CITE: 33 F.3d 1354
CMON: August 1994
PLAIN: In re Warmerdam, Thomas and Verwer, Bernard
DEFND: United States Patent and Trademark Office
COURT: United States Court of Appeals for the Federal Circuit
DATE: August 11, 1994
HISTORY:
Inventors filed patent application directed to method and apparatus for
controlling motion of objects and machines to avoid collision with other
moving or fixed objects. The United States Patent and Trademark Office
Board of Patent Appeals and Interferences sustained patent examiner's
rejection of claims, and inventors appealed. The Court of Appeals,
Plager, Circuit Judge, held that: (1) patent claims regarding creation
of "bubble hierarchies" for controlling motion of objects involved no
more than manipulation of abstract ideas and, therefore, claims lacked
statutory subject matter, and (2) patent claim covering any machine
having memory which contains any data representing "bubble hierarchy"
was definite and, therefore, patentable.
Thomas P.H. Warmerdam and Bernard J.H. Verwer (collectively Warmerdam or
appellants) appeal the January 28, 1993 decision of the Patent and Trademark
Office Board of Patent Appeals and Interferences (Board), Appeal No. 92-3680.
The Board affirmed the rejection of claims pending in U.S. Patent Application
Serial No. 07/430,749 (the '749 application) in part for lack of statutory
subject matter under 35 U.S.C. Section 101 (1988), and in part for
indefiniteness under 35 U.S.C. Section 112 P2 (1988). We affirm-in-part
and reverse-in-part.
AFFIRMED IN PART and REVERSED IN PART.
SUMMARY:
Computer with specific data or data structure in memory is definite
and therefore patentable.
JUDGE: PLAGER, Circuit Judge
Before PLAGER, LOURIE, CLEVENGER, Circuit Judges.
DECISION:
BACKGROUND
Warmerdam filed the '749 application on November 1, 1989. That application
is directed to a method and apparatus for controlling the motion of objects
and machines, such as robotic machines, to avoid collision with other moving
or fixed objects. The technique requires determining the shape and position
of the edges of the objects to be avoided. The prior art teaches that
collision avoidance operations can be simplified by assuming that the
objects are larger and more regularly shaped than they actually are. This
can be done by treating the object as if it were a circle or sphere (called
a "bubble") of sufficient size to enclose the object, and by assuming that
any motion that impinges upon the circle would produce a collision.
Appellants' invention claims a further refinement of prior art bubble
systems. The positions of objects are determined by measuring the locations
of artificial circular boundaries, but the measurement process does not end
if the machine determines that the circular boundary will be violated in
a potential collision. Instead, if a potential collision is detected,
appellants further refine the determination of the boundary position by
replacing the spherical bubble zone with a set of smaller, more refined
bubble zones.
Appellants refer to their set of increasingly better defined safety zones
as a "bubble hierarchy". The claimed invention includes methods for
generating a "data structure" -- undefined as such but presumably
including the measured dimensions and coordinates of the bubble hierarchy
-- and a machine (presumably a general purpose computer) having a memory
containing data representing a bubble hierarchy as generated by any of the
claimed methods.
The bubble hierarchy is conceived by appellants in the following manner. At
the highest level of the hierarchy is a single "root" bubble, which entirely
bounds the object and thus represents the contour of the object at a coarse
level of detail. Lower levels of the hierarchy are associated with groups of
bubbles of smaller diameter, each separately bounding only a portion of the
object, such that the union of all bubbles at a particular level bounds the
entire object. These groups of bubbles represent the contour of the object
at progressively finer levels of detail.
