FALL 2007

Computer Law

 
Course No.  9200 711 001
Th 6:30 - 9:30 p.m.
Room W-214
Professor Jay Dratler, Jr.
Room 231D (IP Alcove)
(330) 972-7972
dratler@uakron.edu, dratler@neo.rr.com
Copyright © 2000, 2001, 2002, 2004, 2007   Jay Dratler, Jr.   For permission, see CMI.
 

Dissenting Opinion (on Merits) of Judges Archer and Nies

in In re Alappat

Archer, C.J. with whom NIES, J., joins, concurring in part and dissenting in part.

* * * [*1551]

[Concurrence on procedural issues omitted.]

 

II. THE SECTION 101 REJECTION

A.

I disagree with the majority's conclusion that Alappat's "rasterizer," which is all that is claimed in the claims at issue, constitutes an invention or discovery within 35 U.S.C. § 101. . . . Alappat has not shown that he invented or discovered a machine within § 101.

* * * [*1552] * * *

Alappat has arranged known circuit elements to accomplish nothing other than the solving of a particular mathematical equation represented in the mind of the reader of his patent application. Losing sight of the forest for the structure of the trees, the majority today holds that any claim reciting a precise arrangement of structure satisfies 35 U.S.C. § 101.  As I shall demonstrate, the rationale that leads to this conclusion and the majority's holding that Alappat's rasterizer represents the invention of a machine are illogical, inconsistent with precedent and with sound principles of patent law, and will have untold consequences.

B.* * *

The terms used in § 101 have been used for over two hundred years—since the beginnings of American patent law—to define the extent of the subject matter of patentable invention. . . .

Coexistent with the usage of these terms has been the rule that a person cannot obtain a patent for the discovery of an abstract idea, principle or force, law of nature, or natural phenomenon, but rather must invent or discover a practical "application" to a useful end. . . . .

* * * [*1553] Additionally, unapplied research, abstract ideas, and theory continue to be the "basic tools of scientific and technological work," which persons are free to trade in and to build upon in the pursuit of among other things useful inventions. Flook, 437 U.S. at 589, 198 U.S.P.Q. (BNA) at 197 (quotations omitted). Even after a patent has been awarded for a new, useful, and nonobvious practical application of an idea, others may learn from the underlying ideas, theories, and principles to legitimately "design around" the patentee's useful application. . . .

The requirement of the patent law that an invention or discovery reside in the application of an abstract idea, law of nature, principle, or natural phenomenon is embodied in the language of 35 U.S.C. § 101. A patent can be awarded to one who "invents or discovers" something within the enumerated classes of subject matter—"process," "machine," "manufacture," "composition of matter."  These terms may not be read in a strict literal sense entirely divorced from the context of the patent law. Diehr, 450 U.S. at 185, 209 U.S.P.Q. (BNA) at 7 ("Every discovery is not embraced within the statutory terms." (emphasis added)) . . . . Rather they must be read as incorporating the longstanding and well-established limitation that the claimed invention or discovery must reside in a practical application. (1)

* * * Section 101 must be satisfied before any of the other provisions apply, and in this way § 101 lays the predicate for the other provisions of the patent law. See Flook, 437 U.S. at 593, 198 U.S.P.Q. (BNA) at 199 (The determination of "what type of discovery is sought to be patented must precede the determination of whether that discovery is, in fact, new or obvious.") . . . . When considering that the patent law does not allow patents merely for the discovery of ideas, principles, and laws of nature, ask whether, were it not so, the other provisions of the patent law could be applied at all. If Einstein could have obtained a patent for his discovery that the energy of an object at rest equals its mass times the speed of light squared, how would his discovery be meaningfully judged for nonobviousness, the sine qua non of patentable invention? (2) 35 U.S.C. § 103. When is the abstract idea "reduced to practice" as opposed to being "conceived"? See id. § 102(g). What conduct amounts to the "infringement" of another's idea?  See id. § 271.

