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/* Patents on living matter and software are a "brave new world."
The Manual of Patent Examining Procedure's regulations on the
patentability of these new types of inventions follows. */

MANUAL OF PATENT EXAMINING PROCEDURE
US Patent & Trademark Office
revision 6
Date of this revision: Oct. 1987

 CHAPTER 2100 - Table of Contents


2105 - Patentable Subject Matter--Living Subject Matter 2106 -
Patentable Subject Matter--Mathematical Algorithms or Computer
Programs
2106.01 - Computer Programming and 35 U.S.C. 112, First Paragraph
2106.02 - Disclosure in Computer Programming Cases
.

2105 Patentable Subject Matter-- Living Subject Matter [R-6]


The decision of the Supreme Court in Diamond v. Chakrabarty, 206
USPQ 193 (1980) held that microorganisms produced by genetic
engineering are not excluded from patent protection by 35 U.S.C.
101. It is clear from the Supreme Court decision and opinion that
the question of whether or not an invention embraces living
matter is irrelevant to the issue of patentability. The test set
down by the Court for patentable subject matter in this area is
whether the living matter is the result of human intervention.

 In view of this decision the Office has issued these
guidelines as to how 35 U.S.C. 101 will be interpreted.

 The Supreme Court made the following points in the
Chakrabarty opinion:

1. "Guided by these cannons of construction, this Court has read
the term 'manufacture' in [35 U.S.C.] 101 in accordance with its
dictionary definition to mean 'the production of articles for use
from raw materials prepared by giving to these materials new
forms, qualities, properties, or combinations whether by hand
labor or by machinery.'"

2. "In choosing such expansive terms as 'manufacture' and
'composition of matter', modified by the comprehensive 'any',
Congress plainly contemplated that the patent laws would be given
wide scope."

3. "The Act embodied Jefferson's philosophy that 'ingenuity
should receive a liberal encouragement'. V Writings of Thomas
Jefferson, at 75-76. See Graham v. John Deere Co., 383 U.S. 1,
7-10 (1966). Subsequent patent statutes in 1836, 1870, and 1874
employed this same broad language. In 1952, when the patent laws
were recodified Congress replaced the word 'art' with 'process',
but otherwise left Jefferson's language intact. The Committee

Reports accompanying the 1952 act inform us that Congress
intended statutory subject matter to 'include any thing under the
sun that is made by man'. S. Rep. No. 1979, 82d Cong. 2d Sess., 5
(1952)"

4. "This is not to suggest that [35 U.S.C.] 101 has no
limits or that it embraces every discovery. The laws of nature,
physical phenomena, and abstract ideas have been held not
patentable."

5. "Thus, a new mineral discovered in the earth or a new plant
found in the wild is not patentable subject matter. Likewise,
Einstein could not patent his celebrated law that E=mc^2 ; nor
could Newton have patented the law of gravity."

6. "His claim is not to a hitherto unknown natural phenomenon,
but to a nonnaturally occurring manufacture or composition of
matter a product of human ingenuity 'having a distinctive name,
character [and] use'."

7. "Congress thus recognized that the relevant distinction was
not between living and inanimate things, but between products of
nature, whether living or not, and human-made inventions. Here,
respondent's microorganism is the result of human ingenuity and
research."

8. After reference to Funk Seed & Kalo Co., 333 U.S.127 (1948),
"Here, by contrast, the patentee has produced a new bacterium
with markedly different characteristics from any found in nature
and one having the potential for significant utility. His
discovery is not nature's handiwork, but his own; accordingly it
is patentable subject matter under [35 U.S.C.] 101."

A review of the Court statements above as well as the whole
Chakrabarty opinion reveals:

(1) That the Court did not limit its decision to genetically
engineered living organisms,

(2) The Court enunciated a very broad interpretation of
manufacture and composition of matter in Section 35 U.S.C. 101
(Note esp. quotes 1, 2, and 3 above),

(3) The Court set forth several tests for weighing whether
patentable subject matter under Section 35 U.S.C. 101 is present
stating (in Quote 7 above) that:

"The relevant distinction was not between living and inanimate
things but between products of nature, whether living or not, and
human-made inventions."

The tests set forth by the court are (note especially the
italicized portions [designated herein thusly *italic
portions*]):

-The laws of nature, physical phenomena and abstract ideas are
not patentable subject matter.

-A nonnaturally occurring manufacture or composition of matter a
product of human ingenuity having a distinctive name, character,
[and] use. is patentable subject matter.

-A new mineral discovered in the earth or a new plant found in
the wild is not patentable subject matter. Likewise, Einstein
could not patent his celebrated E=mc2 ; nor could Newton have
patented the law of gravity. Such discoveries are 'manifestations
of . . . nature, free to all men and reserved exclusively to
none.'

