CITE: 502 F.2d 765
CMON: September 1974
PLAIN: In re Johnston, Thomas
DEFND: United States Patent and Trademark Office
COURT: Court of Customs and Patent Appeals
DATE: September 1974
HISTORY:
Applicant appealed from a decision of Patent Office Board of Appeals,
Serial No. 624,741, which rejected apparatus claims 20-24 relating to
an automatic financial record-keeping system which employs a digital
computer. The Court of Customs and Patent Appeals, Baldwin, Judge,
held that the appealed claims were improperly rejected for obviousness
and for claiming nonstatutory subject matter and for failure to meet
specificity requirements. REVERSED.
SUMMARY:
Financial record-keeping software is patentable.
JUDGE: BALDWIN, Judge.
Markey, C. J., and Rich, J., dissented and filed opinions.
DECISION:
This appeal is from the decision of the Patent Office Board of Appeals
rejecting claims 20-24 {1} of appellant's application. {2}
The Invention
Appellant's invention relates to an automatic financial record-keeping system
which employs a digital computer. The application states:
Automatic data processing equipments employing digital computers have
been developed for the handling of much of the record-keeping operations
involved in a banking system. The checks and deposit slips are
automatically processed by forming those items as machine-readable
records; that is, magnetic ink characters are imprinted on the check,
so that magnetic readers are enabled to process these checks and enter
the data in a computer system in the form of coded electrical signals.
Other character-reading machines operating on an optical principle for
automatically reading special optical type fonts are also employed.
With such machine systems, most of the extensive data handling
required in a bank can be performed automatically.
It has been found that such data processing equipment, with certain additions
and modifications, can be employed to process automatically much, if not all,
of the individual record keeping required by a bank's customers to maintain
their own personal and business financial records. That is, as a supplement
to the conventional, periodic bank statement furnished to a bank customer,
a record summary is provided with [sic] makes unnecessary much or all of the
tedious bookkeeping and accounting that the customers would otherwise have
to perform.
* * * * * * * *
In accordance with an embodiment of this invention, an automatic
record-keeping system is provided which is especially adapted for use with
automatic banking devices for machine handling of the transactions (i.e.
checks or deposits) of demand-deposit accounts of bank customers.
Machine-readable records of each bank transaction are generated directly
on the check or the deposit ticket. The data of such records incorporate
those required for conventional banking systems presently carried on checks
(or deposit tickets); namely, the customer's account number, amount of the
transaction, and the type of transaction (that is, whether a check or a
deposit). Another set of data forming a machine-readable record is
provided on each transaction, namely, a set of code characters that
identify the bookkeeping classification of each transaction; this
classification code is called the "category number." [e.g., categories
indicating different sources of income for which deposits are made and
categories indicating different types of expenses for which checks are
written.] The category number is entered by the customer on each transaction
slip (check or deposit) at the time it is prepared, in the form of a
machine-readable record by means of an appropriate device, or in the form
of a set of hand-written numeric characters which are converted to a
machine-readable record by the customer's bank.
In the customer's bank, upon a deposit being made or a check clearing the
bank, the machine-readable transaction records on the imprinted checks or
deposit tickets are read by a suitable document-reader device and stored
in a transaction file. To process the transaction file, the automatic
record-keeping system employs a data processor, such as a programmable
electronic digital computer, having certain data storage files and a control
system. In addition to the transaction file, a master record-keeping file
is used to store all of the records required for each customer in accordance
with the customer's own chart of accounts. The latter is, individually
designed to the customer's needs and also constructed to cooperate with
the control system in the processing of the customer's transactions. The
control system directs the generation of periodic output reports for the
customer which present the customer's transaction records in accordance
with his own chart of accounts and desired accounting procedures.
The control system is described as comprising a general control which is
applicable to the processing operations that are common to most customers and
a master control for the operations that vary on an individual basis with
each customer. The general control, as allegedly reduced to practice, is
in the form of a software program, and the master control is a series of
sub-files, one for each customer, which are in the form of a sequence of
records containing suitable control mechanisms and the customer's financial
data.