* * *[*1554] * * *

Through the expedient of putting his music on known structure, can a composer now claim as his invention the structure of a compact disc or player piano roll containing the melody he discovered and obtain a patent therefor? The answer must be no. The composer admittedly has invented or discovered nothing but music. The discovery of music does not become patentable subject matter simply because there is an arbitrary claim to some structure.

And if a claim to a compact disc or piano roll containing a newly discovered song were regarded as a "manufacture" and within § 101 simply because of the specific physical structure of the compact disc, the "practical effect" would be the granting of a patent for a discovery in music. Where the music is new, the precise structure of the disc or roll would be novel under § 102. Because the patent law cannot examine music for "nonobviousness," the Patent and Trademark Office could not make a showing of obviousness under § 103. The result would well be the award of a patent for the discovery of music. The majority's simplistic approach of looking only to whether the claim reads on structure and ignoring the claimed invention or discovery for which a patent is sought will result in the awarding of patents for discoveries well beyond the scope of the patent law.

Patent cases involving the distinction between idea or principle [and concrete application] may involve subtle distinctions. Flook, 437 U.S. at 589, 198 U.S.P.Q. (BNA) at 197. (3) Section 101 embodies the very soul of the intangible nature of invention. Without particular claimed subject matter in mind, it is impossible to generalize with bright line rules the dividing line between what is in substance the invention or discovery of a useful application within § 101 versus merely the discovery of an abstract idea or law of nature or principle outside § 101. Each case presenting a question under § 101 must be decided individually based upon the particular subject matter at issue. . . .

C.

1.

* * * Digital electronics, including so-called general purpose digital computers, often call into play § 101 because digital electronic devices "operate[] on data expressed in digits, solving a problem by doing arithmetic as a person would do it by head and hand." Gottschalk v. Benson, 409 U.S. 63, 65, 175 U.S.P.Q. (BNA) 673, 674, 34 L.Ed.2d 273, 93 S.Ct. 253 (1972). Applicants sometimes attempt to claim digital-electronic related subject matter by reference to the mathematical function performed by the digital electronic structure. . . . However, like the discovery of a law of nature, abstract [*1555] idea, or principle, the discovery of mathematic functions, relationships, operations, or algorithms does not entitle a person to a patent therefor. . . . (4) It does not matter how "original," "inventive," or "useful" the mathematics might be in the ordinary sense of those words.

* * * In Benson, the claimed method was to be performed specifically in a general purpose digital computer, and one of the claims (claim 8) contained express digital electronic structure limitations by reciting "signals" and a "reentrant shift register." The Court found that the "practical effect" of a patent for the method would be the impermissible award of a patent for a discovery in mathematics because the whole of the subject matter sought to be patented was a mathematical formula that had "no substantial practical application except in connection with a digital computer." (5) * * *

In . . . Parker v. Flook, the Court held that a claim to a method of updating "alarm limits" (numbers) did not recite an invention or discovery within § 101, and thus was ineligible for patent protection. The claims in Flook did not "wholly preempt" the claimed mathematical formula because they did not cover every application of the formula. . . . The claimed method was expressly limited to operation "in a process comprising the catalytic chemical conversion of hydrocarbons," and thereby to application in a particular technological environment. . . . The claimed formula also was "primarily useful for computerized calculations." And the claim recited specific activity beyond the solution of the mathematical formula (so called "post-solution" activity), namely adjusting [*1556] an "alarm limit" to the figure computed according to the formula. . . . The Court reasoned that the updating of alarm limits in chemical processes was well known, and all that Flook purported to invent and claim was a new formula coupled to a computer for doing so (limited to certain post-solution activity in a technological environment). . . . [S]ee Diehr, 450 U.S. at 186, 209 U.S.P.Q. (BNA) at 8 ("the Court concluded [in Flook] that the [patent] application sought to protect a formula for computing [a] number"). . . . On these facts, the Court reasoned that the claimed invention or discovery was an alleged newly discovered mathematical formula, which was "not the kind of 'discovery' that the statute was enacted to protect." . . .

