Examination Guidelines for Computer-Related Inventions

DEPARTMENT OF COMMERCE

Patent and Trademark Office

[Docket No. 950531144-5304-02]

RIN 0651-XX02

Examination Guidelines for Computer-Related Inventions

AGENCY: Patent and Trademark Office, Commerce.

ACTION: Notice.

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SUMMARY: The Patent and Trademark Office (``Office'') is publishing the

final version of the guidelines to be used in

[[Page 7479]]

examination of computer-related inventions.

EFFECTIVE DATE: March 29, 1996.

FOR FURTHER INFORMATION CONTACT:

Karen A. Buchanan by telephone at (703) 305-8607, by facsimile at (703)

305-9373, by electronic mail at [email protected], or by mail marked

to her attention addressed to Office of the Solicitor, P.O. Box 15667,

Arlington, VA 22215.

SUPPLEMENTARY INFORMATION:

A. Discussion of Public Comments

The Office received forty-six comments in response to the ``Request

for Public Comment on the Proposed Examination Guidelines for Computer-

Implemented Inventions'' published on June 2, 1995 (60 FR 28778) and

the supporting legal analysis issued on October 3, 1995. The Office has

carefully considered all of the comments, and a number of changes have

been made in response.

These changes include: (1) Merging the guidelines and the legal

analysis in support of the guidelines into a single document, (2)

changing the subject title of the document from ``computer-

implemented'' inventions to ``computer-related'' inventions, (3)

clarifying the legal requirements for statutory subject matter, (4)

segmenting the guidelines into separate statutory requirements for

patentability, and (5) ensuring that the guidelines treated computer-

related inventions in the same manner as inventions in other

technologies to avoid creation of an artificial distinction between

hardware-implemented and software-implemented inventions.

Several suggestions have not been adopted. These include: (1)

Determining that claims for data structures per se and computer

programs per se are statutory subject matter, (2) determining that

claims for non-functional descriptive material embodied on computer-

readable media are statutory subject matter, and (3) treating claims

that infer functional descriptive material is embodied on computer-

readable medium as claims limited to computer-readable medium embodying

the functional descriptive material. The first two suggestions are

addressed in detail in Section IV.B.1(a)-(c) and the last suggestion is

addressed in detail in Section IV.B.2(d).

Several commentors encouraged the Office to improve its ability to

conduct effective prior art searches. Such encouragement is consistent

with the current Office plan to use automated search tools to

effectively conduct such prior art searches.

B. Examination Guidelines for Computer-Related Inventions

I. Introduction

These ``Examination Guidelines for Computer-Related Inventions''

\1\ (``Guidelines'') are to assist Office personnel in the examination

of applications drawn to computer-related inventions.\2\ The Guidelines

are based on the Office's current understanding of the law and are

believed to be fully consistent with binding precedent of the Supreme

Court, the Federal Circuit and the Federal Circuit's predecessor

courts.

* Footnotes to appear at end of docket.

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These Guidelines do not constitute substantive rulemaking and hence

do not have the force and effect of law. These Guidelines have been

designed to assist Office personnel in analyzing claimed subject matter

for compliance with substantive law. Rejections will be based upon the

substantive law and it is these rejections which are appealable.

Consequently, any failure by Office personnel to follow the Guidelines

is neither appealable nor petitionable.

The Guidelines alter the procedures Office personnel will follow

when examining applications drawn to computer-related inventions and

are equally applicable to claimed inventions implemented in either

hardware or software. The Guidelines also clarify the Office's position

on certain patentability standards related to this field of technology.

Office personnel are to rely on these Guidelines in the event of any

inconsistent treatment of issues between these Guidelines and any

earlier provided guidance from the Office.

The Freeman-Walter-Abele \3\ test may additionally be relied upon

in analyzing claims directed solely to a process for solving a

mathematical algorithm.

Office personnel have had difficulty in properly treating claims

directed to methods of doing business. Claims should not be categorized

as methods of doing business. Instead, such claims should be treated

like any other process claims, pursuant to these Guidelines when

relevant.\4\

The appendix includes a flow chart of the process Office personnel

will follow in conducting examinations for computer-related inventions.

