Ex parte GRANT

Board of Patent Appeals and Interferences

Nov 3, 1998

07777045 (B.P.A.I. Nov. 3, 1998)

Application for patent filed October 6, 1991. 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journal and (2) is not binding precedent of the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. 13
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JOHN R. GRANT
____________
Appeal No. 94-2926
Application No. 07/777,0451
____________
ON BRIEF
____________
Before HAIRSTON, FLEMING, and TORCZON, Administrative Patent
Judges.
HAIRSTON, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1
through 3 and 5. In an Amendment After Final (paper number
5), claim 5 was canceled, and claim 1 was rewritten in a
Jepson-type format. Accordingly, claims 1 through 3 remain
before us on appeal.
Appeal No. 94-2926
Application No. 07/777,045
2
The disclosed invention relates to a computerized method
for determining the velocity field of a three-dimensional
fluid flow over a submerged body by determining vorticity
strength distribution at the surface of the submerged body in
terms of a plurality of finite volume elements.
Claim 1 is the only independent claim on appeal, and it
reads as follows:
1. In a computerized method for determining the
velocity field of a three-dimensional fluid flow over a
submerged body by determining vorticity strength distribution
at the surface of the submerged body, the improvement
comprising the step of representing vorticity distribution of
the fluid flow at the surface geometry of the body in terms of
a plurality of finite volume elements.
Claims 1 through 3 stand rejected under 35 U.S.C. § 101
as
being directed to nonstatutory subject matter. According to
the examiner (Supplemental Answer, page 4):
9C. The claimed invention sets forth a series of
steps to be performed on a computer. There are no
steps recited which could be characterized as pre-
or post-computer activity (i.e. steps performed
outside of the computer). The claimed method solves
a mathematical problem in the field of computational
fluid dynamics without a claimed limitation to a
practical application. One could also reasonably
argue that the claimed invention is drawn to an
abstract idea in that the method involves [sic,
involved] characterizes phenomena found in nature,
Appeal No. 94-2926
Application No. 07/777,045
3
i.e. fluid dynamic properties in general.
Nonetheless, the claims appear to be drawn to
solving a mathematical problem and must be further
analyzed to determine if the claims merely
manipulate numbers (i.e. "Freeman-Walter-Abele
test").
The examiner’s analysis of the claimed invention concludes
with the observation (Supplemental Answer, page 7) that "when
the claimed subject matter is viewed as a whole, it is
directed toward an improved method of solving a given
mathematical algorithm in fluid dynamics and is thus non-
statutory."
Appellant argues (Brief, page 5) that "a three-
dimensional fluid flow is a physical thing," and that "a
three-dimensional fluid flow’s velocity field is not an
abstract number, but is related to the fluid’s activity."
Reference is made to the brief and the answers for
further positions of the appellant and the examiner.
OPINION
The nonstatutory subject matter rejection is reversed.
With respect to the examiner’s reliance on the so-called
Freeman-Walter-Abele test, the Court recently stated in State
St. Bank & Trust Co. v. Signature Fin. Group Inc., 149 F.3d
Appeal No. 94-2926
Application No. 07/777,045
4
1368, 1373-74, 47 USPQ2d 1596, 1601-1602 (Fed. Cir. 1998)
that:
After Diehr and Chakrabarty, the Freeman-Walter-
Abele test has little, if any, applicability to
determining the presence of statutory subject
matter. As we pointed out in Alappat, 33 F.3d at
1543, 31 USPQ2d at 1557, application of the test
could be misleading, because a process, machine,
manufacture, or composition of matter employing a
law of nature, natural phenomenon, or abstract idea
is patentable subject matter even though a law of
nature, natural phenomenon, or abstract idea would
not, by itself, be entitled to such protection. The
test determines the presence of, for example, an
algorithm. Under Benson, this may have been a
sufficient indicium of nonstatutory subject matter.
However, after Diehr and Alappat, the mere fact that
a claimed invention involves inputting numbers,
calculating numbers, outputting numbers, and storing
numbers, in and of itself, would not render it
nonstatutory subject matter, unless, of course, its
operation does not produce a "useful, concrete and
tangible result."
We agree with the examiner that the claimed invention
"solves a mathematical problem in the field of computational
fluid dynamics," and that the claimed invention is drawn to an
"abstract idea" (i.e., a mathematical algorithm). We do not,
however, agree with the examiner’s conclusion that the claimed
method is "without a claimed limitation to a practical
application." The claimed method uses the mathematical
Appeal No. 94-2926
Application No. 07/777,045
5
algorithm in a "practical application" or useful result of
"determining the velocity field of a three-dimensional fluid
flow over a submerged body by determining vorticity strength
distribution at the surface of the submerged body." Even if
the claimed useful result is expressed in numbers, those
numbers have practical utility. Thus, the claims are directed
to statutory subject matter.
DECISION
The decision of the examiner rejecting claims 1 through 3
under 35 U.S.C. § 101 is reversed.
REVERSED
Appeal No. 94-2926
Application No. 07/777,045
6
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
MICHAEL R. FLEMING, ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
RICHARD TORCZON, )
Administrative Patent Judge )
lp
Appeal No. 94-2926
Application No. 07/777,045
7
OFFICE OF COUNSEL, BLDG. 112T
NAVAL UNDERWATER SYSTEMS CENTER
NEWPORT, RI 02841-5047
Leticia
Appeal No. 94-2926
Application No. 07/777,045
APJ HAIRSTON
APJ FLEMING
APJ TORCZON
DECISION: REVERSED
Send Reference(s): Yes No
or Translation (s)
Panel Change: Yes No
Index Sheet-2901 Rejection(s): 101
Prepared: July 19, 1999
Draft Final
3 MEM. CONF. Y N
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