WPCN,IH WP_TV99281997WPTVWPC2WPTVWPC2N 0 F6iiTp4Normal,NM  E1` ` " hp x (#%'XE      E1` ` " hp x (#%'XE    0r N<3:endnote refe        R 09D (#$  0  R 09D (#$  0  X 0J H($  0  X 0J ($  0  R 0D (#$  0  R 0D (#$  0  X 0J d($  0  X 0J ($  0  R 0D (#$  0  R 0D <(#$  0  X 0J ($  0  X 0J ($  0  :U,<  9p`(GenevaX 0J@2 0Indent123  b 0T2" 0Indent20 23  l 0^2, 0Indent30 0 23  v 0h<26 0Indent40 0 0 23  0r2@ 0Indent50 0 0 0 23  0|2J 0Indent60 0 0 0 0 23  02T 0Indent70 0 0 0 0 0 23  02^ 0Indent80 0 0 0 0 0 0 23  1u ?AGMSYaioIndent0I.A.1.a.(1)(a)i)a) %X| 0n#PW>8Mac DefaultMac Default ` X` XDU6<  9p`(Courier New 0(,$ ` XXDXXXXrXXXD $ 01rLyV6Mac NormalMac Normal(#(#     ` XXXDXXXXrXXXD(#(#     ` XXXDXXXXrXXXD, 00.xx0p,Inset) XDXXXXrXXXD) XDXXXXrXXXDR 0D(p$!! 0=(w2q|$ W> ` XX  #XDXXX#XDXX#XDr 0d(Wf|$ @*  A LU><@9Z &Courier Regular 0N+0VVL3.Header#XXX   X#XXX   XNw@ vDwExEyz{|}~DE"4G@heo h %NVA3|xf^LU><  9p`(&Times New RomanP 1 2 3 4 5W AI~C << Gq cJWIE:\FINAL.WP5IN\MACROS\NEW.MACEEEEEEEEE E E E E EEEEEEELEGAL[ANALYSIS[TO[SUPPORT[PROPOSED[EE$ EXAMINATION[" GUIDELINES[tR$Hl DhRP U{WP}13   U{WP}14   M{WP}13   M{WP}14   U{WP}13   U{WP}14   M{WP}13   M{WP}14   U{WP}13   U{WP}14   RY!`(g/n6u=|DK{WP}20w mH Courier{WP}23malHH  $   Courier|nH  Courierh{WP}220u{WP}10{WP}01=$Courier   HH  2$HH  Geneva  <Px443!#4$*$$*$ KK  Geneva  Geneva .,6 Geneva   em:De Geneva  em:De Geneva WordPerfect{WP}14O&  &ܪ$$Ы  1  }tp{WP}138&  &  7 1  7:Hl""$$&  &:ܪHHlH   $$  ͫ HHlH Courier84@3.1)3.1, 1989, 1994 WordPerfect Corporation(@3.1Created with WordPerfect 3.1. ."dNxHHL XG(HH(d ` PIH ,>PSetJPJobVwp60,bStyl~versSTR TStlWDat PtPt ( B   r  *   2   :   0   b  `   (   G  L t  ! " # 3$ % q& - C N "} 6~  ^ a .r  A w @<e`% 2\a, Xi 3 T!D: 5P0A L`H H qO "8D mV #@] $Y{$:Ы  -/8D.0DPI.$Introduction [Guidelines  I.A.] l 1/1P\02\hII.$Determine What Applicant Has Invented and Is Seeking toPatent [Guidelines  I.B.1.] l 114h$25&  &$$A.>Identify and Understand the Practical Utility #36#$Asserted for the Invention [Guidelines I.B.1.(a)]  247$58&  &$$B.>Review the Detailed Disclosure and Specific /69&  &/$Embodiments of the Invention to Determine What the 7:$Applicant Has Invented [Guidelines I.B.1(a)]8 28;9<$C.>Analyze the Claims [Guidelines I.B.1.(b)] F 3:=$;>&  &$III.$Assess Claimed Invention for Compliance with #<?l#$35 U.S.C. 101 [Guidelines I.B.1.(c)] u 4=@>A$A.>Determine Whether The Invention is "Useful" M 5?B(@C(4$1.YNonStatutory Subject Matter [GuidelinesI.B.1.(c)(i) & (ii)]  6AE4LBFLX$(a){"Data Structures" Per Se or Computer #CGXd#$"Programs Per Se  7DHdpEIp|$(b){NonFunctional Information y 8FJ|GK$(c){Natural Phenomena Such as Electricity andMagnetism  8HMIN$2.YStatutory Subject Matter  8JOKP$(a) Statutory Products  8LQMR$"(i)Product ClaimsClaims Directed #NS#$"&to Machines and Manufactures E 9OTPU $"(ii)Claims that Encompass Any Machine orManufacture Embodiment of a Process  9$QW $&  &$0RX$0$&  &0$(b){Statutory Processes [Guidelines͠I.B.1.(c)(iii)]  12SZ0HT[HT$"(i)Appropriate Subject Matter for #U\T`#$"&Manipulation Steps of a Process 7 12V]`lW^lx$"(ii)Transformation or Reduction to #X_x#$"&a Different State or Thing Z 12JY` X3` HJܿZa[b$"(iii)Examples of Statutory #\c#$"&ComputerImplemented Processes > 13]d^e$3. NonStatutory Processes  13_f`g$(a){Mathematical Algorithm That Defines a Law ofNature or Natural Phenomenon or Describes anAbstract Idea  13ajbk$$(b){Evaluation of Certain Language Related toMathematical Operation Steps of a Process  14cm$<dn<H$"(i)Intended Use or Field of Use Statement  14eoHT$fpT`&  &$$"(ii)Necessary Antecedent Step to Performance ;gq`l`&  &;$"&of A Mathematical Operation or 0hrlxl&  &0$"&Independent Limitation on 0isxx&  &0$"&a Claimed Process  14jtku$"(iii)PostMathematical Operation Step UsesSolution or Merely Conveys Result ofOperation  16lxmy$(c){Manipulation of Abstract Ideas Without APractical Application  17n{o|IV.$Issues Related to Compliance with Section 112, First andSecond Paragraphs [Guidelines I.B.2.] l| 17p~q$A.>Specification Fails to Show How to Make or  /r &  &/$ Use Programmed Computer Element of !0s , &  &0$!Invention [Guidelines  I.B.2.(b)]  18$t,8&  &$u8D$B.>Programmed Computer Is Defined As Composite #vDP#$of Functional Elements  19wP\$x\h&  &$$C.>Elements of a Machine Defined Using Means Plus $#yht#$$Function Language [Guidelines  I.B.2.(a) & (b)] # 19zt"{$D.>Claim Does Not Define Applicants Invention %/|&  &/$%[Guidelines I.B.2.(a)]  200}&  &0~$E.>Claim Defined Using Only Computer Program Code [Guidelines  I.B.2.(a)]  21V.$Issues Related to Compliance with 103 #l#$[Guidelines I.B.3.]  21$&  &$VI.$Conclusion lG 22bX X3 H&  &b"Ϊ&:$>Y{$$:&ͫ&ͧ&&V   H&  &V&ͪ  t It:{WP}10۪{WP}21۫t It:{WP}10۪{WP}21۫I$>Y{$$W$IЫ  Legal Analysis to Support Proposed Examination Guidelines 0 &  &0ofor ComputerImplemented Inventions0 , &  &0F,8Hm""$$&  &Fܪ{{WP}20 HHmH!$W$! Courier۫I.Introduction [Guidelines  I.A.]78D8$ $$&  &7IDP mH""&  &I{*!$W$!mHHH {WP}23HHHH  +$W$$+   Courier$The Office has developed Proposed Examination Guidelines forP<&  &ComputerImplemented Inventions$**$Ҭ{WP}13  1   $ &  &{WP}10  <<KK Courier  1  See Request for Comments on Proposed Examination Guidelines&  &for ComputerImplemented Inventions, 60 Fed. Reg. 28,778 (June 2, &  &1995).