In Re Kuriappan P. Alappat, Edward E. Averill and James G. Larsen, 33 F.3d 1526 (Fed. Cir. 1994)

RICH, Circuit Judge, with whom:

as to Part I (Jurisdiction): PAULINE NEWMAN, LOURIE and RADER, Circuit Judges, join; ARCHER, Chief Judge, NIES and PLAGER, Circuit Judges, concur in conclusion; and MAYER, MICHEL, CLEVENGER and SCHALL, Circuit Judges, dissent; and

as to Part II (Merits): PAULINE NEWMAN, LOURIE, MICHEL, PLAGER and RADER, Circuit Judges, join; ARCHER, Chief Judge, and NIES, Circuit Judge, dissent; and MAYER, CLEVENGER and SCHALL, Circuit Judges, take no position.

Kuriappan P. Alapatt, Edward E. Averill, and James G. Larsen (collectively Alappat) appeal the April 22, 1992, reconsideration decision of the Board of Patent Appeals and Interferences (Board) of the United States Patent and Trademark Office (PTO), Ex Parte Alappat, 23 USPQ2d 1340 (BPAI, 1992), which sustained the Examiner's rejection of claims 15-19 of application Serial No. 07/149,792 ('792 application) as being unpatentable under 35 U.S.C. § 101 (1988).

This court must determine whether the Board's reconsideration decision constitutes a valid decision over which this court may exercise subject matter jurisdiction pursuant to 28 U.S.C. § 1295(a) (4) (A) (1988) and 35 U.S.C. § 141 (1988). As discussed below, the legality of the Board panel which issued the reconsideration decision is in question, thus raising the issue of the validity of the decision itself and consequently our authority to review that decision. Therefore, before addressing the merits, it is appropriate that we first determine that the decision was rendered by a legally constituted panel to ensure that a jurisdictional cloud does not hang over our holding on the merits. See In re Bose Corp., 772 F.2d 866, 869, 227 USPQ 1, 3-4 (Fed. Cir. 1985).¹ 

Although Alappat does not contest the validity of the Board's reconsideration decision, jurisdiction cannot be conferred on this court by waiver or acquiescence. Coastal Corp. v. United States, 713 F.2d 728, 730 (Fed. Cir. 1983). This court therefore has raised the issue of jurisdiction sua sponte, as is its duty. See Mansfield, Coldwater & Lake Mich. Ry. Co. v. Swan, 111 U.S. 379, 382, 4 S. Ct. 510, 511, 28 L. Ed. 462 (1884); Wyden v. Commissioner of Patents & Trademarks, 807 F.2d 934, 935, 231 USPQ 918, 919 (Fed. Cir. 1986); see also 5 WRIGHT & MILLER, FEDERAL PRACTICE AND PROCEDURE Sec. 1393 (1990). To this end, this court, having decided to hear the case in banc, issued an Order on December 3, 1992, requesting briefing on the following three questions:

(1) When a three-member panel of the Board has rendered its decision, does the Commissioner have the authority to constitute a new panel for purposes of reconsideration?

(2) If the Commissioner lacks such authority, is the decision of such a new panel a decision of the Board for purposes of 28 U.S.C. § 1295(a) (4) (A)? If not, does this court have jurisdiction to reach the merits of the appealed decision?

(3) What is the relationship, if any, between the "reconsideration" action taken in this case and "rehearings" by the Board provided for in 35 U.S.C. § 7(b)?

Consistent with our discussion below, we hold that the answer to the first question is yes. Consequently, we need not address the second question. As to the third question, we hold, for the reasons explained later, that the "reconsideration" by the Board was a "rehearing" as provided for in 35 U.S.C. § 7(b) (1988).

In an Office Action mailed December 5, 1989, the Examiner finally rejected claims 15-19 under 35 U.S.C. § 101 as being directed to non-statutory subject matter. Alappat appealed this rejection to the Board pursuant to 35 U.S.C. § 134 (1988), and a three-member panel made up of Examiners-in-Chief Lindquist, Thomas, and Krass reversed the Examiner's non-statutory subject matter rejection in a decision mailed June 26, 1991. The Examiner then requested reconsideration of this decision, pursuant to section 1214.04 of the Manual of Patent Examining Procedure (MPEP), stating that the panel's decision conflicted with PTO policy. The Examiner further requested that such reconsideration be carried out by an expanded panel.

An expanded eight-member panel, acting as the Board, granted both of the Examiner's requests. The expanded panel was made up of PTO Commissioner Manbeck, PTO Deputy Commissioner Comer, PTO Assistant Commissioner Samuels, Board Chairman Serota, Board Vice-Chairman Calvert, and the three members of the original panel. On April 22, 1992, the five new members of the expanded panel issued the majority decision now on appeal, authored by Chairman Serota, in which they affirmed the Examiner's Sec. 101 rejection, thus ruling contrary to the decision of the original three-member panel. The three members of the original panel dissented on the merits for the reasons set forth in their original opinion, which they augmented in a dissenting opinion.

The majority stated that its reconsideration decision was a "new decision" for purposes of requesting reconsideration or seeking court review of that decision. It did not, however, vacate the original three-member panel decision. Instead, the majority indicated that the original, three-member panel decision was only "modified to the extent indicated." Alappat, 23 USPQ2d at 1347. That "modification" was, however, a de facto reversal of the original panel's decision, affirming instead of reversing the examiner.

(1) The Legality of the Board's Rehearing Panel

When statutory interpretation is at issue, the plain and unambiguous meaning of a statute prevails in the absence of clearly expressed legislative intent to the contrary. See Mansell v. Mansell, 490 U.S. 581, 592, 109 S. Ct. 2023, 2030, 104 L. Ed. 2d 675 (1989); Hoechst Aktiengesellschaft v. Quigg, 917 F.2d 522, 526, 16 USPQ2d 1549, 1552 (Fed. Cir. 1990). In this case, the composition of the Board and its authority to reconsider its own decisions, and the Commissioner's authority over the Board, are governed by 35 U.S.C. § 7, which reads:

(a) The examiners-in-chief shall be persons of competent legal knowledge and scientific ability, who shall be appointed to the competitive service. The Commissioner, the Deputy Commissioner, the Assistant Commissioners, and the examiners-in-chief shall constitute the Board of Patent Appeals and Interferences.

(b) The Board of Patent Appeals and Interferences shall, on written appeal of an applicant, review adverse decisions of examiners upon applications for patents and shall determine priority and patentability of invention in interferences declared under section 135(a) of this title. Each appeal and interference shall be heard by at least three members of the Board of Appeals and Interferences, who shall be designated by the Commissioner. Only the Board of Patent Appeals and Interferences has the authority to grant rehearings.

35 U.S.C. § 7 (1988) (emphasis added).

For the reasons set forth below, we hold that Sec. 7 grants the Commissioner the authority to designate the members of a panel to consider a request for reconsideration of a Board decision. This includes, as in this case, the Commissioner designating an expanded panel made up of the members of an original panel, other members of the Board, and himself as such, to consider a request for reconsideration of a decision rendered by that original panel. The Board's reconsideration decision therefore constituted a valid decision over which this court may exercise subject matter jurisdiction.

(a)

At the outset, we note that Sec. 7(a) plainly and unambiguously provides that the Commissioner, the Deputy Commissioner, and the Assistant Commissioners are members of the Board. Section 7(b) plainly and unambiguously requires that the Commissioner designate "at least three" Board members to hear each appeal. By use of the language "at least three," Congress expressly granted the Commissioner the authority to designate expanded Board panels made up of more than three Board members.² 

There is no evidence in the legislative history of Sec. 7, or Title 35 as a whole, clearly indicating that Congress intended to impose any statutory limitations regarding which Board members the Commissioner may appoint to an expanded panel or when the Commissioner may convene such a panel.³  The Commissioner thus has the authority to convene an expanded panel which includes, or as in this case is predominately made up of, senior executive officers of the PTO such as the Deputy Commissioner, the Assistant Commissioner, the Board's Chairman and Vice-Chairman, and himself.⁴ 

(b)

The focus of the jurisdictional inquiry in this case is the last sentence of Sec. 7(b) which provides: "Only the Board of Patent Appeals and Interferences has the authority to grant rehearings." The Commissioner contends that the reconsideration action taken in this case constituted a type of "rehearing" as mentioned in the last sentence of Sec. 7(b). For the reasons set forth below, we find the Commissioner's interpretation of Sec. 7 to be a reasonable one entitled to deference, given that neither the statute itself nor the legislative history thereof indicates Congressional intent to the contrary.

We interpret the term "rehearings" in Sec. 7 as encompassing any reconsideration by the Board of a decision rendered by one of its panels. The fact that Sec. 7 refers to "rehearings" whereas 37 C.F.R. 1.197 (PTO Rule 197)⁵  refers to "reconsideration" is of no significance. The differing terminology appears to be nothing more than the result of imprecise regulation drafting.⁶  We have been unable to find any evidence suggesting that, in promulgating Rule 197, the PTO intended to create a review process separate and distinct from that provided by statute. In addition, our interpretation finds support in In re Schmidt, 377 F.2d 639, 641, 153 USPQ 640, 642 (CCPA 1967), wherein the CCPA accepted, without criticism, the PTO's treatment of a Board reconsideration pursuant to Rule 197, on an examiner's request, as a "rehearing" provided for in Sec. 7(b).⁷ 

We also interpret the Commissioner's express statutory authority to designate the members of a panel hearing an appeal as extending to designation of a panel to consider a request for a rehearing pursuant to Sec. 7(b).⁸  There is no indication to the contrary in the statute, and we have found no legislative history indicating a clear Congressional intent that the Commissioner's authority to designate the members of a Board panel be limited to the designation of an original panel or that the Board be limited to exercising its rehearing authority only through the panel which rendered an original decision. In those cases where a different panel of the Board is reconsidering an earlier panel decision, the Board is still the entity reexamining that earlier decision; it is simply doing so through a different panel.

The last sentence of Sec. 7(b) is nothing more than an exclusionary statement vesting the Board with the sole authority to grant a rehearing. Thus, for example, the Commissioner cannot personally grant a rehearing, notwithstanding the general authority that he has over the operation of the PTO. For a general history of the Board and of appeals within and from the PTO, see Michael W. Blommer, The Board of Patent Appeals and Interferences, AIPLA Bulletin 188 (1992), P.J. Federico, The Board of Appeals 1861-1961, 43 JPOS 691 (1961), and Evolution of Patent Office Appeals, 22 JPOS 838-64, 920-49 (1940).

The predecessor of Sec. 7 was section 482 of the Revised Statutes, as amended by the Act of March 2, 1927. The 1927 Act added to the Board the Commissioner, the First Assistant Commissioner, and the Assistant Commissioner. It also eliminated the right of an applicant to appeal to the Commissioner from an adverse Board decision, by adding to the statute the language " [t]he the Board of Appeals shall have sole power to grant rehearings," essentially the same provision as in today's Sec. 7(b). Act of March 2, 1927, ch. 273, Sec. 3, 44 Stat. 1335. Prior to this amendment, the Commissioner acted on petitions for rehearing of adverse Board decisions. Through this amendment, Congress effectively eliminated the onerous burden placed on the Commissioner regarding reviewing such appeals, instead steering applicants to the Board with such requests.

The events surrounding the enactment of the 1927 Act do not indicate any Congressional intent to lessen the great supervisory power that the Commissioner possessed over the PTO prior to that Act.⁹  Indeed, at the end of the 1926 House and Senate hearings during which the last sentence of what is now Sec. 7(b) was discussed, the Senate Committee on Patents concluded:

One lawyer [remarks of Fenning, chairman of the committee on laws and rules of the American Patent Law Association, Procedure in the Patent Office, Hearing on S. 4812 Before the Committee on Patents, United States Senate, 69th Con.2d Sess. 19, 21-22 (1926) ] has expressed the fear that in providing in lines 16-17, page 2 (sec. 482) [the precursor to section 7(b) ], that the board of appeals shall have the sole power to grant "rehearings," the bill may lessen the present supervisory power of the commissioner, but it was agreed by the other lawyers at the hearing, and the Committee on Patents concurs in this view, that the supervisory power of the commissioner, as it has existed for a number of decades, remains unchanged by the bill.

S.Rep. No. 1313, 69th Cong., 2d Sess. 4 (1927) (emphasis added). Fenning expressed the same concerns to the House Committee on Patents. 1926 House Hearing at 22-23. The House Committee Report, H.R. No. 1889, 69th Cong., 2d Sess. (1927), is silent on the issue, thus suggesting that the House did not intend to give the last sentence of Sec. 7(b) a different meaning than was ascribed to it by the Senate. We believe the foregoing illustrates the lack of intent on the part of Congress in enacting the last sentence of Sec. 7(b) to place any limitations on the Commissioner's ability to designate Board panels, including Board panels for "rehearing" purposes.

(c)

Our holding is consistent with the broad supervisory authority that Congress has granted the Commissioner under Title 35 regarding the operation of the PTO. Exemplary thereof is Sec. 6(a), which reads in pertinent part:

The Commissioner, under the direction of the Secretary of Commerce, shall superintend or perform all duties required by law respecting the granting and issuing of patents.