Collision avoidance is accomplished through a technique known as
"bubble-bursting." According to this technique, the anticipated path
of a robot, for example, is first compared with the perimeter of the root
bubble. If the two do not intersect, the procedure terminates because
collision avoidance is necessarily established. However, if the two
intersect, the root bubble is "burst", revealing the group of bubbles
at the level immediately below it in the hierarchy. The anticipated path
is then compared with the perimeters of each of these bubbles. Again,
if an intersection is not detected, the procedure terminates because
collision avoidance is necessarily established. If, on the other hand,
an intersection is detected, the intersected bubble is burst, and the
procedure then repeats itself until it is determined either that (1) the
anticipated path does not intersect any of the bubbles at a particular
level of the hierarchy, indicating collision avoidance, or (2) the
anticipated path intersects one of the bubbles at the lowest level of
the hierarchy, indicating that a collision will occur.
A bubble hierarchy is illustrated in the following reproduction of Figure 4
from the '749 application:
[illustration omitted]
Warmerdam concedes that the use of bubble hierarchies for collision avoidance
was known as of the '749 filing date. The asserted novelty of Warmerdam's
method and apparatus derives from the generation and placement of the
hierarchy of bubbles along the medial axis of the object. The medial axis
of an object is defined in the specification to be "a line with the same
topology as the object itself connecting points which lie midway between
boundary centers of the object." With reference to Figure 1 of the '749
application, reproduced below, the medial axis of object O having contour
C is represented by the group of lines B:
[illustration omitted]
According to Warmerdam, generation and placement of the bubble hierarchy
along the medial axis results in computational efficiency in relation to
prior methods of bubble generation and placement.
As filed, the '749 application contained seven claims of which only claims
1-6 are at issue in this appeal. The other claim, claim 7, was indicated
by the examiner as allowable. Claims 1-4 are method claims, of which claim 1
is the sole independent claim:
1. A method for generating a data structure which represents the shape
of [sic] physical object in a position and/or motion control machine
as a hierarchy of bubbles, comprising the steps of:
first locating the medial axis of the object and
then creating a hierarchy of bubbles on the medial axis.
Claims 2-4 recite both top-down and bottom-up procedures for creating
the bubble hierarchy. Claim 2 is directed to the top-down procedure:
2. The method of Claim 1 wherein the step of creating the hierarchy
comprises a top-down procedure of:
first placing a root bubble which is centered at the center of gravity
of the object and has a radius equal to the maximum distance from the
center of gravity to the contour of the object;
next, if the medial axis has a plurality of branch lines, placing a
plurality of first successive bubbles each of which encompasses a
distinct part of the object which is described by one of said branch
lines; and
then successively dividing each line of the medial axis into two new
line parts and placing a pair of next successive bubbles each of which
encompasses a distinct part of the object which is described by one of
said new line parts.
Claims 3-4, by contrast, are directed to the bottom-up procedure for creating
the bubble hierarchy:
3. The method of Claim 1 wherein the step of creating the hierarchy
comprises a bottom-up procedure of:
first representing the medial axis as [sic] large plurality of discrete
points;
next placing the centers of a plurality of lowest level bubbles at said
discrete points, where the radius of each bubble is equal to the minimum
distance from the corresponding center point to the contour of the object;
and
then successively creating new bubbles by merging the smallest bubble
remaining with its smallest neighbor(s) to create a new bubble and
repeating this step until only one root bubble remains.
4. The method of Claim 3 wherein two old bubbles are merged to yield a new
bubble in accordance with the formulas:
r' = (r1 + j + r2) / 2,
x' = (x1 + x2 + (r1-r2)(x1-x2) / j) / 2
y' = (y1 + y2 + (r1-r2)(y1-y2) / j) / 2
z' = (z1 + z2 + (r1-r2)(z1-z2) / j) / 2;
wherein r1 and r2 are the radii of the old bubbles, j is the distance
between the centers of the old bubbles (x1,y1,z1) and (x2,y2,z2) are
the coordinates of the center of the old bubbles, r' is the radius of
the new bubbles, and (x',y',z') are the coordinates of the center of
the new bubble.
Claim 5 is directed to a machine:
5. A machine having a memory which contains data representing a bubble
hierarchy generated by the method of any of Claims 1 through 4.
