CITE:  608 F.2d 879
CMON:  November 1979
PLAIN: In re Phillips, Eiben and Morgan
DEFND: United States Patent and Trademark Office
COURT: United States Court of Customs and Patent Appeals 
DATE:  November 15, 1979

Following remand, 593 F.2d 1021, appeal was taken from decision of the
Patent and Trademark Office Board of Appeals, Serial No. 168,711, which
affirmed an examiner's rejection for application for patent on a
"Computer System for Generating Architectural Specifications and Project
Control Instructions".  The Court of Customs and Patent Appeals, Miller,
Judge, held that: (1) application was improperly rejected as
nonstatutory subject matter, there being no recitation, directly or
indirectly, of an algorithm in the Benson and Flook sense, and (2)
application was improperly rejected on theory that there was inadequate
enabling statement because programs indicated that some input errors
which computer would discover might be identified other than those
illustrated in claim.

  Business method of preparing architectural specifications and project
  plans using software is patentable.

Before MARKEY, Chief Judge, RICH, BALDWIN, and MILLER, Associate Judges,
and WATSON, Judges.  The Honorable James L. Watson of the United States
Customs Court, sitting by designation.


This is an appeal from a decision of the Patent and Trademark Office ("PTO")
Board of Appeals ("board") which affirmed the examiner's rejections of
claims 1-17 {1} under 35 USC 101 as nonstatutory subject matter and under
35 USC 112, first paragraph, for lack of an enabling disclosure.
We reverse.



The invention relates to computer apparatus and process for preparing a
complete set of printed architectural specifications, which describe the
various materials and techniques used in constructing a building.  Because
to a considerable extent such specifications are repetitious or contain
a combination of often-used phrases, appellants have made a list of standard
phrases, stored the phrases in a digital computer's memory (referred to as
the data file), and associated a short, symbolic character with each phrase.
To write a specification, a specifier selects the appropriate phrases and
marks the corresponding symbolic characters on and order form in the
desired sequence. The series of symbolic characters is supplied to the
computer, already programmed, which edits the characters for error, selects
the phrases associated with each character from the data file, and assembles
and prints out the desired specification with a table of contents and a
list of any errors. Appellants have thus eliminated the need for complete
handwriting of specifications.

Claim 7 is illustrative of the apparatus claims:

   7.  A system for preparing a printed architectural specification
   comprising:  Specification Data File means including a quantity of
   predetermined information stored in a data processor memory and divided
   into individual phrases with predetermined indentation for print-out,
   said phrases being recallable by means of a Specification Index File
   means; and a programmed data processor adapted to receive input coded
   characters representative of a predetermined sequence and outlining of
   said phrases in said Specification Data File means for preparing an
   edited input data file free of fatal errors; said data processor being
   further programmed to print out a set of specifications according to
   the input code of the specifier from the Specification Data File and
   said edited input file.

Claim 15 is illustrative of the process claims:

   15.  A process for preparing an architectural specification comprising:
   storing recorded signals representative of instruction data on an
   instruction data file; storing recorded signals representative of a
   plurality of phrases with associated code on a specification data file,
   whereby a specifier by writing code may determine the sequence and
   relation of said phrases; programming a data processor to receive input
   code representative of a predetermined sequence of said phrases and to
   check said input code to determine whether it contains any errors which
   would prevent further processing of said input code and, if not, to
   prepare an edited input file of said code; programming said processor
   to process the code on said edited input file and to prepare an printed
   specification from said specification data file according to the code
   sequenced by a specifier and to prepare a set of signals on a
   instruction input file, said last-named singals being correlated with
   said phrases through said input code; and programming said data processor
   to operate on said instruction input file to prepare a set of
   instructions from said instruction data file; said instructions being
   associated with corresponding data on said printed specification.

Proceedings Below

The examiner rejected the claims under 35 USC 101 {2} as nonstatutory
subject matter, explaining the rejection as follows:

   There is nothing in the specification to suggest that there is any
   other substantial practical application [of the invention] except in
   connection with a digital computer. The Supreme Court of the United
   States in Gottschalk v. Benson et al, 409 US 63 [1972], indicated
   that a program that has no substantial practical application except
   in connection with a digital computer is not patentable under
   35 USC 101....

The examiner also rejected the claims under 35 USC 112, first paragraph, {3}
for lack of an enabling disclosure.In response to this rejection, appellants
filed a detailed affidavit by Kathleen Hotton, an experienced professor of
computer science, which states that a computer programmer of ordinary skill
in the art would possess sufficient knowledge and skill to write a program
code or instructions for accomplishing all of the functions set forth in a
flow chart shown in appellants' application after having studied the
application file and the accompanying drawings.  The affidavit further
states that, although it might require considerable time, such a person
could perform such a task "with the straightforward application of
conventional knowledge and skills in his possession, and without having to
exercise undue skill".  Nevertheless, the examiner maintained the rejection,
explaining that the affiant does not state that the disclosure is sufficient,
based on her own ability, and does not given any examples of instructions
that would carry out the flow chart functions, but "only speaks about
persons in general that would have sufficient knowledge if they had taken
an elementary or introductory course in programming and had one or two
years of programming experience".

