In re Alappat, 1994
This case went a long way towards making it possible to obtain patents on software-related inventions, at least for apparatus claims drafted in means-plus-function format, and if digital hardware equivalents were disclosed in the specification. Specific hardware structures were disclosed in the specification, but the Federal Circuit held that the claim could also read on a general purpose computer programmed to carry out the invention, without a 35 U.S.C. 101 problem.
Alappat’s invention related generally to a means for creating a smooth waveform display in a digital oscilloscope. The screen of an oscilloscope was the front of a cathode-ray tube (CRT), whose screen presented an array (or raster) of pixels arranged at intersections of vertical columns and horizontal rows. Each column in the array represented a different time period, and each row represented a different magnitude. An input signal to the oscilloscope was sampled and digitized to provide a waveform data sequence (vector list), wherein each successive element of the sequence represented the magnitude of the waveform at a successively later time. The waveform data sequence was then processed to provide a bit map, which was a stored data array indicating which pixels are to be illuminated. The waveform ultimately displayed was formed by a group of vectors, wherein each vector has a straight line trajectory between two points on the screen at elevations representing the magnitudes of two successive input signal samples and at horizontal positions representing the timing of the two samples. Because a CRT screen contains a finite number of pixels, rapidly rising and falling portions of a waveform can appear discontinuous or jagged. In addition, the presence of “noise” in an input signal can cause portions of the waveform to oscillate between contiguous pixel rows when the magnitude of the input signal lies between values represented by the elevations of the two rows. Moreover, the vertical resolution of the display may be limited by the number of rows of pixels on the screen. The noticeability and appearance of these effects is known as aliasing. To overcome these effects, Alappat’s invention employed an anti-aliasing system wherein each vector making up the waveform is represented by modulating the illumination intensity of pixels having center points bounding the trajectory of the vector. The intensity at which each of the pixels was illuminated depended upon the distance of the center point of each pixel from the trajectory of the vector. Pixels lying squarely on the waveform trace received maximum illumination, whereas pixels lying along an edge of the trace received illumination decreasing in intensity proportional to the increase in the distance of the center point of the pixel from the vector trajectory. Employing this anti-aliasing technique eliminates any apparent discontinuity, jaggedness, or oscillation in the waveform, thus giving the visual appearance of a smooth continuous waveform.
Claim 15, the only independent claim in issue at the Federal Circuit, read:
A rasterizer for converting vector list data representing sample magnitudes of an input waveform into anti-aliased pixel illumination intensity data to be displayed on a display means comprising:
(a) means for determining the vertical distance between the endpoints of each of the vectors in the data list;
(b) means for determining the elevation of a row of pixels that is spanned by the vector;
(c) means for normalizing the vertical distance and elevation; and
(d) means for outputting illumination intensity data as a predetermined function of the normalized vertical distance and elevation.
The USPTO Examiner finally rejected claims under 35 U.S.C. Section 101 as being directed to non-statutory subject matter. Alappat appealed this rejection to the Board, and a three-member panel reversed the Examiner’s non-statutory subject matter rejection. The Examiner then requested reconsideration of this decision, stating that the panel’s decision conflicted with PTO policy. The Examiner further requested that such reconsideration be carried out by an expanded panel.
An expanded panel reconsidered the decision. The expanded panel was made up of eight members including the PTO Commissioner, the PTO Deputy Commissioner, the PTO Assistant Commissioner, the Board Chairman, the Board Vice-Chairman, and the three members of the original panel. This seemed like “board stacking.” The expanded eight-member panel affirmed the Examiner’s Section 101 rejection, ruling contrary to the decision of the original three-member panel. The expanded panel had held that the independent apparatus claim, which was written in “means-plus-function” language, was merely a process claim wherein each element represented a step in that process. The panel reasoned that the claim was broad enough to cover an appropriately programmed general purpose computer and, therefore, held that the claimed process was a “mathematical algorithm” which was not eligible for patent protection. The three members of the original panel dissented.