35 U.S.C. § 6(a) (1988) (emphasis added). The Commissioner also may establish regulations not inconsistent with the law, with the approval of the Secretary of Commerce, 35 U.S.C. § 6 (1988), cause an examination to be made of an application, 35 U.S.C. § 131 (1988), declare an interference, 35 U.S.C. § 135 (1988), and issue a patent when authorized by law, 35 U.S.C. §§ 131, 145 (1988), 151 (1988), 153 (1988).

Moreover, the Commissioner is not bound by a Board decision that an applicant is entitled to a patent. Only a court can order the Commissioner to act, not the Board. Even though Board members serve an essential function, they are but examiner-employees of the PTO, and the ultimate authority regarding the granting of patents lies with the Commissioner.¹⁰  For example, if the Board rejects an application, the Commissioner can control the PTO's position in any appeal through the Solicitor of the PTO; the Board cannot demand that the Solicitor attempt to sustain the Board's position. Conversely, if the Board approves an application, the Commissioner has the option of refusing to sign a patent; an action which would be subject to a mandamus action by the applicant. The Commissioner has an obligation to refuse to grant a patent if he believes that doing so would be contrary to law. The foregoing evidences that the Board is merely the highest level of the Examining Corps, and like all other members of the Examining Corps, the Board operates subject to the Commissioner's overall ultimate authority and responsibility.

One also should not overlook the asymmetry of Sec. 141, which grants applicants, but not the Commissioner, the right to appeal a decision of the Board to this court. Since Congress has reenacted Sec. 141 several times since the 1927 debates about the Board's independence, see 1926 House Hearing at 22-29, it is safe to infer that Congress believed the Commissioner did not need a right of appeal in view of his limited control over the Board pursuant to Sec. 7 and in view of his rulemaking authority pursuant to Sec. 6(a).

(d)

Contrary to suggestions by Amicus Curiae Federal Circuit Bar Association (FCBA), our holding does not conflict with this court's previous statements in Animal Legal Defense Fund v. Quigg, 932 F.2d 920, 928-29, 18 USPQ2d 1677, 1684 (Fed. Cir. 1991), that the Board is not the alter ego or agent of the Commissioner. In that case, this court merely pointed out that the Board derives its adjudicatory authority from a statutory source independent of the Commissioner's rulemaking authority, and that, although the Commissioner may sit on the Board, "in that capacity he serves as any other member." Animal Legal Defense Fund, 932 F.2d at 929 n. 10, 18 USPQ2d at 1684 n. 10. In other words, the Commissioner has but one vote on any panel on which he sits, and he may not control the way any individual member of a Board panel votes on a particular matter. However, the present statutory scheme does allow the Commissioner to determine the composition of Board panels, and thus he may convene a Board panel which he knows or hopes will render the decision he desires, even upon rehearing, as he appears to have done in this case.

Such a result does not reduce the Board to an alter ego or agent of the Commissioner. To the contrary, the fact remains that the Commissioner may not unilaterally overturn a decision of a Board panel or instruct other Board members how to vote. The Commissioner's limited control in this manner over the Board and the decisions it issues is not offensive to Title 35 as a whole, given that Congress clearly did not intend the Board to be independent of any and all oversight by the Commissioner. See e.g. Lindberg v. Brenner, 399 F.2d 990, 992-93, 158 USPQ 380, 381-82 (D.C.1968). The plain and unambiguous wording of Sec. 7 intertwining the powers of the Board and the Commissioner clearly indicates that Congress did not intend the Board to have such complete independence.

(e)

Amicus Curiae FCBA suggests that the Commissioner's redesignation practices in this case violated Alappat's due process rights, citing Utica Packing Co. v. Block, 781 F.2d 71 (6th Cir. 1986). In addition, an issue was raised at oral argument as to whether the Commissioner's designation practices are governed by any provisions of the Administrative Procedure Act (APA), and if so, whether the Commissioner's actions in this case violated any of these provisions. We need not address either of these issues.

The FCBA does not have standing to make a due process argument, see Broadrick v. Oklahoma, 413 U.S. 601, 610, 93 S. Ct. 2908, 2915, 37 L. Ed. 2d 830 (1973) ("constitutional rights are personal and may not be asserted vicariously") and United Parcel Service, Inc. v. Mitchell, 451 U.S. 56, 60 n. 2, 101 S. Ct. 1559, 1562 n. 2, 67 L. Ed. 2d 732 (1981) (amicus may not rely on new arguments not presented below), and Alappat has waived any due process argument by acquiescing to the Commissioner's actions in this case. Thus, there is no case or controversy before this court with respect to any alleged due process violation. There also is no case or controversy as to whether the Commissioner's actions in this case violated any provision of the APA, given that Alappat does not contest these actions, and this is not an issue which this court may raise sua sponte. Moreover, neither of these issues is germane to the jurisdictional issue this court raised sua sponte, i.e., whether the Board's reconsideration decision constituted a statutorily valid decision under 35 U.S.C. § 141 over which this court may exercise subject matter jurisdiction pursuant to 28 U.S.C. § 1294(a) (4) (A).

(f)

Finally, we acknowledge the considerable debate and concern among the patent bar and certain Board members regarding the Commissioner's limited ability to control Board decisions through his authority to designate Board panels.¹¹  Our responsibility, however, is merely to adjudge whether the Commissioner's designation practices as they were applied in this particular case resulted in a valid decision over which this court may exercise subject matter jurisdiction, not to assess whether they were sound from a public policy standpoint. We leave to the legislature to determine whether any restrictions should be placed on the Commissioner's authority in this regard. Absent any congressional intent to impose such restrictions, we decline to do so sua sponte.

Our conclusion is that the appealed decision should be reversed because the appealed claims are directed to a "machine" which is one of the categories named in 35 U.S.C. § 101, as the first panel of the Board held.A. Alappat's Invention

Alappat's invention relates generally to a means for creating a smooth waveform display in a digital oscilloscope. The screen of an oscilloscope is the front of a cathode-ray tube (CRT), which is like a TV picture tube, whose screen, when in operation, presents an array (or raster) of pixels arranged at intersections of vertical columns and horizontal rows, a pixel being a spot on the screen which may be illuminated by directing an electron beam to that spot, as in TV. Each column in the array represents a different time period, and each row represents a different magnitude. An input signal to the oscilloscope is sampled and digitized to provide a waveform data sequence (vector list), wherein each successive element of the sequence represents the magnitude of the waveform at a successively later time. The waveform data sequence is then processed to provide a bit map, which is a stored data array indicating which pixels are to be illuminated. The waveform ultimately displayed is formed by a group of vectors, wherein each vector has a straight line trajectory between two points on the screen at elevations representing the magnitudes of two successive input signal samples and at horizontal positions representing the timing of the two samples.

Because a CRT screen contains a finite number of pixels, rapidly rising and falling portions of a waveform can appear discontinuous or jagged due to differences in the elevation of horizontally contiguous pixels included in the waveform. In addition, the presence of "noise" in an input signal can cause portions of the waveform to oscillate between contiguous pixel rows when the magnitude of the input signal lies between values represented by the elevations of the two rows. Moreover, the vertical resolution of the display may be limited by the number of rows of pixels on the screen. The noticeability and appearance of these effects is known as aliasing.

To overcome these effects, Alappat's invention employs an anti-aliasing system wherein each vector making up the waveform is represented by modulating the illumination intensity of pixels having center points bounding the trajectory of the vector. The intensity at which each of the pixels is illuminated depends upon the distance of the center point of each pixel from the trajectory of the vector. Pixels lying squarely on the waveform trace receive maximum illumination, whereas pixels lying along an edge of the trace receive illumination decreasing in intensity proportional to the increase in the distance of the center point of the pixel from the vector trajectory. Employing this anti-aliasing technique eliminates any apparent discontinuity, jaggedness, or oscillation in the waveform, thus giving the visual appearance of a smooth continuous waveform. In short, and in lay terms, the invention is an improvement in an oscilloscope comparable to a TV having a clearer picture.

Reference to Fig. 5A of the '792 application, reproduced below, better illustrates the manner in which a smooth appearing waveform is created.

NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE

The claimed rasterizer is described to function as follows. It starts with "vector list" data which the specification states may be obtained by "sampling" and "digitizing" an analog input "signal." See spec. at 2, ll. 16-18. Sequential pairs of "vector list" data are stored in registers 70 and 72. Id. at 11, ll. 30-33. Vector list data are thus simply a sequence of numbers (y coordinates on an x-y coordinate system).

With respect to each pair of data, a first arithmetic logic unit (ALU) 74 calculates their difference; the result is stored in another register 76. Id. at 11, l. 34, to 12, l. 6. This difference is called the "vertical distance." The difference is calculated by the following formula: > yi =yi -yi +1, where i and i+1 are the sequential y coordinates.

A second ALU 80 calculates the "elevation." The elevation is the distance between the starting y value and a particular y value under consideration. It is calculated by the following formula: > yi,j =yi -sj, where sj is distance of the point under consideration and yi is the "vertical distance" described above. The "elevation" is stored in a fourth register 82. Id. at 12, ll. 27-31.

The vertical distance and elevation are each then "normalized" in barrel shifters 84 and 88, respectively, to make the values larger, and the results are stored in a fifth register 90. Id. at 13, ll. 3-16. Normalization means in this context multiplying in base two.

A read-only-memory (ROM) 92 operates on the stored "vertical distance" and "elevation." The ROM contains a table of values, namely "intensity" data as a function of the elevation and vertical distance data. Id. at 13, ll. 27-32. The mathematical function for calculating the intensity data is described generally as follows:

When the vector trajectory [i.e., the line that would have been had the starting coordinates been connected] passes through or very near the center of a pixel [the point under consideration], the pixel is given maximum intensity.... When the ... distance between the center point of a pixel and any vector trajectory is greater than or equal to the ... distance between center points of contiguous pixels, the pixel intensity is set to 0. For pixels having center points intermediate in distance from the vector trajectory, pixel intensity is selected to be roughly in inverse proportion to such distance. [Spec. at 9, ll. 23-33.]

The most basic formula for selecting the pixel intensity is given as follows: I'(i,j) = [1 - (> yi,j /> yi) ]X F, where F = 15. Id. at 14, l. 18.

Figure 5 provides an example of what the "rasterizer" does. The input to the rasterizer is given as two consecutive y coordinates, i = 0 and i + 1 = 7.²¹  (The "vertical distance" therefore is 7 - 0 = 7.) The rasterizer outputs the following array of "I" data (vector endpoints are emphasized):

According to the preamble of the claim the data is to be displayed on a display means. The specification gives as an example a cathode-ray-tube. The "I" data produced above by "rasterizing" is "anti-aliased" when a cathode-ray-tube is illuminated according to the data. This means that there would be no discontinuity, jaggedness, or oscillation that might otherwise appear had merely a line been attempted to be graphed. There is no discussion in the specification of the structure of the means for actually displaying the data or of the oscilloscope.

The examiner rejected claims 15-19 as not being directed to an invention or discovery within Sec. 101. As the majority notes, the examiner rejected the claims even though he recognized that claim 15 recited "physical elements" to perform number crunching and an output of the data for eventual display.

On appeal to the board, the original panel found that " [e]ach clause of the body of claim 15 recites a mathematical operation and they are recited to operate together to reach a numeric value or pure number as the end product of the claim." The original panel also found that the claim does not include display of the output data on a cathode-ray-tube but simply a transmission of the result of the mathematical operations. That panel decided, however, that the "critical analysis" for whether claimed subject matter including a mathematical algorithm is within Sec. 101 is whether the claims on their face recite "specific apparatus distinct from other apparatus capable of performing the identical [mathematic] function." (Emphasis added.)From this general rule about claiming structure, the panel reasoned that where a claim recites "means for performing functions," the claimed invention is within Sec. 101, unless the functionally-defined means are so broad that they encompass "every means for performing the recited [mathematical] functions." Since the means must be construed to correspond to the structures disclosed in the specification and their equivalents per 35 U.S.C. § 112, the original board's test for whether an invention or discovery was of the type enumerated in Sec. 101 depended on the quantity of disclosure in the specification.

Applying this rule, the original panel found that the structures disclosed in the specification as corresponding to the means were two ALUs, two barrel shifters, and a ROM. It concluded that these were "specific apparatus" because they were "clearly disclosed to be conventional structure in the art" and were not simply "rectangular block diagrams" that "may not be ascertained to be disclosed as conventional structure in the art," nor were they means described in a "very broad, generic sense." The original panel therefore concluded that the claimed invention or discovery was within Sec. 101 and reversed the examiner's contrary rejection of claims 15-19.

3. The Decision of the Reconsideration Panel

The reconsideration panel of the board also felt that the dispositive issue under Sec. 101 was whether the claims recited "specific apparatus." Ex Parte Alappat, 23 USPQ2d 1340, 1341 (BPAI 1992). The reconsideration panel, however, applied this test to an opposite conclusion. First it reasoned that the means-for-function clauses must be interpreted as covering every structure for performing the recited function, and the burden was on the applicant to prove otherwise. Id. at 1343; see In re Donaldson Co., 16 F.3d 1189, 1192, 1193-94, 29 USPQ2d 1845, 1847-48, 1849 (Fed. Cir. 1994) (in banc) (discussing PTO practice of not applying Sec. 112, p 6, during prosecution). The panel refused to interpret the means-for-function clauses as limited to the corresponding circuit structure disclosed in the specification and equivalents thereof. Thus, this panel concluded that the claim was to every structure for performing the recited mathematic functions, and that the claim was to be analyzed as though it actually was directed to a "method" comprising the functions performed by the claimed means. 23 USPQ2d at 1344-45.