$֭ and this legal analysis\H&  &(collectively, the  guidelines) to assist Office personnel in theexamination of applications drawn to computerimplementedinventions. The guidelines are based on the Offices currentunderstanding of the law, and represent the official policy of thePatent and Trademark Office. Office personnel are to rely onthese guidelines in the event of any inconsistent treatment ofissues between these guidelines and any earlier provided guidancefrom the Office. P$The guidelines alter the procedures Office personnel shallemploy to examine applications drawn to computerimplementedinventions. The guidelines also clarify the Offices position oncertain patentability standards related to this field oftechnology. The positions set forth in these guidelines arebelieved to be fully consistent with the binding precedent of the(HH""(Supreme Court, and the Federal Circuit and its predecessor courts. ,+$$W$+  HHHH  (H(4HH""&  &H{WP}23HHHH +$W$$+   Courier$The FreemanWalterAbele{WP}13  2   =0 &  &{WP}10  <<KK Courier  2  In re Freeman, 573 F.2d 1237, 1245, 197 USPQ 464, 471 (CCPA&  &1978); In re Walter, 618 F.2d 758, 767, 205 USPQ 397, 40607 (CCPA &  &1980); In re Abele, 684 F.2d 902, 90507, 214 USPQ 682, 68587&  &(CCPA 1982).0=֭ test, while of limited value, may4 &  &still be relied upon in analyzing claims directed solely to aprocess for solving a mathematical algorithm. "Business methods"are to be analyzed the same way as any other process.4ddp$The appendix includes the proposed guidelines and a graphicoverview of how Office personnel will conduct an examination todetermine statutory subject matter.<pHH""<5+$$W$+ HHHH5$W$$$5FHm""$$&  &Fܪ{{WP}20 HHmH$$ Courier۫II.Determine What Applicant Has Invented and Is Seeking to Patent _Toc335817601&  &[Guidelines  I.B.1.] $$I mH""&  &I{""" $$&  &7I?"" mH""&  &Iܪ{emHHH {WP}23HHHH $   Courier۫$To be statutory, the claimed process when practiced must"&  &physically transform the subject matter manipulatedsomething"&  &must happen other than manipulating concepts or converting numbersto different numbers. The required transformation can take placeduring any step of the process (e.g., if a process requires three"acts" and only the last "act" transforms the subject matter to adifferent state or thing, a sufficient transformation hasoccurred). If the process does not result in any physicaltransformation, it is not statutory.$@ "#1&  &$A#1#=#1X #1X3 #= HHm""$$&  &ܪg^$ HHHH{{WP}20 HHmH Courier۫(iii)Examples of Statutory ComputerImplemented Processes _Toc335817644׿7B#M#Y#M $$&  &7IC#Y#e mH""&  &Iܪ{kmHHH {WP}23HHHH $   Courier۫$Three exemplary computerperformed processes that fully#e&  &satisfy the requirements of  101:D#e#}NE#}#Hn""$$&  &NmP$ HHHHInsetHHnH  CourierۖA process that requires physical acts to be performed#<&  &independent of the steps to be performed by a programmedcomputer, where those acts involve the manipulation oftangible physical objects and result in the object having a&  &different physical attributes or structure;{WP}13  30   C  &  &{WP}10  <<KK Courier  30  Diamond v. Diehr, 450 U.S. at 187, 209 USPQ at 8.0 &  &0C֭7F###l $$&  &7+G## $$&  &+ܖA process that requires acts to be performed on the physical#&  &components of a computer (i.e., the process manipulates thecomponents of the computer rather than data representingsomething external to the computer system) and the effect of&  &the process is that the computer operates differently (such$&  &as an operating system process); andH#$ $$GI$$% nn""$$&  &Gܪo@ nHHHInsetHHnH  Courier۫A process that requires acts to be performed by a computer on$%&  &data in the form of an electrical or magnetic signal, wherethe data represents a physical object or activities externalto the computer system (e.g., physical characteristics of achemical compound or a persons heart rate), and where theprocess causes some transformation of the physical but&  &intangible representation of the physical object or$m &  &activities.{WP}13  31   G  &  &{WP}10  <<KK Courier  31  Arrythmia, 958 F.2d at 105859, 22 USPQ2d at 103738.0 &  &0G֭7J$%$$y, $$&  &7IK$$ nH""&  &Iu^ nHHHHeaderHHlH  $   Courier3.NonStatutory Processes _Toc335817657z:$  lHHH0L$$$D&  &0M$$In practical terms, claims define nonstatutory processes if they:N$$FO$$Hn""$$&  &FInsetHHnH  Courierۖconsist solely of mathematical operations (i.e., a$t&  & mathematical algorithm); orP$$ $$Q$$ $$ܖsimply manipulate abstract ideas without some practicalapplication (e.g., a bid, a bubble hierarchy).R$$ $$GS$%  nm""$$&  &Gܪ| nHHH{{WP}20 HHmH Courier۫(a)Mathematical Algorithm That Defines a Law of Nature or% &  &Natural Phenomenon _Toc335817659 or Describes an Abstract Idea T% %! $$IU%!%- mH""&  &Iܪ{.mHHH {WP}23HHHH $   Courier۫$A process that consists solely of mathematical operations is%-&  &nonstatutory. Mathematical algorithms do not manipulate physicalmatter and cannot cause a physical effect. Courts have, however,recognized a distinction between types of mathematical algorithms,&  &namely, some define a  law of nature in mathematical terms and%]&  &others merely describe an  abstract idea.{WP}13  32    ! &  &{WP}10  <<KK Courier  32  See, e.g., In re Meyer,  688 F.2d 789, 79495, 215 USPQ 193, &  &197 (CCPA 1982) ( Scientific principles, such as the relationshipbetween mass and energy, and laws of nature, such as the&  &acceleration of gravity, namely, a=32 ft./sec. 2 , can be represented$$&  &in mathematical format. However, some mathematical algorithms andformulae do not represent scientific principles or laws of nature;they represent ideas or mental processes and are simply logicalvehicles for communicating possible solutions to complex problems. The presence of a mathematical algorithm or formula in a claim ismerely an indication that a scientific principle, law of nature,idea or mental process may be the subject matter claimed and,thus, justify a rejection of that claim under 35 USC 101; but thepresence of a mathematical algorithm or formula is only a signpost&  &for further analysis.). Cf. In re Alappat, 33 F.3d at 1543 n.19,&  &31 USPQ2d at 1556 n.19 in which the Federal Circuit recognized theconfusion:$$The Supreme Court has not been clear . . . as to whethersuch subject matter is excluded from the scope of 101because it represents laws of nature, natural phenomena,&  &or abstract ideas. See Diehr, 450 U.S. at 186 (viewed&  &mathematical algorithm as a law of nature); Benson, 409&  &U.S. at 7172 (treated mathematical algorithm as an"idea"). The Supreme Court also has not been clear as toexactly what kind of mathematical subject matter may notbe patented. The Supreme Court has used, among others,the terms "mathematical algorithm," "mathematicalformula," and "mathematical equation" to describe typesof mathematical subject matter not entitled to patentprotection standing alone. The Supreme Court has not setforth, however, any consistent or clear explanation ofwhat it intended by such terms or how these terms arerelated, if at all.