The Federal Circuit first considered the following question: When a three-member panel of the Board has rendered its decision, does the Commissioner have the authority to constitute a new panel for purposes of reconsideration? The Federal Circuit held that the answer to this first question was Yes. The Federal Circuit noted that 35 U.S.C. Section 7 (a) plainly and unambiguously provides that the Commissioner, the Deputy Commissioner, and the Assistant Commissioners are members of the Board. Section 7(b) plainly and unambiguously requires that the Commissioner designate “at least three” Board members to hear each appeal. By use of the language “at least three,” Congress expressly granted the Commissioner the authority to designate expanded Board panels made up of more than three Board members. There was no evidence in the legislative history of Section 7, or Title 35 as a whole, clearly indicating that Congress intended to impose any statutory limitations regarding which Board members the Commissioner may appoint to an expanded panel or when the Commissioner may convene such a panel. The last sentence of Section 7(b) provided: “Only the Board of Patent Appeals and Interferences has the authority to grant rehearings.” The Commissioner contended that the reconsideration action taken in this case constituted a type of “rehearing” as mentioned in the last sentence of Section 7(b). The Federal Circuit found the Commissioner’s interpretation of Section 7 to have been a reasonable one entitled to deference, given that neither the statute itself nor the legislative history thereof indicated Congressional intent to the contrary. The fact that Section 7 referred to “rehearings” whereas 37 C.F.R. 1.197 (PTO Rule 197) referred to “reconsideration” was of no significance. The differing terminology appeared to be nothing more than the result of imprecise regulation drafting.
The Federal Circuit then turned to the merits of the case.
The majority opinion, by Judge Rich, joined by Judges Newman, Lourie, Michel, Plager and Rader, reversed the expanded panel’s decision.
The majority stated that the reconsideration panel erred by refusing to interpret the means-for-function clauses properly. These clauses related to specific structures disclosed in the specification – two ALUs, two barrel shifters, and a ROM – and their equivalents, and that the original panel was correct in its construction of claim 15. Thus, pursuant to Section 112, Para. 6, and in view of the specification, the claims did recite specific digital circuitry structures. The majority concluded that because the claim recites connected structures, the claim “unquestionably recites a machine.”
The majority went further and stated that Finally, the court concludes that if the claimed “rasterizer” were equivalent to a “general purpose digital computer” programmed to perform the calculations performed by the rasterizer, such programmed computer would be the invention of a “new machine” within Section 101.
A dissent by Chief Judge Archer, joined by Judge Nies, characterized Alappat’s invention as “newly discovered mathematics and not the invention or discovery of a process or product applying it.”
Judge Newman, concurring, noted that:
Old law is often adapted to new needs: “If Congress has made a choice of language which fairly brings a given situation within a statute, it is unimportant that the particular application may not have been contemplated by the legislators.” Barr v. United States, 324 U.S. 83, 90 (1945). In Diamond v. Chakrabarty, 447 U.S. 303, 206 USPQ 193 (1980) the Court emphasized that the patent system is available to serve all fruits of human ingenuity.
In an address before the Economic Club of Detroit, Irving S. Shapiro, Chairman, E.I. duPont de Nemours & Co., discussing “Technology’s Decline”, stated:
What seems to be missing in our country is an understanding that, no matter how much money we spend on research and development, the findings are not going to benefit the public unless there are suitable incentives to invest in commercialization. That means a chance of reasonable profits from risk taking and a chance to hold onto one’s original ideas once they are created.
XLV Vital Speeches of the Day, 360, 364 (1979). To bar such inventions as Alappat’s rasterizer from access to the patent system is to eliminate the incentive provided by this law, disserving not only technological industry, but the public benefit of improved technology. One must have a powerful reason to exclude technology from the scope of Title 35. Indeed, the importance of the patent incentive in industrial innovation was the principal factor in the formation of the Federal Circuit. It is thus appropriate constructively to apply statute, precedent, and policy to the variety of inventions that the information age has generated, and to remove the cloud on whether these inventions may participate in the benefits and obligations of the patent system.