II. Determine What Applicant Has Invented and Is Seeking To Patent

It is essential that patent applicants obtain a prompt yet complete

examination of their applications. Under the principles of compact

prosecution, each claim should be reviewed for compliance with every

statutory requirement for patentability in the initial review of the

application, even if one or more claims are found to be deficient with

respect to some statutory requirement. Thus, Office personnel should

state all reasons and bases for rejecting claims in the first Office

action. Deficiencies should be explained clearly, particularly when

they serve as a basis for a rejection. Whenever practicable, Office

personnel should indicate how rejections may be overcome and how

problems may be resolved. A failure to follow this approach can lead to

unnecessary delays in the prosecution of the application.

Prior to focusing on specific statutory requirements, Office

personnel must begin examination by determining what, precisely, the

applicant has invented and is seeking to patent,\5\ and how the claims

relate to and define that invention. Consequently, Office personnel

will no longer begin examination by determining if a claim recites a

``mathematical algorithm.'' Rather, they will review the complete

specification, including the detailed description of the invention, any

specific embodiments that have been disclosed, the claims and any

specific utilities that have been asserted for the invention.

A. Identify and Understand Any Practical Application Asserted for the

Invention

The subject matter sought to be patented must be a ``useful''

process, machine, manufacture or composition of matter, i.e., it must

have a practical application. The purpose of this requirement is to

limit patent protection to inventions that possess a certain level of

``real world'' value, as opposed to subject matter that represents

nothing more than an idea or concept, or is simply a starting point for

future investigation or research.\6\ Accordingly, a complete disclosure

should contain some indication of the practical application for the

claimed invention, i.e., why the applicant believes the claimed

invention is useful.

The utility of an invention must be within the ``technological''

arts.\7\ A computer-related invention is within the technological arts.

A practical application of a computer-related invention is statutory

subject matter. This requirement can be discerned from the variously

phrased prohibitions against the patenting of abstract ideas, laws of

nature or natural phenomena. An invention that has a practical

application in the technological arts satisfies the utility

requirement.\8\

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The applicant is in the best position to explain why an invention

is believed useful. Office personnel should therefore focus their

efforts on pointing out statements made in the specification that

identify all practical applications for the invention. Office personnel

should rely on such statements throughout the examination when

assessing the invention for compliance with all statutory criteria. An

applicant may assert more than one practical application, but only one

is necessary to satisfy the utility requirement. Office personnel

should review the entire disclosure to determine the features necessary

to accomplish at least one asserted practical application.

B. Review the Detailed Disclosure and Specific Embodiments of the

Invention To Determine What the Applicant Has Invented

The written description will provide the clearest explanation of

the applicant's invention, by exemplifying the invention, explaining

how it relates to the prior art and explaining the relative

significance of various features of the invention. Accordingly, Office

personnel should begin their evaluation of a computer-related invention

as follows:

--Determine what the programmed computer does when it performs the

processes dictated by the software (i.e., the functionality of the

programmed computer); \9\

--Determine how the computer is to be configured to provide that

functionality (i.e., what elements constitute the programmed computer

and how those elements are configured and interrelated to provide the

specified functionality); and

--If applicable, determine the relationship of the programmed computer

to other subject matter outside the computer that constitutes the

invention (e.g., machines, devices, materials, or process steps other

than those that are part of or performed by the programmed

computer).\10\

Patent applicants can assist the Office by preparing applications that

clearly set forth these aspects of a computer-related invention.

C. Review the Claims

The claims define the property rights provided by a patent, and

thus require careful scrutiny. The goal of claim analysis is to

identify the boundaries of the protection sought by the applicant and

to understand how the claims relate to and define what the applicant

has indicated is the invention. Office personnel must thoroughly

analyze the language of a claim before determining if the claim

complies with each statutory requirement for patentability.

