# In re Johnston

> Court of Customs and Patent Appeals · September 19, 1974 · 502 F.2d 765

URL: https://www.frixlaw.com/law-library/cases/8894515

## Case

- **Full name:** Application of Thomas R. JOHNSTON
- **Court:** Court of Customs and Patent Appeals
- **Decided:** September 19, 1974
- **Citations:** 502 F.2d 765; 183 U.S.P.Q. (BNA) 172; 1974 CCPA LEXIS 124
- **Precedential status:** Published
- **Opinion:** Dissent by Markey
- **Judges:** Baldwin, Markey, Rich
- **Cited by:** 14 later opinions in the Frix Law Library

## Citator (automated)

- **Red flag:** Reversed on other grounds by Dann v. Johnston, 425 U.S. 219 (1976).
- Negative treatments: 1
- Distinguished by: 0
- Full citator and citing cases: https://www.frixlaw.com/law-library/cases/8894515

## How later opinions describe it (automated extraction)

- noting that “[e]very competent draftsman” knows how to cast method claims “in machine system form”

## Opinion text

MARKEY, Chief Judge
(dissenting).
I would affirm the decision of the board on its rejection under 35 U.S.C. 103. In that event, discussion of the rejections under 35 U.S.C. 112 and 101 becomes unnecessary. That we decline to discuss rejections which are thus rendered moot does not, of course, reflect in any way upon the validity or invalidity of such rejections.
The majority opinion finds differences between the claimed subject matter and the prior bank data processing system. Thereupon, the majority opinion appears to treat the obviousness rejection below as though it were based on 35 U.S.C. 102. There is no doubt, as the board recognized, that appellant’s programmed computer differs from the conventional programmed computers previously employed in banks. But the question under 35 U.S.C. 103 is whether appellant’s programmed computers as claimed, i. e., his “record-keeping machine system,” would have been obvious to those skilled in the art applicable to such record-keeping machine systems. In my view one skilled in the art, presented with the conventional machine system, would have found it obvious, without knowledge of appellant’s disclosure, to have modified the system as set forth in the appealed claims.
Similarly, I regard the differences between the claimed subject matter and the relevant portions of the Dirks’ patent to be such as to have rendered obvious the claimed subject matter as a whole at the time the invention was made. That only portions of the Dirks’ specification are relied on by the board is of course, irrelevant if such portions do in fact render obvious the subject matter of the appealed claims. Whether or not Dirks discloses category codes or their equivalent would not appear to be the question. If it did, the rejection might well be under 35 U.S.C. 102. The question is whether the contribution of such category codes by appellant is a difference sufficient to render the claimed subject matter unobvious to one skilled in the applicable art. As above indicated, I differ from my brothers in the majority and would answer that question in the negative.
Thus, I find no clear error on the part of the board in its rejection of the appealed claims under 35 U.S.C. 103. In the absence of such clear error we must, and I would, affirm the decision of the board.

---

Source: Frix Law Library, https://www.frixlaw.com/law-library/cases/8894515. Public record. Not legal advice.