Alternatively, the reconsideration panel found that a "general purpose digital computer" was within the range of equivalents contemplated by Sec. 112, p 6. It reasoned that in such cases the claimed structure should be treated as a method. Id. at 1345.

In passing, the reconsideration panel rejected the original panel's holding that claims containing means-for-function clauses are nonstatutory only when the corresponding structure in the specification is so generic as to be illusory, although it recognized that where the structure is illusory, the claim would be to the mathematic function and would fail under Sec. 101.

Applying the "method" analysis, the reconsideration panel agreed with the original panel that each element of the claim recited a mathematical operation and that the displaying of the waveform on a cathode-ray-tube was not claimed. It found that the specification did not disclose, nor was it claimed, where the input data--the vector list--was to come from or how it was to be generated. The reconsideration panel concluded that the claimed invention was simply a method of computing a set of numbers from another set of numbers, and therefore was a nonstatutory claim to a mathematical algorithm. Id. at 1346-47.

The majority of this court first recognizes that the reconsideration panel erred by refusing to interpret the means-for-function clauses as not being directed to the specific structures disclosed in the specification--two ALUs, two barrel shifters, and a ROM--and their equivalents, and that the original panel was correct in its construction of claim 15. Thus, pursuant to Sec. 112, p 6, and in view of the specification, the claims do recite specific digital circuitry structures.

The majority concludes that because the claim recites connected structures, the claim "unquestionably recites a machine." Page 1541. Although stating that it is unquestionable, the court asks whether the claimed apparatus is not a machine within Sec. 101 because of one of the "judicially-created" exceptions called the "mathematical algorithm" exception. Page 1542. The majority explains in answering this question that the "claim as a whole" must be analyzed, and that a portion thereof is not dispositive. The court first concludes that the claimed subject matter is not a "disembodied mathematical concept" because the claim recites a "combination of interrelated [circuitry] elements" for converting data into data. Page 1544. Second, the majority reasons that because the claim is limited to specific structural elements, it would not "wholly preempt" the mathematical algorithm contained therein. Page 1544. Third, the majority holds that the word "rasterizer" in the preamble is not a mere "field-of-use" limitation, but limits the claimed subject matter to the production of "output illumination data." Id.

Finally, the court concludes that if the claimed "rasterizer" were equivalent to a "general purpose digital computer" programmed to perform the calculations performed by the rasterizer, such programmed computer would be the invention of a "new machine" within Sec. 101. Page 1545.

1. Of course, I agree that the means-for-function elements in claim 15 must be construed to cover the corresponding structure described in Alappat's specification and equivalents thereof. 35 U.S.C. § 112, p 6; see In re Donaldson Co., 16 F.3d 1189, 1195, 29 USPQ2d 1845, 1850 (Fed. Cir. 1994) (in banc). Accordingly, Alappat correctly argues and the majority properly holds that when the "means" elements of the claim are construed under 35 U.S.C. § 112, p 6, paragraphs (a) to (d) of the claim read as follows (the preamble has been shortened for brevity):

A rasterizer for converting vector list data ... into ... pixel illumination intensity data to be displayed ... comprising:

(a) a first ALU;

(b) a second ALU;

(c) two barrel shifters; and

(d) a ROM.

Further, pursuant to 35 U.S.C. § 112, p 6, elements (a)-(d) also cover equivalents of the two ALUs, the two barrel shifters, and the ROM.

Because the "means" clauses of claim 15 correspond to structure described in the specification, under Donaldson the reconsideration panel of the board erred in failing to construe the claims to recite that structure and equivalents.

2. The Sec. 112, p 6, issue, however, is a red herring in this case. Although the reconsideration panel erred by ignoring specific structure recited in the claims, Alappat's claimed invention still is not the invention or discovery of a machine. The presence of structure on the face of the claims does not ipso facto make the claimed invention or discovery one of statutory subject matter.

To hold that a claim reciting structure necessarily defines an invention within Sec. 101, the majority implicitly resurrects long-dead precedent of the Court of Customs and Patent Appeals in direct conflict with Supreme Court precedent and subsequent precedent of that court. Early precedent of the Court of Customs and Patent Appeals held that a claimed invention or discovery is outside Sec. 101 only if the claim on its face recites in its entirety mathematics, because claims like that would wholly preempt the mathematical operation at issue. That was the extent of the boundaries of the patent law under Sec. 101. E.g., In re Bernhart, 417 F.2d 1395, 1399, 163 USPQ 611, 616 (CCPA 1969); In re Chatfield, 545 F.2d 152, 156, 191 USPQ 730, 733 (CCPA 1976); In re Freeman, 573 F.2d 1237, 1245, 197 USPQ 464, 471 (CCPA 1978). As a corollary, the court reasoned that if the claim does recite structure, the claim necessarily does not "wholly preempt" an abstract idea. E.g., In re Noll, 545 F.2d 141, 148, 191 USPQ 721, 726 (CCPA 1976) ("The instant claims, however, are drawn to physical structure and not to an abstract" mathematical formula.); In re Johnston, 502 F.2d 765, 771, 183 USPQ 172, 177 (CCPA 1974) ("the instant claims, in apparatus form, do not claim or encompass a law of nature, a mathematical formula, or an algorithm" (emphasis in original)), rev'd on other grounds sub nom. Dann v. Johnston, 425 U.S. 219, 96 S. Ct. 1393, 47 L. Ed. 2d 692, 189 USPQ 257 (1976).

However, the Supreme Court expressly reversed the court's wholesale preemption test in Parker v. Flook, 437 U.S. 584, 98 S. Ct. 2522, 57 L. Ed. 2d 451, 198 USPQ 193 (1978). There the Supreme Court concluded that the claimed discovery was nonstatutory even though the applicant's claim did not wholly preempt the mathematic function involved. 437 U.S. at 589-90, 98 S. Ct. at 2525-26, 198 USPQ at 197; accord Diehr, 450 U.S. at 192 n. 14, 101 S. Ct. at 1060 n. 14, 209 USPQ at 10 n. 14; Walter, 618 F.2d at 767, 205 USPQ at 407 (under Flook subject matter can be outside Sec. 101 without "literal preemption"). Flook should have made clear that satisfaction of Sec. 101, and eligibility for the patent reward in general, requires a judgment that the applicant for the patent has actually invented or discovered something in the useful arts and for that reason is deserving of exclusive patent rights. To determine whether the applicant has invented or discovered something within the patent law, it makes no sense for the sole question to be, "Does the applicant happen to recite structure in the claims or not?" See Diehr, Flook, and Benson, supra part II.C.1. (no patent for discovery of mathematical function); Funk Bros. Seed Co. v. Kalo Inoculant Co., 333 U.S. 127, 68 S. Ct. 440, 92 L. Ed. 588, 76 USPQ 280 (1948) (no patent for discovery of naturally occurring phenomenon); Brenner v. Manson, 383 U.S. 519, 86 S. Ct. 1033, 16 L. Ed. 2d 69, 148 USPQ 689 (1966) (no patent for creation of a product without discovering a specific practical utility for it) (discussed supra part II.A.); Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470, 480-81, 94 S. Ct. 1879, 1885-86, 40 L. Ed. 2d 315, 181 USPQ 673, 679 (1974) (discussing generally the practical policy of the patent law). Because the wholesale preemption test cares nothing about the nature of the alleged invention or discovery,²²  the Supreme Court not surprisingly rejected it.

Although the wholesale preemption test became outmoded, the inquiry into specific structure has survived, and indeed has been elevated to the inquiry under Sec. 101, as this case evidences. See also In re Iwahashi, 888 F.2d 1370, 1375, 12 USPQ2d 1908, 1911 (Fed. Cir. 1989) (The claimed subject matter is a statutory "machine" or "manufacture" because the claim is to "apparatus with specific structural limitations" and the claim "defines apparatus in the form of a combination of interrelated means."). However, the majority's test under Sec. 101 that looks simply to whether specific structure is claimed is as inconsistent with Supreme Court precedent as is the wholesale preemption test.

The Supreme Court has held that a claimed invention may represent merely the discovery of a law of nature and be outside the patent law, even though the claim entirely recites a specific and complete structure. See Funk Bros. Seed Co., 333 U.S. at 130, 68 S. Ct. at 441, 76 USPQ at 281 (claim to species of bacteria represented discovery of law of nature and was outside Sec. 101). The Supreme Court has also held that a claimed process may be non-statutory even if it implements a principle in a "specific fashion." Flook, 437 U.S. at 593, 98 S. Ct. at 2527, 198 USPQ at 198. And the Supreme Court has held that a claimed invention may represent the discovery of mathematics alone and be outside Sec. 101 even though the claim recites specific structural limitations. E.g., Benson, 409 U.S. at 64, 73, 93 S. Ct. at 254, 258, 175 USPQ at 674, 677.

In addition, this court's predecessor court has expressly stated that a "claimed computing system" does not necessarily reflect the invention or discovery of a "machine" within Sec. 101. In re Maucorps, 609 F.2d 481, 485, 203 USPQ 812, 816 (CCPA 1979) (claimed apparatus was nonstatutory even though it referred to a disclosed dedicated hard-wired circuit); see also Meyer, 688 F.2d at 796, 215 USPQ at 199 (claimed apparatus nonstatutory even though it was limited to a computer performing the claimed mathematical operations and displaying the result).

Furthermore, the statute does not support a simple "structure" test. 35 U.S.C. § 101 plainly refers to several classes of subject matter having longstanding usage in the patent law and requires that the applicant have "invent [ed] or discover [ed]" a new and useful one of them. "Structure" is not one of these classes. Nor does Sec. 101 simply require a claim that recites structure. Finally, there is no reason to suppose that Sec. 101 should depend only on the adequacy of disclosure when specificity of disclosed and claimed structure is expressly required in 35 U.S.C. § 112.

As the Supreme Court and this court have said, and as the majority says now, the claimed subject matter must be considered as a whole to determine whether the invention or discovery is within Sec. 101. A claim may thus include a limitation directed to a "mathematical formula, computer program or digital computer," and yet the invention or discovery will be within Sec. 101 so long as the claimed invention in total represents an application of such formula, program, or computer. See Diehr, 450 U.S. at 187, 101 S. Ct. at 1057, 209 USPQ at 8. Likewise, a claim may include the recitation of something physical (i.e., structure), and yet the invention or discovery is essentially only mathematical. See In re Grams, 888 F.2d 835, 838-40, 12 USPQ2d 1824, 1827 (Fed. Cir. 1989) (" [I]f there are physical steps included in the claim in addition to the [mathematical] algorithm, the claim might be eligible for patent protection." (emphasis added)). Where the claimed invention is nothing more than a newly discovered mathematical formula or solution, the claimed subject matter will not be statutory simply because included in the claim are one or more references to structure.²³ 

3. So what did Alappat invent or discover? Alappat's specification clearly distinguishes between an "oscilloscope" and a "rasterizer," and Alappat claims his invention in claims 15-19 to be only the "rasterizer."

The "rasterizer" as claimed is an arrangement of circuitry elements for converting data into other data according to a particular mathematical operation. The rasterizer begins with vector "data"--two numbers. " [I]t does not matter how they are ascertained." Brief for Alappat at 39. The two numbers, as they might to any algebra student, "represent" endpoints of a line.

The claimed "rasterizer" ends with other specific "data"--an array of numbers, as the original and reconsideration panels of the board both expressly agreed. See Diehr, 450 U.S. at 186, 101 S. Ct. at 1056, 209 USPQ at 8 ("The claims [in Flook ] were drawn to a method for computing an 'alarm limit.' An 'alarm limit' is simply a number...."); Abele, 684 F.2d at 909, 214 USPQ at 688 (the "claim presents no more than the calculation of a number and display of the result"); Walter, 618 F.2d at 768, 205 USPQ at 407 ("if the end-product of a claimed invention is a pure number, as in Benson and Flook, the invention is nonstatutory"). The end-data of the "rasterizer" are a predetermined and claimed mathematic function of the two input numbers.²⁴ 

Alappat admits that each of the circuitry elements of the claimed "rasterizer" is old. He says they are merely "form." Thus, they are only a convenient and basic way of electrically representing the mathematical operations to be performed, that is, converting vector data into matrix or raster data. In Alappat's view, it is the new mathematic operation that is the "substance" of the claimed invention or discovery. Claim 15 as a whole thus claims old circuitry elements in an arrangement defined by a mathematical operation, which only performs the very mathematical operation that defines it. Rather than claiming the mathematics itself, which of course Alappat cannot do, Alappat claims the mathematically defined structure. But as a whole, there is no "application" apart from the mathematical operation that is asserted to be the invention or discovery.²⁵  What is going on here is a charade. Alappat asks the following:

An input to ... a circuit or processing function is converted into a different thing at the output (otherwise why have the circuit or function in the first place?). If the process is new, useful, and nonobvious, does it really matter whether the implementation is in the form of analog components, digital components, programs for a computer, or a combination thereof? Isn't such a differentiation exalting form over substance? ... [Br. for Alappat at 48.]