#!# ֭ 0V%-%u%i&  &0W%u%$Certain mathematical algorithms have been held nonstatutorybecause they represent a mathematical definition of a law of&  &nature or a natural phenomenon. For example, the formulaE=mc 2 is a%L&  &"law of nature"it defines a "fundamental scientific truth"6 %X3 % H6(i.e., the relationship between energy and mass). To comprehendhow the law of nature relates to any object, one invariably has to&  &perform certain steps (e.g., multiplying a number representing themass of an object by the square of a number representing the speedof light). If an applicant defines a process to consist solely ofthose steps that one must follow to solve the mathematicalrepresentation of the law of nature, the  process isindistinguishable from the law of nature and would "preempt" thelaw of nature. A patent cannot be granted on such a process.X %&-Y&-&9$Other mathematical algorithms have been held nonstatutorybecause they merely describe an abstract idea. An  abstract idea&  &may simply be any sequence of mathematical operations that are&Q&  &combined to solve a mathematical problem. The concern addressedby holding such subject matter nonstatutory is that themathematical operations merely describe an idea and do not definea process that represents a practical application of the idea.$Z&9&&  &$0[&&&&  &0$Accordingly, when a claim is found to define nonstatutory&&  &subject matter because of a mathematical algorithm, it isimportant to determine whether the subject matter is a law ofnature or natural phenomenon or abstract idea. A rejection under 101 should indicate the type of deficiency relied upon tosupport the rejection.\&&N]&&Hm""$$&  &Nܪ$ HHHH{{WP}20 HHmH Courier۫(b)Evaluation of Certain Language Related to Mathematical&,&  &Operation Steps of a Process _Toc335817615I^&' mH""&  &ImHnH{.nHHH HeaderHHlH  $   Courier$  lHHHR_'''DHm""$$&  &Rܪ{{WP}20 HHmH Courier۫(i)Intended Use or Field of Use Statements _Toc3358176147`'''P $$&  &7Ia'') mH""&  &Iܪ{mHHH {WP}23HHHH $   Courier۫$Claim language that simply specifies an intended use or field')h&  &of use for the invention generally will not limit the scope of aclaim. Such language often will be presented in the preamble ofclaim, but may appear elsewhere in the body of the claim. Intended or field of use language appearing in the preamble willin most instances not limit the claim scope, and as such, Officepersonnel should be careful to properly interpret such language. For example, a claimed mathematical process  to be used in seismicprospecting... is not limited by the seismic prospecting usestatement (i.e., none of the steps were explicitly or implicitly&  &limited to application to seismic prospecting activities). ì{WP}13  33   !H &  &{WP}10  <<KK Courier  33  In re Walter, 618 F.2d at 769, 205 USPQ at 409 ( Although the&  &claim preambles relate the claimed invention to the art of seismicprospecting, the claims themselves are not drawn to methods of orapparatus for seismic prospecting; they are drawn to improved mathematical methods for interpreting the results of seismicprospecting.).H֭ In'&  &such a case, Office personnel should identify the claim languagethat constitutes the intended use or field of use statements andprovide the basis for their findings. This will shift the burdento applicant to demonstrate otherwise.$b')'&  &$Zc'''Hm""$$&  &Zܪ9$ HHHH{{WP}20 HHmH Courier۫hd'''( '(/' H$$&  &he(( $$+e(( $$&  &+(ii) Necessary Antecedent Step to Performance of A MathematicalOperation or Independent Limitation on a Claimed Process _Toc3358176161e(( mn$$1mHnHIf(() nH""&  &Iܪ{nHHH {WP}23HHHH $   Courier۫$In rare situations, certain acts of  collecting or()$&  & selecting data for use in a process consisting of one or moremathematical operations will not further limit a claim beyond thespecified mathematical operation step(s). Such acts  merelydetermine values for the variables used in the mathematical&  &operations used in making the calculations. ì{WP}13  34   "T &  &{WP}10  <<KK Courier  34  In re Richman, 563 F.2d 1026, 1030, 195 USPQ 340, 343 (CCPA&  &1977) ( In the present case too, notwithstanding that theantecedent steps are novel and unobvious, they merely determinevalues for the variables used in the mathematical formulae used inmaking the calculations. Thus, such antecedent steps do notsuffice to render the claimed methods, considered as a whole,statutory subject matter.). T֭ In other words, the(e`&  &acts are dictated by nothing other than the performance of a&  &mathematical operation. ì{WP}13  35   # &  &{WP}10  <<KK Courier  35  In In re Sarkar, 588 F.2d 1330, 1335, 200 USPQ 132, 139 (CCPA&  &1978), the court explained why this approach must be followed: $$$No mathematical equation can be used, as a practicalmatter, without establishing and substituting values forthe variables expressed therein. Substitution of valuesdictated by the formula has thus been viewed as a formof mathematical step. If the steps of gathering andsubstituting values were alone sufficient, every mathematical equation, formula, or algorithm havingany practical use would be per se subject to patentingas a "process" under  101. Consideration of whetherthe substitution of specific values is enough to convertthe disembodied ideas present in the formula into anembodiment of those ideas, or into an application of theformula, is foreclosed by the current state of the law./ $&  &/֭ 0g()((}x&  &0$h((&  &$$If a claim requires acts to be performed to create data that(&  &will then be used in a process representing a practical(&  &application of one or more mathematical operations, those acts(&  &must be treated as further limiting the claim beyond the(&  &mathematical operation(s) per se. Such acts are data gatheringsteps not dictated by the algorithm but by other limitations