-However, the production of articles for use from raw materials
prepared by giving to these materials *new forms, qualities,
properties, or combinations whether by hand, labor or machinery*
(emphasis added) is a manufacture under Section 35 U.S.C. 101. In
analyzing the history of the Plant Patent Act of 1930, the Court
stated: In enacting the Plant Patent Act, Congress addressed both
of these concerns [the belief that plants, even those
artificially bred, were products of nature for purposes of the
patent law . . . were thought not amenable to the written
description]. It explained at length its belief that the work of
the plant breeder 'in aid of nature' was patentable invention. S.
Rep. No. 315, 71st Cong. 2d Sess. 6-8 (1930); H.R. Rep. No. 1129.
71st Cong. 2d Sess. 7-9 (1930).

The Office will decide the questions as to patentable subject
matter under 35 U.S.C. 101 on a case-by-case basis following the
tests set forth in Chakrabarty, e.g., that a nonnaturally
occurring manufacture or composition of matter is patentable,
etc. It is inappropriate to try to attempt to set forth here in
advance the exact parameters to be followed.

The standard of patentability has not and will not be lowered.
The requirements of 35 U.S.C. 102 and 35 U.S.C. 103 still apply.
The tests outlined above simply mean that a rational basis will
be present for any 35 U.S.C.101 determination. In addition, the
requirements of 35 U.S.C. 112 must also be met. In this regard,
see MPEP 608.01(p).

Following this analysis by the Supreme Court of the scope of 35
U.S.C. 101, the Board of Patent Appeals and Interferences has
determined that plant subject matter or an animal may be
protected under 35 U.S.C. 101. In Ex Parte Hibberd, 227 USPQ 443
(Bd PAI 1985) the Board held that plant subject matter may be the
proper subject of a patent under 35 U.S.C. 101 even though such
subject matter may be protected under the Plant Patent Act (35
U.S.C. 161 to 35 U.S.C. 164) or the Plant Variety Protection Act
(7 U.S.C. 2321 et seq.). In Ex Parte Allen, 2 USPQ2d 1425 (Bd PAI
1987), the Board decided that a polyploid Pacific coast oyster
could have been the proper subject of a patent under 35 U.S.C.
101 if all the criteria for patentability were satisfied.
Shortly after the Allen decision, the Commissioner of Patents and
Trademarks issued a notice (Animals - Patentability, 1077 O.G.
24, April 21, 1987) that the Patent and Trademark Office would
now consider non-naturally occurring, non-human multicellular
living organisms, including animals, to be patentable subject
matter within the scope of 35 U.S.C. 101.

2106 Patentable Subject Matter--Mathematical Algorithms or
Computer Programs [R-6]

The U.S. Supreme Court decisions in Diamond v. Diehr, 450 U.S.
175, 209 USPQ 1 (1981) and Diamond v. Bradley, 450 U.S. 381, 209
USPQ 97 (1981) significantly affect an examiner's analysis under
35 U.S.C. 101 of patent applications involving mathematical
equations, mathematical algorithms and computer programs.

In 35 U.S.C. 101, Congress has set forth the categories of
inventions or discoveries which may be patentable as consisting
of any new and useful process, machine, manufacture, or
composition of matter, or any new and useful improvement thereof.
Inventions involving mathematical equations, mathematical
algorithms or computer programs, if statutory at all, would fall
into the categories of statutory subject matter as processes,
machines or manufactures. In construing 35 U.S.C. 101, the
Supreme Court in Diamond v. Diehr, 450 U.S. 175, 209 USPQ 1, 6
(1981) and Diamond v. Chakrabarty, 447 U.S. 303, 206 USPQ 193
(1980), has applied a broad interpretation to statutory subject
matter so as to include anything under the sun that is made by
man.

The Supreme Court also reiterated that certain categories of
inventive activity should not be considered statutory subject
matter. As set forth in Diamond v. Diehr, 209 USPQ 1, 7 (1981),
Excluded from such patent protection are laws of nature, physical
phenomena, and abstract ideas. Citing Parker v. Flook, 437 U.S.
584, 198 USPQ 193 (1978); Gottschalk v. Benson, 409 U.S. 63, 175
USPQ 673 (1972). A scientific truth, or the mathematical
expression of it, is not a patentable invention, Mackay Radio
Corp. & Telegraph Co. v. Radio Corp. of America, 306 U.S. 86, 94,
40 USPQ 199, 202 (1939). In Gottschalk v. Benson,, supra, the
Court concluded that an algorithm, or mathematical formula, is
like a law of nature, which cannot be the subject of a patent.
Similarly, the Court in Parker v. Flook, held that an improved
method for computing 'an alarm limit', where the application did
not purport to explain now the variables used in the formula were
to be selected, nor did the application contain any disclosure
relating to the chemical processes at work or the means of
setting off an alarm or adjusting the alarm limit, is
unpatentable subject matter under 35 U.S.C. 101.(See Diamond v.
Diehr, 209 USPQ 1, 10 (1981)).