In . . . Diamond v. Diehr, the Court held that a process for operating a rubber-molding press was within § 101. An element of the claimed process was a digital computer programmed to perform a mathematical function. . . . By including a thermocouple or other temperature-detecting device for measuring temperature inside the press, feeding signals to a computer which would repeatedly calculate the cure time and then cause the press to open at the right moment, the applicant claimed to have invented a new, useful, and nonobvious precision method of curing rubber. The Court reasoned that the claimed subject matter was, as a whole, a process for precision rubber curing that included a computer performing a mathematical formula; the totality of claimed subject matter was not just the mathematical formula. . . . Therefore, held the Court, the claimed subject matter was eligible for patent protection. (6)

The Court in Diehr distinguished its decision in Flook. Both cases involved claims including mathematical formulae to be performed by digital electronics, with application in chemical processes. Flook's patent application, however, "did not purport to explain how the variables used in the formula were to be selected." Diehr, 450 U.S. at 192 n.14; see also id. at 186. Flook's patent application did not "contain any disclosure relating to the chemical processes at work, the monitoring of process variables, or the means of setting off an alarm system." Diehr, 450 U.S. at 187[;] id. at 192 n.14. In contrast, Diehr's claims were neither to the mathematical formula nor to the "the isolated step of 'programming a digital computer.'" Id. at 193 n.15. They were to a process "beginning with the loading of [a] mold and ending with the opening of [a] press and the production of synthetic rubber product that has been perfectly cured-a result theretofore unknown in the art."  The chemical process in Flook was not the alleged invention or discovery but only was related tangentially to the mathematic formula; the applicant simply "limited the use of the formula to a particular technological environment" and claimed "insignificant postsolution activity." Diehr, 450 U.S. at 192 n.14. All this demonstrated that in Diehr the applicant was, in substance, asserting and claiming to have invented a new and useful chemical process, thereby qualifying the subject matter for examination under the remaining provisions of the patent law, while in Flook as in Benson the applicant was, in substance, asserting and claiming as his invention or discovery a mathematical function (to be performed by a [*1557] computer), thereby placing the subject matter outside the patent law.

Under Benson, Flook, and Diehr the posing and solution of a mathematic function is nonstatutory subject matter. It is nonstatutory even if the particular mathematics is limited to performance in digital electronic circuitry or a general purpose digital computer, even if the mathematic operations are alleged generally to have some application in one or various technologies, and even if the solution of the function is said generally to "represent" something of physical or technologic relevance. On the other hand, an invention or discovery of a process or product in which a mathematic operation is practically applied may be statutory subject matter. The fact that one element of the claimed process or product is a programmed digital computer or digital electronics performing a mathematic function does not necessarily preclude patent protection for the process or product.  In this way, the door remains open to the advancement of technologies by the incorporation of digital electronics. But the mere association of digital electronics or a general purpose digital computer with a newly discovered mathematic operation does not per se bring that mathematic operation within the patent law.

2.

Every case involving a § 101 issue must begin with this question: What, if anything, is it that the applicant for a patent "invented or discovered"? * * *

Thus the dispositive issue is not whether the claim recites on its face something more physical than just abstract mathematics. If it were, Benson and Flook would have come out the other way and Diehr would have been a very short opinion.  The dispositive issue is whether the invention or discovery for which an award of patent is sought is more than just a discovery in abstract mathematics. Where the invention or discovery is only of mathematics, the invention or discovery is not the "kind" of discovery the patent law was designed to protect and even the most narrowly drawn claim must fail. * * *

D.

1. The Claimed Invention or Discovery.

* * * The majority is quite taken in by the structure and functioning of the oscilloscope. But as the majority recognizes, the oscilloscope is not claimed as Alappat's invention. Rather the claimed invention is, as the majority says, "a means for creating a smooth waveform [*1558] display in a digital oscilloscope," or an "anti-aliasing system" for an oscilloscope. * * *

* * * There is no discussion in the specification of the structure of the means for actually displaying the data or of the oscilloscope.

* * *

[discussion of decisions below omitted]

[*1560] 4. The Majority's Decision in this Case

* * * [*1561] * * *

E.

1.

