPQ 548].{19} A close analysis of Diehr, Flook, and Benson
reveals that the Supreme Court never intended to create an overly broad,
fourth category of subject matter excluded from Section 101. Rather, at the
core of the Court's analysis in each of these cases lies an attempt by the
Court to explain a rather straightforward concept, namely, that certain types
of mathematical subject matter, standing alone, represent nothing more than
abstract ideas until reduced to some type of practical application, and thus
that subject matter is not, in and of itself, entitled to patent
protection.{20}
Diehr also demands that the focus in any statutory subject matter analysis be
on the claim as a whole. Indeed, the Supreme Court stated in Diehr:
[W]hen a claim containing a mathematical formula [, mathematical equation,
mathematical algorithm, or the like,] implements or applies that formula [,
equation, algorithm, or the like,] in a structure or process which, when
considered as a whole, is performing a function which the patent laws were
designed to protect (e.g., transforming or reducing an article to a different
state or thing), then the claim satisfies the requirements of Section 101.
Diehr, 450 U.S. at 192 (emphasis added). In re Iwahashi, 888 F.2d at 1375, 12
USPQ2d at 1911; In re Taner, 681 F.2d 787, 789, 214 USPQ 678, 680 (CCPA 1982).
It is thus not necessary to determine whether a claim contains, as merely a
part of the whole, any mathematical subject matter which standing alone would
not be entitled to patent protection. Indeed, because the dispositive inquiry
is whether the claim as a whole is directed to statutory subject matter, it is
irrelevant that a claim may contain, as part of the whole, subject matter
which would not be patentable by itself.{21} "A claim drawn to subject matter
otherwise statutory does not become nonstatutory simply because it uses a
mathematical formula, [mathematical equation, mathematical algorithm,]
computer program or digital computer". Diehr, 450 U.S. at 187.
(b)
Given the foregoing, the proper inquiry in dealing with the so called
mathematical subject matter exception to Section 101 alleged herein is to see
whether the claimed subject matter as a whole is a disembodied mathematical
concept, whether categorized as a mathematical formula, mathematical equation,
mathematical algorithm, or the like, which in essence represents nothing more
than a "law of nature", "natural phenomenon", or "abstract idea". If so, Diehr
precludes the patenting of that subject matter. That is not the case here.
Although many, or arguably even all, 22 of the means elements recited in claim
15 represent circuitry elements that perform mathematical calculations, which
is essentially true of all digital electrical circuits, the claimed invention
as a whole is directed to a combination of interrelated elements which combine
to form a machine for converting discrete waveform data samples into
anti-aliased pixel illumination intensity data to be displayed on a display
means.{23} This is not a disembodied mathematical concept which may be
characterized as an "abstract idea," but rather a specific machine to produce
a useful, concrete, and tangible result.
Page 1558
The fact that the four claimed means elements function to transform one set
of data to another through what may be viewed as a series of mathematical
calculations does not alone justify a holding that the claim as a whole is
directed to nonstatutory subject matter. See In re Iwahashi, 888 F.2d at 1375,
12 USPQ2d at 1911.{24} Indeed, claim 15 as written is not "so abstract and
sweeping" that it would "wholly pre-empt" the use of any apparatus employing
the combination of mathematical calculations recited therein. See Benson, 409
U.S. at 68-72 (1972). Rather, claim 15 is limited to the use of a particularly
claimed combination of elements performing the particularly claimed
combination of calculations to transform, i.e., rasterize, digitized waveforms
(data) into anti-aliased, pixel illumination data to produce a smooth
waveform.
Furthermore, the claim preamble's recitation that the subject matter for which
Alappat seeks patent protection is a rasterizer for creating a smooth waveform
is not a mere field-of-use label having no significance. Indeed, the preamble
specifically recites that the claimed rasterizer converts waveform data into
output illumination data for a display, and the means elements recited in the
body of the claim make reference not only to the inputted waveform data
recited in the preamble but also to the output illumination data also recited
in the preamble. Claim 15 thus defines a combination of elements constituting
a machine for producing an anti-aliased waveform.