The application contains schematic block and flow diagrams of the entire
apparatus including detailed descriptions of each diagram which set forth the
interrelationships between all the disclosed elements of the apparatus. The
application also discloses a print-out of a complete program and a detailed
flow chart thereof for use with a known commercial general-purpose computer,
the IBM 1400 series, to provide the special-purpose computer which forms the
apparatus of appellant's invention.
Claim 20 is exemplary:
20. A record-keeping machine system for financial accounts, said system
comprising a data processor including a memory for storing combinatorially
coded signal records;
a processor for combining and comparing the coded signals of said records;
input and output devices;
and a control system for supervising and directing said other parts of
said data processor to perform a certain sequence of operations;
said memory including a storage file of a plurality of machine-readable
records formed of coded combinatorial signals, a master section of said
file including a plurality of predeterminedly sequenced sub-files of said
records, each said sub-file including a different signal group record for
a certain one of a plurality of account identifications, a plurality of
predeterminedly sequenced different signal group records for different
record-keeping category codes individually associated with each of said
account identification records, a plurality of different group records
each for an amount total associated with a different one of said category
records, and a plurality of totalizing operation records individually
associated with certain pluralities of said category records and sequenced
with the associated category records, a transaction section of said file
including different pluralities of sub-files of said records, each of said
transaction sub-files including one of said account identification signal
group records, one of said associated category signal group records, and
a separate transaction amount signal group record associated with each of
said category records;
said control system including means for directing the processing of said
files in accordance with the predetermined sequences of said master
sub-files and of said category records of each sub-file, said processing
directing means including means for locating in said master file section,
for each of said transaction sub-files, that one of said category records
corresponding to the transaction account identification record and the
transaction category record and for augmenting the associated master
amount total record by the amount records of the corresponding transaction
sub-file; and
means for producing an output record for each of said master sub-files;
said output record producing means including means for identifying each of
said master sub-file category records and for producing an output listing of
the sub-file category codes and of the associated category amount total from
said records, means for directing the accumulation of the amount totals
of successive ones of said category records, and means for identifying
each of said totalizing records and for producing an output record of
said accumulation of totals of the preceding category records.
[paragraphing ours].
The Rejections
The examiner rejected all the claims in appellant's application under 35 USC
112 and 35 USC 102; however, the board did not consider the underlying bases
for these rejections to be valid and did not sustain these rejections. {3}
However, under the provisions of Rule 196(b), Rules of Practice in Patent
Cases, {4} the board then entered five new rejections under the provisions
of 35 USC 112, 35 USC 101, and 35 USC 103. {5}
Rejections Under 35 USC 112
The board's first rejection of the claims is under the provisions of the
second paragraph of section 112 in that the claims fail to particularly
point out and distinctly claim that which appellant considers to be his
invention. The board stated:
Appellant * * * [in] his specification acknowledges that automatic data
processing equipment has already been developed for the financial
record-keeping and statement-furnishing operations of a bank so that
the rendering of these services merely by some form of automatic data
processing, not including appellant's improvements thereover, was not
considered to be appellant's invention.
Turning now to the appealed claims, both apparatus and method, {6} we find
them not directed to improved record keeping machinery, but rather to a broad
system of keeping financial records where the distinction over acknowledged
prior record-keeping is either in the identity of the person or institution
which has custody of certain phases of the bookkeeping operation or in the
financial meaning of, or the relationship existing between, the various
records. Thus, the broad sweeping reference in the claims to the automation
of the banking industry serves only as a dress for claims that spell out, in
effect, the relationship of a bank and its customers, not any particular
configuration of business machinery.
The board's second rejection under the provisions of 112, second paragraph,
was labeled indefiniteness. The board reasoned that portions of appellant's
apparatus are defined as means for identifying an account or type of
transaction and that this "identification of the meaning represented by
a section of the computer memory is in the mind of the user and cannot
define any characteristic of the apparatus." Relying upon the following
passage from In re Foster, 58 CCPA 1001, 1006, 438 F.2d 1011, 1015 (1971):
Judge Baldwin in the second Prater opinion [ 56 CCPA 1381, 415 F.2d 1393,
(1969)] made it clear that means-plus-function language such as that used
in the present apparatus claims does not encompass the human being as the
"means" or any part thereof [,]
the board held the claims to be indefinite insofar as they purportedly
encompassed a human being as a part of the claimed apparatus.
