Department of Commerce
                          Patent and Trademark Office

                       [Docket No. 9505 31 44 - 5144-01]
                                 RIN 0651-XX02

                       Request for Comments on Proposed
                          Examination Guidelines for
                        Computer-Implemented Inventions

Agency: Patent and Trademark Office, Commerce
Action: Notice and request for public comments.
Summary: The Patent and Trademark Office (PTO) requests comments from any
interested member of the public on proposed internal guidelines to be used
by Office personnel in their review of patent applications on
computer-implemented inventions. Because these guidelines govern internal
practices, they are exempt from notice and comment rulemaking under 5
U.S.C.    553(b)(A).
Dates: Written comments on the proposed guidelines will be accepted by the
PTO until July 31, 1995.
Addresses: Written comments should be addressed to the Commissioner of
Patents and Trademarks, marked to the attention of Jeff Kushan. Comments
submitted by mail should be sent to Commissioner of Patents and
Trademarks, Box 4, Patent and Trademark Office, Washington, D.C. 20231.
Comments may also be submitted by telefax at (703) 305-8885 and by
electronic mail through the Internet to ""
Written comments should include the following information:

- name and affiliation of the individual responding;

- an indication of whether comments offered represent views of the
respondent's organization or are the respondent's personal views; and

- if applicable, information on the respondent's organization, including
the type of organization (e.g., business, trade group, university,
non-profit organization) and general areas of interest.

   Parties presenting written comments who wish to have their comments
included in a publicly accessible electronic database of comments must
provide their comments in machine-readable format. Such submissions may be
provided in the form of an electronic mail message sent through the
Internet, or on a 3.5" floppy disk formatted for use in either a Macintosh
or MS-DOS based computer. Machine-readable submissions must be provided as
unformatted text (e.g., ASCII or plain text).
   All written comments, whether submitted on paper or in machine-readable
form, will be available for public inspection no later than August 18,
1995, in Room 902 of Crystal Park Two, 2121 Crystal Drive, Arlington,
Virginia. In addition, comments provided in machine-readable format will
be available no later than August 18, 1995, through anonymous file
transfer protocol (ftp) via the Internet (address: and
through the World Wide Web (address:

For Further Information Contact: Jeff Kushan by telephone at (703)
305-9300, by fax at (703) 305-8885, by electronic mail at, or by mail marked to his attention addressed to the
Commissioner of Patents and Trademarks, Box 4, Washington, D.C. 20231.

Supplementary Information:

I. Guidelines for Examination of Computer-Implemented Inventions

A. General Considerations

   The following guidelines have been developed to assist Office personnel
in their review of applications drawn to computer-implemented inventions.
These guidelines respond to recent changes in the law that governs the
patentability of computer-implemented inventions, and set forth the
official policy of the Office regarding inventions in this field of
   It is essential that patent applicants obtain a prompt yet complete
examination of their applications. The Office can best achieve this goal
by raising any issue that may affect patentability in the initial action
on the merits. Under the principles of compact prosecution, each claim
should be reviewed for compliance with every statutory requirement of
patentability in the initial review of the application, even if one or
more claims is found to be deficient with respect to one statutory
requirement. Deficiencies should be explained clearly, particularly when
they serve as a basis of a rejection. Where possible, examiners should
indicate how rejections may be overcome and problems resolved. A failure
to follow this approach can lead to unnecessary delays in the prosecution
of the application.

B. Procedures to be Followed When Evaluating Computer-Implemented

   The following procedures should be used when reviewing applications
drawn to computer-implemented inventions.

1. Determine what the applicant has invented by reviewing the written
description and the claims.

   (a) Identify any specific embodiments of the invention that have been
disclosed, review the detailed description of the invention and note the
specific utility that has been asserted for the invention.

   (b) Analyze each claim carefully, correlating each claim element to the
relevant portion of the written description that describes that element.
Give claim elements their broadest reasonable interpretation that is
consistent with the written description. If elements of a claimed
invention are defined in means plus function format, review the written
description to identify the specific structure, materials or acts that
correspond to each such element.

