Ex parte NG et al.

Board of Patent Appeals and Interferences

Sep 15, 2000

08277386 (B.P.A.I. Sep. 15, 2000)

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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journal and (2) is not binding precedent of the Board.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. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte FUK H. P. NG and SHIVALING S. MAHANT-SHETTI
________________
Appeal No. 1997-1416
Application 08/277,386
________________
ON BRIEF
________________
Before JERRY SMITH, BARRETT and FLEMING, 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 17-29 and 45-57,
which constitute all the claims remaining in this application.
An amendment after final rejection was filed on April 13, 1995
but was denied entry by the examiner.
Appeal No. 1997-1416
Application 08/277,386
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The invention pertains to an apparatus for subtracting or
adding two thermometer coded words which each include a
plurality of bytes. In thermometer coding, the value of a
number is represented by a number of right justified “1" bits.
For example, the number “3" would be represented as 0111 in a
four bit system. Obviously, as the number to be represented
increases, the number of bits required to represent the number
grows rapidly. One way to reduce the amount of circuitry
necessary to operate on thermometer coded numbers is to code
each digit or byte of a number as a separate thermometer coded
value. For example, in the same four bit system, the number
“31" would be represented as 0111 0001 with each digit coded
separately.
Representative claim 17 is reproduced as follows:
17. A computer implemented method of subtracting two
thermometer coded words, comprising:
detecting a first borrowing condition in response to a
first word and a second word;
detecting a second borrowing condition in response to
said first and second words;
decreasing a value of a first most significant byte
corresponding to said first word in response to said first
borrowing condition;
Appeal No. 1997-1416
Application 08/277,386
Application 07/954,133 is a parent application to this1
application on appeal. The parent application has since
issued as U. S. Patent No. 5,699,287 granted on December 16,
1997.
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decreasing a value of a second most significant byte
corresponding to said second word in response to said second
borrowing condition;
subtracting said first most significant byte from said
second most significant byte to obtain a first result; and
converting said first result into proper thermometer code
format.
No references are relied on by the examiner.
The following rejections are on appeal before us:
1. Claims 17-29 and 45-57 stand rejected under 35 U.S.C.
§ 101 as being directed to non-statutory subject matter in the
form of a mathematical algorithm.
2. Claims 17-29 and 45-57 also stand rejected under 35
U.S.C. § 112, second paragraph, as failing to particularly
point out and distinctly claim the invention.
3. Claims 17-29 and 45-57 stand provisionally rejected
under the judicially created doctrine of double patenting over
the claims of Application No. 07/954,133 .1
Rather than repeat the arguments of appellants or the
Appeal No. 1997-1416
Application 08/277,386
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examiner, we make reference to the briefs and the answers for
the respective details thereof.
OPINION
We have carefully considered the subject matter on
appeal, the rejections advanced by the examiner, and the
arguments set forth by the examiner in support of the
rejections. We have, likewise, reviewed and taken into
consideration, in reaching our decision, the appellants’
arguments set forth in the briefs in support of their position
that the examiner’s rejections are not properly made.
It is our view, after consideration of the record before
us, that claims 17-29 and 45-57 define subject matter which
may properly be the subject of patent protection. We are
further of the view that claims 18-29 do not particularly
point out the invention in a manner which complies with 35
U.S.C. § 112. Finally, we agree with the examiner that the
claims on appeal would improperly extend the term of Patent
No. 5,699,287. Accordingly, we affirm.
Appeal No. 1997-1416
Application 08/277,386
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We consider first the rejection of claims 17-29 and 45-57
under 35 U.S.C. § 101 as being directed to non-statutory
subject matter in the form of a mathematical algorithm. In
the original examiner’s answer, this rejection was made using
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) and In re Abele, 684
F.2d 902, 214 USPQ 682 (CCPA 1982). This case was remanded to
the examiner by the Board to consider the effect on this
appeal by the decisions in State Street Bank & Trust Co. v.