Rejection Under 35 USC 101
Under the provisions of section 101 the board rejected all the claims as
claiming non-statutory subject matter. After reviewing the holdings of
prior opinions of this court, e.g., In re Foster, supra; and In re Musgrave,
57 CCPA 1352, 431 F.2d 882 (1970), which held that computer related
inventions were "statutory" subject matter if they were within the
"technological arts," the board inferred that computer related inventions
which "extend beyond the field of technology are not within the
'technological arts' and are non-statutory." After noting that the term
"'technological arts' should [not] embrace processes of using machines
so as to dominate practices in the 'liberal arts,' such as social or
political sciences, humanities, music and art," the board stated:
A granting of the instant claims would, in effect, grant a monopoly to
appellant on a method of conducting the banking business since banks would
thereby be restricted to the use of their data processing equipment only
for their own bookkeeping and not being allowed to freely expand into
the business of keeping books for their customers.
The granting of claims which would allow the intrusion of the patent
system into the social sciences already under regulation by governmental
agencies would exceed the constitutional grant of authority to issue
patents in the "technological arts".
Rejections Under 35 USC 103
All the claims were further rejected under the provisions of 103 as being
"obvious variations of either the system of bookkeeping by banks that was
acknowledged to be old by appellant ... [in his] specification {7} or the
system of bookkeeping of the Dirks patent {8} when applied to banking
rather than industrial business."
The board noted that individual bank customers frequently have plural
accounts, such as "trust" or "escrow" accounts, and that the names of these
accounts is a "category code" as required by the claims. The board
acknowledged that, although a bank may regard those accounts as separate
accounts, its treatment of those accounts is the same as that accorded
appellant's different category codes, inasmuch as "the bookkeeping in the
separate special accounts of a single customer correctly credits and debits
the same and renders periodic summary statements of account to the
customer". Therefore, the board opined:
Merely printing the summary sheets for all the special accounts of an
individual on a single document with totals for all accounts would be
an obvious convenience to both the bank and the customer.
As to the rejection of the claims as unpatentable over the Dirks patent,
the board stated:
Dirks discloses a comprehensive automatic data processing system for many
different purposes in networks of individual departments of a large
business corporation * * *. This system allows personalized files for
localized areas of responsibility * * *. Each area is assigned an account
number in which transaction and balance files are kept and updated * * *.
The bookkeeping is on a cost accounting basis * * * such as for sales of
a product.
There is no fundamental difference in a data processing apparatus or method
because of the nature of the goods involved in a sales transaction. The
bookkeeping apparatus and method would be the same no matter whether the
amount debited represented the value of the merchandise or the value of
the extended credit.
Accordingly, it would have been obvious to a person of ordinary skill to
use the cost accounting portion of the Dirks system of bookkeeping in the
banking rather than the merchantile business.
OPINION
Considering first the rejections under the second paragraph of 112, we find
the instant apparatus claims to be in compliance with the requirements set
forth in that section of the statute. These requirements were recently
discussed by this court in In re Knowlton, 481 F.2d 1357 (CCPA 1973).
In essence, the "failure to particularly point out and distinctly claim"
rejection {9} is based upon the board's conclusion that the "relationship
of a bank and its customers, not any particular configuration of business
machinery", is being claimed. Upon reading the appealed apparatus
claims we cannot perceive how any such "relationship" is being claimed. In
typical means-plus-function language, which is expressly sanctioned by the
third paragraph of section 112, the appealed apparatus claims are
clearly drawn to a "record-keeping machine system for financial
accounts" (emphasis added). Accordingly, we cannot sustain the board's
rejection on its stated grounds.