   (c) Considering each claim as a whole, classify the invention defined
by each claim as to its statutory category (i.e., process, machine,
manufacture or composition of matter). Rely on the following presumptions
in making this classification.

(i) A computer or other programmable apparatus whose actions are directed
by a computer program or other form of "software" is a statutory "machine."

(ii) A computer-readable memory that can be used to direct a computer to
function in a particular manner when used by the computer [1] is a
statutory "article of manufacture".

(iii) A series of specific operational steps to be performed on or with
the aid of a computer is a statutory "process".

   A claim that clearly defines a computer-implemented process but is not
cast as an element of a computer-readable memory or as implemented on a
computer should be classified as a statutory "process." [2] If an
applicant responds to an action of the Office based on this classification
by asserting that subject matter claimed in this format is a machine or an
article of manufacture, reject the claim under 35 U.S.C.    112, second
paragraph, for failing to recite at least one physical element in the
claims that would otherwise place the invention in either of these two
"product" categories. The Examiner should also object to the specification
under 37 CFR 1.71(b) if such an assertion is made, as the complete
invention contemplated by the applicant has not been cast precisely as
being an invention within one of the statutory categories.
   A claim that defines an invention as any of the following subject
matter should be classified as non-statutory:

- a compilation or arrangement of data, independent of any physical

- a known machine-readable storage medium that is encoded with data
representing creative or artistic expression (e.g., a work of music, art
or literature) [3], [4];

- a "data structure" independent of any physical element (i.e., not as
implemented on a physical component of a computer such as a
computer-readable memory to render that component capable of causing a
computer to operate in a particular manner); or

- a process that does nothing more than manipulate abstract ideas or
concepts (e.g., a process consisting solely of the steps one would follow
in solving a mathematical problem [5]).

   Claims in this form are indistinguishable from abstract ideas, laws of
nature and natural phenomena and may not be patented. Non-statutory claims
should be handled in the manner described in section (2)(c) below.

2. Analyze each claim to determine if it complies with    112, second
paragragh, and with    112, first paragraph.

   (a) Determine if the claims particularly point out and distinctly claim
the invention. To do this, compare the invention as claimed to the
invention as it has been described in the specification. Pay particular
attention to the specific utility contemplated for the invention--features
or elements of the invention that are necessary to provide the specific
utility contemplated for the invention must be reflected in the claims. If
the claims fail to accurately define the invention, they should be
rejected under    112, second paragraph. A failure to limit the claim to
reflect features of the invention that are necessary to impart the
specific utility contemplated may also create a deficiency under    112,
first paragraph.
   If elements of a claimed invention are defined using "means plus
function" language, but it is unclear what structure, materials or acts
are intended to correspond to those elements, reject the claim under
112, second paragraph. A rejection imposed on this basis shifts the burden
to the applicant to describe the specific structure, material or acts that
correspond to the means element in question, and to identify the precise
location in the specification where a description of that means element
can be found. Interpretation of means elements for    112, second
paragraph purposes must be consistent with interpretation of such elements
for      102 and 103 purposes.
   Computer program-related elements of a computer-implemented [6]
invention may serve as the specific structure, material or acts that
correspond to an element of an invention defined using a means plus
function limitation. For example, a series of operations performed by a
computer under the direction of a computer program may serve as "specific
acts" that correspond to a means element. Similarly, a computer-readable
memory encoded with data representing a computer program that can cause a
computer to function in a particular fashion, or a component of a computer
that has been reconfigured with a computer program to operate in a
particular fashion, can serve as the "specific structure" corresponding to
a means element.
   Claims must be defined using the English language. See, 37 CFR 1.52(a).
A computer programming language is not the English language, despite the
fact that English words may be used in that language. Thus, an applicant
may not use computer program code, in either source or object format, to
define the metes and bounds of a claim. A claim which attempts to define
elements of an invention using computer program code, rather than the
functional steps which are to be performed, should be rejected under
112, second paragraph, and should be objected to under 37 CFR 1.52(a).