Office personnel should begin claim analysis by identifying and

evaluating each claim limitation. For processes, the claim limitations

will define steps or acts to be performed. For products,\11\ the claim

limitations will define discrete physical structures. The discrete

physical structures may be comprised of hardware or a combination of

hardware and software.

Office personnel are to correlate each claim limitation to all

portions of the disclosure that describe the claim limitation. This is

to be done in all cases, i.e., whether or not the claimed invention is

defined using means or step plus function language. The correlation

step will ensure that Office personnel correctly interpret each claim

limitation.

The subject matter of a properly construed claim is defined by the

terms that limit its scope. It is this subject matter that must be

examined. As a general matter, the grammar and intended meaning of

terms used in a claim will dictate whether the language limits the

claim scope. Language that suggests or makes optional but does not

require steps to be performed or does not limit a claim to a particular

structure does not limit the scope of a claim or claim limitation.\12\

Office personnel must rely on the applicant's disclosure to

properly determine the meaning of terms used in the claims.\13\ An

applicant is entitled to be his or her own lexicographer, and in many

instances will provide an explicit definition for certain terms used in

the claims. Where an explicit definition is provided by the applicant

for a term, that definition will control interpretation of the term as

it is used in the claim. Office personnel should determine if the

original disclosure provides a definition consistent with any

assertions made by applicant.\14\ If an applicant does not define a

term in the specification, that term will be given its ``common

meaning.'' \15\

If the applicant asserts that a term has a meaning that conflicts

with the term's art-accepted meaning, Office personnel should encourage

the applicant to amend the claim to better reflect what applicant

intends to claim as the invention. If the application becomes a patent,

it becomes prior art against subsequent applications. Therefore, it is

important for later search purposes to have the patentee employ

commonly accepted terminology, particularly for searching text-

searchable databases.

Office personnel must always remember to use the perspective of one

of ordinary skill in the art. Claims and disclosures are not to be

evaluated in a vacuum. If elements of an invention are well known in

the art, the applicant does not have to provide a disclosure that

describes those elements. In such a case the elements will be construed

as encompassing any and every art-recognized hardware or combination of

hardware and software technique for implementing the defined requisite

functionalities.

Office personnel are to give claims their broadest reasonable

interpretation in light of the supporting disclosure.\16\ Where means

plus function language is used to define the characteristics of a

machine or manufacture invention, claim limitations must be interpreted

to read on only the structures or materials disclosed in the

specification and ``equivalents thereof.'' \17\ Disclosure may be

express, implicit or inherent. Thus, at the outset, Office personnel

must attempt to correlate claimed means to elements set forth in the

written description. The written description inlcudes the specification

and the drawings. Office personnel are to give the claimed means plus

function limitations their broadest reasonable interpretation

consistent with all corresponding structures or materials described in

the specification and their equivalents. Further guidance in

interpreting the scope of equivalents is provided in the ``Examination

Guidelines For Claims Reciting A Means or Step Plus Function Limitation

In Accordance With 35 U.S.C. 112, 6th, 6th Paragraph'' (``Means Plus

Function Guidelines'').\18\

While it is appropriate to use the specification to determine what

applicant intends a term to mean, a positive limitation from the

specification cannot be read into a claim that does not impose that

limitation. A broad interpretation of a claim by Office personnel will

reduce the possibility that the claim, when issued, will be interpreted

more broadly than is justified or intended. An applicant can always

amend a claim during prosecution to better reflect the intended scope

of the claim.

Finally, when evaluating the scope of a claim, every limitation in

the claim must be considered.\19\ Office personnel may not dissect a

claimed invention into discrete elements and then evaluate the elements

in isolation. Instead, the claim as a whole must be considered.

III. Conduct a Thorough Search of the Prior Art

Prior to classifying the claimed invention under Sec. 101, Office

personnel are expected to conduct a thorough search of the prior art.