The board's rationale underlying its second rejection under section 112 for
indefiniteness {10} appears to be the same as that found to be defective
in In re Foster, supra. Here, as in Foster, we find the appealed
apparatus claims clearly read only upon the subject matter which
appellant regards as his invention - a "record-keeping machine
system for financial accounts" (emphasis added) - not a human being inside
or outside appellant's apparatus. Appellant's specification makes it quite
clear that the claimed apparatus automatically performs the
identifying operations referred to by the board; those operations are
neither actually performed by a human being, nor can we imagine how they
could be realistically performed by a human being. See In re Bernhart,
supra. Thus, we cannot sustain this rejection on the board's stated
rationale. {11}
With regard to the rejection under section 101, we cannot agree with the
board that the apparatus of the appealed claims is not within the
"technological arts." {12} Record-keeping machine systems are clearly
within the "technological arts." Such machine systems, which comprise
programmed digital computers, are statutory subject matter under the
provisions of section 101, and "claims defining them must be judged for
patentability in light of the prior art". In re Bernhart, supra.
Furthermore, we are not aware of, nor can we locate, any dictionary
which would define a machine system as within the purview of the
"liberal arts". {13}
The board's reluctance to "grant a monopoly to appellant on a method of
conducting the banking business" is misplaced. The appealed apparatus claims
are not drawn to cover either a method of doing business or even a method of
bookkeeping. Nor would banks "be restricted to the use of their data
processing equipment only for their own bookkeeping and not * * * [be] allowed
to freely expand into the business of keeping books for their customers."
Obviously, banks would be free to so expand their services and use any
apparatus they may desire except the apparatus set forth in appellant's
claims. We do not find that situation to be in conflict with Article I,
Section 8, of the Constitution, since the "right to exclude others" is
the very heart of our patent system.
Additionally, the solicitor argues that the holding in the recent opinion of
the Supreme Court in Gottschalk v. Benson, 409 U.S. 63 (1972) is logically
applicable to the instant apparatus claims. However, as we stated in In re
Christensen, 478 F.2d 1392, (CCPA 1973):
The issue considered by the Supreme Court in Benson was a narrow one,
namely, is a formula for converting binary coded decimal numerals into
pure binary numerals by a series of mathematical calculations a
patentable process? (emphasis added).
Furthermore, the instant claims, in apparatus form, do not claim or encompass
a law of nature, a mathematical formula, or an algorithm. For these reasons,
we do not find the holding of Benson to be applicable to claims of the
type now before us.
Finally, we reach the rejections under 103. In determining whether or not
appellant's record-keeping machine system is an obvious variation of the
bookkeeping systems which were acknowledged by appellant to be known in the
art, "we must view the prior art without reading into that art appellant's
teachings". In re Sponnoble, 56 CCPA 823, 405 F.2d 578 (1969).
We cannot agree with the board that the claimed "category codes" are
equivalent to the account numbers of separate accounts that a customer may
have with one bank. Appellant's "category codes" and account numbers {14}
are two different types of controls, as appellant's specification and claims
clearly point out. Furthermore, appellant's claimed invention produces a
breakdown of a customer's income and expenditures associated with a single
account and is not directed to the board's proposed modification of known
data processing apparatus to provide a customer with merely a summary
sheet consisting of net totals of plural separate accounts which a customer
may have at a bank. Although it may possibly be obvious to modify known
record-keeping apparatus to achieve a summary sheet of a plurality of
separate accounts, as proposed by the board, we conclude that any further
modification to such known apparatus, in order to achieve the results of
appellant's claimed apparatus, would not have been obvious to one of
ordinary skill in the art who did not have appellant's specification
before him.
Turning to the obviousness rejection based upon the patent to Dirks, we
conclude that this reference does not render the subject matter of the
appealed claims obvious to one of ordinary skill in the art. The four
brief portions of the Dirks specification {15} referred to by the board
and the additional passages of that specification called to our attention
by the solicitor simply are not suggestive of the subject matter of the
appealed claims. We find that, with appellant's specification before them,
the board and solicitor have merely chosen various portions of the Dirks
apparatus and have attempted to read them upon various elements set forth
in appellant's claims. Furthermore, we note that the solicitor's
interpretation of Dirk's apparatus creates substantially the same apparatus
as that of the board's proposed modification of known data processing
apparatus, supra, insofar as the solicitor interprets various separate
accounts of Dirks as corresponding to appellant's claimed category codes.