Claim 6 is directed to a data structure:
6. A data structure generated by the method of any of Claims 1 through 4.
The examiner rejected claims 1-4 and 6 for lack of statutory subject matter
under 35 U.S.C. Section 101, and claim 5 for indefiniteness under 35 U.S.C.
Section 112 P2. After the rejection was made final, Warmerdam appealed to
the Board. On appeal, the Board sustained the rejections. With respect to
claims 1-4, the Board was of the view that these claims recited no more than
a mathematical algorithm in the abstract, and thus failed to comply with
Section 101. {1} With respect to claim 5, the Board considered that claim
to be indefinite under Section 112 P2 because it left "unclear and
unexplained how a memory is made or produced by the steps of generating
recited in claims 1 through 4." With respect to claim 6, the Board
determined that the claim failed to satisfy Section 101 on the ground that
a "data structure" is not within one of the categories of patentable subject
matter listed in Section 101, to wit, a process, machine, manufacture,
composition of matter, or improvements thereof.
Warmerdam appealed the decision of the Board to this court.
DISCUSSION
Despite the oft-quoted statement in the legislative history of the 1952
Patent Act that Congress intended that statutory subject matter "include
anything under the sun that is made by man", S. Rep. No. 1979, 82d Cong.,
2d Sess., 5 (1952), reprinted in 1952 U.S.C.C.A.N. 2394, 2399; H.R. Rep.
No. 1923, 82d Cong., 2d Sess., 6 (1952), Congress did not so mandate.
Congress included in patentable subject matter only those things that
qualify as "any . . . process, machine, manufacture, or composition of
matter, or any . . . improvement thereof . . . ." 35 U.S.C. Section 101
(1988). Cf. In re Alappat, 33 F.3d 1526 (Fed. Cir. 1994) (en banc)
("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.")
To include some things is to exclude others. The chore of defining exactly
what is excluded under Section 101, and applying such definitions to
specific cases, has caused courts to expend much effort in trying to find
the right words to describe some rather abstract notions. In Diamond v.
Diehr, 450 U.S. 175, 67 L. Ed. 2d 155, 101 S. Ct. 1048 (1981), the Supreme
Court summarized the scope of the Section 101 exclusion and the Court's
prior efforts at describing it by saying "excluded from such patent
protection are laws of nature, natural phenomena, and abstract ideas
. . . . Our recent holdings in Gottschalk v. Benson [409 U.S. 63, 93 S.Ct.
253 (1972)] and Parker v. Flook [437 U.S. 584, 98 S.Ct. 2522 (1978)],
both of which are computer-related, stand for no more than these
long-established principles." Id. at 185.
Within Supreme Court guidance, this court and its predecessor, as well as
the Patent and Trademark Office (PTO), have sought to find more precise
definitions for the things excluded, but without complete success. One
notion that emerged and has been invoked in the computer related cases is
that a patent cannot be obtained for a "mathematical algorithm." See In
re Schrader, 22 F.3d 290 (Fed. Cir. 1994) and cases discussed therein.
That rule is generally applied through a two-step protocol known as the
Freeman-Walter-Abele test, developed by our predecessor court, the first
step of which is to determine whether a mathematical algorithm is recited
directly or indirectly in the claim, and the second step of which is to
determine whether the claimed invention as a whole is no more than the
algorithm itself. See Schrader, 22 F.3d at 292.
The difficulty is that there is no clear agreement as to what is a
"mathematical algorithm", which makes rather dicey the determination
of whether the claim as a whole is no more than that. See Schrader,
22 F.3d at 292 n.5, and the dissent thereto. An alternative to creating
these arbitrary definitional terms which deviate from those used in the
statute may lie simply in returning to the language of the statute and the
Supreme Court's basic principles as enunciated in Diehr, and eschewing
efforts to describe nonstatutory subject matter in other terms. {2}
1.
Claims 1-4 and 6 are denominated as method claims. Understanding that the
statute equates the term "method" with the term "process," see 35 U.S.C.