Of course, I agree that the means-for-function elements in claim 15 must be construed to cover the corresponding structure described in Alappat's specification and equivalents thereof. 35 U.S.C. § 112, ¶ 6 . . . . Accordingly, Alappat correctly argues and the majority properly holds that when the "means" elements of the claim are construed under 35 U.S.C. § 112, ¶ 6, paragraphs (a) to (d) of the claim read as follows (the preamble has been shortened for brevity)

    A rasterizer for converting vector list data . . . into . . . pixel illumination intensity data to be displayed . . . comprising:

      (a) a first ALU;

      (b) a second ALU;

      (c) two barrel shifters; and

      (d) a ROM.

Further, pursuant to 35 U.S.C. § 112, ¶ 6, elements (a)-(d) also cover equivalents of the two ALUs, the two barrel shifters, and the ROM.

* * *

2.

The § 112, ¶ 6, issue, however, is a red herring in this case.  Although the reconsideration panel erred by ignoring specific structure recited in the claims, Alappat's claimed invention still is not the invention or discovery of a machine. The presence of structure on the face of the claims does not ipso facto make the claimed invention or discovery one of statutory subject matter.

* * *

The Supreme Court has held that a claimed invention may represent merely the discovery of a law of nature and be outside the patent law, even though the claim entirely recites a specific and complete structure. See Funk Bros. Seed Co., 333 U.S. at 130, 76 U.S.P.Q. (BNA) at 281 (claim to species of bacteria represented discovery of law of nature and was outside § 101). The Supreme Court has also held that a claimed process may be non-statutory even if it implements a principle in a "specific fashion." Flook, 437 U.S. at 593, 198 U.S.P.Q. (BNA) at 198. And the Supreme Court has held that a claimed invention may represent the discovery of mathematics alone and be outside § 101 even though the claim recites specific structural limitations. E.g., Benson, 409 U.S. at 64, 73, 175 U.S.P.Q. (BNA) at 674, 677.

* * * [*1563] * * *

Furthermore, the statute does not support a simple "structure" test. 35 U.S.C. § 101 plainly refers to several classes of subject matter having longstanding usage in the patent law and requires that the applicant have "invented or discovered" a new and useful one of them. "Structure" is not one of these classes.  Nor does § 101 simply require a claim that recites structure. Finally, there is no reason to suppose that § 101 should depend only on the adequacy of disclosure when specificity of disclosed and claimed structure is expressly required in 35 U.S.C. § 112.

* * * [A] claim may include the recitation of something physical (i.e., structure), and yet the invention or discovery is essentially only mathematical. . . . Where the claimed invention is nothing more than a newly discovered mathematical formula or solution, the claimed subject matter will not be statutory simply because included in the claim are one or more references to structure.

3.

So what did Alappat invent or discover? Alappat's specification clearly distinguishes between an "oscilloscope" and a "rasterizer," and Alappat claims his invention in claims 15-19 to be only the "rasterizer."

* * * The rasterizer begins with vector "data"--two numbers. "It does not matter how they are ascertained." Brief for Alappat at 39.  The two numbers, as they might to any algebra student, "represent" endpoints of a line.

The claimed "rasterizer" ends with other specific "data"--a[n] array of numbers, as the original and reconsideration panels of the board both expressly agreed. See Diehr, 450 U.S. at 186, 209 U.S.P.Q. (BNA) at 8 ("The claims [in Flook] were drawn to a method for computing an 'alarm limit.' An 'alarm limit' is simply a number . . . ."); Abele, 684 F.2d at 909, 214 U.S.P.Q. (BNA) at 688 (the "claim presents no more than the calculation of a number and display of the result"); Walter, 618 F.2d at 768, 205 U.S.P.Q. (BNA) at 407 ("if the end-product of a claimed invention is a pure number, as in Benson and Flook, the invention is nonstatutory"). The end-data of the "rasterizer" are a predetermined and claimed mathematic function of the two input numbers. (7)

Alappat admits that each of the circuitry elements of the claimed "rasterizer" is old. He says they are merely "form." Thus, they are only a convenient and basic way of electrically representing the mathematical operations to be performed, that is, converting vector data into matrix or raster data. In Alappat's view, it is the new mathematic operation that is the "substance" of the claimed invention or discovery. Claim 15 as a whole thus claims old circuitry elements in an arrangement defined by a mathematical operation, which only performs the very mathematical operation that defines it. Rather than claiming the mathematics itself, [*1564] which of course Alappat cannot do, Alappat claims the mathematically defined structure. But as a whole, there is no "application" apart from the mathematical operation that is asserted to be the invention or discovery. (8)What is going on here is a charade.