whichrequire certain antecedent steps and as such constitute anindependent limitation on the claim.i$((j%()$Examples of acts that independently limit a claimed processinvolving mathematical operations include:k'))Nl())%Hn""$$&  &N$ HHHHInsetHHnH  Courierۖa method of conducting seismic exploration which requires)% &  &generating and manipulating signals from seismic energy waves)1,&  &before  summing the values represented by the signals; ì{WP}13  36   X$ &  &{WP}10  <<KK Courier  36  In re Taner, 681 F.2d 787, 788, 214 USPQ 678, 679 (CCPA&  &1982).X֭ and7m+)%)I)=8 $$&  &7n,)I)U $$ܖa method of displaying Xray attenuation data as a signedgray scale signal in a  field using a particular anti  aliasing algorithm, where the antecedent steps requiregenerating the data using a particular machine (e.g., a&  &computed tomography scanner). ì{WP}13  37   %H &  &{WP}10  <<KK Courier  37  In re Abele, 684 F.2d at 908, 214 USPQ at 687 ( The&  &specification indicates that such attenuation data is availableonly when an Xray beam is produced by a CAT scanner, passedthrough an object, and detected upon its exit. Only after thesesteps have been completed is the algorithm performed, and theresultant modified data displayed in the required format.). H֭ Mo1)U)) nH""&  &ML nHHHp2))Examples of steps that do not independently limit one or moremathematical operation steps include:q4))Fr5))Hn""$$&  &FInsetHHnH  Courierۖ perturbing the values of a set of process inputs, where the)&  &subject matter  perturbed was a number and the act of perturbing consists of substituting the numerical values of&  &variables; ì{WP}13  38   w&l &  &{WP}10  <<KK Courier  38  In re Gelnovatch, 595 F.2d 32, 41 n.7, 201 USPQ 136, 145 n.7&  &(CCPA 1979) ( Appellants' claimed step of perturbing the values ofa set of process inputs (step 3), in addition to being amathematical operation, appears to be a datagathering step of thetype we have held insufficient to change a nonstatutory method ofcalculation into a statutory process. . . . In this instance, theperturbed process inputs are not even measured values of physicalphenomena, but are instead derived by numerically changing thevalues in the previous set of process inputs.). lw֭ and7s9))) $$&  &7+t:)) $$&  &+ܖselecting a set of  arbitrary measurement point values. ì{WP}13  39   C'  &  &{WP}10  <<KK Courier  39  In re Sarkar, 588 F.2d at 1331, 200 USPQ at 135.0 &  &0C֭ Mu;)* ) nH""&  &M` nHHHv<* *Such steps do not impose independent limitations on the scope ofthe claim beyond those required by the mathematical operationlimitation. $w?**9&  &$0x@*9*E*94&  &0RyA*E*Q*E@Hm""$$&  &Rܪ{{WP}20 HHmH Courierͫ7zB*Q*]*QL $$&  &7P{C*]*i *]X4C*i H$$P|D*y* $$|D*y* $$(iii)PostMathematical Operation Step  _Toc335817617Uses Solution or MerelyConveys Result of Operation|E*y* $$I}F** mH""&  &Iܪ{mHHH {WP}23HHHH $   Courier۫$In rare instances, certain kinds of postsolution  acts will*$&  &not further limit a process claim beyond the performance of thepreceding mathematical operation step even if the acts are recitedin the body of a claim. If, however, the claimed acts represent&  &some use of the solution, those acts will invariably impose an*T&  &independent limitation on the claim. Thus, if a claim requiresthat the direct result of a mathematical operation be evaluatedand transformed into something else, Office personnel cannot treat&  &the subsequent steps as being indistinguishable from the*&  &performance of the mathematical operation and thus not further&  &limiting on the claim.  For example, acts that require the+&  &conversion of a series of numbers representing values of awavefunction equation for a chemical compound into valuesrepresenting an image that conveys information about the threedimensional structure of the compound cannot be treated as beingpart of the mathematical operations that yield the wavefunctionnumbers. Office personnel should be especially careful whenreviewing claim language that requires the performance of  post  solution steps to ensure that actual claim limitations are notignored. ~Z*+[++$Examples of steps found not to independently limit a process \++involving one or more mathematical operation steps include:]++N^++Hn""$$&  &N̿$ HHHHInsetHHnH  Courierۖstep of  updating an alarm limit found to constitute+D&  &changing the number value of a variable to represent the&  &result of the calculation; ì{WP}13  40   P(  &  &{WP}10  <<KK Courier  40  Parker v. Flook, 437 U.S. 584, 585, 198 USPQ 193, 195 (1978).0 &  &0P֭ 7a+++\ $$&  &7+b++ $$&  &+ܖfinal step of  magnetically recording the result of a+t&  &calculation; ì{WP}13  41    )0 &  &{WP}10  <<KK Courier  41  In re Walter, 618 F.2d at 770, 205 USPQ at 409 ("If  101&  &could be satisfied by the mere recordation of the results of anonstatutory process on some record medium, even the mostunskilled patent draftsman could provide for such a step.").0֭ 7d+,+ $$&  &7+e,, $$&  &+Öfinal step of  equating the process outputs to the values of,&  &the last set of process inputs found to constitute storing&  &the result of calculations; ì{WP}13  42   M *  &  &{WP}10  <<KK Courier  42  In re Gelnovatch, 595 F.2d at 41 n.7, 201 USPQ at 145 n.7.0 &  &0M֭ 7h,,5,) $$&  &7i,5,A $$ܖfinal step of displaying result of a calculation as a shadeof gray rather than as simply a number found to notconstitute distinct step where the data were numerical values&  &that did not represent anything;  {WP}13  43    +x &  &{WP}10  <<KK Courier  43  In re Abele, 684 F.2d at 909, 214 USPQ at 688 ( This claim&  &presents no more than the calculation of a number and display ofthe result, albeit in a particular format. The specificationprovides no greater meaning to "data in a field" than a matrix ofnumbers regardless of by what method generated. Thus, thealgorithm is neither explicitly nor implicitly applied to anycertain process. Moreover, that the result is displayed as ashade of gray rather than as simply a number provides no greateror better information, considering