The questions are properly answered thusly: "No," in Alappat's claimed "rasterizer" it really does not matter how the mathematics is implemented, and "Yes," assigning Sec. 101 significance to the disclosed structure would be exalting form over substance. So where the claimed structure does not matter and the invention or discovery is only of a "new, useful, and nonobvious" process for solving a mathematical formula, Benson, Flook, Diehr, and years of precedent command that the patent law shall not exalt form over substance, but rather recognize that the substance is outside Sec. 101.

The subject matter of claim 15, as in Flook, "has no substance apart from the calculations involved. The calculations are the beginning and end of the claim [ ]." Walter, 618 F.2d at 769, 205 USPQ at 409. Also as in Flook, the oscilloscope disclosed in Alappat's specification presents a general technological environment for the claimed "rasterizer," insignificant in relation to it. Claim 15 is not even limited to the environment of an oscilloscope. See Abele, 684 F.2d at 909, 214 USPQ at 688. The claimed rasterizer mathematical function presumably has application in conjunction with any current or future device that prints in an x-y coordinate grid, such as oscilloscopes, computer monitors, televisions, laser printers, mechanical printing devices, etc.

This is not to say that digital circuitry cannot be an element in an otherwise statutory machine. Under Diehr, it can.²⁶  But Alappat expressly recognizes the distinction between a "machine," even giving some examples, and the "digital processing" one of its components might perform:

In today's technological environment virtually every machine, from cars to washing machines to instruments [e.g., oscilloscopes], uses digital processing, either with specific digital circuitry and/or a microprocessor executing a program. [Brief for Alappat at 47.]

Thus unlike the rubber curing process in Diehr, the claimed rasterizer here is not an application of mathematics in an otherwise statutory process or product. The rasterizer is simply the mathematical conversion of data. In Diehr, the input data were derived by a claimed component of the overall rubber curing process--the press and thermocouple--which fed data to the claimed computer. Here, however, as the specification and claims indicate, the waveform data converted by the claimed rasterizer are not required to come from a particular machine connected up to the rasterizer, and, as Alappat admits, it does not matter how the data are selected. The sets of waveform numbers converted by the claimed rasterizer could come simply from the mind and hand of a person. The end product of the claimed rasterizer is not precisely cured rubber as it was in Diehr but rather different data as a mathematical function of the original data. Sure the data have some use. Most data have uses, and that is why people spend time calculating data. But just having some use for data does not make the creation of particular data patentable. Like the subject matter in Flook and Benson, and unlike the subject matter in Diehr, Alappat's claimed rasterizer is newly discovered mathematics and not the invention or discovery of a process or product applying it. Cf. Alappat, 23 USPQ2d at 1345 ("The claimed invention must be evaluated for what it is. The claimed invention is a mathematical algorithm for computing pixel information." (citation omitted)). Even though it recites structure, claim 15 should be rejected under Sec. 101.

Rejection under Sec. 101 is especially important for the following reason. The examination of Alappat's "rasterizer" must focus on, as Alappat says, the "process" of the circuit elements--the mathematic function performed by them. Because the patent law does not examine abstract mathematics, if the "rasterizer" is held to be within Sec. 101, there can be no meaningful examination for compliance with Sec. 103, and other sections of the patent statute become inapplicable. The practical result is that there is patentability so long as the mathematics is "new." This is reflected in Alappat's statement that the rasterizer is a "novel combination of conventional electronic circuits which, as functionally defined in the claims, is patentably distinct from prior art rasterizers." Brief for Alappat at 7 (emphasis added). But standing alone, "the novelty of the mathematical algorithm is not a determining factor at all." Flook, 437 U.S. at 591, 98 S. Ct. at 2526, 198 USPQ at 198.

4. Finally, a "general purpose computer" issue has been raised as an aside in this case. The parties agree that each of the "means" elements in claim 15 would find an "equivalent" within the meaning of 35 U.S.C. § 112, p 6, in a "general purpose digital computer." Alappat goes so far as to plead emphatically for recognition of equivalency, saying, "Any employable circuit designer could readily design around claims ... limited" to two ALUs, two barrel shifters, and one ROM. Brief for Alappat at 21.

Yet Alappat also concedes that a claim drawn to "a method which amounted to a mathematical algorithm [without] any disclosed hardware or structure, other than a programmed general purpose computer," is nonstatutory. Br. for Alappat at 22; see Majority Opinion at Page 1540 (agreeing with this premise). Alappat's argument is that "bona fide hardware supporting the 'means plus function' recitals" in claim 15 renders the claimed subject matter statutory, but then the claim may cover general purpose digital computers as equivalents through Sec. 112, p 6, even though that subject matter could not be claimed outright. Br. for Alappat at 22.

Alappat cannot have it both ways. If a programmed general purpose digital computer is not statutory subject matter, then a claim cannot be drawn to that subject matter whether outright or by application of equivalents under 35 U.S.C. § 112, p 6. Paragraph 6 of Sec. 112 is not a magical way to expand patent protection into nonstatutory subject matter.

As to equivalency, finding equivalency in a programmed general purpose computer proves the nonstatutory nature of Alappat's purported invention or discovery. Alappat argues that the electrical circuitry of the "rasterizer" is equivalent to a programmed general purpose computer because "powerful, inexpensive microprocessors" are equivalent to "discrete digital components, such as AND, OR, NAND, etc., gates, registers, latches, and the like" are equivalent to "analog components, such as transistors, operational amplifiers, and resistors." They are all equivalents, in Alappat's view, because they all may achieve the same effect: performing the particular mathematics that is the claimed rasterizer.

A patent is awarded only "for the discovery or invention of some practical method or means of producing a beneficial result or effect, ... and not for the result or effect itself." Diehr, 450 U.S. at 183 n. 7, 101 S. Ct. at 1055 n. 7, 209 USPQ at 7 n. 7 (quoting Corning v. Burden, (15 How.) 252, 268, 14 L. Ed. 683 (1854)) (emphasis added). The patent's "substance is a new mode of operation, by means of which a new result is obtained. It is this new mode of operation which gives it the character of an invention, and entitles the inventor to a patent...." Winans v. Denmead, 56 U.S. (15 How.), 330, 341, 14 L. Ed. 717 (1854) (emphasis added).

If Alappat's claimed rasterizer represents statutory subject matter, which I do not believe it does, then Alappat's claims must be strictly construed. Mackay Radio & Tel. Co. v. Radio Corp. of Am., 306 U.S. 86, 94, 59 S. Ct. 427, 431, 83 L. Ed. 506, 40 USPQ 199, 202 (1939) (assuming the invention is within the patent law, the invention would be "a narrow one, consisting of a structure conforming to [a] formula, ... and is to be strictly construed with regard ... to ... devices" alleged to be covered by the claims.). Thus, assuming for the moment that Alappat's "rasterizer" is statutory subject matter, then determining what circuit elements are equivalent to the various means claimed in the rasterizer must be performed by reference to the claimed apparatus and means and the means of the alleged equivalent. The majority, however, reasons that any "general purpose computer" is "in effect" the claimed invention or discovery because they do the same mathematics, without knowing anything particular about the general purpose computer. To find equivalence based solely on the identity of mathematical function, with absolute disregard for the particular claimed circuitry, therefore, is to concede that Alappat's claimed circuitry is irrelevant and nonstatutory.

Getting back to the music analogy, Alappat is like a composer who claims his song on a compact disc, and then argues that the compact disc is equivalent to a player piano or a music box with the song on a roll or even sheet music because they all represent the same song. The composer is thus clearly asking for (and getting from the majority) a patent for the discovery of a song and a patent covering every physical manifestation of the song.

In any event, even if a programmed general purpose computer is "equivalent" to the rasterizer, it cannot be deemed to be within Sec. 101 by simply reasoning as does the majority that it is a "new machine." See Page 1545. Alappat posits that a "programmed digital computer becomes a special purpose digital computer to perform the function specified by the software.²⁷  The special purpose computer can be implemented likewise by digital components, or even by analog components." The majority casually agrees that a "general purpose computer in effect becomes a special purpose computer once it is programmed to perform particular functions from program software." Id. (emphasis added).²⁸  One cannot, however, just call a programmed computer a "new machine" without going through the Sec. 101 analysis required by the trilogy of Supreme Court decisions. Whether or not subject matter is a "new machine" within Sec. 101 is precisely the same question as whether or not the subject matter satisfies the Sec. 101 analysis I have described. See Johnston, 502 F.2d at 773, 183 USPQ at 178-79 (Rich, J., dissenting) (accepting the validity of the "new and different machine" principle, but then analyzing that issue according to Supreme Court Sec. 101 precedent).

Thus, a known circuit containing a light bulb, battery, and switch is not a new machine when the switch is opened and closed to recite a new story in Morse code, because the "invent [ion] or discover [y]" is merely a new story, which is nonstatutory subject matter. An old stereo playing a new song on a compact disc is not a new machine because the invention or discovery is merely a new song, which is nonstatutory subject matter. The "perforated rolls [of a player piano] are parts of a machine which, when duly applied and properly operated in connection with the mechanism to which they are adapted, produce musical tones in harmonious combination." White-Smith Music Publishing Co. v. Apollo Co., 209 U.S. 1, 18, 28 S. Ct. 319, 323, 52 L. Ed. 655 (1908). Yet a player piano playing Chopin's scales does not become a "new machine" when it spins a roll to play Brahms' lullaby. The distinction between the piano before and after different rolls are inserted resides not in the piano's changing quality as a "machine" but only in the changing melodies being played by the one machine. The only invention by the creator of a roll that is new because of its music is the new music. Because the patent law does not examine musical compositions to determine their relation to those that have gone before, the distinction between new and old music can never qualify for patent protection.²⁹ 

It is not the computer--the machine qua computer--that performs the [mathematic] function, but, rather, the [mathematic function] is attained only through "use" of the general-purpose computer. The general-purpose digital computer is itself a total and self-complete machine entity. Versatility in electronic data processing is its endowment, its reason for being, its stock in trade.

Digitronics Corp. v. New York Racing Ass'n, Inc., 187 USPQ 602, 640, 1975 WL 21112 (E.D.N.Y. 1975), aff'd on other grounds, 553 F.2d 740, 193 USPQ 577 (2d Cir. 1977). A programmed general purpose digital computer alleged to be patentable subject matter because of the program presents an independent Sec. 101 inquiry that is not resolved simply by calling the structure a "new machine."

Finally, a claim formally to a general purpose computer running a certain program cannot be deemed to satisfy Sec. 101 simply because the computer is a physical, tangible device. As the invalidated claims in Flook and Benson demonstrate, and consistent with my earlier discussion, a computer program for use in a physical electronic thing called a computer may nevertheless be held to be nonstatutory subject matter. It is illogical to say that although a claim to a newly discovered mathematical operation to be performed by a computer is merely a nonstatutory discovery of mathematics, a claim to any computer performing that same mathematics is a statutory invention or discovery. Our precedent has rejected reasoning that way. See Abele, 684 F.2d at 909, 214 USPQ at 688; Walter, 618 F.2d at 768, 205 USPQ at 408; Maucorps, 609 F.2d at 485, 203 USPQ at 815-16; Freeman, 573 F.2d at 1247, 197 USPQ at 472; accord Noll, 545 F.2d at 152, 191 USPQ at 730 (Lane, J., joined by Rich, J., dissenting). Furthermore, the broad statement that a computer using any program is patentable subject matter trivializes the principles and distinctions wrestled with in Benson, Flook, and Diehr, and the case law thereunder.

In summary, it cannot be said that Alappat's circuit means each find equivalents in a programmed general purpose digital computer. If it can be said that Alappat's claimed circuit elements are each equivalent to a programmed general purpose computer just because they will perform the same claimed mathematics, then this demonstrates that Alappat's claimed circuitry does not represent the invention or discovery of statutory subject matter. As to the programmed general purpose computer itself, there is no justification for saying that it must constitute statutory subject matter. When a particular claim directed to an isolated general purpose digital computer instructed to store, compute, or retrieve information comes before us, the claimed invention or discovery must be analyzed as a whole by reference to the Supreme Court cases, cases of this court, and principles of Sec. 101, as has been done in this opinion with regard to Alappat's claimed rasterizer. Neither the recitation in the claim of structure nor the expedient label of "new machine" is sufficient for Sec. 101.

CONCLUSION

This opinion discusses several contexts involving inventions or discoveries in the field of digital electronics: One might invent or discover a new and useful product or process that includes as an element therein digital electronics performing mathematics, such as the rubber curing process in Diamond v. Diehr, or the improved washing machine mentioned by Alappat. One might invent or discover a mode of operation of a digital electronic device, capable ultimately of being used to perform mathematics, such as an improved transistor, chip, or computer. Or, one might discover a particular mathematic operation and claim the use of digital electronics to perform the mathematic operation, such as the methods of calculating numbers in Gottschalk v. Benson and Parker v. Flook, and the rasterizer for converting numbers claimed by Alappat. This last category, however, is at best newly discovered mathematics which is not being "implement [ed] or applie [d] ... in a structure or process which, when considered as a whole," Diehr, 450 U.S. at 192, 101 S. Ct. at 1059, 209 USPQ at 10 (emphasis added), represents an invention or discovery of a machine or process (as in the case of Diehr) for which one may obtain a patent pursuant to Sec. 101.