Section 100(b), the question is what is it that this process does, and
in doing it is it other than what the Supreme Court must have understood
to be "laws of nature, natural phenomena or abstract ideas"?
The Board concluded that each of the two steps recited in claim 1, i.e.,
the step of locating the medial axis of the object, and the step of
creating the bubble hierarchy on the medial axis, involves the solving of a
mathematical algorithm. The Commissioner asserts that these conclusions are
sustainable on the ground that the preferred method of locating a medial axis
identified in the '749 specification is a mathematical procedure known as
Hilditch Skeletonization method, and on the ground that the top-down and
bottom-up procedures identified in the specification (and claimed in
the dependent claims) for creating the bubble hierarchy are likewise
mathematical in nature. The Commissioner also points to several cases {3}
in which process steps similar to those recited in claims 1-4, i.e., steps
such as "computing", "determining", "cross-correlating", "comparing",
"selecting", "initializing", "testing", "modifying", and "identifying",
were found to implicitly recite the solving of a mathematical algorithm.
Warmerdam, by contrast, argues that the claims are broad enough to cover
methods which involve physically measuring the contour of the object. Thus,
according to Warmerdam, the claims do not essentially recite a mathematical
algorithm as required by Ex parte Logan, 20 USPQ.2d 1465 (Bd. Pat. App.
& Inter. 1991), but only incidentally do so.
Warmerdam has a point. Claim 1 is broad enough to cover methods for locating
the medial axis of an object that include physically measuring the contour
of the object with a ruler or simply by 'eyeballing' the object, and then
creating the bubble hierarchy by manually drawing it. In that sense,
it does not necessarily recite the solving of a mathematical algorithm.
The fact that the claim covers methods which are essentially mathematical
in nature, as discussed infra, is not dispositive. Claims should be
evaluated by their limitations, not by what they incidentally cover.
On the other hand, the preferred, and it appears the only practical,
embodiment of the claimed method involves steps which are essentially
mathematical in nature, i.e., utilization of the Hilditch Skeletonization
method to locate the medial axis, followed by utilization of a top-down
or bottom-up procedure for creating the bubble hierarchy. In this sense,
at least, the claim is mathematical in nature. {4}
Compounding the difficulty of resolving the issue in "mathematical algorithm"
terms is the lack of agreement, as previously noted, about the proper
meaning of the label mathematical algorithm. See the discussion of this
issue in Schrader, 22 F.3d at 293 n.5. We need not resolve the issue in
these terms because we find that regardless whether the claim can be said
to recite indirectly or directly a mathematical algorithm, the dispositive
issue for assessing compliance with Section 101 in this case is whether the
claim is for a process that goes beyond simply manipulating "abstract ideas"
or "natural phenomena". {5}
The body of claim 1 recites the steps of "locating" a medial axis, and
"creating" a bubble hierarchy. These steps describe nothing more than the
manipulation of basic mathematical constructs, the paradigmatic "abstract
idea". As the Supreme Court has made clear, "an idea of itself is not
patentable", Rubber-Tip Pencil Co. v. Howard, 87 U.S. 498, 507,
20 Wall. 498, 22 L. Ed. 410 (1874); taking several abstract ideas and
manipulating them together adds nothing to the basic equation.
Warmerdam's argument that the claim implies physically measuring the contour
of an object misses the point. As a whole, the claim involves no more than
the manipulation of abstract ideas. Moreover, from the standpoint of Section
101, a physical measurement step is indistinguishable from the data
gathering step which we held in In re Grams, 888 F.2d 835 (Fed. Cir. 1989),
was insufficient, standing alone, to impart patentability to a claim. Id.
at 840.
