Computer-program patentability update

By: 
June 12, 1995

The courts keep pulling for change in the direction of patentability of
software as the U.S. Patent and Trademark Office (PTO) continues to resist such
change. A recent embattled case, abbreviated to In re Alappat, exemplifies how the PTO's resistance resembles nothing but shenanigans.

The claims in the subject patent application In re Alappat (initially reported Ex parte Alappat) was an invention primarily intended for use with an oscilloscope output displayed on a cathode ray tube.

The claims, and particularly the broadest claim, were directed to a "rasterizer" and included structure, such as "means for determining a vertical distance of vectors" and "means for normalizing the vertical distance and elevation." The physical devices which were used to perform these tasks included several arithmetic logic circuits, barrel shifters, and a read-only memory-all digital computational devices.

Case history. At first, the Examiner disallowed this claim. On appeal to the Board of Interferences and Appeals, a three-member panel reversed the Examiner, who requested reconsideration. An eight-member panel, which included several PTO commissioners, then promptly held the claim to be unpatentable, a move widely considered to reflect the personal preferences of the PTO leadership rather than the merits of the case. This decision was later reversed and the claim allowed.

Technically, arguments against patentability were that each "means for" portion of the claims was a process step being performed by a conventional computer. In the latter decision, it was pointed out that not only did the opening paragraph claim a machine (rasterizer) but that since "means for" claims are to be interpreted narrowly, as including the devices disclosed in the patent and their equivalents, that the claims are interpreted as having the devices in each portion of the questioned claim.

Getting claims allowed. Reading thus far, it appears that if the circuitry responsible for each step is identifiable, or at least distinct from other portions of the computational circuitry, and is identified and claimed that way in a patent application, this is a step in the right direction toward getting the claim allowed. If you seek computer patent rights protection, you should have a detailed knowledge about the device.

The case does bolster principles often practiced in writing patents for computer inventions. These principles have dictated that you include any analog version of the invention which parallels the digital version, if it is available; that you identify, to the extent possible, individual components according to their function, either by block diagram or subdivision of function or location; and that you incorporate as much structure into the claim as possible without unduly limiting it.

This case represents a significant liberalization, as does at least one successor. However, given the continued anti-computer patent stance of the PTO, the expanded protection to be afforded current software applications will likely require aggressive prosecution and advocacy.


Legal Questions

Q: Have the findings from the In re Alappat case been upheld in any other cases?

A: Since the holding in In re Alappat, the court again considered the statutory status of a computer process in In re Warmerdam. Here the invention was a method claim for generating a data structure representing the shape of a physical object, an application useful in robotics. The claims process is performed with the steps of first locating the medial axis of the object, and then creating a hierarchy of (spatially dimensioned) bubbles on the medial axis.

The process was for the purpose of creating a zone within a robotic arm that would prohibit within it during the arm's motion. Based on Alappat's holding, the court upheld the Board of Patent Appeals' rejection of this simple two-step claim. The claim offered very little differentiation of function and no significant infusion of physical structure or steps, among other weaknesses under review.

However, another segment of the claim, which had been rejected by the Patent Office Appeal Board for indefiniteness, was reversed by the Court of Appeals, Federal Circuit (CAFC) and held allowable. Claim 5 of this application was drawn to a "machine having a memory which contains data representing a bubble hierarchy generated by the method of any of claims 1-4."

The court held that since no one asserted that it would be difficult to produce the memory from the claims, that it is therefore assumed possible; and that the claim covered all of the ways of doing it.

It thus appears as if the much wider invitations to patent of In re Alappat are being exercised freely and supported by the subsequent holding in In re Warmerdam.


Curtis Harrington holds a B.S. Chemistry, M.S. each in Chemical/Electrical Engineering, and an M.B.A. & J.D.



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