   (b) Construe the scope of the claimed invention to determine if it is
adequately supported by an enabling disclosure. Construe any element
defined in means plus function language to encompass all reasonable
equivalents of the specific structure, material or acts disclosed in the
specification corresponding to that means element. Special care should be
taken to ensure that each claim complies with the written description and
enablement requirements of 35 U.S.C.    112.

   (c) A claim as a whole that defines non-statutory subject matter is
deficient under    101, and under    112, second paragraph. Determining
the scope of a claim as a whole requires a clear understanding of what the
applicant regards as the invention. The review performed in step 1 should
be used to gain this understanding.

(i) If the invention as disclosed in the written description is statutory,
but the claims define subject matter that is not, the deficiency can be
corrected by an appropriate claim amendment. Therefore, reject the claims
under      101 and 112, second paragragh, but identify the features of the
invention that, if recited in the claim, would render the claimed subject
matter statutory

(ii) If the invention, both as disclosed and as claimed, is not statutory
subject matter, reject the claims under    101 for being drawn to
non-statutory subject matter, and under    112, second paragraph, for
failing to particularly point out and distinctly claim an invention
entitled to protection under U.S. patent law.

   An invention is not statutory if it falls within any of the
non-statutory claim categories outlined in section (1)(c) above. Also, in
rare situations, a claim classified as a statutory machine or article of
manufacture may define non-statutory subject matter. Non-statutory subject
matter (i.e., abstract ideas, laws of nature and natural phenomena) does
not become statutory merely through a different form of claim
presentation. Such a claim will (a) define the "invention" not through
characteristics of the machine or article of manufacture claimed but
exclusively in terms of a non-statutory process that is to be performed on
or using that machine or article of manufacture, and (b) encompass any
product in the stated class (e.g., computer, computer-readable memory)
configured in any manner to perform that process.

3. Determine if the claimed invention is novel and nonobvious under
102 and 103.

   When evaluating claims defined using "means plus function" language,
refer to the specific guidance provided in the In re Donaldson guidelines
[1162 OG 59] and section (3)(a) above.

C. Notes on the Guidelines

   [1] Articles of manufacture encompassed by this definition consist of
two elements: (1) a computer-readable storage medium, such as a memory
device, a compact disc or a floppy disk, and (2) the specific physical
configuration of the substrate of the computer-readable storage medium
that represents data (e.g., a computer program), where the storage medium
so configured causes a computer to operate in a specific and predefined
manner. The composite of the two elements is a storage medium with a
particular physical structure and function (e.g., one that will impart the
functionality represented by the data onto a computer).

   [2] For example, a claim that is cast as "a computer program" but which
then recites specific steps to be implemented on or using a computer
should be classified as a "process." A claim to simply a "computer
program" that does not define the invention in terms of specific steps to
be performed on or using a computer should not be classified as a
statutory process.

   [3] The specific words or symbols that constitute a computer program
represent the expression of the computer program and as such are a
literary creation.

   [4] A claim in this format should also be rejected under    103, as
being obvious over the known machine-readable storage medium standing

   [5] A claim to a method consisting solely of the steps necessary to
converting one set of numbers to another set of numbers without reciting
any computer-implemented steps would be a non-statutory claim under this

   [6] This includes the software and any associated computer hardware
that is necessary to perform the functions directed by the software.
II. Additional Information

   An analysis of the law supporting the examination guidelines for
computer-implemented inventions is being prepared. Interested members of
the public are invited to comment on this legal analysis. Copies of the
legal analysis can be obtained from Jeff Kushan on or after June 23, 1995,
who can be reached using the information indicated above.

May 30, 1995                                                    BRUCE A. LEHMAN
                                            Assistant Secretary of Commerce and
                                         Commissioner of Patents and Trademarks