Accordingly, we cannot sustain this rejection.
For the foregoing reasons, the decision of the Patent Office Board of
Appeals is REVERSED.
DISSENT:
MARKEY, Chief Judge, dissenting.
I would affirm the decision of the board on its rejection under 35 U.S.C.
103. In that event, discussion of the rejections under 35 U.S.C. 112 and 101
becomes unnecessary. That we decline to discuss rejections which are thus
rendered moot does not, of course, reflect in any way upon the validity or
invalidity of such rejections.
The majority opinion finds differences between the claimed subject matter
and the prior bank data processing system. Thereupon, the majority opinion
appears to treat the obviousness rejection below as though it were based
on 35 U.S.C. 102. There is no doubt, as the board recognized, that appellant's
programmed computer differs from the conventional programmed computers
previously employed in banks. But the question under 35 U.S.C. 103 is whether
appellant's programmed computers as claimed, i.e., his "record-keeping machine
system," would have been obvious to those skilled in the art applicable to
such record-keeping machine systems. In my view one skilled in the art,
presented with the conventional machine system, would have found it obvious,
without knowledge of appellant's disclosure, to have modified the system
as set forth in the appealed claims.
Similarly, I regard the differences between the claimed subject matter and
the relevant portions of the Dirks' patent to be such as to have rendered
obvious the claimed subject matter as a whole at the time the invention was
made. That only portions of the Dirks' specification are relied on by the
board is, of course, irrelevant if such portions do in fact render obvious
the subject matter of the appealed claims. Whether or not Dirks discloses
category codes or their equivalent would not appear to be the question. If
it did, the rejection might well be under 35 U.S.C. 102. The question is
whether the contribution of such category codes by appellant is a difference
sufficient to render the claimed subject matter unobvious to one skilled
in the applicable art. As above indicated, I differ from my brothers in
the majority and would answer that question in the negative.
Thus, I find no clear error on the part of the board in its rejection of the
appealed claims under 35 U.S.C. 103. In the absence of such clear error we
must, and I would, affirm the decision of the board.
RICH, Judge, dissenting.
On the authority of Gottschalk v. Benson, 409 U.S. 63, (1972), I would
affirm the rejection of the claims on appeal which was made by the
board under 101, as requested by the Solicitor for the Patent Office.
The board's rejection was in these words:
Under the provisions of Rule 196(b) this board herewith enters under 35
U.S.C. 101 a further rejection of claims 1 through 11 and 16 through 27
as for subject matter outside the patent statutes.
This is inclusive of claims 20-24 on appeal here. The board did not, of
course, have the benefit of the Supreme Court's views in Benson because
the board decision was on October 27, 1971, and Benson was not decided
by the Supreme Court until November 20, 1972.
The Supreme Court held the process claims in Benson unpatentable under 101.
As the solicitor points out, appellant, in his main brief, ignored the
Supreme Court Benson decision. In his reply brief he endeavors to deal
with it - unsuccessfully, in my view. He attempts to distinguish on the
ground that the claims here are directed to machines while Benson involved
process claims. I think that will not suffice. Appellant has to concede that
* * * the only resemblance of this case to Benson is that of the use of
computer programs to embody the invention. Therein lies the rub, for
appellee [the Patent Office] would deny patents for all software-embodied
inventions.
The board, which was dealing with claims of appellant cast in both process
and machine form, said the following, with which I agree:
We see no essential difference in substance between these apparatus claims
which define only broad means for performance of the steps of a data
processing method and process claims 25, 26 and 27 which define the steps
of the data processing method as being carried out by any conventional
data processing machine. Hence, we consider that both the apparatus
and the method claims on appeal must stand or fall together .
[Emphasis added.]