The reconsideration Board majority also erred in its reasoning that claim 15
is unpatentable merely because it "reads on a general purpose digital computer
'means' to perform the various steps under program control."{25} Alappat, 23
USPQ2d at 1345. The Board majority stated that it would "not presume that a
stored program digital computer is not within the Section 112 Para. 6 range of
equivalents of the structure disclosed in the specification."{26} Alappat, 23
USPQ2d at 1345. Alappat admits that claim 15 would read on a general purpose
computer programmed to carry out the claimed invention, but argues that this
alone also does not justify holding claim 15 unpatentable as directed to
nonstatutory subject matter. We agree. We have held that such programming
creates a new machine, because a general purpose computer in effect becomes a
special purpose computer once it is programmed to perform particular functions
pursuant to instructions from program software. In re Freeman, 573 F.2d 1237,
1247 n.11, 197 USPQ 464, 472 n.11 (CCPA 1978); In re Noll, 545 F.2d 141, 148,
191 USPQ 721, 726 (CCPA 1976); In re Prater, 415 F.2d at 1403 n.29, 162 USPQ
at 549-50 n.29.
Under the Board majority's reasoning, a programmed general purpose computer
could never be viewed as patentable subject matter under Section 101. This
reasoning is without basis in the law. The Supreme Court has never held that
a programmed computer may never be entitled to patent protection. Indeed, the
Benson court specifically stated that its decision therein did not preclude
"a patent for any program servicing a computer". Benson, 409 U.S. at 71.
Consequently, a computer operating pursuant to software may represent
patentable subject matter, provided, of course, that the claimed subject
matter meets all of the other requirements of Title 35. In any case, a
computer, like a rasterizer, is apparatus not mathematics.
CONCLUSION
For the foregoing reasons, the appealed decision of the Board affirming the
examiner's rejection is REVERSED.
Footnotes
Footnote 1. In Bose, this court examined the composition of a panel of the
Trademark Trial and Appeal Board (TTAB), holding that this court has
jurisdiction to decide whether a TTAB panel was properly constituted when a
decision from that panel is appealed. This court stated in pertinent part:
[I]t is appropriate for this court to determine whether a valid decision is
before us before addressing the merits of that decision. The matter of the
board's composition is logically related to, indeed, inseparable from the
merits and can be raised in the appeal from the board's decision.
Bose , 772 F.2d at 866, 227 USPQ at 3.
Footnote 2. Both this court and the Court of Customs and Patent Appeals
(CCPA), one of this court's predecessors, have reviewed Board decisions
rendered by panels made up of more than three Board members without
questioning the validity of such panels. See e.g. Hahn v. Wong, 892 F.2d 1028,
1031, 13 USPQ2d 1313, 1316 (Fed. Cir. 1989) (seven-member panel because of
significance of issues raised); In re Lundak, 773 F.2d 1216, 1219, 227 USPQ
90, 92 (Fed. Cir. 1985) (eighteen-member panel); In re Durden, 763 F.2d 1406,
1409 n.3, 226 USPQ 359, 360 n.3 (Fed. Cir. 1985) (sixteen-member panel); In re
Henriksen, 399 F.2d 253, 254 n.1, 158 USPQ 224, 225 n.1 (CCPA 1968)
(nine-member panel because of "the nature of the legal issues raised"). Other
instances wherein the Commissioner has convened an expanded panel include Ex
parte Alpha Indus. Inc., 22 USPQ2d 1851, 1852 (Bd. Pt. App. & Inter. 1992)
(five-member panel); Ex parte Fujii, 13 USPQ2d 1073, 1074 (Bd. Pat. App. &
Inter. 1989) (five-member panel because of significance of issue raised); Ex
parte Kristensen, 10 USPQ2d 1701, 1702 (Bd. Pat. App. & Inter. 1989)
(five-member panel); Ex parte Kitamura, 9 USPQ2d 1787, 1788 (Bd. Pat. App. &
Inter. 1988) (five-member panel because of possible conflict in case law);
Lamont v. Berguer, 7 USPQ2d 1580, 1581 (Bd. Pat. App. & Inter. 1988)
(five-member panel because of novelty of issue raised); Kwon v. Perkins, 6
USPQ2d 1747, 1748 (Bd. Pat. App. & Inter. 1988) (nine-member panel because of
novelty of issues raised); Ex parte Horton, 226 USPQ 697, 698 (Bd. Pat. App. &
Inter. 1985) (five-member panel); Ex parte Tytgat, 225 USPQ 907, 908 (Bd. Pat.
