Ex parte Hines

Board of Patent Appeals and Interferences

Nov 17, 1998

08051928 (B.P.A.I. Nov. 17, 1998)

Application for patent filed April 26, 1993.1
1
Paper No. 16
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(2) is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte KEITH M. HINES
______________
Appeal No. 95-0323
Application 08/051,9281
_______________
ON BRIEF
_______________
Before THOMAS, 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
from the examiner’s final rejection of claims 1-14. Claims
15-20 were indicated by the examiner as being allowed. An
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Application 08/051,928
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amendment after
final rejection was filed on March 4, 1994, and was entered
by the examiner. This amendment cancelled claims 11-14.
Accordingly, this appeal is directed to the rejection of
claims 1-10.
The disclosed invention pertains to a method and
apparatus for selection of random values from a set of N non-
sequential values. The invention has application in a wide
variety of areas in which it is necessary or desirable to
generate random or pseudorandom values. The invention of
independent claim 1 is directed to the method for selecting
pseudorandom values in a computer to generate frequencies for
hopping in a frequency hopping radio.
Independent claim 1 on appeal is reproduced as follows:
1. A method for the selection of pseudorandom values in
a computer to generate frequencies for hopping in a frequency
hopping radio, the method comprising the steps of:
providing a set of values numbering N;
sorting the set of values from smallest value to largest
value;
creating a blank information pool from the N values;
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initializing local variables for tracking the information
pool;
processing a current value from a first value of the set
of values;
calculating a difference between a next value of the set
of values and the current value;
comparing the difference to a current information pool
entry difference associated with a current information pool
entry;
incrementing a range increment of the current information
pool entry if the difference equals the current information
pool entry difference;
creating a new information pool entry if the difference
does not equal the current information pool entry difference;
storing the information pool; and
generating a frequency output using the information pool.
The examiner relies on no references.
Claims 1-10 stand rejected under 35 U.S.C. § 101 as being
directed to nonstatutory subject matter in the form of a
mathematical algorithm. Rejections of claims 11-14 under
35 U.S.C. § 112 have become moot in view of the cancellation
of these claims.
Rather than repeat the arguments of appellant or the
examiner, we make reference to the briefs and the answers for
Appeal No. 95-0323
Application 08/051,928
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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 briefs along with the examiner’s
rationale in support of the rejection and arguments in
rebuttal set forth in the examiner’s answers.
It is our view, after consideration of the record before
us, that claims 1-10 are directed to statutory subject 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 original 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
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“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 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 1-10 were directed to
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nothing more than a mathematical algorithm. Appellant argues
that the “generating a frequency output” step of claim 1 is a
significant and essential post-solution activity.
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
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 1 is directed to a method for storing
an information pool of random values and for generating a
frequency output using this information pool. The values of
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the information pool are determined by a process of
manipulating N values in an original set into pool entry
values which are related in the desired random manner. These
random values in the information pool are then used to
generate actual frequency outputs. We are of the view that
the step of generating frequency outputs for hopping in a
frequency hopping radio clearly has practical utility. Even
if the “mathematical algorithm” by which the values in the
information pool are determined can be considered an abstract
idea, that abstract idea is clearly employed in a useful way.
The invention of claim 1 is not directed to the mere
computation of values which form the information pool, but
rather, to the physical and useful step of using these values
to generate a frequency output which is used for hopping in a
frequency hopping radio. Since the claimed invention has
practical application for the reasons just discussed, we do
not sustain the rejection of independent claim 1
under 35 U.S.C. § 101. Since claims 2-10 depend from claim 1,
we also do not sustain the rejection of these claims.
The decision of the examiner rejecting claims 1-10 is
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reversed.
REVERSED
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
)
JERRY SMITH ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
LEE E. BARRETT )
Administrative Patent Judge )

JS/cam
Appeal No. 95-0323
Application 08/051,928
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Robert M. Handy
Motorola, Inc.
Intellectual Prop. Dept.
Suite R3108
P. O. Box 10219
Scottsdale, AZ 85274-0219