I realize that claims 25, 26, and 27 are not on appeal but I do not take the
board's comment as being restricted to them among the process claims. The
point is that the machine or apparatus and process claims are really
directed to the same invention, of which appellant's main brief says:
* * * this invention is being sold as a computer program to banks and to
other data processing companies so that they can perform these data
processing services for depositors.
What could more clearly reveal the reality that the invention is a program -
software - and that that is what appellant wants to protect by the appealed
"machine system" claims? Appellant did not invent a machine - i.e.,
"hardware". Appellant's brief further states:
This machine was reduced to practice in the software form of computer
programs * * *.
I am quite familiar with the legal doctrine that a new program makes an old
general purpose digital computer into a new and different machine. This court
has been through that many times and I am not denying the validity of this
principle - which partakes of the nature of a legal fiction when it comes
to drafting claims. My problem is that, knowing the invention to be a new
program, I must decide whether it is patentable in any claimed form in view
of Benson, whether claimed as a machine, a "machine system", or otherwise.
I am probably as much - if not more - confused by the wording of the Benson
opinion as many others. What the Court did in its decision reversing the
holding of this court that Benson and Tabbot's method claims were patentable
subject matter under 101 contains a message that is loud and clear. If those
claims are not to patentable subject matter, neither, in my view, are the
claims here, regardless of difference in form. Benson et al. had a program
invention too and they could have cast their claims in machine system form
just as appellant did. Every competent patent draftsman knows how to do
that.
It seems to me important to focus on what the Supreme Court did in Benson,
rather than on the specifics of its explanation of why it did it. I have
no idea what was in the collective mind of the six-justice Court in
approving the statements:
It is said that the decision precludes a patent for any program servicing
a computer. We do not so hold. * * * It is said we freeze process
patents to old technologies, leaving no room for the revelations of the
new, onrushing technology. Such is not our purpose.
These are the comforting words to which some inventors of software and owners
of software inventions look for solace. I find it more significant to
contemplate the identities of the troops lined up for battle in Benson and
observe which side obtained the victory. On the one side was the Government,
against patenting programs or software, supported by the collective forces of
major hardware (i.e., computer) manufacturers and their representative
associations who, for economic reasons, did not want patents granted on
programs for their machines. On the other side was Benson et al. and their
assignee and assorted lawyers and legal groups who were in favor of patent
protection for programs or software. The anti-patenting forces won the
victory - if not an altogether clear one - and on the legal principle that
the Benson et al. way of programming a computer to do a particularly useful
job of general applicability in the data processing field was the kind of
invention the Supreme Court would not approve patenting without prior
consideration by and specific authorization from the Congress. The major
part of the rather brief and now famous "nutshell" conclusion of the
Court's opinion dwells heavily on this point.
I can find no realistic distinction in kind between the Benson et al.
invention and the invention here and I conclude that the Benson decision
requires us to affirm the rejection of claims 20-24 as directed to
non-patentable subject matter under 35 USC 101. Holding that view, I find it
unnecessary to consider the remaining four grounds of rejection discussed
by my colleagues.
It has been suggested that the position I am taking is inconsistent with the
position I have taken or the views I have expressed in others of the many
carefully reasoned opinions of this court on the statutory subject matter
question under 35 USC 101 which led to Benson, none of which was discussed
or even recognized in the Supreme Court's Benson opinion. As a result,
the value of those opinions as precedents has become unsettled.
It may well be that I seem to have been inconsistent. As the author of the
opinion of this court in Benson, which was wholly reversed, I have not been
persuaded by anything the Supreme Court said that we made a "wrong"
decision and I therefore do not agree with the Supreme Court's decision. But
that is entirely beside the point. Under our judicial system, it is the duty
of a judge of a lower court to try to follow in spirit decisions of the
Supreme Court - that is to say, their "thrust." I do not deem it to be my
province as a judge to assume an advocate's role and argue the rightness
or wrongness of what the Court has decided or to participate in what I regard
as the inconsistent decision here, supported by a bare majority which tries
in vain, and only briefly, to distinguish Benson by discussing form rather
than substance and various irrelevancies like pre-Benson decisions of this
court, the banking business, social science, and the liberal arts. I deem
it to be the Supreme Court's prerogative to set the limits on Benson, which
was broadly based. I hope it will do so. As John W. Davis, erstwhile
outstanding Solicitor General, once said, "The first requirement of any
judicial opinion is utter clarity." (Harbaugh, Lawyer's Lawyer, The Life of
John W. Davis, Oxford University Press, New York (1973), p. 108.)