App. & Inter. 1985) (five-member panel); and Ex parte Jackson, 217 USPQ 804,
806 (Bd. Pat. App. & Inter. 1982) (nine-member panel because legal issue was
one of first impression).
Footnote 3. The Commissioner has interpreted his authority to convene an
expanded panel as granting him the authority to expand a three- member panel
to include additional Board members after oral hearing. See e.g. Ex parte
Kuklo, 25 USPQ2d 1387, 1388 (Bd. Pat. App. & Inter. 1992) (five-member panel);
Larson v. Johenning, 17 USPQ2d 1610, 1610 (Bd. Pat. App. & Inter. 1991)
(five-member panel); Ex parte Lyell, 17 USPQ2d 1548, 1549 (Bd. Pat. App. &
Inter. 1990) (five-member panel); Ex parte Remark, 15 USPQ2d 1498, 1498 (Bd.
Pat. App. & Inter. 1990) (five-member panel); Ex parte Kumagai, 9 USPQ2d 1642,
1643 (Bd. Pat. App. & Inter. 1988) (five- member panel).
Footnote 4. This is not to say that the Commissioner's authority to designate
the members of a Board panel may or may not be constrained by principles of
due process or by Title 5, the Administrative Procedure Act (APA). However, as
noted herein, Alappat has not raised any such arguments in this appeal, and
therefore we need not address such issues.
Footnote 5. Rule 197(b) reads in pertinent part:
A single request for reconsideration or modification of the decision may be
made if filed within one month from the date of the original decision, . . . .
Footnote 6. The terms "rehearing" and "reconsideration" are often used
interchangeably. In some contexts, a distinction is made between the two. We
see no basis, however, for imposing any such distinctions in the context of
PTO Board proceedings, especially considering that the Commissioner argues
that the PTO does not make such distinctions, citing McCrady, Patent Office
Practice, Section 235 (3d ed. 1950). We note that McCrady's Patent Office
Practice, 4thed. (1959) states in Section 235: "These two terms
'reconsideration' and 'rehearing' seem to be treated by Rule 197 as
interchangeable, and are so treated here." Although not legislative history
per se, we also note that Karl Fenning, at the time a former Assistant
Commissioner of Patents, stated during the 1926 House hearing on the bill to
include the rehearing provision in the statute that "It says rehearing, and
rehearing, used in the technical or legal sense, is reconsideration."
Procedure in the Patent Office, Hearing on H.R. 7563 and H.R. 13487 Before the
Committee on Patents, United States House of Representatives, 69th Cong., 2d
Sess. 29 (1926) (1926 House Hearing). Finally, we additionally note that
Black's Law Dictionary defines "rehearing" in part as a " [s]econd
consideration of cause for purpose of calling to court's or administrative
board's attention any error, omission, or oversight in first consideration."
Black's Law Dictionary (6th ed. 1990). Black's defines "reconsideration" as
follows: " [a]s normally used in the context of administrative adjudication
'reconsideration' implies reexamination, and possibly a different decision by
the entity which initially decided it."
Footnote 7. Apparently, the Board's reconsideration decision in the present
case was based on the same record that was before the original three-member
panel, and Alappat was not allowed an opportunity to add to that record. We do
not intend to suggest herein that "rehearings" under Section 7(b) are limited
to such situations. Indeed, it would not be unreasonable to construe
"rehearings" under Section 7(b) broadly as also encompassing reconsideration
by the Board wherein the Board allows an applicant to supplement the existing
record or wherein the Board allows both the applicant and the examiner to
brief the issues anew.
Footnote 8. The Commissioner has consistently interpreted his statutory
authority to designate the constituency of a Board panel as allowing him to
hange or augment an originally designated panel in response to a request for
reconsideration. See e.g. Ex parte Johnson, Appeal No. 91-0143 (Bd. Pat. App.
