Ex Parte Phillips

Board of Patent Appeals and Interferences

Aug 12, 2002

08998617 (B.P.A.I. Aug. 12, 2002)

The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the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 JOHN W. PHILLIPS
__________
Appeal No. 2000-2225
Application 08/998,617
___________
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 rejection of claims 1-10. Pending claims 11-
30 have been allowed by the examiner.
The invention pertains to a computerized method for
distinguishing an ordinary binary floating point number from an
extraordinary binary floating point number.
Appeal No. 2000-2225
Application 08/998,617
2
Representative claim 1 is reproduced as follows:
1. A computerized method for distinguishing an ordinary
binary floating point number from an extraordinary binary
floating point number, said computerized method comprising:
adding 1 to a B-bit biased exponent of a binary floating
point number to produce a (B+1)-bit augmented exponent;
sign-extending said (B+1)-bit augmented exponent to
produce a (B+n)-bit transformed exponent; and
testing said (B+n)-bit transformed exponent to determine
if said (B+n)-bit transformed exponent is less than 2 to provide
an indication whether the binary floating point number is
ordinary or extraordinary.
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.
Rather than repeat the arguments of appellant or the
examiner, we make reference to the briefs 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
Appeal No. 2000-2225
Application 08/998,617
3
briefs 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 1-10 are directed to statutory subject matter
within the meaning of 35 U.S.C. § 101. Accordingly, we reverse.
The examiner’s rejection states that in order for a
computer-related process to be statutory, the claims must include
either a step that results in a physical transformation outside
the computer or a limitation to a practical application, or the
claims must incorporate any physical structure, citing In re
Abele, 684 F.2d 902, 214 USPQ 682 (CCPA 1982) [final rejection,
page 2].
Appellant argues that the Freeman-Walter-Abele test is
not the proper test to determine whether computer-related
inventions are statutory subject matter, citing State Street Bank
& Trust Co. v. Signature Financial Group, Inc., 149 F.3d 1368,
1375, 47 USPQ2d 1596, 1602 (Fed. Cir. 1998), cert denied. 525
U.S. 1093 (1999). Appellant argues that a mathematical algorithm
is patentable as long as it is not an abstract idea. According
to appellant, the only relevant and dispositive inquiry is
whether the claimed invention is directed to something useful,
Appeal No. 2000-2225
Application 08/998,617
4
that is, have practical utility. Appellant argues that the
claimed invention clearly has practical utility [brief, pages 6-
8].
The examiner responds by essentially repeating the
statement of the rejection from the final rejection [answer,
pages 3-4]. Appellant responds that the claimed invention is
statutory in that it provides a concrete, non-abstract result in
the form of an extraordinary/ordinary binary floating point
number [reply brief].
As noted by appellant, 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,
supra. To the extent that the examiner’s position is based on
concepts derived from the Freeman-Walter-Abele test, the
examiner’s position is untenable in the aftermath of the decision
in State Street.
Appeal No. 2000-2225
Application 08/998,617
5
Although the examiner states that the claimed invention
has no practical application, the examiner never explains why he
has reached this position. The claimed invention is directed to
a computerized method for distinguishing an ordinary binary
floating point number from an extraordinary binary floating point
number. Appellant has disclosed that this method, which is
performed within a computer processor, makes the computer more
efficient in handling various tasks. In an age where computers
have permitted man to achieve so much, it would make no sense to
assert that methods which enhance the performance of these
computers do not represent practical and useful applications of
the methods they implement. We find that the computerized method
recited in the claims on appeal constitutes the application of a
mathematical procedure in a useful way within the meaning of
State Street.
Appeal No. 2000-2225
Application 08/998,617
6
For the reasons indicated above, we do not sustain the
examiner’s rejection of claims 1-10. Therefore, the decision of
the examiner rejecting claims 1-10 is reversed.
REVERSED
)
JERRY SMITH )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
LEE E. BARRETT )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
MICHAEL R. FLEMING )
Administrative Patent Judge )
Appeal No. 2000-2225
Application 08/998,617
7
WILLIAM W. KIDD
BLAKELY, SOKOLOFF, TAYLOR & ZAFMAN
12400 WILSHIRE BLVD - SEVENTH FLR
LOS ANGELES, CA 90025
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