If the claims of an application are directed solely to one of the
above judicially excluded areas of inventive activity, it is
clear that a patent shall not issue. However, a claim is not
unpatentable under 35 U.S.C. 101 merely because it includes a
step(s) or element(s) directed to a law of nature, mathematical
algorithm, formula or computer program so long as the claim as a
whole is drawn to subject matter otherwise statutory. In this
regard, the following significant points of law may be gleaned
from the Diamond v. Diehr, 209 USPQ 1 (1981) decision:

1. The claims must be considered as a whole. It is inappropriate
to dissect the claims into old and new elements and then to
ignore the presence of the old elements in the analysis.. . .The
'novelty' of any element or steps in a process, or even of the
process itself, is of *no relevance* in determining whether the
subject matter of a claim falls within the 35 U.S.C. 101
categories of possible patentable subject matter (emphasis
added).

2. When a claim containing a mathematical formula implements or
applies that formula in a structure or process which, when
considered as a whole, is performing a function which the patent
laws were designed to protect (e.g., transforming or reducing an
article to a different state or thing), then the claim satisfies
the requirements of [35 U.S.C.] 101.

3. When a claim recites a mathematical formula (or scientific
principle or phenomenon of nature), an inquiry must be made into
whether the claim is seeking patent protection for that formula
in the abstract. (If the claim does seek protection for such a
mathematical formula, it would be non-statutory under 35 U.S.C.
101).

4. A mathematical formula as such is not accorded the protection
of our patent laws . . . and this principle cannot be
circumvented by attempting to limit the use of the formula to a
particular technological environment. . . . Similarly,
insignificant post solution activity will not transform an
unpatentable principle into a patentable process.

5. When a claim as in Parker v. Flook, 198 USPQ 193 (1978), is
drawn to a method for computing an 'alarm limit' (which) is
simply a number, the claim is non-statutory under 35 U.S.C. 101
because Flook sought to protect a formula for computing this
number.

6. It is now commonplace that an application of a law of nature
or mathematical formula to a known structure or process may well
be deserving of patent protection. Citing Funk Bros. Seed Co. v.
Kalo Co., 333 U.S. 127, 76 USPQ 280 (1948); Eibel Process Co. v.
Minnesota and Ontario Paper Co., 261 U.S. 45 (1923); Cochrane v.
Deener, 94 U.S. 780 (1876); O'Reilly v. Morse, 15 How. 62 (1853);
and Leroy v. Tatham, 14 How. 156 (1852).

35 U.S.C. 101 CLAIM ANALYSIS

In determining eligibility for patent protection under 35 U.S.C.
101, the Supreme Court in Diamond v. Diehr, 209 USPQ 1 (1981),
requires that the claims must be considered as a whole.
Consistent with this requirement, the Court concluded that a
claim drawn to subject matter otherwise statutory does not become
non-statutory simply because it uses a mathematical formula, a
computer program, or digital computer. Thus, the fact that a
claim specifies that a computer performs certain calculation
steps is irrelevant for the purpose of determining whether
statutory subject matter has been recited. The fact that an
application discloses that a mathematical formula is implemented
solely by computer programming is likewise immaterial for this
purpose.

The Court's requirement that the claims must be considered as a
whole in effect leaves viable the CCPA's two-step procedure set
forth in In re Freeman, 197 USPQ 464 (CCPA, 1978), as an
appropriate test for determining if a claim involving mathematics
and/or computer programming is in compliance with 35 U.S.C. 101.
See also In re Walter, 205 USPQ 397 at 407 (CCPA, 1980), for
clarification of the second Freeman step. In accordance with the
first step of such analysis, each method or apparatus claim must
be analyzed to determine whether a mathematical algorithm is
either directly or indirectly recited. If the claim at issue
fails to directly recite a mathematical algorithm, reference must
be made to the specification in order to determine whether claim
language indirectly recites mathematical calculations, formulas,
or equations.

If a given claim directly or indirectly recites a mathematical
algorithm, the second step of the analysis must be applied. Under
this step, a determination must be made as to whether the claim
as a whole, including all its steps or apparatus elements, merely
recites a mathematical algorithm, or method of calculation. If so
the claim does not recite statutory subject matter under 35
U.S.C. 101.

The Supreme Court in Diamond v. Diehr, 209 USPQ 1 (1981),
provides some guidance in determining whether the claim as a
whole merely recites a mathematical algorithm or method of
calculation. The Court suggests that if a claim containing a
mathematical formula implements or applies that formula in a
structure or process which, when *considered as a whole*, is
performing a function which the patent laws were designed to
protect (e.g., transforming or reducing an article to a different
state or thing), then the claim satisfies the requirements of [35
U.S.C.] 101. (emphasis added)

Focusing on the application or implementation of a mathematical
algorithm, the Supreme Court in Diehr, 209 USPQ 1 at 89 (1981),
citing Mackay Radio Corp. & Telegraph Co. v. Radio Corp. of
America, 306 US 86, 94, 40 USPQ 199, 202 (1939), explained that
while a scientific truth, or the mathematical expression of it,
is not a patentable invention, a novel and useful structure
created with the aid of a scientific truth may be. In this
regard, the CCPA noted in In re Walter, 205 USPQ 397 at 407,
(CCPA, 1980), that If it appears that the mathematical algorithm
is implemented in a specific manner to define structural
relationship between the physical elements of the claim (in
apparatus claims) or to refine or limit claim steps (in process
claims), the claim being otherwise statutory, the claim passes
muster under [35 U.S.C.] 101.

