CITE:  146 USPQ 590
CMON:  September 1964
PLAIN: King and Barton
DEFND: United States Patent and Trademark Office
COURT: Patent Office Board of Appeals
DATE:  September 10, 1964

Appeal from PTO Group 240.  Application for patent of Paul D. King
and Robert Barton, Serial Number 84,156, filed 23 January 1961.  From
decision rejecting claims 1 to 3 and 11, applicants appeal. AFFIRMED.

  Novel and non-obvious computer programs are patentable. A computer
  program turns a general purpose computer into a specific purpose

JUDGE: Andrews, Acting Examiner in Chief
Before Friedman and Kreek, Examiners in Chief, and Andrews, Acting
Examiner in Chief


This is an appeal from the final rejection of claims 1, 2, 3 and 11.
Claims 4, 5, 6, 10 and 15 stand allowed.

Claim 1 is reproduced as illustrative:

    1. A digital processing machine comprising means for storing a
    string of digitally coded program syllables, the syllables being
    of at least two separate coded types designated by specified bits
    in each syllable, the two types of syllables occurring in any
    desired sequential combinations, additional specified bits in
    each program syllable designating an operation for a first syllable
    type and designating an address of an operand for a second syllable
    type, a first register for storing at least one of the program
    syllables, means for transferring program syllables from the
    syllable storing means to the first register in a predetermined
    sequence, addressable storage means for storing operands in
    addressable locations, a temporary storage facility including
    automatic addressing means for automatically storing all of any
    large number of operands in the order in which they are received
    by the facility and for always reading out the succession of
    operands in the reverse order in which they are received, the
    temporary storage including two registers in which the last two
    operands in the order received by the facility are stored, means
    responsive to the address designation bits of a second syllable
    type when stored in said first register for transferring the
    operand from the address in the addressable storage means
    established by the address designation bits in the program
    register to the temporary storage facility, an arithmetic unit
    including said two registers in the temporary storage facility,
    and automatic control means responsive to the operation designation
    bits of a first syllable type when stored in the program register
    for transferring the operands in the two registers through the
    arithmetic unit to initiate an operation in the arithmetic unit
    on the operands stored in said two registers, transferring the
    result of the operation to the first one of said two registers,
    and automatically placing an operand in the second one of said 
    two registers from a location in the temporary storage facility
    in the reverse order in which the operands were received into 
    the facility, whereby the contents of the temporary storage
    facility are reduced by one by the operation and the result
    stored as the last operand placed in the temporary storage

The reference relied on by the examiner is: Ross et al., 2,914,248,
24 November 1959.

The subject matter on appeal is a digital computer which is arranged to
mathematically process data stored in the computer.  The processing is
performed in accordance with a system of denoting mathematical
expressions free of parenthetical groupings already known to
mathematicians as the Polish Notation.  The essential details of
appellants' apparatus are set forth in the brief.

The reference is adequately described in the brief when considered with
the examiner's further explanation in the Answer.

The appeals claims stand rejected as unpatentable over Ross et al. since
the examiners finds the claims to set forth no more structure of a
computer than is to be found in Ross et al. when supplied with a stored
program designed to carry out the appropriate sequence of mathematical
operations.  The examiner regards a stored program in a computer as
constituting no more than a statement of the operation of or the process
carried out by apparatus set forth in the claims and not as a basis of
patentable distinction thereover.

Appellants contend that the Ross et al. computer fails to anticipate the
claims because it does not have or teach means to carry out the mode of
operation equivalent to the one claimed and even if the claims would
respond to the computer when programmed to carry out the operations
defined, such special programming is not suggested by the art.

From the examiner's detailed application of the reference to each of the
claims on appeal to which reference is made it appears that apparatus
operating on particular stored data through a particular stored program
is regarded by him as patentably no different than a computer, absent
such data and program.  In other words, if the difference between a
general purpose computer and the claims to a special purpose computer 
can be supplied by merely placing a suitable program in a general
purpose machine then the examiner would deny a patent even though the
art contained no suggestion for the preparation of such a program.

We do not agree.  To deny patent protection to a novel structure it must
be shown that the same was obvious at the time the invention was made.
A program for a computer which is not made obvious by the prior art but
only by appellants' disclosure is not available to teach appellants'
invention.  Since most general purpose computers have the recognized
capability of simulating operations of many other computers or machines
by suitable programming, this fact should afford no basis for a denial
on all future novel computer configurations which the art does not make

However, the claims on appeal are not directed to the novel configuration
of a computer which can process data expressed in Polish Notation but on
the contrary the appealed claims merely set forth the result or function
accomplished by any computer operating on data in Polish Notation.  The
claims refer to the various registers and storage facilities not by
their structure but by the meaning that has been arbitrarily assigned to
bit patterns of the data stored in the computer in such facilities.  The
automatic control means is defined in the claims only as that which will
carry out a mathematical regimen, long familiar to mathematicians, of
using operator instructions to properly group the operands.

Appellants emphasize that the art does not teach the reading in and reading
out of the operands in reverse order.  This is merely claiming the result
or function to be accomplished by routine application of the rules for
handling data expressed in Polish Notation which notation appellants
acknowledge in the specification was not novel with him but was the work
of another.

Thus we support the examiner's rejection of claims 1, 2, 3 and 11 as
distinguishing over Ross et al. only to the extent of calling for that
which achieves a particular result or operation, i.e., "processing by
Polish Notation", not through any novel structure set out in the claims
but merely by the routine operation of storage and processing means
normally found in stored program computers.

The rejection of claims 1, 2, 3 and 11 is sustained.  The decision of the
examiner is AFFIRMED.