the broad range of applicationsencompassed by the claim.). x֭ and7m,A,q,e $$&  &7n,q,} $$ܖstep of  transmitting electrical signals representing the&  &result of calculations. ì{WP}13  44   2 ,` &  &{WP}10  <<KK Courier  44  In re de Castelet, 562 F.2d 1236, 1244, 195 USPQ 439, 446&  &(CCPA 1967) ( That the computer is instructed to transmitelectrical signals, representing the results of its calculations,does not constitute the type of "post solution activity" found inFlook, supra, and does not transform the claim into one for a&  &process merely using an algorithm. The final transmitting step<<&  &constitutes nothing more than reading out the result of thecalculations.). `2֭ Mp,},, nH""&  &M nHHHq,,Office personnel are reminded to rely on the applicantscharacterization of the significance of the  acts being assessedto resolve questions related to their relationship to themathematical operations recited in the claim and the invention as&  &a whole. ì{WP}13  45   L -< &  &{WP}10  <<KK Courier  45  See In re Sarkar, 588 F.2d at 1332 n.6, 200 USPQ at 136 n.6&  &("postsolution" construction that was being modeled by themathematical process not considered in deciding  101 questionbecause applicant indicated that such construction was not amaterial element of the invention). <L֭ v,,,X ,X3v, HHm""$$&  & Fw,,Hm""$$&  &F ͪ{{WP}20 HHmH Courier۫(c)Manipulation of Abstract Ideas Without A Practical,&  &ApplicationAx,- mH""&  &Aܪ{mHHH ۫Ty---HH""&  &Tܪ{WP}23HHHH $   Courier۫$A process that consists solely of the manipulation of an-$&  &abstract idea without any limitation to a practical application is&  &nonstatutory.{WP}13  46   Z.< &  &{WP}10  <<KK Courier  46  E.g., In re Warmerdam, 33 F.3d at 1359, 31 USPQ2d at 1759. &  &See also Schrader, 22 F.3d at 295, 30 USPQ2d at 145859 (although &  &the court determined that the subject matter was simply amathematical algorithm, Schrader's process merely manipulated anabstract idea).<Z֭ 0|--5-)<&  &0}-5-A$In order to determine whether the claim is limited to apractical application of an idea, Office personnel must analyzethe claim as a whole, in light of the specification, to understandwhat subject matter is being manipulated and how it is beingmanipulated. During this procedure, Office personnel mustevaluate any statements of intended use or field of use, any data&  &gathering step and any postmanipulation activity. See section-&  &(b) above. -A-N--Hm""$$&  &Nܪ$ HHHH{{WP}20 HHmH Courier۫IV.Issues Related to Compliance with Section 112, First and-&  &Second Paragraphs [Guidelines I.B.2.] _Toc335817626 _Toc335817627A-- mH""&  &Aܪ{mHHH ۫T---HH""&  &Tܪ{WP}23HHHH $   Courier۫$Section 112 serves to ensure that the claims are clearly-&  &defined and are fully supported by the disclosure. Officepersonnel should focus their assessment of applications forcompliance with  112 on determining if the disclosure and claimsclearly convey what the applicant has invented, permit others todetermine what rights have been provided to the patentee, andenable one skilled in the art to the practice the inventionwithout undue experimentation. -.1.1.=$When evaluating applications, Office personnel must alwaysremember to use the perspective of one of ordinary skill in theart. Claims and disclosures are not to be evaluated in a vacuum. If elements of an invention are well known in the art, theapplicant does not have to provide a disclosure that describesthose elements..=...$Similarly, the applicant need not explicitly recite in theclaims every feature of the invention. Rather, if the claims,interpreted in light of the disclosure reasonably apprise those ofordinary skill in the art what the invention is, they satisfy therequirements of 112, second paragraph. For example, if anapplicant indicates that the invention is a particular computer,the claim does not have to recite every element or feature of thecomputer. In fact, it is preferable for the claim to be draftedin a form that emphasizes what the applicant has invented (e.g.,&  &what is new rather than old).{WP}13  47    / &  &{WP}10  <<KK Courier  47  See, e.g., Northern Telecom, Inc. v. Datapoint Corp., 908&  &F.2d 931, 94143, 15 USPQ 2d 1321, 13281330 (Fed. Cir. 1990)(judgment of invalidity reversed for clear error where experttestimony on both sides showed that a programmer of reasonableskill could write a satisfactory program with ordinary effort&  &based on the disclosure); DeGeorge v. Bernier, 768 F.2d 1318,<<&  &1334, 226 USPQ 758, 76263 (Fed. Cir. 1985) (invention wasadequately disclosed for purposes of enablement even though all ofthe circuitry of a word processor was not disclosed, since theundisclosed circuitry was deemed inconsequential because it did&  &not pertain to the claimed circuit); In re Phillips, 608 F.2dxx&  &879, 88283, 203 USPQ 971, 975 (CCPA 1979) (computerized method ofgenerating printed architectural specifications dependent on useof glossary of predefined standard phrases and errorchecking&  &feature enabled by overall disclosure generally defining errors);&  &In re Donohue, 550 F.2d 1269, 1271, 193 USPQ 136, 137 (CCPA 1977)&  &("Employment of block diagrams and descriptions of their functionsis not fatal under 35 U.S.C.  112, first paragraph, providing therepresented structure is conventional and can be determined&  &without undue experimentation."); In re Knowlton, 481 F.2d 1357,&  &136668, USPQ 486, 49394 (CCPA 1973) (examiner's contention thata software invention needed a detailed description of all thecircuitry in the complete hardware system reversed).   ֭0 ./ .