Warmerdam's other argument, that the manipulation of data as described in the
claims constitutes or represents a sufficient level of physical activity to
impart patentability to the claim, is not convincing. It is true, particularly
with ideas expressed in mathematical form, that if a claim requires more than
the manipulation of ideas so that the process described in the claim produces
something quite different, then the process might indeed describe statutory
subject matter. The problem with Warmerdam's argument is that the claims
here do not have that effect. It is the claims which define the metes and
bounds of the invention entitled to the protection of the patent system.
Zenith Lab. Inc. v. Bristol-Myers Squibb Co., 19 F.3d 1418, 1424 (Fed. Cir.
1994). Thus, the argument is unavailing. We conclude the Board did not err
in sustaining the rejection of claims 1-4 under Section 101.
2.
Claim 5 is for a machine, and is clearly patentable subject matter. The Board
denied patentability on the grounds it was indefinite, a fatal vice under 35
U.S.C. Section 112, second paragraph. Warmerdam argues that claim 5 conforms
to the conventional product-by-process format, and thus is definite. The
Commissioner, by contrast, supports his assertion that the claim is
indefinite with two arguments. First, he repeats the assertion of the
Board: that the claim does not conform to the conventional format of a
product-by-process claim because it is unclear how a memory is produced
by the steps recited in claims 1-4. Second, the bubble hierarchy which is
created in the recited steps is not "an exact, well-defined data structure.
. . ."
The legal standard for definiteness is whether a claim reasonably apprises
those of skill in the art of its scope. See Amgen Inc. v. Chugai
Pharmaceutical Co. Ltd., 927 F.2d 1200, 1217 (Fed. Cir.), cert. denied
sub nom., Genetics Inst., Inc. v. Amgen, Inc., 116 L. Ed. 2d 132, 112 S.
Ct. 169 (1991) (citing Shatterproof Glass Corp. v. Libbey-Owens Ford Co., 758
F.2d 613, 624 (Fed. Cir. 1985)). The ultimate conclusion of indefiniteness
is one of law, which we are free to review anew on appeal. Orthokinetics
Inc. v. Safety Travel Chairs Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986).
Claim 5 satisfies the Amgen test. It covers any machine (presumably including
a known computer) having a memory which contains any data representing a
bubble hierarchy determined by any of the methods of claims 1-4. The
Commissioner's first argument is beside the point. There is no requirement
that a claim for a machine which incorporates process steps, such as claim 5,
must conform to the conventional definition of a product-by-process claim.
{6} The Commissioner's second argument, more to the point, is nevertheless
unavailing. The Board considered claim 5 to leave unclear and unexplained
how a memory is made or produced by the steps of generating recited in
claims 1 through 4: "The broad exercise of geometrically representing the
shape of an object with a hierarchy of bubbles on the medial axis of the
object as recited in claim 1 simply does not produce a memory or data
in memory . . . ."
We are not persuaded. The ideas expressed in claims 1 through 4 are well
known mathematical constructs, and lend themselves to manipulation through
known computer technology. There has been no showing that one skilled in
the art would have any particular difficulty in determining whether a
machine having a memory containing data representing a bubble hierarchy
is or is not within the scope of claim 5. The Board's point, that the
claim leaves unclear the technique of how the memory is configured with
the data, has no bearing on this issue. The claim plainly covers all such
techniques. Whether such a programmed machine is new, useful, unobvious,
or otherwise patentable is not at issue in this appeal, and we express
no opinion thereon. Accordingly, we conclude the Board erred in sustaining
the rejection of claim 5 for indefiniteness.
3.
Citing In re Bradley, 600 F.2d 807 (CCPA 1979), aff'd, 450 U.S. 381,
67 L. Ed. 2d 311, 101 S. Ct. 1495 (1981), Warmerdam argues that a
"data structure" is one of the categories of patentable subject matter
recited in Section 101, {7} and thus that the Board erred in sustaining
the rejection of claim 6 under Section 101. The Commissioner, by contrast,
citing Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470, 40 L. Ed. 2d 315,
94 S. Ct. 1879 (1974), argues that the rejection should be sustained
because the claim is not one of the categories of subject matter recited
in Section 101, to wit, a process, machine, manufacture, composition of
matter, or an improvement thereof.