The majority's holding is dangerous in the following way. First, it reasons that one can obtain a patent for a discovery in mathematics as long as some structure is formally recited on the face of the claim. Under this aspect of the holding, many of the requirements for patentability other than "newness," such as nonobviousness, make no sense and cannot be meaningfully applied. Thus, mathematical patents will be easier to obtain than other patents. Moreover, the patent law will now engage in the charade wherein claims directed to a particular method of calculating numbers (for use in a computer) are unpatentable, but claims directed to a computer (performing a particular method of calculating numbers) are patentable.³⁰ 

Second, the majority accepts the argument that all digital electronic circuitry is statutory subject matter when it performs a mathematical operation, and it is all equivalent when the particular mathematical operation is the same. Under this aspect, the mathematical patents will create an enormous scope of technological exclusivity. The lack of meaningful examination and the breadth of exclusive rights conferred by patents for discoveries of bare mathematical operations are repugnant to Congress's careful statutory scheme for the promotion of the useful arts.

As the player piano playing new music is not the stuff of patent law, neither is the mathematics that is Alappat's "rasterizer." And the Supreme Court has in its decisions required it so. Alappat's claimed discovery is outside 35 U.S.C. § 101, and for this reason I would affirm the board's rejection. I dissent from the majority's decision on the merits to the contrary.

PAULINE NEWMAN, Circuit Judge, concurring.

* I join the opinion authored for the court by Judge Rich. I write separately to state additional views on the basic question of this case: that of statutory subject matter. This question has been dominant in the PTO's administration of its responsibilities with respect to computer-related inventions. I explore this subject in the context of the statutory purposes of Title 35, and specifically the issues of 35 U.S.C. § 101 that are raised in this appeal. The Board's historical practice of giving Sec. 101 the narrowest possible reading--even were that ever a valid administrative policy--is out of place in a world that has become totally dependent on technology, and in which the laws governing technological innovation have direct consequences for industrial growth. Governmental timidity in the face of scientific and technologic change is not only unnecessary: it is unsupportable.

The boundary between patentable and unpatentable subject matter is not always a bright line. A good example is the function of mathematics in modern technology. Mathematics is not only a set of abstract principles, but a powerful vehicle of applied technology--just as chemistry is both a set of scientific principles and a vehicle of applied technology. The Board's underlying error in its Alappat decision arose from failure to distinguish between abstract mathematical principles and their practical applications.

II

Phenomena of nature and abstract scientific and mathematical principles have always been excluded from the patent system. Some have justified this exclusion simply on the ground of lack of "utility"; some on the ground of lack of "novelty"; and some on the ground that laws of nature, albeit newly discovered, are the heritage of humankind. On whatever theory, the unpatentability of the principle does not defeat patentability of its practical applications. See, e.g., O'Reilly v. Morse, 56 U.S. (15 How.) 62, 14 L. Ed. 601 (1854).

Most technologic inventions involve the application of scientific principles and phenomena of nature to specific purposes. It is these purposes that are the subject matter of 35 U.S.C. § 101, and we need not decide such interesting epistemological questions as whether mathematical formulae exist in nature, or are created by mathematicians in the way that chemical compounds are created by chemists. However, the distinction between principle and practice was not observed in the Board's decision on Mr. Alappat's invention.

The theme underlying the Board's rejection of the Alappat claims was that since mathematical steps were involved, and were performable by computer, Alappat was claiming a mathematical algorithm such as was held unpatentable in Gottschalk v. Benson, 409 U.S. 63, 93 S. Ct. 253, 34 L. Ed. 2d 273, 175 USPQ 673 (1972).¹  However, as is explained by Judge Rich, Alappat is claiming a rasterizer of an oscilloscope and similar devices of applied technology. The flaw contained in the Board's premise as applied to Alappat was recognized in Diamond v. Diehr, 450 U.S. 175, 101 S. Ct. 1048, 67 L. Ed. 2d 155, 209 USPQ 1 (1981), the Court explaining that "A claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula, computer program or digital computer." Id. at 187, 101 S. Ct. at 1057, 209 USPQ at 8.²  It is conspicuous that the Board in its opinion cited only Benson, suggesting a failure of appreciation of the evolution in Supreme Court and this court's jurisprudence.

Alappat's rasterizer is an electronic device for displaying a smooth waveform by selective illumination of pixels. The Alappat rasterizer operates by performing a sequence of steps in accordance with instructions that are generated electronically. This operation requires several mathematical calculations that are performed with the aid of microelectronic circuitry, and can be performed by a digital computer. The structure resides in the configuration by which the device operates, as Judge Rich has explained, and is independent of how that configuration is provided. The structure may reside in semiconductor chips and hardwired connections, or be permanently embedded in the electronic form designated read-only memory, or removably embedded in the electronic form designated random-access memory. It is not relevant to section 101 whether the structure is hardwired or programmed, machine-readable or manually performed, and indeed the means-plus-function style of claim accommodates these alternatives.

Devices that work by way of digital electronics are not excluded from the patent system simply because their mechanism of operation can be represented by mathematical formulae. The output of an electronic device or circuit may be approximated to any required degree as a mathematical function of its current state and its inputs; some devices, such as the transistor, embody remarkably elementary mathematical functions. Principles of mathematics, like principles of chemistry, are "basic tools of scientific and technological work". Benson, 409 U.S. at 67, 93 S. Ct. at 255. Such principles are indeed the subject matter of pure science. But they are also the subject matter of applied technology.

Digital electronic devices implement mathematical manipulations of electronic signals, as chemical structures and reactions implement principles of molecular behavior. An apparatus that is configured to perform specific electronic procedures in accordance with instructions that require numerical measurements and mathematical calculations is no less statutory than any other combination of steps and components. A combination of mechanical or chemical components, structured to operate in accordance with the principles of mechanics or chemistry, does not become nonstatutory because those interactions and reactions follow basic scientific principles. Mathematics is not a monster to be struck down or out of the patent system, but simply another resource whereby technological advance is achieved. Alappat's claim to a rasterizer that is characterized by specified electronic functions and the means of performing them no more preempts the mathematical formulae that are used to direct these functions than did Chakrabarty's bacterium preempt genetic theory.

III

An inquiring and receptive attitude by the PTO to new technologies finds a mandate in the statute. The text of section 101³  has not changed since 1793, other than to change the word "art" to "process". This simple text served the industrial revolution and the atomic age; surely it can serve modern electronics. Indeed, the First Congress anticipated that new fields of human ingenuity would be developed, for the Patent Act of 1790 stated that the written description should enable one "skilled in the art of manufacture, whereof it is a branch, or wherewith it may be nearest connected " to make and use the invention. The Act contemplated that there would be inventions for which there was no established art, by referring to the art "nearest connected". An Act to promote the progress of the useful Arts, ch. VII, 1 Stat. 109, 110 (1789).

Old law is often adapted to new needs: "If Congress has made a choice of language which fairly brings a given situation within a statute, it is unimportant that the particular application may not have been contemplated by the legislators." Barr v. United States, 324 U.S. 83, 90, 65 S. Ct. 522, 525, 89 L. Ed. 765 (1945). In Diamond v. Chakrabarty, 447 U.S. 303, 100 S. Ct. 2204, 65 L. Ed. 2d 144, 206 USPQ 193 (1980) the Court emphasized that the patent system is available to serve all fruits of human ingenuity.

Law and public policy intertwine in embracing new fields in the scope of section 101. Patent law has nicely fostered technological advance in the United States, for its principles are particularly suited to a free market system: it requires neither governmental intrusion nor federal funds to provide the incentive for industrial innovation; the innovation incentive is the direct consequence of the patent grant. I know of no major technological advance, no new industry or evolving technology, that has not participated in the patent system. It is estimated that 85-90% of the world's technology is disclosed only in patent documents. Justice Story's words at the threshold of our nation's industrialization have been reinforced by experience:

Patents for inventions are now treated as a just reward to ingenious men, and as highly beneficial to the public, not only by holding out suitable encouragements to genius and talents and enterprise; but as ultimately securing to the whole community great advantages from the free communication of secrets, and processes, and machinery, which may be most important to all the great interests of society, to agriculture, to commerce and to manufactures, as well as to the cause of science and art.

Blanchard v. Sprague, 3 F. Cas. 648, 650 (C.C.D. Mass. 1839). The nation was forcefully reminded of this truth when our economic leadership faltered in the 1970s. In an address before the Economic Club of Detroit, Irving S. Shapiro, Chairman, E.I. duPont de Nemours & Co., discussing "Technology's Decline", stated:

What seems to be missing in our country is an understanding that, no matter how much money we spend on research and development, the findings are not going to benefit the public unless there are suitable incentives to invest in commercialization. That means a chance of reasonable profits from risk taking and a chance to hold onto one's original ideas once they are created.

XLV Vital Speeches of the Day, 360, 364 (1979). To bar such inventions as Alappat's rasterizer from access to the patent system is to eliminate the incentive provided by this law, disserving not only technological industry, but the public benefit of improved technology. One must have a powerful reason to exclude technology from the scope of Title 35. Indeed, the importance of the patent incentive in industrial innovation was the principal factor in the formation of the Federal Circuit. It is thus appropriate constructively to apply statute, precedent, and policy to the variety of inventions that the information age has generated, and to remove the cloud on whether these inventions may participate in the benefits and obligations of the patent system.

MAYER, Circuit Judge, with whom MICHEL, Circuit Judge, joins, dissenting.

I do not agree that we have jurisdiction over this appeal. The Commissioner exceeded his statutory authority in convening a new, expanded panel to reconsider the board's original decision in Alappat's appeal from the examiner. Because the Commissioner's acts were not in accordance with law, the reconsideration decision cannot be a "decision of the Board of Patent Appeals and Interferences" within the meaning of 28 U.S.C. § 1295(4) (A) (1988), and this court has no jurisdiction to address the merits of the appeal. See In re Bose Corp., 772 F.2d 866, 869, 227 USPQ 1, 3 (Fed. Cir. 1985) (an improperly constituted board may not render a valid decision over which this court may exercise its review jurisdiction). As the Supreme Court has said, "A court-martial [for which we may substitute "board"] is the creature of statute, and, as a body or tribunal, it must be convened and constituted in entire conformity with the provisions of the statute, or else it is without jurisdiction." McClaughry v. Deming, 186 U.S. 49, 62, 22 S. Ct. 786, 791, 46 L. Ed. 1049 (1902).

The Patent Act provides that " [o]nly the Board of Patent Appeals and Interferences has the authority to grant rehearings." 35 U.S.C. § 7(b) (1988). The Solicitor argues that the statute is ambiguous, that it is unclear what the composition of the "Board" must be for the "Board" to "grant rehearings" or to actually rehear an appeal. Therefore, this court should defer to the Commissioner's interpretation of the meaning of this clause of section 7.

However, the Solicitor presents conflicting impressions of the board and its role. On one hand, he argues that the board is not an independent body, but is simply an extension of the former power of the Commissioner to directly hear appeals from decisions of primary examiners.¹  The board is an alternative avenue through which the Commissioner may make "policy" decisions, of which as head of the Patent Office, he is the final arbiter. This being the case, the Commissioner has broad discretionary authority to designate, or redesignate, panels to keep the board from rendering decisions contrary to his policy. Therefore, the "Board" that either grants rehearings or rehears appeals is whatever collection of members the Commissioner chooses to designate at any stage of the proceeding before a final decision is entered.

On the other hand, the Solicitor analogizes the board to a court. He says it regularly sits in panels of three, but is capable, as is this court, of sitting in expanded panels if certain criteria are met. He also compares the board to the Court of Appeals for the Ninth Circuit and its ability to sit en banc with less than the entire court. See 28 U.S.C. § 46(c) (1988); 9th Cir. Rule 35-3. The board also has this option, argues the Solicitor, and the use of limited "en banc" is discretionary with the Commissioner.

The Commissioner cannot have it both ways. Either the board is a quasi-judicial body, deciding each case by applying existing law to the facts before it, or the board is simply an extension of the Commissioner's office, making decisions on the basis of policy.