* * * [W]here the claimed structure does not matter and the invention or discovery is only of a "new, useful, and nonobvious" process for solving a mathematical formula, Benson,Flook, Diehr, and years of precedent command that the patent law shall not exalt form over substance, but rather recognize that the substance is outside § 101.

* * *[A]s in Flook, the oscilloscope disclosed in Alappat's specification presents a general technological environment for the claimed "rasterizer," insignificant in relation to it. Claim 15 is not even limited to the environment of an oscilloscope. . . . The claimed rasterizer mathematical function presumably has application in conjunction with any current or future device that prints in an x-y coordinate grid, such as oscilloscopes, computer monitors, televisions, laser printers, mechanical printing devices, etc.

* * *

* * * [A]s the specification and claims indicate, the waveform data converted by the claimed rasterizer are not required to come from a particular machine connected up to the rasterizer, and, as Alappat admits, it does not matter how the data are selected. The sets of waveform numbers converted by the claimed rasterizer could come simply from the mind and hand of a person. The end product of the claimed rasterizer is not [*1565] precisely cured rubber as it was in Diehr but rather different data as a mathematical function of the original data.

Sure the data have some use. Most data have uses, and that is why people spend time calculating data. But just having some use for data does not make the creation of particular data patentable. Like the subject matter in Flook and Benson, and unlike the subject matter in Diehr, Alappat's claimed rasterizer is newly discovered mathematics and not the invention or discovery of a process or product applying it.  

* * *

4.

Finally, a "general purpose computer" issue has been raised as an aside in this case. The parties agree that each of the "means" elements in claim 15 would find an "equivalent" within the meaning of 35 U.S.C. § 112, ¶ 6, in a "general purpose digital computer." Alappat goes so far as to plead emphatically for recognition of equivalency, saying, "Any employable circuit designer could readily design around claims . . . limited" to two ALUs, two barrel shifters, and one ROM. Brief for Alappat at 21.

Yet Alappat also concedes that a claim drawn to "a method which amounted to a mathematical algorithm [without] any disclosed hardware or structure, other than a programmed general purpose computer," is nonstatutory. . . . Alappat's argument is that "bona fide hardware supporting the 'means plus function' recitals" in claim 15 renders the claimed subject matter statutory, but then the claim may cover general purpose digital computers as equivalents through § 112, P 6, even though that subject matter could not be claimed outright.

Alappat cannot have it both ways. If a programmed general purpose digital computer is not statutory subject matter, then a claim cannot be drawn to that subject matter whether outright or by application of equivalents under 35 U.S.C. § 112, ¶ 6. Paragraph 6 of § 112 is not a magical way to expand patent protection into nonstatutory subject matter.

If Alappat's claimed rasterizer represents statutory subject matter, which I do not believe it does, then Alappat's claims must be strictly construed. . . . Thus, assuming for the moment that Alappat's "rasterizer" is statutory subject matter, then determining what circuit elements are equivalent to the various means claimed in the rasterizer must be performed by reference to the claimed apparatus and means and the means of the alleged equivalent. The majority, however, reasons that any "general purpose computer" is "in effect" the claimed invention or discovery because they do the same mathematics, without knowing anything particular about the general purpose computer. To find equivalence based solely on the identity of mathematical function, with absolute disregard for the particular claimed circuitry, therefore, is to concede that Alappat's claimed circuitry is irrelevant and nonstatutory.

