# In re Abele

> Court of Customs and Patent Appeals · August 5, 1982 · 684 F.2d 902

URL: https://www.frixlaw.com/law-library/cases/8915540

## Case

- **Full name:** In re Manlio Giacomo ABELE and Christopher Herbert Marshall
- **Court:** Court of Customs and Patent Appeals
- **Decided:** August 5, 1982
- **Citations:** 684 F.2d 902; 214 U.S.P.Q. (BNA) 682; 1982 CCPA LEXIS 115
- **Precedential status:** Published
- **Opinion:** Dissent by Miller
- **Judges:** Miller, Nies
- **Cited by:** 31 later opinions in the Frix Law Library

## Citator (automated)

- **Red flag:** Abrogated by In Re Bilski, 545 F.3d 943 (2008).
- Negative treatments: 1
- Distinguished by: 0
- Full citator and citing cases: https://www.frixlaw.com/law-library/cases/8915540

## How later opinions describe it (automated extraction)

- holding that a claim providing for the electronic transformation of x-ray data, or data “clearly representing] physical and tangible objects,” into a particular visual depiction on a display was patentable
- noting that “adding a data-gathering step to an algorithm is insufficient to convert that algorithm into a patent-eligible process” and further noting that just because a claim requires “identified transactions actually to be made” or “a decision to actually be rendered” does …
- finding a claim patentable that included both mental steps and physical steps

## Opinion text

MILLER, Judge,
dissenting in part.
I am in substantial agreement with the majority opinion, as I interpret it. However, I would also reverse the rejections under 35 U.S.C. § 101 of claims 5 and 7.
The majority opinion states that each claim as a whole should be examined under 35 U.S.C. § 101 by looking beyond the limitations directed to a mathematical algorithm and determining whether the remainder of the claim is directed to statutory subject matter; if it is, then the mere inclusion of a mathematical formula or algorithm would not require a rejection under 35 U.S.C. § 101 . 1 This approach is supported by the Supreme Court’s opinion in Diamond v. Diehr, 450 U.S. 175, 187 , 101 S.Ct. 1048, 1056 , 67 L.Ed.2d 155 (1981), in which the Court stated:
Our earlier opinions lend support to our present conclusion 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.... It is now commonplace that application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.
This approach is also supported by prior decisions of this court holding that dependent claims containing mathematical formulae or algorithms do not render nonstatutory the claims from which they depend. See In re Johnson, 589 F.2d 1070 , 200 USPQ 199 (Cust. & Pat.App.1979); In re Freeman, 573 F.2d 1237 , 197 USPQ 464 (CCPA 1978); In re Chatfield, 545 F.2d 152 , 191 USPQ 730 (Cust. & Pat.App.1976).
It is the majority opinion’s application of this approach to method claim 5 (and apparatus claim 7) that prompts my partial dissent. The claim language involved is: “displaying the [calculated] value ... as a signed gray scale [i.e., shade of gray] at a point in a picture ....[ 2 ] I am persuaded that such a display is essentially different from a display of a number calculated by a mathematical algorithm and that, absent the algorithm, the shade of gray display at *912 a point in a picture is patentable subject matter. Whether display of a number calculated by a mathematical algorithm provides “greater or better information” — a point made by the majority opinion — may be relevant to a rejection under 35 U.S.C. § 103 , but its relevance to a rejection under 35 U.S.C. § 101 escapes me. Similarly, the majority opinion’s point that claim 5 (and claim 7) “does not even attempt to ‘limit the use of the formula to a particular technological environment’ ” does not appear relevant to the approach supported by Diamond v. Diehr.
. The majority opinion states:
Were we to view the claim absent the algorithm, the production, detection and display steps would still be present and would result in a conventional CAT-scan process. ... In any event, we view the production, detection, and display steps as manifestly statutory subject matter and are not swayed from this conclusion by the presence of an algorithm in the claimed method.
. In claim 7, the pertinent language is: “means for displaying the [calculated] value ... as signed gray scale [i.e., shade of gray] values at points in a picture .... ”

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Source: Frix Law Library, https://www.frixlaw.com/law-library/cases/8915540. Public record. Not legal advice.