Board Decisions

The board affirmed the examiner's rejection under 35 USC 101, quoting at
length the reasoning of the examiner, including the portion quoted earlier
in this opinion.

The board also affirmed the examiner's rejection under 35 USC 112, first
paragraph, and stated that the proper test concerning sufficiency of a
flow chart is:

   Will the programmer find within the four corners of the disclosure
   at hand enough to allow him to proceed or will it be necessary for
   him to seek additional instructions from the person who prepared
   the flow chart?

The board found the following inadequacies in appellants' specification:
(1) The proper criteria for "fatal errors" in Figure 7, block 72, are not
explained; (2) The criteria for "validity" in Figure 9, blocks 98 and 99,
are not given; and (3) The criteria for "specification error" in Figure 14,
block 246, are not given.  It said that the general statements in the
Hotton affidavit failed to shed any light on these inadequacies.

On reconsideration, the board reviewed its decision in light of Parker v.
Flook, 437 U.S. 584 (1978), and maintained its support of the examiner's
rejection under 35 USC 101. It reasoned that because the data involved
in the invention are stored and manipulatd in a computer necessarily in
some mathematical form (binary, octal, decimal, or the like) "according
to some radix," {4} appellants' process must be considered an algorithm,
"a procedure for solving a given type of mathematical problem within the
meaning assigned to that term in Benson and Flook, supra." The board also
maintained its decision on the section 112, first paragraph, issue,
specifically labeling it a new rejection under 37 CFR 1.196(b) in response
to appellants' request for reconsideration.

Remand From CCPA

This case was originally scheduled to be heard on April 4, 1979, but was
removed from the calendar and remanded to the board.The court's per curiam
opinion included the following statement (In re Phillips, 593 F.2d 1021,
1022 (CCPA 1979)):

   the board's opinion... lacks the specifics of a detailed factual
   analysis of the subject matter as a whole of appellants' invention
   (see this court's opinion in In re Johnson, 589 F.2d 1070 (CCPA 1978),
   and In re Gelnovatch, 595 F.2d 32 (CCPA 1979)), which is required to
   show wherein this court's opinions in In re Chatfield, [545 F.2d 152
   (CCPA 1976)], In re Noll, [545 F.2d 141 (CCPA 1976)], In re Deutsch,
   553 F.2d 689 (CCPA 1977), In re Toma, 575 F.2d 872 (CCPA 1978), and
   In re Freeman, 573 F.2d 1237 (CCPA 1978), do not apply to the instant
   claims and, particularly, wherein the differences between the instant
   claims and those involved in Benson are insufficient to bring those
   claims within the Supreme Court's disclaimer in Benson (repeated in
   Dann v. Johnston, 425 U.S. 219, 96 S.Ct. 1393, 47 L.Ed.2d 692 (1976))
   that it was not holding that all computer program inventions are

Accordingly, the board was directed to prepare "a supplemental opinion
that will provide the specifics of a detailed factual analysis... to
enable the court to properly consider the appeal...."

Board's Supplemental Opinion

In a long opinion which makes an attempt to provide a "detailed factual
analysis", the board adhered to its original decision.  It said that the
antecedent features that provide input data to the data processing means are
comparable to the "antecedent steps of establishing values in the equation"
referred to in  In re Christensen, 478 F.2d 1392 (CCPA 1973), and do not
convert the invention to patentable subject matter. {5} It also said that
generation of results in the form of a printout is post-solution activity
of the type which the Supreme Court, in Parker v. Flook, supra, indicated
cannot transform an unpatentable principle into a patentable process.  The
board then considered whether the portions of the apparatus claims (viz. data
processing means with its attendant files and program means) and of the method
claims (viz. storing and programming steps), considered in the context of
the antecedent and post-solution language of the claims, make the claims,
as a whole, statutory.