I think the statute is unambiguous and that it unarguably vests the power to grant rehearings in the board itself, free from undue interference by the Commissioner. The patent board is not the "alter ego" of the Commissioner; it is an adjudicative body which functions independently and has its own separate and distinct authority. See Animal Legal Defense Fund v. Quigg, 932 F.2d 920, 928, 18 USPQ2d 1677, 1684 (Fed. Cir. 1991). The Commissioner may only influence a decision when he sits as a voting member of the board and in this role he serves as any other member. Id. at 929 n. 10, 18 USPQ2d at 1684 n. 10. It is on this assumption that this court has routinely reviewed patentability decisions of the board on the same basis as it does those of a court. See, e.g., In re King, 801 F.2d 1324, 1326, 231 USPQ 136, 138 (Fed. Cir. 1986) ("Our review of a finding of anticipation [a fact question] is the same whether it was made by the board or by a district court."); compare In re Bond, 910 F.2d 831, 833, 15 USPQ2d 1566, 1567 (Fed. Cir. 1990) (anticipation is a question of fact for the board reviewed under the clearly erroneous standard), with Lindemann Maschinenfabrik Gmbh v. American Hoist & Derrick Co., 730 F.2d 1452, 1458, 221 USPQ 481, 485 (Fed. Cir. 1984) (applying same clearly erroneous standard to district court's finding of anticipation); and In re McCarthy, 763 F.2d 411, 412, 226 USPQ 99, 100 (Fed. Cir. 1985) (obviousness is reviewed for legal correctness without deference to the board's determinations), with Gardner v. TEC Systems, Inc., 725 F.2d 1338, 1344, 220 USPQ 777, 782 (Fed. Cir. 1984) (district court's conclusion on obviousness "is one of law and subject to full and independent review in this court.").

The role of the board is also readily apparent from the history of the Patent Office. The Office's primary task is to answer questions on the patentability of inventions. The Commissioner has the authority to promulgate regulations consistent with the patent laws to aid the efficient operation of the Office. 35 U.S.C. § 6(a) (1988); see Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1425, 7 USPQ2d 1152, 1154 (Fed. Cir. 1988). The Patent Office also has the responsibility to make individual determinations on patentability by examining particular applications. 35 U.S.C. § 131 (1988). Originally, these functions were colocated in the Office of the Commissioner, who had the authority to "administer" the Office as well as to act as the final stage of decision on individual applications by hearing appeals directly from the examiners. See M. Blommer, The Board of Patent Appeals and Interferences, 1992 AIPLA Bulletin 188 (October, 1992); P.J. Federico, The Board of Appeals 1861-1961, 43 J.Pat.Off.Soc'y 691 (1961) (summarizing the history of the board from its inception). Growth in the number of applications and correspondingly of appeals, made it necessary to give the Commissioner help in hearing appeals. In 1861 the Board of Appeals was created, and the Commissioner was given the task of hearing appeals from this board's decisions. 1992 AIPLA Bulletin at 190.

The Act of March 2, 1927, set up the division of authority in the Patent Office essentially as it exists today by abolishing the appeal to the Commissioner and delegating the task of hearing appeals solely to the newly expanded board. The Commissioner was made a member of the board along with the First Assistant Commissioner, the Assistant Commissioner and the examiners-in-chief. See Pub. L. No. 69-690, 44 Stat. 1335 (1927). The act separated the administrative function of running the Patent Office assigned to the Commissioner, from the adjudicatory function of deciding individual cases of patentability, delegated to the board. This division was retained in the 1952 Patent Act. See 35 U.S.C. §§ 6 and 7. The additional requirement that "examiners-in-chief shall be persons of competent legal knowledge and scientific ability" suggests the board is to render its decisions on legal and scientific bases independent of administrative and policy concerns. See id. Sec. 7(a).

The independent character of the board comports with the arrangement of other adjudicatory bodies in the executive branch. For example, Congress has created agency boards of contract appeals and given them the authority to rule on disputes arising out of contracts between the government and private parties. 41 U.S.C. § 607 (1988). These boards preside over cases in which contract rights of private individuals and entities are directly pitted against the interests of the government. Likewise the patent appeals board resolves conflicts between individuals seeking exclusive rights to inventions and the government's interest in promoting free exchange of technology. Both the board of patent appeals²  and the contract appeals boards³  function under similar grants of authority that, at least facially, are not limited by the authority of the head of the agency. Both bodies are in some sense, "designated" by their agency head, but this does not mean their decisions may be limited or controlled by that official. Historical and statutory notes explaining the authority of the boards of contract appeals state that the boards act independently, "not as a representative of the agency, since the agency is contesting the contractor's entitlement to relief." 41 U.S.C.A. Sec. 607 notes; see also United States v. General Dynamics Corp., 828 F.2d 1356, 1364 (9th Cir. 1987) (the "ASBCA is intended to be independent of the Department of Defense," and its function is "strictly quasi-judicial"). By virtue of its similar function and statutory authority, the patent appeals board cannot be viewed as a "representative of the agency" because the Patent Office, through the examiner, also contests the entitlement of the applicant by arguing for rejection of the patent application.

If Congress intended to create a board that is not independent, but subject to the policy-making authority of the agency head, it would have specifically done so as it has in other contexts. For example, it specified that the secretaries of the military departments may correct the military records of an individual by acting "through" a civilian board. See 10 U.S.C. § 1552 (1988 & Supp. IV 1993).⁴  By the statute, the board acts as the secretary would, it acts on his behalf. This contrasts sharply with the situation of the board of patent appeals on which the Commissioner acts simply as one member of the board. The Patent Act does give the Commissioner authority to designate the members who will sit on panels of the board, 35 U.S.C. § 7(b), but this is a far cry from a proviso that the board acts for the Commissioner, or the Commissioner acts "through" the board.

By way of another example, Congress specifically limited the independence of the Board of Veterans Appeals. See 38 U.S.C. § 7104 (1988). In addition to regulations of the department and precedent of the department's chief legal officer, instructions of the secretary are specifically made binding upon the board in making its decisions. Id. Sec. 7104(c).⁵  The statute also gives the chairman, who is directly responsible to the secretary, the authority to order reconsideration of board appeals to be heard by an expanded section of the board. Id. Secs. 7101(a), 7103(a) & (b).

While the boards for the correction of military records and the Board of Veterans Appeals also serve a purpose similar to the boards of contract appeals and the patent board in that they preside over disputes with the government, their authority is significantly constrained by their subservience to the heads of those departments. Conversely, there is no similar limitation on the statutory authority of the patent appeals board in its adjudicatory role.

As a quasi-judicial adjudicatory body, the board is, or ought to be, imbued with certain court-like qualities. It accepts the submission of legal briefs, holds hearings, admits declarations, exhibits and affidavits upon a showing of good cause, issues written opinions, and has the power to remand cases to the examiner for action consistent with those opinions. See 37 C.F.R. Sec. 1.191 et. seq. (1993). Inherent in this adjudicative posture are certain standards of conduct. Of primary importance are both the decisional independence of the individual members of the adjudicatory body, and assurance that the decisions of the body as a whole are free from undue influence. Once an agency head decides to delegate some of his discretionary decision-making power to a board, even in the absence of specific congressional command, much less the situation here, he must then respect the independent decisional authority of the board and refrain from attempting to influence its decisions. United States ex rel. Accardi v. Shaughnessy, 347 U.S. 260, 266, 74 S. Ct. 499, 503, 98 L. Ed. 681 (1954) (once the Attorney General has delegated authority to rule on deportation orders to the Board of Immigration Appeals, he must not attempt to influence the board's decisions).

That courts and judges are to be free from outside influence in rendering decisions is unquestionably a basic concept of jurisprudence. See Chandler v. Judicial Council of Tenth Circuit, 398 U.S. 74, 84, 90 S. Ct. 1648, 1653, 26 L. Ed. 2d 100 (1970) ("There can, of course, be no disagreement among us as to the imperative need for total and absolute independence of judges in deciding cases or in any phase of the decisional function."). Executive agencies, even acting in their adjudicatory capacity, are not courts, but the Supreme Court has emphasized that they must conform to the same standards:

The maintenance of proper standards on the part of administrative agencies in the performance of their quasi-judicial functions is of the highest importance and in no way cripples or embarrasses the exercise of their appropriate authority. On the contrary, it is in their manifest interest. For, as we said at the outset, if these multiplying agencies deemed to be necessary in our complex society are to serve the purposes for which they are created and endowed with vast powers, they must accredit themselves by acting in accordance with the cherished judicial tradition embodying the basic concepts of fair play.

Morgan v. United States, 304 U.S. 1, 22, 58 S. Ct. 773, 778, 82 L. Ed. 1129 (1938). To allow the Commissioner to gerrymander the composition of the board to insure a preordained result directly conflicts with the concept "that in administrative proceedings of a quasi-judicial character the liberty and property of the citizen shall be protected by the rudimentary requirements of fair play." Id. at 14-15, 58 S. Ct. at 775. See also Utica Packing Co. v. Block, 781 F.2d 71, 78 (6th Cir. 1986) (decision of the Department of Agriculture reversed because the secretary's removal of the adjudicating officer who rendered the original decision and assigning a new one to rule on a petition for reconsideration violated due process.) "There is no guarantee of fairness when the one who appoints a judge has the power to remove the judge before the end of proceedings for rendering a decision which displeases the appointer." 781 F.2d at 78.

Because the board is a quasi-judicial body, and its proceedings must conform to judicial standards and be free from undue influence by the Commissioner, there is no mistaking the meaning of 35 U.S.C. § 7(b). By its terms, the power to grant rehearings resides solely in the board and that power is separate and distinct from the powers of the Commissioner. Thus the decision to grant a rehearing must be made by the "Board" without interference by the Commissioner; he is limited to his membership on the board with a single vote. Although the Commissioner does have additional authority to designate panels, it is limited by the need to protect the board's decisional independence. See Ethicon, 849 F.2d at 1428, 7 USPQ2d at 1156 (Commissioner may conduct activities in the Patent Office "so long as he does not violate the statute."). In this respect the Commissioner holds a position on the board similar to a chief judge of a court, who has only one vote on a case, but has additional administrative authority.

In his dual role, as "rule-maker" for the Patent Office, and as "judge" when sitting on a panel of the board, the Commissioner is in a position similar to a federal judge on the United States Sentencing Commission. The Supreme Court has said it is not inherently impermissible for a judge to play such a dual role: " [T]he Constitution, ... does not forbid judges to wear two hats; it merely forbids them to wear both hats at the same time." Mistretta v. United States, 488 U.S. 361, 404, 109 S. Ct. 647, 671, 102 L. Ed. 2d 714 (1989). So too the Commissioner; when dealing with the board, he is as limited in his authority as any other member, and may not wear his policy-making "hat" or seek to force pre-ordained, policy-driven decisions.

The procedure to grant rehearing, although not the subject of formal rule,⁶  must be consistent with the quasi-judicial character of the board itself, and must conform to the same standards as other judicial bodies. When a court grants a "rehearing," it means one of two things: that the case is heard again by the original panel, or is heard by the entire court sitting en banc. See, e.g., Fed. R. App. P. 35, 28 U.S.C.App. (1988); Fed. Cir. R. 40 (1993) and Practice Note (petitions for rehearing); D.C. Cir. Rule 15, 28 U.S.C.A. (1993). In keeping with this practice, once a case is heard by a properly designated panel of the Board of Patent Appeals and Interferences, and a decision rendered, rehearing may be granted and the case reheard only by the "Board," i.e. the original panel or the board as a whole. There is no room for any intermediate procedure. Just as it would be impermissible for the chief judge of a court to personally decide that a case should be reheard by an "expanded" panel and then pack the panel with judges known for conforming views, such action by the Commissioner is likewise unacceptable.

That the Commissioner "stacked" the board is abundantly clear. After the original panel rendered a decision favorable to Alappat, the Commissioner designated an expanded panel to rehear the case consisting of himself, the Deputy Commissioner, an Assistant Commissioner, the Chairman and Vice-Chairman of the board, and the original three panel members. With himself and the four other "command group" members making up a majority of the board rehearing the appeal, the outcome was assured. These five members voted together, and the original panel filed an emphatic dissent.

The Solicitor argues that the large size of the board, over forty members, would make it unwieldy to sit as a whole. According to the Solicitor, like the Ninth Circuit, the board has the power to sit in "limited en banc" panels, at the discretion of the Commissioner. The circuit courts, however, have express statutory authority to divide themselves into smaller "administrative units" to hear cases en banc if the circuit has more than fifteen active judges.⁷  The board has no similar statutory authority and any attempt by the Commissioner to provide for limited en banc, by rule or otherwise, would be inconsistent with the exclusive authority of the board to grant rehearings. If the large size of the board impedes its operation by making it difficult to rehear cases en banc, congressional consent for an alternative procedure like the circuit courts' should be sought. Because no such statutory authority now exists, however, the power of the board to grant rehearings is limited to the two choices available to other adjudicatory bodies, rehearing by the panel or by the entire board. The "rehearing" in this case was not accomplished by either of the two permissible options, so the decision of the expanded panel was not a decision of the "Board" within the meaning of the jurisdictional statute of this court and we have no authority to reach the merits, no matter how great their perceived importance.

However, we always have jurisdiction to the extent necessary to determine the jurisdiction of our subordinate tribunals, as well as our own. Bender v. Williamsport Area School District, 475 U.S. 534, 541, 106 S. Ct. 1326, 1331, 89 L. Ed. 2d 501 (1986) ("every federal appellate court has a special obligation to 'satisfy itself not only of its own jurisdiction, but also that of the lower courts in a cause under review' ... ' [When the lower federal court] lack [s] jurisdiction, we have jurisdiction on appeal, not of the merits but merely for the purpose of correcting the error of the lower court in entertaining the suit.' ") (citations omitted, bracketed material in original); accord C.R. Bard, Inc. v. Schwartz, 716 F.2d 874, 877, 219 USPQ 197, 200 (Fed. Cir. 1983). For the same reason we lack jurisdiction to hear this appeal, so too did this board in its reconsideration. Accordingly, I would "correct [ ] the error" of the board by vacating its decision.