&  &0/ /$If deficiencies are discovered with respect to 112, Officepersonnel must be careful to rely on the appropriate paragraph of112. Deficiencies under the second paragraph of 112 exist ifit is unclear what the claim defines (i.e., the claim fails to&  &particularly point out and distinctly claim the invention), ì{WP}13  48   00 &  &{WP}10  <<KK Courier  48  See Miles Labs v. Shandon, Inc., 997 F.2d 870, 875, 27 USPQ2d&  &1123, 1126 (Fed. Cir. 1993) ( test for definiteness is whether oneskilled in the art would understand the bounds of the claim whenread in light of the specification").0֭ orN/EX /EX3/ H&  &Nthe claim as cast does not define what applicant has indicated to&  &be the invention. ì{WP}13  49   10 &  &{WP}10  <<KK Courier  49  In re Prater, 415 F.2d 1393, 1404, 162 USPQ 541, 550 (CCPA&  &1969) (holding that claim did not comply with 35 U.S.C.  112  2because it was admittedly beyond that which "applicant regard[ed]as his invention"). 0֭ Deficiencies under the first paragraph of/m &  &112 can arise where there is not an adequate written descriptionthat serves to identify what the applicant has invented, or thedisclosure does not enable one skilled in the art to make and usethe invention as claimed without undue experimentation. Deficiencies related to disclosure of the best mode for carryingout the claimed invention are not usually encountered duringinitial examination of an application.//N//Hm""$$&  &Nܪ$ HHHH{{WP}20 HHmH Courier۫A.Specification Fails to Show How to Make or Use Programmed/x&  &Computer Element of Invention [Guidelines  I.B.2.(b)]I// mH""&  &Iܪ{mmHHH {WP}23HHHH $   Courier۫0///&  &0$The disclosure must enable a person skilled in the art toconfigure the computer to possess the requisite functionality,and, if relevant, integrate the computer with other elements toyield the claimed invention, without the exercise of undue&  &experimentation. If the specification fails to identify how to0-&  &configure a computer to possess the requisite functionality or how09&  &to integrate the programmed computer with other elements of the0E&  &invention, the claim is likely to be deficient under 112, firstparagraph.  /0i0i0u$For many computerimplemented inventions, it is not unusualfor the claimed invention to involve more than one field oftechnology. For such inventions, the disclosure must satisfy the&  &enablement standard for each aspect of the invention.  {WP}13  50   2x &  &{WP}10  <<KK Courier  50  See In re Naquin, 398 F.2d 86, 866, 158 USPQ 317, 319 (CCPA&  &1968) ( When an invention, in its different aspects, involvesdistinct arts, that specification is adequate which enables theadepts of each art, those who have the best chance of being&  &enabled, to carry out the aspect proper to their specialty.). See00&  &also Ex parte Zechnall, 194 USPQ 461, 461 (Bd. App. 1973)<<&  &("appellants' disclosure must be held sufficient if it wouldenable a person skilled in the electronic computer art, incooperation with a person skilled in the fuel injection art, tomake and use appellants' invention"). x֭ As such,08&  &the disclosure must teach a person skilled in each art how to makeand use the relevant aspect of the invention without undueexperimentation. For example, to enable a claim to a programmedcomputer that determines and displays the threedimensionalstructure of a chemical compound, the disclosure must  0u0N00Hn""$$&  &N,$ HHHHInsetHHnH  Courierۖenable a person skilled in the art of molecular modeling to0&  &understand and practice the underlying molecular modelingprocesses; and01 $$11 $$ܖenable a person skilled in the art of computer programming tocreate a program that directs a computer to create anddisplay the image representing the threedimensionalstructure of the compound. 511M nH""5` nHHH1M1YIn other words, the disclosure corresponding to each aspect of theinvention must be enabling to a person skilled in each respective&  &art.01Y1}1q&  &01}11} 1}.1 HHm""$$&  &x11 11 HHm""$$&  &x̪{{WP}20 HHmH Courier۫B.Programmed Computer Is Defined As Composite of Functional1&  &ElementsI11 mH""&  &Iܪ{#1mHHH {WP}23HHHH $   Courier۫0111&  &0$In many instances, an applicant will describe a programmedcomputer by outlining the significant elements of the programmedcomputer using a functional block diagram. Office personnelshould review the specification to ensure that along with thefunctional block diagram the disclosure provides information thatadequately describes each  element in hardware or software. Ifthe functionally labeled elements of a programmed computer are notdescribed further in the specification and one skilled in the artwould not know what the elements are or how to make or use them toyield the claimed invention, a claim defining an inventionrequiring the use of that programmed computer is likely to bedeficient under one or more requirements of 112.  12MN2M2YHm""$$&  &Nܪ$$ HHHH{{WP}20 HHmH Courier۫C.Elements of a Machine Defined Using Means Plus Function2Y&  &Language _Toc335817621 [Guidelines  I.B.2.(a) & (b)]I2Y2q mH""&  &Iܪ{)mHHH {WP}23HHHH $   Courier۫02q2}2q&  &0$Where means plus function language is used to define thecharacteristics of a machine or manufacture invention, claimelements must be interpreted to read on only the structures or&  &materials disclosed in the specification, and  equivalents2&  &thereof. ì{WP}13  51    C3! &  &{WP}10  <<KK Courier  51  Two in banc decisions of the Federal Circuit have made clear&  &that the Office is to interpret means plus function language&  &according to 35 U.S.C.  112  6. In the first, In re Donaldson,&  &16 F.3d 1189, 1193, 29 USPQ2d 1845, 1848 (Fed.Cir. 1994), thecourt held: <<H$$$The plain and unambiguous meaning of paragraph six isthat one construing meansplusfunction language in aclaim must look to the specification and interpret thatlanguage in light of the corresponding structure,material, or acts described therein, and equivalentsthereof, to the extent that the specification providessuch disclosure. Paragraph six does not state or evensuggest that the PTO is exempt from this mandate, andthere is no legislative history indicating that Congressintended that the PTO should be. Thus, this court mustaccept the plain and precise language of paragraph six.