The Walter analysis quoted above does not limit patentable
subject matter to claims in which structural relationships or
process steps are defined, limited, or refined by the application
of the algorithm. In the post Diehr CCPA decision In re Abele,
214 USPQ 682 at 687 (CCPA, 1982), the court urged that Walter
should be read broadly to require no more than that the algorithm
be applied in any manner to physical elements or process steps
provided that its application is circumscribed by more than a
field of use limitation or non-essential post-solution activity.
Thus, if the claim would be otherwise statutory, id., albeit
inoperative or less useful without the algorithm, the claim
likewise presents statutory subject matter when the algorithm is
included. Also see In re Pardo, 214 USPQ 673 at 676 (CCPA, 1982).

In regard to post-solution activity, the Supreme Court in Diehr
indicated that insignificant post-solution activity will not
transform an unpatentable principle into a patentable process.
The claims in Parker v. Flook, which were held to be
non-statutory, recited a post-solution activity of updating a
number (i.e., an alarm limit), a step relating more to a method
of calculation than to the physical process alluded to in the
claim preamble. In Diehr, the Supreme Court characterized the
post calculation activity of the type claimed in Parker v. Flook
as being token post-solution activity. In contrast, the
post-solution activity in the Diehr claims consisted of
automatically opening a rubber molding press, a step clearly tied
in with the physical process of rubber molding. As stated by the
CCPA in In re Walter, 205 USPQ 397 at 407, (CCPA, 1980), if the
end-product of a claimed invention is a pure number, as in Benson
and Flook, the invention is non-statutory regardless of any post-
solution activity which makes it available for use by a person or
machine for other purposes.

It must also be recognized that even though a claim contains an
application limiting preamble, even though it does not cover
every conceivable application of a formula, or even though it
does not totally preempt the formula, such a claim would be non-
statutory, if, when considered as a whole, it merely recites a
mathematical algorithm or method of calculation. As stated by the
Supreme Court in Diehr, 209 USPQ 1 at 10, (1981), A mathematical
formula does not suddenly become patentable subject matter simply
by having the applicant acquiesce to limiting the reach of that
formula to a particular technological use.  Similarly, the CCPA
pointed out in Walter, 205 USPQ 397 at 409 (1980) that Although
the claim preamble relate the claimed invention to the art of
seismic prospecting, the claims themselves are not drawn to
methods of or apparatus for seismic prospecting; they are drawn
to improved mathematical methods for interpreting the results of
seismic prospecting. The specific end use recited in the
preambles does not save the claims from the holding in Flook,
since they are drawn to methods of calculation, albeit improved.
Examination of each claim demonstrates that each has no substance
apart from the calculations involved.

Also, in Walter, a Jepson preamble was not regarded as limiting
the subject matter as a whole, so as to avoid the 35 U.S.C. 101
rejection. Similarly, preliminary data gathering steps may not
affect the subject matter as a whole assessment. In re Richman,
195 USPQ 340, (CCPA 1977). Moreover, even the concluding step of
building a bridge or dam may not suffice. In re Sarker, 200 USPQ
132 (CCPA, 1978). In other words, for purposes here, the subject
matter as a whole must be viewed in context on a case by case
basis.

In analyzing computer program related claims, it is essential to
recognize that computer implemented processes are encompassed
within 35 U.S.C. 101 under the same principles as other machine
implemented processes, subject to judicially determined
exceptions, inter alia, mathematical formulas, methods of
calculation, and mere ideas. In re Johnson et al, 200 USPQ 199 at
210, 211 (CCPA, 1978). Claims seeking coverage for a computer
program implemented process have been held to be statutory by the
CCPA in In re Pardo, 214 USPQ 673 (CCPA, 1982), In re Toma, 197
USPQ 852 (CCPA 1978), and In re Chatfield, 191 USPQ 730 (CCPA,
1976). In accordance with the two-step procedure outlined above,
claims seeking coverage for a computer program would be
non-statutory under 35 U.S.C. 101, only if, when considered as a
whole, they merely recite a mathematical algorithm, or a method
of calculation which is not applied in any manner to physical
elements or process steps. Such an approach is the same as that
contemplated for apparatus claims by the CCPA in In re Pardo, 214
USPQ 673 at 677 (CCPA, 1982). See also In re Bradley and
Franklin, 202 USPQ 480 (CCPA, 1979).

Certain computer program related claims may be non-statutory
under 35 U.S.C. 101 as falling within judicially determined
exceptions outside the mathematics area. For example, consider
the following claims:

(1) A computer program comprising the steps of:

 a) associating treatment rendered to a patient with a
fee, and

        b) billing said patient in accordance with the fee.
Here the computer program is claimed, not in terms of a specific
instruction set, but alternatively as a series of steps broadly
defining what the program is designed to accomplish. Such a claim
should be viewed as non-statutory under 35 U.S.C. 101 as reciting
a method of doing business.

