CITE:  397 F.2d 871
CMON:  June 1968
PLAIN: In re Bekey
DEFND: United States Patent and Trademark Office
COURT: United States Court of Customs and Patent Appeals 
DATE:  June 27, 1968 

Appeal from a decision of the United States Patent Office Board of Appeals,
Serial No. 846,657, rejecting a patent application.  The Court of Customs
and Patent Appeals, Rich, J., held that patent application relating to the
method and means of generalized integration was improperly rejected on
grounds that the claims merely recited the inherent function of the
apparatus for which claims had been allowed.  REVERSED.

  Numerical integration circuit is patentable.

Before WORLEY, Chief Judge, and Judges RICH, SMITH, ALMOND, KIRKPATRICK.*
* Senior District Judge, Eastern District of Pennsylvania, sitting by

This appeal is from a decision of the Patent Office Board of Appeals {1}
affirming the examiner's rejection of method claims 3 to 8 of appellant's
application serial No. 846,657 entitled "Method and Means of Generalized
Integration." Apparatus claims 9-11, 13-15, and 17 have been allowed.

The invention is a method of performing generalized integration electrically
by representing variables x and y as voltage signals, sampling the first
variable voltage x to produce a control signal for each incremental variation
of predetermined amplitude, sampling the second variable voltage y once
for each of the control signals to produce a plurality of voltages, and
adding together these latter voltages to form a summation thereof which
is proportional to the integral of the second voltage y with respect to
the first voltage x.

Claim 3 is illustrative:

  3.  A method of electronically performing mathematical integration of a
  first variable with respect to a second variable, comprising the steps
  of representing each of said variable [sic] by voltages varying in
  accordance thereto, establishing a predetermined incremental voltage,
  continuously sampling the second voltage and comparing a first value
  thereof with successive values thereof until the difference therebetween
  equals said incremental voltage to produce a control signal, repeating
  the above step with the basis of comparison in each case being the last
  value of said second voltage which produces the difference identity
  to thereby produce a succession of control signals separated by various
  increments of time which are dependent upon the rate of change of the
  second voltage, sampling said first voltage for separate periods
  separated by said time increments to establish a plurality of voltages
  proportional to the average values of said first voltage during said
  incremental sampling periods, and summing said plurality of voltages
  to produce a summation voltage proportional to the integral of said
  second voltages with respect to said first voltage.

The claims were rejected by the examiner as being "unpatentable methods"
in that they merely recited the inherent function of the apparatus for
which claims had been allowed.  The examiner categorized the rejection
as under sections 101 and 112 of the statute.

The board affirmed, noting that it felt bound by the decisional law to
uphold the "inherent function of the apparatus" rejection.  See Ex parte
Packard, 140 USPQ 27 (Pat. Off. Bd. App. 1963). Examiner-in-Chief Keely
concurred solely on the ground that the board's position on such
rejections had been settled.

The issues in this case are the same as those presented in In re
Tarczy-Hornoch (P.A. 7910), 397 F.2d 856, decided concurrently herewith.
In that case we decided no longer to follow our previous decisions which
required the rejection of method claims defining the function of an
apparatus. The solicitor concedes that Tarczy-Hornoch is dispositive of
the issue in this case. {2}

Accordingly, the decision of the board is REVERSED.


KIRKPATRICK, Judge (dissenting), with whom WORLEY, Chief, Judge, joins.

I dissent for the reasons given in my dissenting opinion in In re Zoltan
Tarczy-Hornoch (PA 7910), 55 CCPA 1441, 397 F.2d 856.


{1} Consisting of Friedman and Keely, Examiners-in-Chief and Andrews, Acting
Examer-in-Chief, opinion by Friedman.

{2} The Patent Office brief states:

  An extensive summary of the historical development of this rejection
  appears in the Appendix to the appellant's brief in Patent Appeal
  No. 7910, involving an application of Zoltan Tarczy-Hornoch.  Since
  the same issue is presented, a decision there would undoubtedly control