# H#$&  &$$$Consistent with Donaldson, in the second decision, In re&  &Alappat, 33 F.3d at 1540, 31 USPQ2d at 1554, the Federal&  &Circuit held:##$$$Given Alappat's disclosure, it was error for the Boardmajority to interpret each of the means clauses in claim15 so broadly as to "read on any and every means forperforming the function" recited, as it said it wasdoing, and then to conclude that claim 15 is nothingmore than a process claim wherein each means clauserepresents a step in that process. Contrary tosuggestions by the Commissioner, this court's precedentsdo not support the Board's view that the particularapparatus claims at issue in this case may be viewed asnothing more than process claims.# !# C֭ Thus, at the outset Office personnel must attempt to2&  &correlate means elements to some description of the elements inthe written specification and drawings. 2}222$As noted earlier, there are many appropriate ways ofdescribing the elements of a programmed computer. If thedescription makes it clear that a means element corresponds to thephysical structure of a computer or computer component, thatdescription will sufficiently define the claimed means element. Thus, a means element may be defined to be: 23%N3%31Hn""$$&  &N+]$ HHHHInsetHHnH  Courierۖa programmed computer with a particular functionality; 7313=31 $$&  &73=3I $$ܖa logic circuit or other component of a programmed computerthat performs a series of specifically identified operationsdictated by a computer program; or3I3m $$3m3y $$ܖa computer memory encoded with executable instructionsrepresenting a computer program that can cause a computer tofunction in a particular fashion.53y3 nH""5:F nHHHH33HH""&  &Hܪ{WP}23HHHH $   Courier۫$A claim patterned after a functional block diagram and3&  &defined using means plus function language may fail toparticularly point out and distinctly claim the invention if thedisclosure does not describe the specific materials or structuresthat correspond to the means elements. The scope of a  meanselement is defined as the corresponding structure or material(e.g., a specific logic circuit) set forth in the written6 3X3 3 H6description and its equivalents. Where no structure or materialis disclosed, the claim fails to particularly point out and&  &distinctly claim the invention. For example, if the applicantdiscloses only the function to be performed and provides nodescription of hardware or software that performs the function,the application has not disclosed any  structure to correspond tothe means. Such a claim should be rejected under  112, secondparagraph. In contrast, if the corresponding structure isdisclosed to be a memory or logic circuit that has been configuredin some manner to perform that function (e.g., using a computerprogram), the claim satisfies 112, second paragraph. Furtherguidance in interpreting the scope of equivalents of means&  &elements is provided in the Examination Guidelines For Claims4&  &Reciting A Means or Step Plus Function Limitation In Accordance&  &With 35 U.S.C. 112, 6th Paragraph. ì{WP}13  52   '4  &  &{WP}10  <<KK Courier  52  1162 O.G. 59 (May 17, 1994).0 &  &0'֭ 0344&  &0N44Hm""$$&  &Nܪ=$ HHHH{{WP}20 HHmH Courier۫D.Claim Does Not Define Applicants Invention _Toc335817635 [Guidelines 4&  &I.B.2.(a)]A44 mH""&  &Aܪ{GmHHH ۫T444HH""&  &Tܪ{WP}23HHHH $   Courier۫$To satisfy the second paragraph of 112, the claims must4&  &define the invention in a manner consistent with the applicantswritten description of the invention. If the applicant asserts apractical utility for the invention, Office personnel shouldreview the entire disclosure to determine the features necessaryto accomplish the asserted practical utility. When the claimrecites a practical utility but fails to recite the necessaryfeatures to accomplish the asserted practical utility, the claimshould be rejected under  112, second paragraph. If a claim isso broad as to encompass nonstatutory subject matter, the claimshould be rejected under  112  2, as well as  101. Forexample, if applicant has described the invention as a computer  implemented process, but the claim is broad enough to cover themental performance of the process, then it should be rejected&  &under both  112  2 and  101. ì{WP}13  53    5# &  &{WP}10  <<KK Courier  53  For example, in In re Prater, 415 F.2d at 140304, 162 USPQ&  &at 54950, the court considered a claim that was found toencompass both the mental and physical performance of a series ofcalculations (i.e., the claim was not limited to performance of acalculation on a machine). The applicant had argued that the&  &invention was to be practiced using a machine. Id. The court<<&  &found that while the claims defined a statutory process, they were&  &deficient under the second paragraph of 112. Id. The courtTT&  &emphasized that: l lx$$$[W]hen read in the light of the specification, claim 9does read on a mental process augmented by pencil andpaper markings. We find no express limitation in claim9 which, even when interpreted in the light of thespecification, would support the conclusion that theclaim is limited to a "machine process" or "machine  implemented process." This is particularly important inthis case since the board noted that, in their briefbefore the board, appellants acknowledged that "[though]not practical for most of the needed applications, theirmethod, theoretically, can be practiced by hand." . . . Inasmuch as claim 9, thus interpreted, reads on subjectmatter for which appellants do not seek coverage, andtherefore tacitly admit to be beyond that which"applicant regards as his invention," we feel that theclaim fails to comply with 35 USC 112 which requiresthat "[the] specification shall conclude with one ormore claims particularly pointing out and distinctlyclaiming the subject matter which the applicant regardsas his invention." (Emphasis added.) This is truenotwithstanding appellants' disclosure of a machine &  & implemented process. [Id.]; xtt&  &;!The basis of this type of rejection is that the claim, as cast, isincomplete.