Generaly, a

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thorough search invovles reviewing both U.S. and foreign patents and

nonpatent literature. In may cases, the result of such a search will

contribute to Office personnel's understanding of the invention. Both

claimed and unclaimed aspects of the invention described in the

specification should be searched if there is a reasonable expectation

that the unclaimed aspects may be later claimed. A search must take

into account any structure or material described in the specification

and its equivalents which correspond to the claimed means plus function

limitation, in accordance with 35 U.S.C. Sec. 112, sixth paragraph and

the Means Plus Function Guidelines.\20\

IV. Determine Whether the Claimed Invention Complies With 35 U.S.C.

101

A. Consider the Breadth of 35 U.S.C. Sec. 101 Under Controling Law

As the Supreme Court has held, Congress chose the expansive

language of Sec. 101 so as to include ``anything under the sun that is

made by man.'' \21\ Accordingly, Sec. 101 of title 35, United States

Code, provides:

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.\22\

As cast, Sec. 101 defines four categories of inventions that Congress

deemed to be the appropriate subject matter of a patent; namely,

processes, machines, manufactures and compositions of matter. The

latter three categories define ``things'' while the first category

defines ``actions'' (i.e., inventions that consist of a series of steps

or acts to be performed).\23\

Federal courts have held that Sec. 101 does have certain limits.

First, the phrase ``anything under the sun that is made by man'' is

limited by the text of Sec. 101, meaning that one may only patent

something that is a machine, manufacture, composition of matter or a

process.\24\ Second, Sec. 101 requires that the subject matter sought

to be patented be a ``useful'' invention. Accordingly, a complete

definition of the scope of Sec. 101, reflecting Congressional intent,

is that any new and useful process, machine, manufacture or composition

of matter under the sun that is made by man is the proper subject

matter of a patent. Subject matter not within one of the four statutory

invention categories or which is not ``useful'' in a patent sense is,

accordingly, not eligible to be patented.

The subject matter courts have found to be outside the four

statutory categories of invention is limited to abstract ideas, laws of

nature and natural phenomena. While this is easily stated, determining

whether an applicant is seeking to patent an abstract idea, a law of

nature or a natural phenomenon has proven to be challenging. These

three exclusions recognize that subject matter that is not a practical

application or use of an idea, a law of nature or a natural phenomenon

is not patentable.\25\

Courts have expressed a concern over ``preemption'' of ideas, laws

of nature or natural phenomena.\26\ The concern over preemption serves

to bolster and justify the prohibition against the patenting of such

subject matter. In fact, such concerns are only relevant to claiming a

scientific truth or principle. Thus, a claim to an ``abstract idea'' is

non-statutory because it does not represent a practical application of

the idea, not because it would preempt the idea.

B. Classify the Claimed Invention as to Its Proper Statutory Category

To properly determine whether a claimed invention complies with the

statutory invention requirements of Sec. 101, Office personnel should

classify each claim into one or more statutory or non-statutory

categories. If the claim falls into a non-statutory category, that

should not preclude complete examination of the application for

satisfaction of all other conditions of patentability. This

classification is only an initial finding at this point in the

examination process that will be again assessed after the examination

for compliance with Secs. 112, 102 and 103 is completed and before

issuance of any Office action on the merits.

If the invention as set forth in the written description is

statutory, but the claims define subject matter that is not, the

deficiency can be corrected by an appropriate amendment of the claims.

In such a case, Office personnel should reject the claims drawn to non-

statutory subject matter under Sec. 101, but identify the features of

the invention that would render the claimed subject matter statutory if

recited in the claim.

1. Non-Statutory Subject Matter

Claims to computer-related inventions that are clearly non-

statutory fall into the same general categories as non-statutory claims

in other parts, namely natural phenomena such as magnetism, and

abstract ideas or laws of nature which constitute ``descriptive

material.'' Descriptive material can be characterized as either

``functional descriptive material'' or ``non-functional descriptive

material.'' In this context, ``functional descriptive material''

consists of data structures \27\ and computer programs which impart

functionality when encoded on a computer-readable medium. ``Non-

functional descriptive material'' includes but is not limited to music,

literary works and a compilation or mere arrangement of data.