Getting back to the music analogy, Alappat is like a composer who claims his song on a compact disc, and then argues that the compact disc is equivalent to a player piano or a music box with the song on a roll or even sheet music because they all represent the same song. The composer is thus clearly asking for (and getting from the majority) a patent for the discovery of a song and a patent covering every physical manifestation of the song.

In any event, even if a programmed general purpose computer is "equivalent" to the rasterizer, it cannot be deemed to be within § 101 by simply reasoning as does the majority that it is a "new machine." Alappat posits that a "programmed digital computer becomes a special purpose digital computer to perform the function specified by the software. The special purpose computer can be implemented likewise by digital components, or even by analog components." The majority casually agrees that a "general purpose computer in effect becomes a special purpose computer once it is programmed to perform particular functions from program software." (9)

One cannot, however, just call a programmed computer a "new machine" without going through the § 101 analysis required by the trilogy of Supreme Court decisions. Whether or not subject matter is a "new machine" within § 101 is precisely the same question as whether or not the subject matter satisfies the § 101 analysis I have described. * * *

Thus, a known circuit containing a light bulb, battery, and switch is not a new machine when the switch is opened and closed to recite a new story in Morse code, because the "invention or discovery" is merely a new story, which is nonstatutory subject matter.[*1567] An old stereo playing a new song on a compact disc is not a new machine because the invention or discovery is merely a new song, which is nonstatutory subject matter. The "perforated rolls [of a player piano] are parts of a machine which, when duly applied and properly operated in connection with the mechanism to which they are adapted, produce musical tones in harmonious combination." White-Smith Music Publishing Co. v. Apollo Co., 209 U.S. 1, 18, 52 L.Ed. 655, 28 S.Ct. 319 (1908). Yet a player piano playing Chopin's scales does not become a "new machine" when it spins a roll to play Brahms' lullaby. The distinction between the piano before and after different rolls are inserted resides not in the piano's changing quality as a "machine" but only in the changing melodies being played by the one machine. The only invention by the creator of a roll that is new because of its music is the new music. Because the patent law does not examine musical compositions to determine their relation to those that have gone before, the distinction between new and old music can never qualify for patent protection. (10)


* * *

Finally, a claim formally to a general purpose computer running a certain program cannot be deemed to satisfy § 101 simply because the computer is a physical, tangible device. As the invalidated claims in Flook and Benson demonstrate, and consistent with my earlier discussion, a computer program for use in a physical electronic thing called a computer may nevertheless be held to be nonstatutory subject matter. It is illogical to say that although a claim to a newly discovered mathematical operation to be performed by a computer is merely a nonstatutory discovery of mathematics, a claim to any computer performing that same mathematics is a statutory invention or discovery. Our precedent has rejected reasoning that way. * * *

CONCLUSION

* * *

The majority's holding is dangerous in the following way. First, it reasons that one can obtain a patent for a discovery in mathematics as long as some structure is formally recited on the face of the claim. Under this aspect of the holding, many of the requirements for patentability other than "newness," such as nonobviousness, make no sense and cannot be meaningfully applied. Thus, mathematical patents will be easier to obtain than other patents. Moreover, the patent law will now engage in the charade wherein claims directed to a particular method of calculating numbers (for use in a computer) are unpatentable, but claims directed to a computer (performing a particular method of calculating numbers) are patentable. (11)

Second, the majority accepts the argument that all digital electronic circuitry is statutory subject matter when it performs a mathematical operation, and it is all equivalent when the particular mathematical operation is the same. Under this aspect, the mathematical patents will create an enormous scope of technological exclusivity. The lack of meaningful examination and the breadth of exclusive rights conferred by patents for discoveries of bare mathematical operations are repugnant to Congress's careful statutory scheme for the promotion of the useful arts.

* * *


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Footnotes

1. [Judge Archer's footnote 13] It is erroneous therefore to characterize, as the majority does, nonstatutory subject matter such as a mathematical algorithm as an "exception" to § 101. Defining patentable subject matter is the raison d'etre of § 101.