In its analysis, the board applied the two-step Freeman test, namely: (1)
determine whether the claim directly or indirectly recites an "algorithm"
in the Benson (and Flook) sense of the term (a procedure for solving a given
type of mathematical problem); (2) if such an algorithm is recited, then
determine whether the claim in its entirety wholly preempts that algorithm.
In re Freeman, 573 F.2d 1237, 1245 (CCPA 1978). With respect to the first
step, the board essentially repeated the rationale supporting its decision
on reconsideration, namely: because a digital computer "operates
mathematically, employing numerical quantities according to at least
one radix", appellants' claims are directed to an algorithm -- "to the
solution of a problem, which problem is stated in mathematical terms...
the solution of the problem being effected mathematically by the computer".
The board noted that digital computers operate mathematically in solving
problems "even though, to the user, the problem does not appear to be in
mathematical form." In applying the second step of the Freeman test, it
found that, in cost, speed, and accuracy of preparation, the mode of
practicing the algorithm has no substantial practical application except
in connection with a digital computer.  Therefore, the board concluded
that appellants' claims wholly preempt an algorithm and are not statutory
subject matter under 35 USC 101.


Section 101 Issue

The board's position, in essence, is that because a digital computer
"operates mathematically, employing numrical quantities according to at
least one radix", all claims directed to computer-related inventions are
directed to an "algorithm" within the meaning of that term in Benson and
Flook, supra. Such a position was effectively repudiated by this court in
the recent cases of  In re Bradley, 600 F.2d 807, 811-12 (CCPA 1979), and
In re Diehr, 602 F.2d 982, 985 (CCPA 1979). Cf.  In re Gelnovatch, supra.
We note that the radix merely defines a system of number representation
and does not arithmetically calculate the solution to a mathematical problem.

Our analysis of the claims on appeal reveals no recitation, directly or
indirectly, of an algorithm in the Benson and Flook sense.  The board clearly
erred in finding that the first step of the Freeman test is satisfied.
See In re Toma, supra.

Accordingly, we hold that appellants' claims meet the requirements of
35 USC 101.

Section 112, First Paragraph, Issue

Appellants' invention includes an error checking feature.  They have defined
certain errors as "fatal errors" to be those which are so crucial that
the process should halt for immediate correction.Other errors, called
"specification errors", will permit the program to run, but are printed
out after the program has run so that they may be corrected.  Appellants'
specification implies that "fatal" and "specification" errors other than
those illustrated may be identified.  However, the board and solicitor
have interpreted this to mean that other errors must be defined in order
to write a program, and have concluded that appellants, therefore, have
not satisfied the enablement requirement of section 112. This position is
not well taken.  Appellants have listed the minimum number of errors that
must be corrected before the process can function ("fatal errors") and
the errors that they desire to have the option of correcting ("specification
errors").  Additional errors may be identified, but they are not necessary
to the invention.  Accordingly, we conclude that appellants have
sufficiently described the criteria for "fatal errors" and "specification

Another feature of appellants' invention is a validity check on the symbolic
characters supplied to the computer.  Appellants, by merely stating that a
validity check is to be made, have impliedly provided the necessary criteria.
They have established a list of possible symbolic characters.  A validity
check of a symbolic character supplied to the computer is made by checking
to see whether it matches a character on the list.  If a match is made,
the character is valid; otherwise it is invalid.  No further criteria are
required. Therefore, we hold that the enablement requirement of 35 USC 112,
first paragraph, is satisfied.

In view of all the foregoing, the board's decision affirming the rejections
under 35 USC 101 and  35 USC 112, first paragraph, are reversed. {6}



{1}  In application serial No. 168, 711, filed August 3, 1971, entitled
"Computer System for Generating Architectural Specifications and Project
Control Instructions."

{2} 35 USC 101 reads as follows:

   Section 101. Inventions patentable
   Whoever invents or discovers any new and useful process, machine,
   manufacture, or composition of matter, or any new and useful
   improvement thereof, may obtain a patent therefor, subject to
   the conditions and requirements of this title.

{3} 35 USC 112, first paragraph, reads as follows:

   The specification shall contain a written description of the invention,
   and of the manner and process of making and using it, in such full,
   clear, concise, and exact terms as to enable any person skilled in the
   art to which it pertains, or with which it is most nearly connected,
   to make and use the same, and shall set forth the best mode contemplated
   by the inventor of carrying out his invention.

{4} The radix is "the quantity used to define a system of number
representation by means of positional notation.  It is the radix that
is raised to the successive powers, the result then being multiplied by
the given digits of the specified number.  The radix number also is equal
to the number of symbols, that is, character designs or different digits,
required for the particular system of number representation.  For example,
in a radix 10 number system, there are 10 characters; namely, 0, 1, 2, 3,
4, 5, 6, 7, 8, and 9".  Weik, Standard Dictionary of Computers and
Information Processing (rev. 2d ed. 1977).

{5}  The board also cited  In re Richman, 563 F.2d 1026 (CCPA 1977), and
In re Sarkar, 588 F.2d 1330 (CCPA 1978).

{6} The PTO has apparently not considered appellants' application for
compliance with  35 USC 102 and 103. Piecemeal examination is to be
avoided.  37 CFR 1.104 and 1.105.  See also MPEP 707.07(g).