The decision of the court to take jurisdiction nevertheless, raises another troubling issue. If the Commissioner is correct, as the court apparently thinks, the board must be seen as simply an extension of the Commissioner's policy-making authority and thus not independent. If this is so, the standard by which this court reviews decisions of the board is questionable. It is now the practice, dubious from the start, to review the board under the same standard as we review a district court. In re King, 801 F.2d at 1326, 231 USPQ at 138. Questions of law are reviewed de novo, while findings of fact are examined to determine whether they are clearly erroneous. E.g., In re McCarthy, 763 F.2d at 412, 226 USPQ at 100 (obviousness is reviewed for legal correctness without deference to the board's determinations); In re Bond, 910 F.2d at 833, 15 USPQ2d at 1567 (anticipation is a question of fact for the board reviewed under the clearly erroneous standard). But if the board is simply implementing policy set out by the Commissioner, its decisions cannot be considered "legal" but must be subject to review as statements of agency policy. How such agency policy decisions are to be reviewed is not uniformly agreed upon by the courts; some review them for abuse of discretion, some for whether they are arbitrary and capricious, and some virtually refuse to review them at all.⁸  Regardless of which of these standards would be most appropriate, it at least may be said that the standard of review applied by this court to the board should include a good deal more deference than has been applied heretofore.⁹  Our practice is inconsistent with our review of agency boards of contract appeals. Those boards are "independent" of their agencies, and yet the Contract Disputes Act directs that their fact finding be reviewed under the deferential "substantial evidence" standard. See 41 U.S.C. § 609(b) (1988); Triax-Pacific v. Stone, 958 F.2d 351, 353 (Fed. Cir. 1992). If the court is correct that the patent appeals board is less "independent" and makes policy-based decisions, then arguably it should be reviewed more deferentially than contract appeals boards, not less so, as now.

The court seems inclined to let this matter slide, but I believe the decision today upholding jurisdiction puts the issue squarely before us, and the ramifications of that decision should not go quietly unnoticed. We should not pretend we are reviewing judicial decisions if they are really nothing more than policy actions. Even on a more deferential standard of review, however, I would still hold the Commissioner's manipulation of the board illegal.

PLAGER, Circuit Judge, concurring.

This case raises two significant issues. The first is whether, as a predicate for our review, there was a proper decision of the Board of Patent Appeals and Interferences. The second, which we can reach only if the answer to the first is yes, is how to dispose of the case on its merits. The first issue, the question of our jurisdiction over this appeal, is particularly troubling since it implicates the Commissioner's overall power and status within the agency, and particularly vis-a-vis the examining corps., and because the statutory provision, 35 U.S.C. § 7, is so remarkably vague and incomplete. I join the majority's conclusion that we have jurisdiction in these particular circumstances; I write to sharpen the focus on specific administrative law issues which I believe to be important to an understanding of the case, and to explain my disagreement with the reasoning found in the opinions which dissent on the question of our jurisdiction.

On the merits of the appeal, there is no doubt that the Board erred as a matter of law in refusing to apply Sec. 112 p 6 as we have instructed. I would have sent the matter back to the Board with instructions to do it right, but I recognize the validity in Lord Salisbury's famous dictum--if he had had more time, he might have delegated the work, but as he was pressed, he had to do it himself.¹  Accordingly, I join the majority's disposition of the merits, and in particular Judge Rich's skillful chasing out of some of the less useful judicial accretions regarding patentability under Sec. 101.

On first--or even second--reading, the action of the Commissioner in reconstituting the Board in order to produce a result more to his liking seems beyond the pale. There is no express statutory warrant for it, nor has the Commissioner exercised his rulemaking power to purport to grant himself explicit authority to do such a thing. Furthermore, 'court-packing' has never caught on in this country as a prerogative of the Executive.

Closer study of the applicable law, however, leads to a different conclusion. The statute defines the overall membership of the Board: "The Commissioner, the Deputy Commissioner, the Assistant Commissioners, and the examiners-in-chief shall constitute the Board of Patent Appeals and Interferences." 35 U.S.C. § 7(a) (1988). It gives the Commissioner authority to designate those particular members who shall constitute the Board in any given case: "Each appeal and interference shall be heard by at least three members of the Board of Patent Appeals and Interferences, who shall be designated by the Commissioner." 35 U.S.C. § 7(b). And it gives "the Board" exclusive authority to grant rehearings: "Only the Board of Patent Appeals and Interferences has the authority to grant rehearings." Id.

The regulations add nothing of help. After decision by the Board, "A single request for reconsideration or modification of the decision may be made if filed within one month...." 37 C.F.R. Sec. 1.197(b) (1993).²  Neither the regulations or the statute explain which "Board" is being referred to: is it the full Board with membership now over forty people? the original Board designated by the Commissioner to hear the initial appeal? or the Board designated to consider the rehearing? The regulations do not even track the statute; they refer to "reconsideration," whereas the statute talks about "rehearings."

The question before us, however, is not whether the statute could have been better drafted, or whether the Commissioner could or should have written more explicit regulations. The question is much narrower, and more basic--does this court have subject matter jurisdiction over the cause here on appeal. Our statute (28 U.S.C. § 1295(a) (1988)) directs that we shall have exclusive jurisdiction

(4) of an appeal from a decision of--

(A) the Board of Patent Appeals and Interferences of the Patent and Trademark Office....

Again the reference to "the Board," nowhere defined. The question, then, is, do we have a "decision of the Board" before us.

Judge Mayer, in his dissent, says no. He analogizes the Board to a court, and vests it with virtually complete independence from guidance, including policy guidance, from the Commissioner. The Board is imbued with "court-like qualities." Among these is freedom from outside influence in rendering decisions, including undue influence by the Commissioner. It follows then that Congress could not have intended the Commissioner to have the kind of power he claims to reconstitute the Board on a reconsideration. If the premise is correct, the conclusion indeed follows. I suggest, however, that the premise is not correct because it does not take into account the fundamental differences between administrative and judicial decision-making.

Courts, especially courts created under Article III of the Constitution, have a unique role--they stand as equal partners with the Executive and Legislative Branches, and, subject only to those restraints imposed by the Constitution, are wholly independent in their judicial function from the other two branches. Their mission is to ensure that the law is carried out in a just and proper way, consistent with the Constitution and statutes of the land.

Administrative judges and boards are quite a different thing. They stand as part of the agency which they serve, and represent the decisional authority of the official who is the administrative head of the agency. Their mission is, within the law, to promote and further the mission of the agency. The particular function they serve may be characterized as 'quasi-judicial,' but this must be understood within the context in which they function.

Congress has delegated to various Executive Branch agencies--or more accurately, to the officials who head the agencies--a wide range of functions, aimed at enabling the agencies to perform their missions. In addition to purely administrative functions (the internal management of the agency), agency heads typically are given rulemaking authority--the power to promulgate legislative-type rules to fill in gaps left by the Legislature, and adjudicative authority--the power to decide, as an administrative matter, the application of the agency's rules to individual cases.

An agency head could not today perform effectively all these functions without being able to delegate responsibility to various officials within the agency. In the case of the adjudicative function, a complex of individual- and board-adjudicators, like Topsy, has 'growed up.'³  They come with various titles: some agencies have 'administrative judges,' some have 'administrative law judges,' some use other titles. ('Hearing examiner' was a popular title before the Civil Service Commission in 1972 bestowed the appellation of 'judge' on many of these positions.) Adjudicative boards of various kinds, with various memberships and various duties, have been established, generally by legislation. Some board members are referred to as 'judge,' some are not.

Whoever they are, and however many of them there are in any given agency, they all have a common role--they stand in the shoes of the agency head and carry out specified duties which Congress has assigned to that agency. This does not mean that these agency adjudicators simply do what the agency head tells them. As a practical matter, no agency head has time or opportunity to monitor the daily work of these employees. Furthermore, the institutional distance between them has an important value--it serves to remove the adjudicative function from any improper political or personal bias that might otherwise infect the process if left exclusively in the hands of one individual. Another important value is to avoid having the agency activities of investigation, prosecution, and adjudication combined in the same person or office.⁴ 

This separation is particularly important in fact-finding: the adjudicator is entitled to independence, i.e., freedom from interference, in determining the facts of the case. But 'independence' in the administrative adjudicative function is not independence from the policies and program of the agency, the policies and programs of which are uniquely the responsibility of the agency head.

The dissent's parallel between agency adjudicators and courts demonstrates the inaptness of this analogy. For example, he states that "the Commissioner holds a position on the board similar to a chief judge of a court, who has only one vote on a case, but has additional administrative authority." Slip op. at 11. But a chief judge of an Article III court is not selected for that position by virtue of any particular talent for the job, or because of any particular policy-making skills; indeed, a chief judge is not 'selected,' but inherits the job by virtue of a mathematical combination of seniority and longevity.⁵ 

By contrast, the appointment of the head of a major administrative agency is a matter of considerable political and professional concern, and requires both Presidential selection and nomination and Senate confirmation for that particular post. The person selected is expected to have important skills in the role to be played, and equally importantly is expected to support the President's program and must be acceptable to the concerned policy interests reflected in the Senate.

The relative roles of a chief judge and an agency head reflect these differences. A chief judge has a purely administrative function by virtue of the office; policy making and adjudication lie elsewhere. The agency head, in this case the Secretary of Commerce, assisted by the Commissioner of Patents and Trademarks who holds office as an Assistant Secretary of Commerce, has, subject to direction from the President, all three of the functions and powers described. In this light, the majority's view of the statute governing the Board's organization and powers is more consistent with the proper role and authority of the Commissioner, who acts for the Secretary, than is the dissent's.

There no doubt are limits to the Commissioner's power over Board adjudications. The Commissioner is not free to unduly interfere with individual adjudications--that is, the application of established rules to independently found facts of a case. But this is not such a case. In this case the Board decision at bottom turned on an important issue of statutory interpretation--what is patentable subject matter under Sec. 101 of the 1952 Patent Act. The Commissioner had a quite different view of how Sec. 101 should be interpreted than did the Board that initially heard the case. While the Commissioner has various vehicles at his command for announcing official interpretations of the agency's organic legislation and for enunciating agency policy, there is nothing unusual about using the adjudicative process for that purpose.⁶ 

The Commissioner has an obligation to ensure that all parts of the agency, including agency boards and adjudicative officials, conform to official policy of the agency, including official interpretations of the agency's organic legislation. Otherwise the citizenry would be subject to the whims of individual agency officials of whatever rank or level, and the Rule of Law would lose all meaning in the administrative law context. If Congress intended to transfer policy choice to the subordinate officials who constitute the normal membership of a Board, and remove from the agency head the fundamental responsibility for agency policy direction, it would have to make explicit such an extraordinary procedure before a court should countenance it.⁷ 

Judge Schall in his dissent also says no to the question of whether we have before us a decision of "the Board." He bases his conclusion on an analysis different from that of Judge Mayer. Applying classic literal or 'plain meaning' statutory analysis, Judge Schall concludes that the Board's reconsideration decision was invalid because the PTO panel was not the Board intended by the statute: "the Board" is all forty-plus members described, and nothing less. The technique of legal analysis employed by the dissent is certainly legitimate, and based on sound precedent. If it applies here, Judge Schall's treatment is hard to fault. However, I do not find the statute 'plain', and am hard pressed to discern its 'meaning' in this context.

One could ask how a literal reading of the statute is called for when the statute, literally read, is literally incomplete. The statute states that "only the Board ... has the authority to grant rehearings." And then it stops. It does not tell us, or even hint at an answer to: when a rehearing is granted, who appoints the rehearing Board? Must the rehearing Board be the full Board (which, per Judge Schall, must grant the rehearing), or can it be less than the full Board? Does the Commissioner have a supervisory role to play? A wide range of possible permutations comes readily to mind.

Equally troubling is the impact this 'plain meaning' interpretation will have on our prior cases (as well as future ones). A preliminary canvas of ex parte appeals to the Board in the FY 1990--FY 1993 period (Oct. 1, 1990--Sept. 30, 1993) indicates that the Board decided 17,132 appeals. Of these, 1,551 involved a "reconsideration" decision by the Board. The available data do not reveal whether these reconsideration decisions were always by the same board that rendered the initial decision, but presumably that would be true in most if not all of these cases. It is presumably also true that these rehearings were granted pursuant to the existing PTO regulations, which do not involve the Board as the authorizing entity.

If we were to adopt the plain meaning analysis offered by this dissent, what are we to think about all such prior rehearing decisions? A government act that is ultra vires is void, which means the defect in the appeal is not waived simply because the parties failed to raise it. Since there is no compelling reason to adopt such a radical result--as I say, I find the statute's plain meaning not so easily discerned--I conclude that the outcome called for by Judge Schall is not warranted. I would also note that under this analysis, the Commissioner by subsequent regulation could not clarify the circumstances and manner in which he intended to exercise this reconstitution power, since he would be without authority to exercise it.