 (2) A computer program for comparing array A(N) with
array B(M) to generate array C comprising the steps of:

Do 70 N = 1,10
Do 80 M = 1,20
If A(N) = B(N) then C(M) = B(M)
80 Continue 70 Continue

This bare set of instructions fails to recite subject matter that
falls within any statutory category. In this regard, a bare set
of computer instructions does not set forth a sequence of steps
which could be viewed as a statutory process. Such a computer
language listing of instructions, when not associated with a
computing machine to accomplish a specific purpose, would not
constitute a machine implemented process, but would constitute
non-statutory subject matter as the mere idea or abstract
intellectual concept of a programmer, or as a collection of
printed matter.

Further guidance on handling 35 U.S.C. 101 issues may also be
gleaned from the CCPA's detailed claim analysis in the following
decisions: In re Chatfield, 191 USPQ 730 (CCPA, 1976); In re
Johnson, Parrack and Lundsford, 200 USPQ 199 (CCPA, 1979); In re
Sarker, 200 USPQ 132 (CCPA, 1978); In re Gelovatch and Arell, 201
USPQ 136 (CCPA, 1979); In re Bradley and Franklin, 202 USPQ 480
(CCPA, 1979); In re Walter, 205 USPQ 397 (CCPA, 1980).  In re
Taner, 214 USPQ 678 (CCPA, 1982); In re Pardo, 214 USPQ 673
(CCPA, 1982); In re Abele, 214 USPQ 682 (CCPA, 1982); and In re
Meyer, 215 USPQ 193 (CCPA, 1982).

In addition to handling 35 U.S.C. 101 issues in accordance with
the above analytical approach, it should be emphasized that
examiners must also carefully examine mathematical algorithm or
computer programming related applications to insure that they
comply with the disclosure requirements of 35 U.S.C.112 as well
as the novelty and unobviousness requirements of 35 U.S.C. 102
and 35 U.S.C. 103.

2106.01 Computer Programming and 35 U.S.C. 112, First Paragraph
[R-6]

The requirements for sufficient disclosure of inventions
involving computer programming is the same as for all inventions
sought to be patented. Namely, there must be an adequate written
description, the original disclosure should be sufficiently
enabling to allow one to make and use the invention as claimed,
and there must be presentation of a best mode for carrying out
the invention.

The following guidelines, while applicable to a wide range of
arts, are intended to provide a guide for analyzing 35 U.S.C.
112, first paragraph, issues in applications involving computer
programs, software, firmware, or block diagram cases wherein one
or more of the block diagram elements are at least partially
comprised of a computer software component. It should be
recognized that sufficiency of disclosure issues in computer
cases necessarily will require an inquiry into both the
sufficiency of the disclosed hardware as well as the disclosed
software due to the interrelationship and interdependence of
computer hardware and software.

Written Description

The function of the description requirement is to ensure that the
inventor had possession of, as of the filing date of the
application relied upon, the specific subject matter later
claimed by him or her; how the specification accomplishes this is
not material. In re Herschler, 200 USPQ 711, 717 (CCPA 1979) and
further reiterated in In re Kaslow, 217 USPQ 1089 (CAFC 1983).

Best Mode

While the purpose of the best mode requirement is to restrain
inventors from applying for patents while at the same time
concealing from the public the preferred embodiments of their
inventions which they have in fact conceived, In re Gay, 135 USPQ
311, 315 (CCPA 1962); There is no objective standard by which to
judge the adequacy of a best mode disclosure. Instead, only
evidence of concealment (accidental or intentional) is to be
considered. That evidence, in order to result in affirmance of a
best mode rejection must tend to show that the quality of an
applicant's best mode disclosure is so poor as to effectively
result in concealment. In re Sherwood, 204 USPQ 537, 544 (CCPA
1980). Also, see White Consolidated Industries vs Vega
Servo-Control, 214 USPQ 796, 824 (S.D. Michigan, S. Div. 1982);
affirmed on other grounds; 218 USPQ 961 (CCPA 1983).

Enablement

When basing a rejection on the failure of the applicant's
disclosure to meet the enablement provisions of the first
paragraph of 35 U.S.C. 112, the examiner must establish on the
record that he has a reasonable basis for questioning the
adequacy of the disclosure to enable a person of ordinary skill
in the art to make and use the claimed invention without
resorting to undue experimentation. See In re Brown, 177 USPQ 691
(CCPA 1973), In re Ghiron, 169 USPQ 723, (CCPA 1971). Once the
examiner has advanced a reasonable basis for questioning the
adequacy of the disclosure, it becomes incumbent on the applicant
to rebut that challenge and factually demonstrate that his or her
application disclosure is in fact sufficient. See In re Doyle,
179 USPQ at 232 (CCPA 1973), In re Scarbrough, 182 USPQ 298, 302
(CCPA 1974), In re Ghiron, Supra.