# ֭ 0,455&  &0-55$A claim as a whole that defines nonstatutory subject matteris deficient under  101, and under  112, second paragraph. /55055$Determining the scope of a claim as a whole requires a clearunderstanding of what the applicant regards as the invention.255If the invention as disclosed in the written description isstatutory, but the claims define subject matter that is not, the&  &deficiency can be corrected by an appropriate claim amendment.{WP}13  54   d6< &  &{WP}10  <<KK Courier  54  If the invention, both as disclosed and as claimed, is not&  &statutory subject matter, reject the claims under  101 for beingdrawn to nonstatutory subject matter, and under  112, secondparagraph, for failing to particularly point out and distinctlyclaim an invention entitled to protection under U.S. patent law.<d֭6&  &Therefore, reject the claims under 101 and 112, secondparagraph, but identify the features of the invention that, ifrecited in the claim, would render the claimed subject matterstatutory. 956A:6A6M$;6M6Y&  &$,<6Y6e6YL 6YL2<6e HHm""$$&  &ܪI$ HHHH{{WP}20 HHmH Courier۫E.Claim Defined Using Only Computer Program Code _Toc335817637 [Guidelines 6u&  &I.B.2.(a)]׿I>6u6 mH""&  &Iܪ{_\mHHH {WP}23HHHH $   Courier۫0?666&  &0$A claim defined entirely in computer program code, whether in6$&  &source or object code format, may be deficient under  112  2 ifone of ordinary skill in the art would not be able to ascertainthe metes and bounds of the claimed invention. Such a claim&  &should also be objected to under 37 CFR 1.52(a).{WP}13  55    70 &  &{WP}10  <<KK Courier  55  See 37 CFR 1.52(a) ( The application, any amendments or&  &corrections thereto, and the oath or declaration must be in theEnglish language except as provided for in 1.69 and paragraph (d)of this section . . . .).0 ֭ A computer6T&  &programming language is not the English language, despite the factthat English words may be used in that language. F66G66$In certain circumstances, as where selfdocumentingprogramming code is employed, use of programming language in aclaim would be permissible, since such program source codepresents sufficiently highlevel language and descriptiveidentifiers to make it universally understood to others in the art&  &without the programmer having to insert any comments.{WP}13  56   F8  &  &{WP}10  <<KK Courier  56  See Computer Dictionary 353 (Microsoft Press 1994).0 &  &0F֭0M67A75&  &0N7A7M$Applicants should be encouraged to functionally define thesteps the computer will perform rather than simply providingsource or object code. Q7M7qNR7q7}Hm""$$&  &Nܪa $ HHHH{{WP}20 HHmH Courier۫V.Issues Related to Compliance with 103 [Guidelines I.B.3.]US7}77} mH""&  &Uܪ{k]mHHH {WP}23HHHH $   Courier۫0T777&  &0$As is the case for inventions in any field of technology,assessment of a claimed computerimplemented invention forcompliance with 103 begins with a comparison of the claimedsubject matter to what is known in the prior art. Oncedistinctions are identified between the claimed invention and theprior art, those distinctions must be assessed and resolved inlight of the knowledge possessed by a person of ordinary skill inthe art. Against this backdrop, one must determine whether theinvention would have been obvious at the time the invention wasmade. If not, the claimed invention satisfies 103. Factors andconsiderations dictated by law governing 103 apply withoutmodification to inventions in this field of technology.  `78%a8%81$If the difference between the prior art and the claimedinvention is limited to information stored on or employed by amachine, one must determine what role the information plays withregard to the invention considered as a whole. Where theinformation imparts some degree of functionality to the claimedinvention taken as a whole, it represents a critical element ofthe invention. As such, the information must be considered andaddressed incident to application of 103. Thus, a rejection ofthe claim as a whole under  103 is inappropriate unless thefunctionality imparted by the information would have been&  &suggested by the prior art. To establish a prima facie case of84&  &obviousness, Office personnel must explain why it would have been8@&  &obvious to a person of ordinary skill in the art, at the time the6 8L2n8 H6invention was made, to impart the functionality of the programmedcomputer with that specific information.p818$q89&  &$$However, where the information imparts no functionality toachieve the specific utility of the invention, it cannot serve torender the claimed invention, considered as a whole, nonobvious.Generally speaking, situations where information imparts nofunctionality will be limited to the following:v99=Nw9=9IHn""$$&  &Nl$ HHHHInsetHHnH  Courierۖa computer readable storage medium that differs from the9Il&  &prior art solely with respect to information encoded on themedium that does not alter its functionality considered as awhole,{9I9y $$|9y9 $$ܖa computer that differs from the prior art solely withrespect to information whose content does not alter how themachine functions (i.e., the information does not reconfigurethe computer), or99 $$99 $$ܖa process that differs from the prior art only with respect&  &to information that does not alter how the process steps are9&  &to be performed to achieve the utility of the invention.599 nH""5w nHHH99Thus, if the prior art suggests storing a song on a disk, merely&  &choosing a particular song to store on the disk would be presumed9 &  &to have been obvious as being well within the level of ordinaryskill in the art at the time the invention was made. Such adifference is simply a rearrangement of nonfunctionalinformation. 9:9F:9:EHm""$$&  &Fܪ{{WP}20 HHmH Courier۫VI.ConclusionM:E:Q:Eh mH""&  &Mܪ{~mHHH ۫T:Q:]:QtHH""&  &Tܪ{WP}23HHHH $   Courier۫$Once Office personnel have concluded an analysis of the:]&  &claimed invention under all the statutory provisions, including:]:u 101, 112, 102 and 103, when composing any Official action, theyshould review all the proposed rejections and their bases toconfirm their correctness. Only then should any rejection beimposed.:u:::J:: :(: HJH::HH""&  &H$ HHHH