Signature Financial Group, Inc., 149 F.3d 1368, 47 USPQ2d 1596
(Fed. Cir. 1998), cert. denied, 119 S. Ct. (1999) and AT&T
Corp. v. Excel Communications, Inc., 172 F.3d 1352, 50 USPQ2d
1447 (Fed. Cir. 1999). Upon remand and consideration of these
decisions, the examiner determined that the rejection was
still appropriate [supplemental answer].
More particularly, the examiner finds the mathematical
algorithm of the claimed invention to be nothing more than an
abstract idea with no practical application or useful result.
Appellants argue that a series of specific operational steps
to be performed on or with the aid of a computer is a
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Application 08/277,386
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statutory process.
We agree with appellants that the invention as set forth
in the appealed claims represents statutory subject matter.
As the Federal Circuit noted in State Street, supra, the focus
should be on the practical utility of the claimed subject
matter. In our view, a method being run on a computer
inherently has practical utility and represents more than a
mere abstract idea. An abstract idea is no longer abstract
when it becomes tied to implementation on a computer. As long
as this computer-implemented process satisfies other
conditions of Title 35, it is properly the subject of patent
protection. Therefore, we hold that the appealed claims
before us, which require the presence of a computer to
implement the process, are directed to a useful invention
within the meaning of 35 U.S.C. § 101.
We now consider the rejection of all the appealed claims
under the second paragraph of 35 U.S.C. § 112. With respect
to claim 17, the examiner asserts that the term borrowing
lacks meaning as used in the claim. Additionally, the
examiner finds the phrases “value of the first most
significant byte” and “value of the second most significant
Appeal No. 1997-1416
Application 08/277,386
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byte” to be indefinite because it is allegedly unclear whether
the initial or modified values are involved in the subtracting
step, and the claim language does not require the first most
significant byte to be smaller than the value of the second
most significant byte [answer, pages 3-4]. With respect to
claim 18, the examiner finds the subtracting step to be
unclear because there are not two translated bytes as claimed
[id., page 4]. With respect to claim 45, the examiner asserts
that the phrase “converting said first result” is indefinite
because some cases require converting the inverted first
result rather than the first result. Finally, the examiner
asserts that claim 46 is indefinite because the steps are not
related to the steps of claim 45 [id.]. Appellants argue that
the claims are definite and that the examiner is unnecessarily
requiring them to narrow the claim under the rubric of
indefiniteness [brief, page 15 and reply brief, page 2].
The general rule is that a claim must set out and
circumscribe a particular area with a reasonable degree of
precision and particularity when read in light of the
disclosure as it would be by the artisan. In re Moore, 439
F.2d 1232, 1235, 169 USPQ 236, 238 (CCPA 1971). Acceptability
Appeal No. 1997-1416
Application 08/277,386
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of the claim language depends on whether one of ordinary skill
in the art would understand what is claimed in light of the
specification. Seattle Box Co., v. Industrial Crating &
Packing, Inc., 731 F.2d 818, 826, 221 USPQ 568, 574 (Fed. Cir.
1984). Finally, the legal standard for definiteness is
whether a claim reasonably apprises those of skill in the art
of its scope. In re Warmerdam, 33 F.3d 1354, 1361, 31 USPQ2d
1754, 1759 (Fed. Cir. 1994).
Considering the first point raised by the examiner above
with respect to claim 17, we are of the view that the examiner
has confused the breadth of the claim with indefiniteness of
the invention. The first and second words of claim 17 have a
borrow condition as shown in Figure 1 of the application
[blocks 12, 14, 18 and 20] and as described in the
specification. The fact that the claim does not recite the
details of the borrowing condition goes to the breadth of the
claim rather than to its indefiniteness.
With respect to the second point raised by the examiner,
the subtracting step of claim 17 is not indefinite. At the
time the subtracting step takes place, the value subtracted is
whatever is the current value of that byte. The fact that the
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Application 08/277,386
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subtracting step involves values based on the claimed
borrowing conditions does not render the method indefinite.
The artisan would have recognized that the claimed subtracting
step operates on the original values or the decreased values
of the most significant bits depending on whether or not the
claimed conditions have been satisfied. Thus, we find nothing
indefinite about the step of subtracting as recited in claim
17. The examiner’s assertion that the smaller value must be
subtracted from the larger value appears contrary to the
disclosed invention. The subtractor 24 is described as being
an absolute value subtractor which performs the subtraction by
performing an exclusive-OR operation on each of the bits of
the most significant byte of each word. Thus, the invention
as disclosed performs the subtraction without regard to which
of the two values is the larger. In other words, the
“condition” required by the examiner that the claim be limited
to the smaller value being subtracted from the larger value is
without support in the description of the invention.