2106.02 Disclosure in Computer Programming Cases [R-6]

To establish a reasonable basis for questioning the adequacy of a
disclosure, the examiner must present a factual analysis of a
disclosure to show that a person skilled in the art would not be
able to make and use the claimed invention without resorting to
undue experimentation.

In computer cases, it is not unusual for the claimed invention to
involve two areas of prior art or more than one technology,
(White Consolidated, Supra, 214 USPQ at 821); e.g., an
appropriately programmed computer and an area of application of
said computer. In regard to the skilled in the art standard, in
cases involving both the art of computer programming, and another
technology, the examiner must recognize that the knowledge of
persons skilled in both technologies is the appropriate criteria
for determining sufficiency. See In re Naquin, 158 USPQ 317,
(CCPA1968); In re Brown, 177 USPQ 691 (CCPA 1973); and White
Consolidated, supra at B22.

In a typical computer case, system components are often
represented in a block diagram format, i.e., a group of hollow
rectangles representing the elements of the system, functionally
labelled and interconnected by lines. Such block diagram computer
cases may be categorized into 1) systems which include but are
more comprehensive than a computer and 2) systems wherein the
block elements are totally within the confines of a computer.


BLOCK ELEMENTS MORE COMPREHENSIVE THAN A COMPUTER

The first category of such block diagram cases involves systems
which include a computer as well as other system hardware and/or
software components. In order to meet his burden of establishing
a reasonable basis for questioning the adequacy of such
disclosure, the examiner should initiate a factual analysis of
the system by focusing on each of the individual block element
components. More specifically, such an inquiry should focus on
the diverse functions attributed to each block element as well as
the teachings in the specification as to how such a component
could be implemented. If based on such an analysis, the examiner
can reasonably contend that more than routine experimentation
would be required by one of ordinary skill in the art to
implement such a component or components, that component or
components should specifically be challenged by the examiner as
part of a 35 U.S.C. 112, first paragraph rejection.
Additionally, the examiner should determine whether certain of
the hardware or software components depicted as block elements
are themselves complex assemblages which have widely differing
characteristics and which must be precisely coordinated with
other complex assemblages. Under such circumstances, a reasonable
basis may exist for challenging such a functional block diagram
form of disclosure. See In re Ghiron, supra, In re Brown,
supra.Moreover, even if the applicant has cited prior art patents
or publications to demonstrate that particular block diagram
hardware or software components are old, it should not always be
considered as self evident how such components are to be
interconnected to function in a disclosed complex manner. See In
re Scarbrough, supra, at 301 and In re Forman, 175 USPQ 12, 16
(CCPA 1972). Furthermore, in complex systems including a digital
computer, a microprocessor, or a complex control unit as one of
many block diagram elements, timing between various system
elements may be of the essence and without a timing chart
relating the timed sequences for each element, an unreasonable
amount of work may be required to come up with the detailed
relationships an applicant alleges that he has solved. See In re
Scarbrough, supra at 302.

For example, in a block diagram disclosure of a complex claimed
system which includes a microprocessor and other system
components controlled by the microprocessor, a mere reference to
a prior art, commercially available microprocessor, without any
description of the precise operations to be performed by the
microprocessor, fails to disclose how such a microprocessor would
be properly programmed to either perform any required
calculations or to coordinate the other system components in the
proper timed sequence to perform the functions disclosed and
claimed. If, in such a system, a particular program is disclosed,
such a program should be carefully reviewed to insure that its
scope is commensurate with the scope of the functions attributed
to such a program in the claims. See In re Brown, supra at 695.
If the disclosure fails to disclose any program and if more than
routine experimentation would be required of one skilled in the
art to generate such a program, the examiner clearly would have a
reasonable basis for challenging the sufficiency of such a
disclosure. The amount of experimentation that is considered
routine will vary depending on the facts and circumstances of
individual cases. No exact numerical standard has been fixed by
the courts, but the amount of required experimentation must,
however, be reasonable (White Consolidated, Supra, at 963. One
court apparently found that the amount of experimentation
involved was reasonable where a skilled programmer was able to
write a general computer program, implementing an embodiment
form, within four hours. (Hirschfield, Supra, at 279 et seq.). On
the other hand, another court found that, where the required
period of experimentation for skilled programmers to develop a
particular program would run to 1 1/2 to 2 man) years, this would
be a clearly unreasonable requirement (White Consolidated, supra
at 963).