I conclude that Chief Judge Archer in his opinion comes closer to the answer to today's jurisdictional puzzle. Although there remains opportunity for attack should the Commissioner again reconstitute a board the way he did here--does he violate his own regulations, is there a due process question, what is the exact scope of the legislative grant of authority--that attack has not here been launched. A court must attend to its own jurisdiction, and the parties cannot grant jurisdiction by their consent. Nevertheless, the absence of challenge removes peripheral and secondary issues, and leaves only the basic jurisdictional question. I am unpersuaded by the arguments my colleagues make against jurisdiction. And while I do not necessarily agree with all that is said about it by those in support of jurisdiction, I do agree that there is sufficient basis in law for this court to conclude that we have before us on this record a decision of "the Board;" I concur in the court's decision to proceed to address the merits.

RADER, Circuit Judge, concurring.

I join Judge Rich's opinion holding that this court has subject matter jurisdiction over this appeal and reversing the reconstituted Board of Patent Appeals and Interferences' decision on the merits. While I fully agree with Judge Rich that Alappat's claimed invention falls squarely within the scope of 35 U.S.C. § 101 (1988), I write to clarify that this conclusion does not hinge on whether Alappat's invention is classified as machine or process under section 101.

The reconstituted Board determined that applicants' (Alappat's) invention is a process excluded from the subject matter of 35 U.S.C. § 101. The Board concluded that the invention is a "mathematical algorithm" rather than a patentable machine. The Board reached this conclusion by impermissibly expanding the scope of the claimed subject matter, thereby running afoul of 35 U.S.C. § 112, p 6 (1988). See In re Donaldson Co., 16 F.3d 1189, 1193, 29 USPQ2d 1845, 1848 (Fed. Cir. 1994) (in banc). Not surprisingly, the initial Board found no problem with 35 U.S.C. § 101 when the claims were properly interpreted in light of the specification.

Judge Rich, with whom I fully concur, reads Alappat's application as claiming a machine. In fact, whether the invention is a process or a machine is irrelevant. The language of the Patent Act itself, as well as Supreme Court rulings, clarifies that Alappat's invention fits comfortably within 35 U.S.C. § 101 whether viewed as a process or a machine.

Section 101 of the Patent Act states: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.

Any new and useful process, machine, article of manufacture, or composition of matter, including improvements, may thus receive patent protection. Section 101 explicitly covers both processes and machines. Furthermore, according to the Supreme Court, "any" is an expansive term encompassing " 'anything under the sun that is made by man.' " Diamond v. Chakrabarty, 447 U.S. 303, 309, 100 S. Ct. 2204, 2208, 65 L. Ed. 2d 144 (1980) (quoting S.Rep. No. 1979, 82d Cong., 2d Sess. 5 (1952); H.R.Rep. No. 1923, 82d Cong., 2d Sess. 6 (1952)). Section 101 does not suggest that patent protection extends to some subcategories of processes or machines and not to others. The Act simply does not extend coverage to some new and useful inventions and deny it to others.

Indeed, the Supreme Court has clarified that section 101 means what it says: any new and useful invention is entitled to patent protection, subject to the remaining statutory conditions for patentability. See Diamond v. Diehr, 450 U.S. 175, 182, 101 S. Ct. 1048, 1054, 67 L. Ed. 2d 155 (1981). In determining what qualifies as patentable subject matter, the Supreme Court has drawn the distinction between inventions and mere discoveries. On the unpatentable discovery side fall "laws of nature, natural phenomena, and abstract ideas." Diehr, 450 U.S. at 185, 101 S. Ct. at 1056. On the patentable invention side fall anything that is "not nature's handiwork, but [the inventor's] own." Chakrabarty, 447 U.S. at 310, 100 S. Ct. at 2208. While Judge Rich correctly applies these principles to machines, they apply with equal force to processes.

The dividing line between patentable invention and mere discovery applies equally well to algorithmic inventions. In Diehr, the Court indicated that in special cases, an algorithm is tantamount to a "law of nature" and therefore non-statutory. Diehr, 450 U.S. at 186, 101 S. Ct. at 1056. However, the Court noted that " [t]he term 'algorithm' is subject to a variety of definitions." Id. at 186 n. 9, 101 S. Ct. at 1056 n. 9. The Court refused to expand the term "algorithm" beyond the narrow definition employed in Gottschalk v. Benson, 409 U.S. 63, 65, 93 S. Ct. 253, 254, 34 L. Ed. 2d 273 (1972) and Parker v. Flook, 437 U.S. 584, 589, 98 S. Ct. 2522, 2525, 57 L. Ed. 2d 451 (1978), two cases in which the Court ruled the inventions non-statutory:

[The petitioner's] definition is significantly broader than the definition this Court employed in Benson and Flook. Our previous decisions regarding the patentability of "algorithms" are necessarily limited to the more narrow definition employed by the Court, and we do not pass judgment on whether processes falling outside the definition previously used by this Court, but within the definition offered by the petitioner, would be patentable subject matter.

Diehr, 450 U.S. at 186 n. 9, 101 S. Ct. at 1056 n. 9.

Thus, in Diehr, the Court specifically confined the holdings of Benson and Flook to the facts of those cases. Significantly, the Court thereby refused to classify all algorithms as non-statutory subject matter. Only algorithms which merely represent discovered principles are excluded from section 101. The inventions in Benson and Flook involved such algorithms. In Benson, the invention was simply a way to solve a general mathematics problem; in Flook the invention was a way to obtain a number. Diehr, 450 U.S. at 185-86, 101 S. Ct. at 1056. In pronouncing the severe confinement of the earlier decisions, the Supreme Court restored the Patent Act's clear meaning that processes and machines are patentable subject matter even if they include an algorithm. In the wake of Diehr and Chakrabarty, the Supreme Court only denies patentable subject matter status to algorithms which are, in fact, simply laws of nature.

Moreover, "a claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula, computer program or digital computer." Diehr, 450 U.S. at 187, 101 S. Ct. at 1057. Viewing the claim as a whole, if a digital circuit or its use would define an invention under section 101, then the same invention described in terms of "a mathematical formula, computer program or digital computer" should be statutory subject matter as well. Neither Alappat's digital circuit, nor a mathematical algorithm that replaces it in a computer, is a "fundamental law of nature" excluded from the scope of section 101. In sum, section 101 is no bar to Alappat whether his invention is a machine--which it is--or a process--which it employs.

The limits on patentable subject matter within section 101 do not depend on whether an invention can be expressed as a mathematical relationship or algorithm. Mathematics is simply a form of expression--a language. As this court's predecessor pointed out:

[S]ome mathematical algorithms and formulae do not represent scientific principles or laws of nature; they represent ideas or mental processes and are simply logical vehicles for communicating possible solutions to complex problems.

In re Meyer, 688 F.2d 789, 794-95, 215 USPQ 193, 197 (CCPA 1982).

The Supreme Court's Diehr doctrine in effect recognizes that inventors are their own lexicographers. Therefore, inventors may express their inventions in any manner they see fit, including mathematical symbols and algorithms. Whether an inventor calls the invention a machine or a process is not nearly as important as the invention itself. Thus, the inventor can describe the invention in terms of a dedicated circuit or a process that emulates that circuit. Indeed, the line of demarcation between a dedicated circuit and a computer algorithm accomplishing the identical task is frequently blurred and is becoming increasingly so as the technology develops. In this field, a software process is often interchangeable with a hardware circuit. Thus, the Board's insistence on reconstruing Alappat's machine claims as processes is misguided when the technology recognizes no difference and the Patent Act treats both as patentable subject matter.

The Supreme Court has frequently cautioned that "courts 'should not read into the patent laws limitations and conditions which the legislature has not expressed.' " Chakrabarty, 447 U.S. at 308, 100 S. Ct. at 2207 (quoting United States v. Dubilier Condenser Corp., 289 U.S. 178, 199, 53 S. Ct. 554, 561, 77 L. Ed. 1114 (1933)). This same counsel applies to the Board. The Board has no justification within the Patent Act to ignore algorithmic processes or machines as "useful Arts" within the scope of section 101. U.S. Const. art. I, Sec. 8. This court should not permit the Patent and Trademark Office to administratively emasculate research and development in this area by precluding statutory protection for algorithmic inventions.

The applicants of the instant invention do not seek to patent a mathematical formula. They seek protection for an invention that displays a smooth line on an oscilloscope. Although Alappat's machine or process might employ an equation, it does not pre-empt that equation. Consequently, whether the invention is called a machine or a process is inconsequential. For these reasons, I agree with this court's reversal of the reconstituted Board's decision.

SCHALL, Circuit Judge, dissenting, with whom CLEVENGER, Circuit Judge, joins.

I respectfully dissent. I believe that the decision on reconsideration is invalid because the grant of reconsideration was not by the full membership of the Patent and Trademark Office Board of Patent Appeals and Interferences ("Board"), as required by statute. Accordingly, we are without jurisdiction to hear Alappat's appeal because it is not from a decision of the Board within the meaning of 28 U.S.C. § 1295(a) (4) (A) (1988).

The pertinent statutory provisions are found at 35 U.S.C. §§ 7(a) and 7(b) (1988):

(a) .... The Commissioner, the Deputy Commissioner, the Assistant Commissioners, and the examiners-in-chief shall constitute the Board of Patent Appeals and Interferences.

(b) The Board of Patent Appeals and Interferences shall, on written appeal of an applicant, review adverse decisions of examiners upon applications for patents.... Each appeal ... shall be heard by at least three members of the Board of Patent Appeals and Interferences, who shall be designated by the Commissioner. Only the Board of Patent Appeals and Interferences has the authority to grant rehearings.

The statutory scheme is straightforward. An adverse decision of an examiner is appealed to the Board. Thereafter, the Board hears the appeal through a panel of at least three members, who are designated by the Commissioner. Following the panel's decision, " [o]nly the Board of Patent Appeals and Interferences has the authority to grant rehearings."¹  Finally, the statute provides that the "Board of Patent Appeals and Interferences" consists of " [t]he Commissioner, the Deputy Commissioner, the Assistant Commissioners, and the examiners-in-chief."

When statutory interpretation is at issue, if "the language of the statute is clear and fits the case, the plain meaning of the statute will be regarded as conclusive." VE Holding Corp. v. Johnson Gas Appliance Co., 917 F.2d 1574, 1579, 16 USPQ2d 1614, 1618 (Fed. Cir. 1990). Here, the plain language of the statute compels the conclusion that only the full Board--which currently has roughly 43 members (the Commissioner, the Deputy Commissioner, about two Assistant Commissioners, and about 39 Examiners-in-Chief² )--has authority to grant rehearings. For present purposes, the critical word is "Only," appearing at the beginning of the third sentence of Sec. 7(b). The use of this word and its location in the statute say to me that Congress intended to draw a distinction between the initial hearing of an appeal--which is to be heard by "at least three members of the Board ..., who shall be designated by the Commissioner"--and a rehearing--which " [o]nly" the full Board may grant.³  I simply can see no other way to read the statute.

It is undisputed that, in this case, rehearing was granted by less than the full membership of the Board. For this reason, the decision on rehearing, from which Alappat has appealed, is invalid and thus is not a decision of the Board whose merits we may review. See In re Bose, 772 F.2d 866, 869, 227 USPQ 1, 3 (Fed. Cir. 1985). A predicate to this court's jurisdiction under 28 U.S.C. § 1295 is that there be "an appeal from a decision of ... the Board of Patent Appeals and Interferences...." 28 U.S.C. § 1295(a) (4) (A) (1988). Because, for the reasons stated above, Alappat's appeal is not from a valid decision of the Board, we are without jurisdiction. I thus join that portion of Judge Mayer's dissent which concludes that the decision of the Board on appeal is invalid because rehearing was not statutorily authorized.

The final two sentences of 35 U.S.C. § 7(b) are descended directly from section 482 of the Revised Statutes, as amended by the Act of March 2, 1927. In that statute, the final two sentences stated:

Each appeal shall be heard by at least three members of the board of appeals, the members hearing such appeal to be designated by the commissioner. The board of appeals shall have sole power to grant rehearings.

Act of March 2, 1927, ch. 273, Sec. 3, 44 Stat. 1335, 1336.

In the 1927 statute, the board of appeals having "sole power to grant rehearings" consisted of " [t]he Commissioner of Patents, the first assistant commissioner, the assistant commissioner, and the examiners in chief...." Id. At that time, there were only five examiners-in-chief; thus, the board of patent appeals had a total of eight members. Since 1927, the size of the Board has increased. As noted above, there are now about 39 examiners-in-chief, and the full Board has roughly 43 members. Time and events have overtaken the language of the statute. While I recognize that it is unwieldy to have it be that only the full membership of the Board can grant rehearings, that is the result which the language of the statute compels. This is a state of affairs that Congress, not the court, should remedy.⁴ 

For the foregoing reasons, I would hold that the Board's reconsideration decision is invalid, and therefore a legal nullity. Because I think this court lacks jurisdiction to pass on the merits of this appeal, I express no views on the merits.