Ex parte ANGELL

Board of Patent Appeals and Interferences

Nov 20, 1998

08065786 (B.P.A.I. Nov. 20, 1998)

Application for patent filed May 24, 19931
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 24
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte RICHARD B. ANGELL

_____________
Appeal No. 95-0394
Application 08/065,7861
______________
ON BRIEF
_______________
Before URYNOWICZ, JERRY SMITH, and BARRETT, Administrative
Patent Judges.
JERRY SMITH, Administrative Patent Judge.
DECISION ON APPEAL

This is a decision on the appeal under 35 U.S.C. § 134
Appeal No. 95-0394
Application No. 08/065,786
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from the examiner’s final rejection of claims 10-17. Claims
1-9 were indicated by the examiner as being allowed.
The disclosed invention pertains to a method and
apparatus for generating a wipe solid. A wipe solid is used
for creating transitions between two video signals. The
invention of independent claim 10 is directed to the method
for loading data into memories having a specific relationship
to the data and reading the data from these memories along
with a video signal to generate a wipe solid signal.
Independent claim 10 on appeal is reproduced as
follows:
10. A method of generating a wipe solid, comprising:
(a) calculating numerical values,
(b) loading numerical values into a first memory
having one memory location for each pixel
during the active interval of a line of a
video signal,
(c) loading numerical values into a second
memory having one memory location for each
active line during a field of a video
signal,
(d) reading numerical values from the first and
second memories synchronously with a video
signal, and
(e) carrying out a combinational arithmetic
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Application No. 08/065,786
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operation on the numerical values read from
the memories and providing an output signal
dependent on the result of the operation.
The examiner relies on no references.
Claims 10-17 stand rejected under 35 U.S.C. § 101 as
being directed to nonstatutory subject matter in the form of a
mathematical algorithm.
Rather than repeat the arguments of appellant or the
examiner, we make reference to the brief and the answer for
the respective details thereof.
OPINION
We have carefully considered the subject matter on
appeal, the rejection advanced by the examiner and the reasons
relied upon by the examiner as support for the rejection. We
have, likewise, reviewed and taken into consideration, in
reaching our decision, the appellant’s arguments set forth in
the brief along with the examiner’s rationale in support of
the rejection and arguments in rebuttal set forth in the
examiner’s answer.
It is our view, after consideration of the record
before us, that claims 10-17 are directed to statutory subject
Appeal No. 95-0394
Application No. 08/065,786
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matter within the meaning of 35 U.S.C. § 101. Accordingly, we
reverse.
With respect to the rejection of the claims under
35 U.S.C. § 101 as being directed to nonstatutory subject
matter in the form of a mathematical algorithm, the appeal
brief and the examiner’s answer were filed in the middle of
1994. The Board remanded this case to the examiner in 1995
for consideration of the applicability of the Commissioner’s
published “Examination Guidelines for Computer-Implemented
Inventions.” On remand, the examiner determined that the
rejection under 35 U.S.C. § 101 was still proper, and the case
is now before us for decision on the merits.
The examiner’s rejection applies the two-step test
which is now commonly referred to as the Freeman-Walter-Abele
test. See In re Freeman, 573 F.2d 1237, 197 USPQ 464 (CCPA
1978) as modified by In re Walter, 618 F.2d 758, 205 USPQ 397
(CCPA 1980). The test has been thus articulated:
First, the claim is analyzed to
determine whether a mathematical
algorithm is directly or indirectly
recited. Next, if a mathematical
algorithm is found, the claim as a
whole is further analyzed to determine
whether the algorithm is “applied in any manner
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Application No. 08/065,786
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to physical elements or process steps,” and,
if it is, it “passes muster under § 101.”
In re Pardo, 684 F.2d 912, 915, 214 USPQ 673, 675-76 (CCPA
1982)
(citing In re Abele, 684 F.2d 902, 214 USPQ 682 (CCPA 1982)).
The examiner’s application of the Freeman-Walter-Abele test
led the examiner to conclude that claims 10-17 were directed
to nothing more than a mathematical algorithm. Appellant
argues that the loading of data into a memory and the reading
of data from a memory encompass physical activities, and
appellant points out that the generation of a wipe solid
produces a useful signal which is needed to produce the
transitions from one video signal to another on a television
set.
Although the examiner applied the Freeman-Walter-Abele
test in a manner which was consistent with the law at that
time, the most recent decisions of the Court of Appeals for
the Federal Circuit cast substantial doubt on the propriety of
this test.
It is the current view of the court that unpatentable
mathematical algorithms are identifiable by showing that they
Appeal No. 95-0394
Application No. 08/065,786
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are merely abstract ideas constituting disembodied concepts or
truths that are not “useful.” From a practical standpoint,
this means that to be patentable an algorithm must be applied
in a “useful” way. See State Street Bank & Trust Co. v.
Signature Financial Group, Inc., 149 F.3d 1368, 47 USPQ2d 1596
(Fed. Cir. 1998).
Independent claim 10 is directed to a method for
loading data into a specifically-configured memory and to the
combination of this stored data with a video signal to
generate a wipe solid. The claim recites a specific
relationship between the memories and the characteristics of a
video signal, and the claim combines outputs from these
memories synchronously with the video signal. We are of the
view that the claimed method for generating a wipe solid
clearly has practical utility. Even if a “mathematical
algorithm” is used to combine the stored data with the video
signal and could be considered an abstract idea, that abstract
idea is clearly employed in a useful way. The invention of
claim 10 is not directed to the mere computation of one set of
values from another set of values, but rather, to the physical
and useful steps of loading data into and reading data from
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specifically-configured memories to generate a wipe solid.
Since the claimed invention has practical application for the
reasons just discussed, we do not sustain the rejection of
independent claim 10 under 35 U.S.C. § 101. Since claims 11-
16 depend from claim 10, we also do not sustain the rejection
of these claims. Independent claim 17 has similar recitations
to independent claim 10 so that we also do not sustain the
rejection of claim 17.
The decision of the examiner rejecting claims 10-17 is
reversed.
REVERSED
)
STANLEY M. URYNOWICZ )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JERRY SMITH )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
LEE E. BARRETT )
Administrative Patent Judge )
FRANCIS L. GRAY
TEKTRONIX, INC.
P.O. BOX 1000 (63-lAW)
Appeal No. 95-0394
Application No. 08/065,786
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WILSONVILLE, OR 97070-1000
JS/dym