FOOTNOTES:
{1} The board's decision concerned claims 1-11 and 16-27, but appellant has
only appealed the rejection of claims 20-24.
{2} Serial No. 624,741, filed March 21, 1967.
{3} The board found that the examiner had based his rejections upon the
premise "that an unprogrammed, or a differently programmed, general purpose
computer is the same machine as the one that would result from appellant's
programming of the same or of a similar computer." The board acknowledged that
neither it nor this court considers that premise to be valid, obviously
referring to In re Bernhart, 57 CCPA 737, 417 F.2d 1395 (1969).
{4} 196. Decision by Board of Appeals
* * *
(b) Should the Board of Appeals have knowledge of any grounds not involved
in the appeal for rejecting any appealed claim, it may include in its
decision a statement to that effect with its reasons for so holding,
which statement shall constitute a rejection of the claims.The appellant
may submit an appropriate amendment of the claims so rejected or a
showing of facts, or both, and have the matter reconsidered by the
primary examiner. The statement shall be binding upon the primary examiner
unless an amendment or showing of facts not previously of record be made
which, in the opinion of the primary examiner, avoids the additional
ground for rejection stated in the decision. The applicant may waive
such reconsideration before the primary examiner and have the case
reconsidered by the Board of Appeals upon the same record before them.
Where request for such reconsideration is made the Board of Appeals shall,
if necessary, render a new decision which shall include all grounds upon
which a patent is refused. The applicant may waive reconsideration by
the Board of Appeals and treat the decision, including the added grounds
for rejection given by the Board of Appeals, as a final decision in the
case.
{5} The appellant did not seek any reconsideration provided for by
Rule 196(b) and appealed directly to this court.
{6} The presently appealed claims 20-24 are all apparatus claims.
{7} This portion of the specification is reproduced in this opinion under
The Invention section, supra.
{8} U.S. Patent No. 3,343,133, issued September 19, 1967, on an application
filed August 9, 1963.
{9} We note that although the "failure to distinctly claim" language used in
the board's rejection connotes a rejection for indefiniteness, In re Knowlton,
supra, the sole basis for its rejection was that appellant was claiming
something - a relationship between a bank and its customer - other than
what appellant regarded as his invention, i.e., a failure to particularly
point out the subject matter which appellant regards as his invention.
Accordingly, we treat the rejection on this basis.
{10} Although the board held the claims to be indefinite, we again find the
sole basis of the rejection was that appellant was claiming something - a
human being - other than what appellant regarded as his invention. Thus,
we also treat this rejection on this basis.
{11} The solicitor argues that the board had another basis for its
indefiniteness rejection, namely that the means-plus-function recitations
in the claims are indefinite for lack of any corresponding descriptions
of structure in the specification upon which the scope of equivalents
might be based in accordance with the third paragraph of 112.
However, we cannot agree with the solicitor that the board set forth any such
basis for its "indefiniteness" rejection. Furthermore, the thrust of this
proposed rejection indicates that it would have been properly made under
the first paragraph of 112. See In re Comstock, 481 F.2d 905 (CCPA 1973),
In re Knowlton, supra. See also In re Bernhart, supra.
{12} "The phrase 'technological arts' * * * is synonymous with the phrase
'useful arts' as it appears in Article I, Section 8 of the Constitution."
In re Waldbaum, 59 CCPA 940, 457 F.2d 997 (1972).
{13} We likewise do not agree with the board that banking is a "social
science."
{14} Claim 20 uses the terminology "account identifications" for account
numbers.
{15} We note that the Dirks patent comprised 509 pages of the instant Record.