BLOCK ELEMENTS WITHIN A COMPUTER

The second category of block diagram cases occurs most frequently
in pure data processing applications where the combination of
block elements is totally within the confines of a computer,
there being no interfacing with external apparatus other than
normal input/output devices. In some instances, it has been found
that particular kinds of block diagram disclosures were
sufficient to meet the enabling requirement of 35 U.S.C. 112,
first paragraph. See In re Knowlton, 178 USPQ 486 (CCPA 1973), In
re Comstock and Gilmer, 178 USPQ 616 (CCPA 1973). Most
significantly, however, in both the Comstock and Knowlton cases,
the decisions turned on the appellants' disclosure of 1) a
reference to and reliance on an identified prior art computer
system and 2) an operative computer program for the referenced
prior art computer system. Moreover, in Knowlton the disclosure
was presented in such a detailed fashion that the individual
program's steps were specifically interrelated with the operative
structural elements in the referenced prior art computer system.
The Court in Knowlton indicating that the disclosure did not
merely consist of a sketchy explanation of flow diagrams or a
bare group of program listings together with a reference to a
proprietary computer in which they might be run. The disclosure
was characterized as going into considerable detail into
explaining the interrelationships between the disclosed hardware
and software elements. Under such circumstances, the Court
considered the disclosure to be concise as well as full, clear
and exact to a sufficient degree to satisfy the literal language
of 35 U.S.C. 112, first paragraph. It must be emphasized that
because of the significance of the program listing and the
reference to and reliance on an identified prior art computer
system, absent either of these items, a block element disclosure
within the confines of a computer should be scrutinized in
precisely the same manner as the first category of block diagram
cases discussed above.

Regardless of whether a disclosure involves block elements more
comprehensive than a computer or block elements totally within
the confines of a computer, the examiner, when analyzing method
claims, must recognize that the specification must be adequate to
teach how to practice the claimed method. If such practice
requires particular apparatus, it is axiomatic that the
application must therefore provide a sufficient disclosure of
that apparatus if such is not already available. See In re
Ghiron, supra at 727 and In re Gunn, 190 USPQ 402, 406 (CCPA
1976). When the examiner questions the adequacy of computer
system or computer programming disclosures, the examiner's
reasons for finding the specification to be non-enabling should
be supported by the record as a whole. In this regard, it is also
essential for the examiner to reasonably challenge evidence
submitted by the applicant. For example, in In re Naquin, supra,
an affiant's statement unchallenged by the examiner, that the
average computer programmer was familiar with the subroutine
necessary for performing the claimed process, was held to be a
statement of fact which rendered the examiner's rejection
baseless. In other words, unless the examiner presents a
reasonable basis for challenging the disclosure in view of the
record as a whole, a 35 U.S.C. 112, first paragraph rejection in
a computer system or computer programming case will not be
sustained on appeal. See In re Naquin, supra, In re Morehouse and
Bolton, 192 USPQ 29, 32 (CCPA 1976).

While no specific universally applicable rule exists for
recognizing an insufficiently disclosed application involving
computer programs, an examining guideline to generally follow is
to challenge the sufficiency of such disclosures which fail to
include either the computer program itself or a reasonably
detailed flowchart which delineates the sequence of operations
the program must perform. In programming applications whose
software disclosure only includes a flowchart, as the complexity
of functions and the generality of the individual components of
the flowchart increase, the basis for challenging the sufficiency
of such a flowchart becomes more reasonable because the
likelihood of more than routine experimentation being required to
generate a working program from such a flowchart also increases.

As stated earlier, once an examiner has advanced a reasonable
basis or presented evidence to question the adequacy of a
computer system or computer programming disclosure, the applicant
must show that his or her specification would enable one of
ordinary skill in the art to make and use the claimed invention
without resorting to undue experimentation. In most cases,
efforts to meet this burden involve submitting affidavits,
referencing prior art patents or technical publications,
arguments of counsel or combinations of these approaches

AFFIDAVIT PRACTICE ( 37 CFR 1.132)

In computer cases, affidavits must be critically analyzed.
Affidavit practice usually initially involves analyzing the skill
level and/or qualifications of the affiant, which should be of
the routineer in the art. When an affiant's skill level is higher
than that required by the routineer for a particular application,
an examiner may challenge the affidavit since it would not be
made by a routineer in the art, and therefore would not be
probative as to the amount of experimentation required by a
routineer in the art to implement the invention. An affiant
having a skill level or qualifications above that of the
routineer in the art would require less experimentation to
implement the claimed invention than that for the routineer.
Similarly, an affiant having a skill level or qualifications
below that of the routineer in the art would require more
experimentation to implement the claimed invention than that for
the routineer in the art. In either situation, the standard of
the routineer in the art would not have been met.

In computer systems or programming cases, the problems with a
given affidavit, which relate to the sufficiency of disclosure
issue, generally involve affiants submitting few facts to support
their conclusions or opinions. Some affidavits may go so far as
to present conclusions on the ultimate legal question of
sufficiency. In re Brandstadter, Kienzle and Sykes, 179 USPQ 286
(CCPA 1973) illustrates the extent of the inquiry into the
factual basis underlying an affiant's conclusions or opinions. In
Brandstadter, the invention concerned a stored program controller
(computer) programmed to control the storing, retrieving and
forwarding of messages in a communications system. The disclosure
consisted of broadly defined block diagrams of the structure of
the invention and no flowcharts or program listings of the
programs of the controller. The Court quoted extensively from the
Examiner's Office Actions and Examiner's Answer in its opinion
where it was apparent that the Examiner consistently argued that
the disclosure was merely a broad system diagram in the form of
labelled block diagrams along with statements of a myriad of
desired results. Various affidavits were presented in which the
affiants stated that all or some of the system circuit elements
in the block diagrams were either well known in the art or could
be constructed by the skilled design engineer, that the
controller was capable of being programmed to perform the stated
functions or results desired, and that the routineer in the art
could design or construct or was able to program the system. The
Court did consider the affiants' statements as being some
evidence on the ultimate legal question of enablement but
concluded that the statements failed in their purpose since they
recited conclusions or opinions with few facts to support or
buttress these conclusions. With reference to the lack of a
disclosed computer program or even a flow chart of the program to
control the message switching system, the record contained no
evidence as to the number of programmers needed, the number of
man-hours and the level of skill of the programmers to produce
the program required to practice the invention.