& Inter. 1991) (on request for reconsideration, augmented panel of seven
examiners- in-chief granted the request and voted four to three to affirm the
examiner, contrary to the original three-member panel); Ex parte Holt, 218
USPQ 747, 747 (Bd. App. 1982) (on request for reconsideration by Group
Director, rehearing granted by an augmented fifteen-member panel); Ex parte
Scherer, 103 USPQ 107, 107-08 (Bd. App. 1954) (rehearing by an augmented
eleven-member panel granted because of probable importance of issues); Ex
parte Ball, 99 USPQ 146, 146 (Bd. App. 1953) (reconsideration granted to allow
further consideration by an augmented eight-member panel including the
Commissioner); Ex parte Wiegand, 61 USPQ 97, 99 (Bd. App. 1944) (rehearing by
a different three-member panel).
Footnote 9. The Commissioner's supervisory authority under Section 482 of the
Revised Statutes prior to the 1927 Act was described aptly as follows:
The law has provided certain official agencies to aid and advance the work of
the Patent Office, such as the Primary Examiners, the Examiners of
Interferences [now obsolete], and the Examiners-in-Chief; but they are all
subordinate, and subject to the official direction of the Commissioner of
Patents, except in the free exercise of their judgments in the matters
submitted for their examination and determination. The Commissioner is the
head of the bureau, and he is responsible for the general issue of that
bureau.
Moore v. United States, 40 App. D.C. 591, 596 (D.C. Cir. 1913), quoting In re
Drawbaugh, 9 App. D.C. 219, 240 (D.C. Cir. 1896).
Footnote 10. Examiners-in-chief are appointed by the Secretary of Commerce
upon nomination by the Commissioner. Thus, principles respecting the
independence of judges or other concepts associated with the judicial process
are not necessarily applicable to Board members. The fact that we apply the
clearly erroneous standard of review rather than the more restrictive
substantial evidence standard usually applied to administrative boards
illustrates the purely administrative nature of the Board.
Footnote 11. See e.g. En Banc Federal Circuit Will Consider Board of Appeals
Issues in Alappat Case, 45 PTCJ 107 (1992); Changes Urged in Structure and
Operation of PTO Appeals Board, 45 PTCJ 75 (1992); Independence of the Board
of Patent Appeals and Interferences, Federal Circuit Bar Journal, Vol. 2, No
2, pg. 215 (1992); CLE Weekend Highlights, 33 NYPTC Bull. 6 (1992); Patent and
Trademark Office Authorization Act, 138 Cong. Rec. S16,614 (1992),reprinted in
44 PTCJ 618-19 (1992); Review of Patent and Trademark Office Appeal Procedure
, 57 FR 34123 (1992), reprinted in 44 PTCJ 352 (1992); Comments Sought on
Commissioner's Relationship with Appellate Boards, 44 PTCJ 325 (1992); PTO's
Automation and Board Autonomy at Issue in House Hearing on PTO Budget, 44 PTCJ
102, 103 (1992); Correspondence Between Board Members and PTO Commissioner on
Board Independence, 44 PTCJ 43 (1992); Members of Board of Appeals Complain
about Interference with Independence, 44 PTCJ 33 (1992); Michael W. Blommer,
The Board of Patent Appeals and Interferences, AIPLA Bulletin 188 (1992).
Footnote 12. See also Patent and Trademark Practice is Reviewed at PTO Day, 45
PTCJ 245, 246 (1993); IP Laws Attempt to Adapt to Changes of New Technologies,
45 PTCJ 49 (1993); Federal Circuit Will Hear In Re Alappat Case En Banc, 45
PTCJ 56 (1992); "Means For" Claim Recites Non-Statutory Algorithm When Treated
as Method Claim, 44 PTCJ 69 (1992); MPEP Section 2110.
Footnote 13. See also PTO Report on Patentable Subject Matter: Mathematical
Algorithms and Computer Programs, 1106 TMOG 5 (1989), reprinted in 38 PTCJ 5.