Summary
The United States Court of Appeals for the Federal Circuit held that the Patent and Trademark Office Commissioner had authority to designate an expanded Board of Patent Appeals and Interferences panel to reconsider an earlier Board decision. On the merits, the court reversed the rejection of patent claims directed to an anti-aliased oscilloscope rasterizer, concluding that the claimed invention was directed to a statutory machine under 35 U.S.C. § 101.
Topics
Practice areas
Questions Presented
- Whether the Commissioner of Patents and Trademarks could designate an expanded Board panel to reconsider a decision of an original Board panel.
- Whether the Board's reconsideration constituted a rehearing under 35 U.S.C. § 7(b) and a valid Board decision subject to Federal Circuit review.
- Whether the Patent Office erred by refusing to construe the means-plus-function limitations under 35 U.S.C. § 112, paragraph 6.
- Whether claims 15-19 were directed to patent-eligible subject matter under 35 U.S.C. § 101 despite containing mathematical operations.
Holdings
- Section 7 authorized the Commissioner to designate an expanded panel of Board members, including members of the original panel and senior Patent Office officials, to reconsider a Board decision.
- The Patent Office must apply 35 U.S.C. § 112, paragraph 6, when determining patentability and must construe means-plus-function limitations to cover the corresponding structure disclosed in the specification and equivalents thereof.
- Claims directed to the claimed rasterizer were directed to a machine within § 101 and were not rendered nonstatutory merely because the machine performed mathematical calculations or could be implemented using a programmed general-purpose computer.
Key quotations
“The Board's reconsideration decision therefore constituted a valid decision over which this court may exercise subject matter jurisdiction.” (33 F.3d at 1539)
“This is not a disembodied mathematical concept which may be characterized as an "abstract idea," but rather a specific machine to produce a useful, concrete, and tangible result.” (33 F.3d at 1544)
“In any case, a computer, like a rasterizer, is apparatus not mathematics.” (33 F.3d at 1545)
Factual background
The claimed invention was a rasterizer for creating a smooth waveform display in a digital oscilloscope. It converted vector-list data representing sampled waveform magnitudes into anti-aliased pixel illumination-intensity data. The disclosed rasterizer used arithmetic logic circuits, barrel shifters, and a read-only memory to calculate and output pixel-intensity values that reduced jaggedness and discontinuity in displayed waveforms.
Procedural history
The examiner finally rejected claims 15-19 as nonstatutory subject matter. An original three-member Board panel reversed the rejection, but an expanded eight-member Board panel granted reconsideration and affirmed the examiner's rejection. The Federal Circuit heard the appeal en banc, addressed the validity of the expanded Board panel, and reversed the Board's § 101 decision.