It should be noted also that it is not opinion evidence directed
to the ultimate legal question of enablement, but rather factual
evidence directed to the amount of time and effort and level of
knowledge required for the practice of the invention from the
disclosure alone which can be expected to rebut a prima facie
case of nonenablement. See Hirschfield v. Banner, Commissioner of
Patents and Trademarks, 200 USPQ 276, 281 (D.D.C.  1978). It has
also been held that where an inventor described the problem to be
solved to an affiant, thus enabling the affiant to generate a
computer program to solve the problem, such an affidavit failed
to demonstrate that the application alone would have taught a
person of ordinary skill in the art how to make and use the
claimed invention. See In re Brown, supra at 695. The Court
indicated that it was not factually established that the
applicant did not convey to the affiant vital and additional
information in their several meetings in addition to that set out
in the application. Also of significance for an affidavit to be
relevant to the determination of enablement is that it must be
probative of the level of skill of the routineer in the art as of
the time the applicant filed his application. See In re Gunn,
supra at, 406. In this case each of the affiants stated what was
known at the time he executed the affidavit, and not what was
known at the time the applicant filed his application.

REFERENCING PRIOR ART DOCUMENTS

Earlier it has been discussed that citing in the specification
the commercial availability of an identified prior art computer
system is very pertinent to the issue of enablement. But in some
cases, this approach may not be sufficient to meet the
applicant's burden. Merely citing in an affidavit extracts from
technical publications in order to satisfy the enablement
requirement is not sufficient if it is not made clear that a
person skilled in the art would know which, or what parts, of the
cited circuits could be used to construct the claimed device or
how they could be interconnected to act in combination to produce
the required results. See In re Forman, supra at 16. This
analysis would appear to be less critical where the circuits
comprising applicant's system are essentially standard components
comprising an identified prior art computer system and a standard
device attached thereto.

Prior art patents are often relied on by applicants to show the
state of the art for purposes of enablement. However, these
patents must have an issue date earlier than the effective filing
date of the application under consideration. See In re Budnick,
190 USPQ 422, 424 (CCPA 1976). An analogous point was made in In
re Gunn, supra where the court indicated that patents issued
after the filing date of the applicant's application are not
evidence of subject matter known to any person skilled in the art
since their subject matter may have been known only to the
patentees and the Patent and Trademark Office.

Merely citing prior art patents to demonstrate that the
challenged components are old may not be sufficient proof since,
even if each of the enumerated devices or labelled blocks in a
block diagram disclosure were old per se, this would not make it
self-evident how each would be interconnected to function in a
disclosed complex combination manner. Therefore, the
specification in effect must set forth the integration of the
prior art, otherwise it is likely that undue experimentation, or
more than routine experimentation would be required to implement
the claimed invention. See In re Scarbrough, supra at 301. The
Court also noted that any cited patents which are used by the
applicant to demonstrate that particular box diagram hardware or
software components are old must be analyzed as to whether such
patents are germane to the instant invention and as to whether
such components provide better detail of disclosure as to such
components than an applicant's own disclosure. Also any patent or
publication cited to provide evidence that a particular
programming technique is well known in the programming art does
not demonstrate that one of ordinary skill in the art could make
and use correspondingly disclosed programming techniques unless
both programming techniques are of approximately the same degree
or complexity. See In re Knowlton, supra at 37 (CCPA 1974).
ARGUMENTS OF COUNSEL

Arguments of counsel may be effective in establishing that an
examiner has not properly met his or her burden or has otherwise
erred in his or her position. In these situations, an examiner
may have failed to set forth any basis for questioning the
adequacy of the disclosure or may have not considered the whole
specification, including the drawings and the written
description. However, it must be emphasized that arguments of
counsel alone cannot take the place of evidence in the record
once an examiner has advanced a reasonable basis for questioning
the disclosure. See In re Budnick, supra at, 424;In re Schulze,
145 USPQ 716 (CCPA 1965); and In re Cole, 140 USPQ 230 (CCPA
1964). For example, in a case where the record consisted
substantially of arguments and opinions of applicant's attorney,
the Court indicated that factual affidavits could have provided
important evidence on the issue of enablement. See In re
Knowlton, supra at, 37 and In re Wiseman, 201 USPQ 658 (CCPA
1979).