With respect to claim 18, we agree with the examiner.
Claim 18 recites that a translated first least significant
byte is subtracted from a translated second least significant
Appeal No. 1997-1416
Application 08/277,386
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byte. The examiner correctly points out that one of the two
values subtracted in subtractor 32 of Figure 1 remains
untranslated [specification, paragraph bridging pages 8-9].
Thus, the subtraction operation as recited in claim 18 is
never performed by the invention as disclosed. Since the
operation recited in claim 18 is contrary to the disclosed
invention, we agree with the examiner that claim 18 does not
satisfy the second paragraph of 35 U.S.C. § 112.
With respect to claim 45, we find the claim to be in
compliance with 35 U.S.C. § 112. Although the claim might be
clearer and more accurate if the converting step read
“converting said first result or said inverted first result
into proper thermometer code format,” the claim is still not
indefinite. The artisan interpreting this claim in light of
the specification would understand that the phrase “said first
result” refers to the first result if no inverting step has
been performed or to the inverted first result if the
inverting step was performed.
With respect to claim 46, we do not see the
indefiniteness asserted by the examiner. The steps of claim
46 appear to be performed independently of the steps of claim
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Application 08/277,386
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45 since they operate on different bytes of the two words.
Therefore, the steps of claim 46 are performed independently
of the steps of claim 45, and the steps of claim 46 are not
sequentially related to the steps of claim 45.
In summary, we agree with appellants that the artisan
having considered the specification of this application would
have no difficulty ascertaining the scope of the invention
recited in claims 17 and 45-57. Therefore, we do not sustain
the rejection of these claims. We agree with the examiner,
however, that claim 18 is misdescriptive. Therefore, the
rejection of claim 18, and claims 19-29 which depend
therefrom, under the second paragraph of 35 U.S.C. § 112 is
sustained.
We now consider the provisional rejection of all appealed
claims under the judicially created doctrine of double
patenting over the claims of copending Application No.
07/954,133 (now U.S. Patent No. 5,699,287). The basis of this
rejection is that the appealed claims are merely method
versions of the claims of the
copending application which would improperly extend the term
Appeal No. 1997-1416
Application 08/277,386
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of the patent granted on the copending application.
Appellants do not contest the merits of the rejection, per se,
but appellants argue instead that there is no authority for
such a provisional rejection.
As noted above, the copending application upon which the
provisional rejection was based has now issued as a patent.
Therefore, the provisional aspects of the rejection are
removed. We have considered the claims of the issued patent
and agree with the examiner that, to a great extent, the
appealed claims are merely the apparatus claims of the patent
redrafted as corresponding method claims. The similarity
between the device claims of the patent and the computer
implemented method of the appealed claims is sufficient to
establish a prima facie case of improper double patenting.
Since a prima facie case has been established, and since
appellants have not responded to the rejection on the merits,
we sustain the examiner’s rejection of all the appealed claims
on double patenting. As noted by the examiner, a terminal
disclaimer would overcome this rejection.
In conclusion, the rejection of the appealed claims under
35 U.S.C. § 101 is reversed, the rejection under 35 U.S.C. §
Appeal No. 1997-1416
Application 08/277,386
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112 is
affirmed as to claims 18-29 but is reversed as to claims 17
and 45-57, and the rejection of the appealed claims based on
double
patenting is affirmed. Accordingly, the decision of the
examiner rejecting claims 17-29 and 45-57 is affirmed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
JERRY SMITH )
Administrative Patent Judge )
)
)
)
LEE E. BARRETT ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
MICHAEL R. FLEMING )
Administrative Patent Judge )
Appeal No. 1997-1416
Application 08/277,386
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JS/ki
W. Daniel Swayze, Jr.
Texas Instruments, Inc.
P.O. Box 655474 MS 219
Dallas, TX 75265