The Commissioner is correct. The claim in its entirety reads: "6. A data
structure generated by the method of any of Claims 1 through 4." While the
term "data structure" is nowhere defined in Warmerdam's application, it is
clear from its use in the specification that it refers to the ideas reflected
in the process of making a bubble hierarchy. {8} In IEEE Standard Computer
Dictionary (1991), the phrase "data structure" is defined as "[a]
physical or logical relationship among data elements, designed
to support specific data manipulation functions." (Emphasis added). Since
the "data structure" of claim 6 is nothing more than another way of
describing the manipulation of ideas contained in claims 1-4, it suffers
from the same fatal defect they do.
Warmerdam's reliance on Bradley, 600 F.2d 807 (CCPA 1979), is misplaced.
The "data structure" at issue in that case was a physical, interconnected
arrangement of hardware and thus embraced by the term "machine". Id. at
812-13. The same cannot be said of the data structure that is at issue in
this case. Contrary to Warmerdam's assertion, the phrase does not imply a
physical arrangement of the contents of a memory. Thus, Bradley is
inapposite.
CONCLUSION
The decision of the Board, sustaining the rejection of claims 1-4, and 6
for lack of statutory subject matter, is AFFIRMED, and the decision of
the Board, sustaining the rejection of claim 5 for indefiniteness,
is REVERSED.
AFFIRMED-IN-PART AND REVERSED-IN-PART
FOOTNOTES:
{1} Warmerdam does not dispute the Board's finding that the patentability
of the dependent claims (claims 2-4) was not argued separately from that of
the independent claim (claim 1). Thus, these claims stand or fall together.
See In re Schrader, 22 F.3d 290, 292 n.3, (Fed. Cir. 1994); 37 C.F.R.
Section 1.192(c)(5) (1993).
{2} Efforts to explain nonstatutory subject matter in other terms has bred
such phrases as 'method of doing business', Ex parte Murray, 9 USPQ.2d
1819 (Bd. Pat. App. & Inter. 1988), 'transformation of subject matter',
Cochrane v. Deener, 94 U.S. 780, 24 L. Ed. 139 (1877), and 'reactions of
an individual', Greenwalt v. Stanley Co., 54 F.2d 195 (2d Cir. 1931).
{3} E.g., In re Grams, 888 F.2d 835 (Fed. Cir. 1989); In re Meyer,
688 F.2d 789 (CCPA 1982); and In re Johnson, 589 F.2d 1070 (CCPA 1978).
{4} The fact that the preferred method of performing the process steps at
issue in Grams, Meyer, and Johnson involved the solving of a mathematical
algorithm seemed to be the basis for the conclusions reached in those cases
that the process steps implicitly recited a mathematical algorithm.
{5} This notion is sometimes phrased in terms of requiring a transformation or
reduction of 'subject matter'. In Schrader, we determined that the phrase
'subject matter' is not limited to tangible articles or objects, but includes
intangible subject matter, such as data or signals, representative of or
constituting physical activity or objects. Id. at 295.
{6} Even if there were, we are not sure the claim fails to conform to this
definition. Our predecessor court has recognized that the storage of data in
a memory physically alters the memory, and thus in some sense gives rise to
a new memory. See In re Bernhart, 57 C.C.P.A. 737, 417 F.2d 1395, 1400
(CCPA 1969). In that sense, the claim does conform to the conventional
format.
{7} 35 U.S.C. Section 101 (1988) provides: Whoever invents or discovers
any new and useful process, machine, manufacture, or composition of matter,
or any new and useful improvement thereof, may obtain a patent therefor,
subject to the conditions and requirements of this title.
{8} "In a typical bubble hierarchy, the top or root of the hierarchy is a
single spherical bubble, the enclosing bubble which encloses an entire object.
This is the most coarse level of detail in the data structure." Spec., p. 2.