CITE:  442 F.2d 1397
CMON:  May 1971
PLAIN: In re McIlroy
DEFND: United States Patent and Trademark Office
COURT: United States Court of Customs and Patent Appeals
DATE:  May 27, 1971

Appeal from decision of patent office board of appeals, serial No. 417,973,
affirming rejection of method claims.  The Court of Customs and Patent
Appeal, Lane, J., held that in determining whether a method is statutory,
whether it is machine-implemented or mental-implemented is not


  Mental steps in a patent are patentable.  Computer software as a process
  is a technological/useful art.

Before RICH, ALMOND, BALDWIN and LANE, Judges, and LANDIS, Judge, United
States Customs Court, sitting by designation.


This appeal is from the decision of the Patent Office Board of Appeals 
affirming the rejection of method claims 1-7 and 9 in application serial
number 417,973, filed December 14, 1964, for "Machine processing of
symbolic data constituents."  We reverse.  Two apparatus claims,
corresponding generally to the rejected method claims by virtue of
functional ("means for") expressions, stand allowed.

The rejected claims define a method for retrieving symbolic data from a
stored string.  Claims 1 and 7 are typical:

    1. The method of processing information which comprises the steps of

    (1) generating signals specifying a set of locations in memory,

    (2) generating signals for indirectly addressing said memory,

    (3) generating signals for combining the signals generated in steps
    1 and 2 in a selected relationship to indirectly address said
    memory with respect to the signals generated by step (1).

    (4) combining the signals of steps 1 and 2 in accordance with the
    signals of step 3, and

    (5) extracting signals from the memory locations addressed by the
    combination of signals obtained in step 4.

    7. The machine method of processing signals representing a string
    of characters stored in memory which comprises the steps of

    (1) indirectly addressing said memory to extract signals representing
    a plurality of characters of said string,

    (2) shifting the extracted signals until those representing a
    desired character occupy a preassigned set of positions in a shift
    register, and

    (3) masking the remainder of the shifted signals.

The board affirmed the examiner's rejection of claims 1-6 under 35 USC 101
as drawn to nonstatutory subject matter, and added its own rejection of
claims 7 and 9 on that ground.  The board based its conclusion on the
premise that only machine-implemented methods can be statutory, at least
where information processing is concerned, and that the claims do not
require machine implementation.

We see no reason to set forth here a detailed analysis of the invention
defined by the claims.  Under our decision in In re Musgrave, 413 F.2d 882,
57 CCPA 1352 (1970), machine implementation versus mental implementation
is not a determinative dichotomy in deciding whether a method is
statutory under 35 USC 101.  Further, in out decision in In re Benson,
Cust. & Pat. App., 441 F.2d 682, decided May 6, 1971, we held that
"a process having no practical value other than enhancing the internal
operation of [digital computers]" was in the technological arts and hence
was statutory under section 101.  It is undisputed that the method
claimed here is one of that kind.

Since the board's decision lacks a proper legal basis, it is REVERSED.