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2. [Judge Archer's footnote 14] See Graham, 383 U.S. at 9, 148 U.S.P.Q. (BNA) at 464 (nonobviousness "draws a line between the things which are worth to the public the embarrassment of an exclusive patent, and those which are not") (quoting Thomas Jefferson).

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3. [Judge Archer's footnote 15] Similarly, the copyright law prohibits exclusive appropriation of "ideas," but provides for rights in the idea's "expression." 17 U.S.C. § 102(a), (b). Although our sister circuits find the task of distinguishing between idea and expression difficult and somewhat imprecise, . . . they nevertheless continue to make those important distinctions. . . .

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4. [Judge Archer's footnote 16] It is unnecessary to discuss what is or is not a "mathematical algorithm," as opposed to being a mathematical "relationship," "formula," "operation," "function," "principle," "theory," or the like. The Supreme Court did not arrive at its holdings in Benson, Flook, and Diehr, discussed infra, by creating a new rule about "algorithms" and finding in two cases algorithms and in the other no algorithm. Rather, the holdings are expressly based upon the axioms that abstract ideas, principles, and laws of nature are not patentable subject matter, but that their useful applications may be. Mathematic operations, like ideas and laws of nature, are not useful applications and therefore not statutory subject matter. The hypertechnical distinction between calling something a mathematical "algorithm" versus another mathematic noun is without legal distinction.

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5. [Judge Archer's footnote 18] Consider in Benson the subject matter that would have been examined if it had passed muster under § 101. When is a method for converting numbers to numbers nonobvious, and how is such a method reduced to practice as opposed to being conceived?

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6. [Judge Archer's footnote 19] Consider that in Diehr, the subject matter to be examined would be a precision rubber curing process. Examination would not merely be of the particular mathematical formula.

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7. [Judge Archer's footnote 24] The preamble calls the data "anti-aliased pixel illumination intensity data." Of course, no matter how many adjectives the claim uses to describe data, data are still data--i.e., pure numbers.

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8. [Judge Archer's footnote 25] This is very different from the example given in Flook of a directional antenna system in which the wire arrangement is defined by the logical application of a mathematical formula, but the effect of the arrangement is an improved antenna that achieves "the greatest directional radio activity." See Mackay Radio & Tel. Co. v. Radio Corp. of Am., 306 U.S. 86, 94, 59 S.Ct. 427, 202, 83 L.Ed. 506,40 U.S.P.Q. (BNA) 199 (1939) (expressly assuming without deciding that such arrangement could be patentable subject matter).

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9. [Judge Archer's footnote 28] The Freeman case cited by the majority did not hold that a general purpose computer when programmed becomes a special purpose computer and a "new machine" within § 101. Although the Noll and Prater cases did so state, they predated Parker v. Flook and their vitality on this point is as questionable as the proposition for which the majority cites them.  See 1 D. Chisum, Patents § 1.03[6], at 102 (1993); P. Samuelson, Benson Revisited: The Case Against Patent Protection for Algorithms and Other Computer Program-Related Inventions, 39 Emory L. J. 1025, 1045 n.62, 1048 n.70 (1990) (arguing that much of the reasoning supporting patentability in the early cases has been impliedly overruled).

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10. [Judge Archer's footnote 29] Of course, a player piano itself could be a new machine, for example in relation to a music box, and, likewise, a player piano capable because of design of improved piano-playing might also be a new machine. In such cases, the invention or discovery is the quality of the structure of the piano--its mode of operation-and not the particular piece of music being played.

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11. [Judge Archer's footnote 30] Mercifully, the majority leaves open the possibility that a claim reciting structure on its face can still be rejected under § 101. The majority says that this will happen where the claim reciting structure on its face is merely a "guise" for a claim to a mathematical process. Although the majority finds that Alappat's claim to a rasterizer is clearly not a "guise" for a discovery of a mathematical process, the majority does not describe in detail how one distinguishes in general a "true" apparatus claim from an apparatus claim in "guise." Presumably, the way this is done is to determine what is the invention or discovery for which the patent applicant seeks an award of patent, and then to determine whether that discovery is the kind the statute was enacted to protect, as this dissenting opinion does.

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