Summary of In Re Alappat

MARGER, JOHNSON, McCOLLOM &  STOLOWITZ, P.C.
650 American Bank Building
621 SW Morrison St.
Portland, OR. USA 97205
August 29, 1994
(503) 222 3613
FAX (503) 274 4622

Mr. Hal Abelson
Re:  In Re Alappat

VIA E-MAIL

	Software running on a general purpose computer may now be
patentable under a ruling issued July 29th by the Court of Appeals for
the Federal Circuit.  The decision in In Re Alappat No. 92-1381
(Fed. Cir. July 29, 1994) (en banc), clearly paves the way for the
patenting of inventions that can be implemented in either hardware or
software, provided careful drafting of the patent application
establishes the invention as something more than a mere mathematical
formula.

	The national news media and patent bar have been very
interested in the case, which overturns a long standing Patent Office
policy of denying patents on inventions that could be functionally
implemented in software.  The Patent Office has not yet determined
whether to seek review by the United States Supreme Court.  See Bart
Ziegler, Court Upholds Patent for the Way Software Interacts With
Computer, Wall Street Journal, August 8, 1994, at B4.

	Our firm, which successfully briefed and argued the In Re
Alappat case on appeal for Tektronix, Inc., has prepared the enclosed
summary of the decision to aid you in assessing whether the court's
ruling might affect your organization's patent protection policies.  A
key finding in the decision is that once a computer program is loaded
into the memory of a general purpose computer, the computer can be
viewed as a new machine eligible for patent protection.  While the
decision does not make software patentable per se, it offers the
electronics industry an excellent opportunity to craft patent
applications that protect the value of technological advancements to a
far greater degree than previously permitted.

	The full text of the opinion is available from the Federal
Circuit bulletin board service at (202) 633-9608 (2400 baud N-8-1 F)
using a conventional communications program, e.g., PROCOMM.  If you
would like further information about the decision or related issues
concerning complex patent applications involving hardware and software
developments, we encourage you to contact us.  If you would like a
complete copy of the opinion, please contact Teresa Klingler at the
above-mentioned phone number.

		Very truly yours,

		Marger, Johnson, McCollom &  Stolowitz, P.C.
		Alexander C. Johnson, Jr.


Marger, Johnson et al., is a full service intellectual property law
firm emphasizing the protection of the complex technologies for the
electrical, chemical and mechanical engineering disciplines

SYNOPSIS OF OPINIONS

In Re Alappat, No. 92-1381 (Fed. Cir. July 29, 1994) (en banc)
                                                                      
	On July 29, 1994, the Court of Appeals for the Federal Circuit
rendered its en banc decision in the case of In Re Alappat.  This
decision has been much anticipated both by the electronics industry
because of its potential impact on the patentability of
computer-related inventions and by the patent bar because of the
potential effects on the administration of appeals before the Board of
Patent Appeals and Interferences (BPAI) in the United States Patent
and Trademark Office (PTO).  Both issues were resolved in the court's
decision.

	The majority opinion written by Judge Rich consists of two
parts.  Part I addressed a jurisdictional issue of whether a decision
by an "expanded" panel of the BPAI convened by the Commissioner was a
valid decision (see Ex Parte Alappat, 23 USPQ2d 1340 (BPAI 1992)),
which is a prerequisite to confer appellate jurisdiction on the court
under 28 U.S.C. _1295(a)(4)(A) (1988) and 35 U.S.C. _141 (1988).  The
majority held that the expanded panel was properly constituted by the
Commissioner under his statutory authority and therefore the expanded
panel decision was a valid decision for jurisdictional purposes.
Judges Mayer, Michel, Clevenger and Schall all dissented on this
issue.


	Part II of the majority's opinion addresses the merits of the
case.  The issue involved an appeal from the expanded panel's decision
rejecting Alappat's claims on the basis that they were drawn to
nonstatutory subject matter under 35 U.S.C. _101 (1988).  The expanded
panel had held that the independent apparatus claim, which was written
in "means-plus-function" language as permitted under 35 U.S.C. _112,
_6, 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 is not eligible for patent protection. In reaching
its decision, the expanded panel ignored the structural description of
the invention in the patent application.


	Alappat's claims are drawn to a so-called "rasterizer" which
is used in a digital oscilloscope to smooth waveform data prior to
displaying the waveform on the oscilloscope screen.  The invention
lies in the general architecture and operation of the rasterizer to
substantially eliminate the appearance of discontinuities in the
waveform by changing the intensity of each pixel depending on the
pixel's proximity to a waveform vector.

	The majority opinion, by Judge Rich, joined by Judges Newman,
Lourie, Michel, Plager and Rader, reversed the expanded panel's
decision and held that Alappat's invention was in fact a "machine,"
one of the four categories of patentable subject matter under _101.
The majority chastised the Board for ignoring the physical structure
described in the application.  The majority stated that just because
the claims cover a programmed general purpose computer does not make
them nonstatutory.  Instead, a programmed general purpose computer
becomes a new machine once a computer program is loaded into memory,
and is therefore eligible for patent protection.  Judge Rader, in a
concurring opinion, reiterated this point by arguing that, even if the
claims were method or process claims, they too would be eligible for
patent protection under _101.  To conclude otherwise would be to exalt
form over substance.  Judge Newman's concurring opinion further
criticized the PTO's policy of rejecting patents under _101 as being
"out of place in a world that has become totally dependent on
technology."

	A vigorous dissent by Chief Judge Archer, joined by Judge
Nies, argued that the majority's opinion will have "untold
consequences" by making "mathematical functions" patentable.  The
Chief Judge labeled the majority's holding as a simple "structure"
test whereby claims drawn to actual structure are patentable, whereas
those drawn to "illusory" structure are not.  The dissent
characterized Alappat's invention as "newly discovered mathematics and
not the invention or discovery of a process or product applying it."
The dissent was particularly troubled by the fact that the claims were
drawn only to the rasterizer, i.e., a sub-combination claim, and not
to the oscilloscope as a whole, i.e., a combination claim.  The
dissent was concerned that Alappat's claim could be read broadly to
encompass its use in "computer monitors, televisions, laser printers,
mechanical printing devices," as well as oscilloscopes.


	The dissent drew an analogy between a compact disk (CD)
musical recording and software operable on a computer.  The dissent
said that the music does not become statutory subject matter merely
because it is recorded on physical structure, i.e, the CD.  Likewise,
a mathematical algorithm does not become statutory simply because it
is embodied in a physical structure, i.e., a computer.  The dissent
reasoned that the CD is not statutory subject matter because "there
can be no meaningful examination [of music] for compliance with _103."
Contrary to the dissent's position though, Alappat's invention had in
fact been examined and deemed patentable by the Examiner.
	
	In summary, the majority's opinion on the merits paves the way
for patenting inventions that can be implemented in either hardware or
software.  The majority impliedly acknowledged, however, a "sham"
exception to _ 101.  Some questions remain as to how much structure
must be disclosed in the application to avoid being labeled a sham.
Clearly Alappat's disclosure was enough.  Another question is whether
the majority's opinion extends to claiming computer software
inventions as methods.  In any case, the majority left the door wide
open for drafting apparatus claims to software inventions:

    "a computer operating pursuant to software may represent
    patentable subject matter provided...the other requirements of
    Title 35 [are met]."

Majority Opinion at 35-36 (emphasis original).