Both types of ``descriptive material'' are non-statutory when

claimed as descriptive material per se. When functional descriptive

material is recorded on some computer-readable medium it becomes

structurally and functionally interrelated to the medium and will be

statutory in most cases.\28\ When non-functional descriptive material

is recorded on some computer-readable medium, it is not structurally

and functionally interrelated to the medium but is merely carried by

the medium. Merely claiming non-functional descriptive material stored

in a computer-readable medium does not make it statutory. Such a result

would exalt form over substance.\29\ Thus, non-statutory music does not

become statutory by merely recording it on a compact disk. Protection

for this type of work is provided under the copyright law.

Claims to processes that do nothing more than solve mathematical

problems or manipulate abstract ideas or concepts are more complex to

analyze and are addressed below. See sections IV.B.2(d) and IV.B.2(e).

(a) Functional Descriptive Material: ``Data Structures''

Representing Descriptive Material Per Se or Computer Programs

Representing Computer Listings Per Se. Data structures not claimed as

embodied in computer-readable media are descriptive material per se and

are not statutory because they are neither physical ``things'' nor

statutory processes.\30\ Such claimed data structures do not define any

structural and functional interrelationships between the data structure

and other claimed aspects of the invention which permit the data

structure's functionality to be realized. In contrast, a claimed

computer-readable medium encoded with a data structure defines

structural and functional interrelationships between the data structure

and the medium which permit the data structure's functionality to be

realized, and is thus statutory.

Similarly, computer programs claimed as computer listings per se,

i.e., the descriptions or expressions of the programs, are not physical

``things,'' nor are they statutory processes, as they are not ``acts''

being performed. Such claimed computer programs do not define any

structural and functional interrelationships between the computer

program and other claimed aspects of

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the invention which permit the computer program's functionality to be

realized. In contrast, a claimed computer-readable medium encoded with

a computer program defines structural and functional interrelationships

between the computer program and the medium which permit the computer

program's functionality to be realized, and is thus statutory.

Accordingly, it is important to distinguish claims that define

descriptive material per se from claims that define statutory

inventions.

Computer programs are often recited as part of a claim. Office

personnel should determine whether the computer program is being

claimed as part of an otherwise statutory manufacture or machine. In

such a case, the claim remains statutory irrespective of the fact that

a computer program is included in the claim. The same result occurs

when a computer program is used in a computerized process where the

computer executes the instructions set forth in the computer program.

Only when the claimed invention taken as a whole is directed to a mere

program listing, i.e., to only its description or expression, is it

descriptive material per se and hence non-statutory.

Since a computer program is merely a set of instructions capable of

being executed by a computer, the computer program itself is not a

process and Office personnel should treat a claim for a computer

program, without the computer-readable medium needed to realize the

computer program's functionality, as non-statutory functional

descriptive material. When a computer program is claimed in a process

where the computer is executing the computer program's instructions,

Office personnel should treat the claim as a process claim. See

Sections IV.B.2(b)-(e). When a computer program is recited in

conjunction with a physical structure, such as a computer memory,

Office personnel should treat the claim as a product claim. See Section

IV.B.2(a).

(b) Non-Functional Descriptive Material. Descriptive material that

cannot exhibit any functional interrelationship with the way in which

computing processes are performed does not constitute a statutory

process, machine, manufacture or composition of matter and should be

rejected under Sec. 101. Thus, Office personnel should consider the

claimed invention as a whole to determine whether the necessary

functional interrelationship is provided.

Where certain types of descriptive material, such as music,

literature, art, photographs and mere arrangements or compilations of

facts or data,\31\ are merely stored so as to be read or outputted by a

computer without creating any functional interrelationship, either as

part of the stored data or as part of the computing processes performed

by the computer, then such descriptive material alone does not impart

functionality either to the data as so structured, or to the computer.

Such ``descriptive material'' is not a process, machine, manufacture or

composition of matter.

The policy that precludes the patenting of non-functional

descriptive material would be easily frustrated if the same descriptive

material could be patented when claimed as an article of

manufacture.\32\ For example, music is commonly sold to consumers in

the format of a compact disc. In such cases, the known compact disc

acts as nothing more than a carrier for non-functional descriptive

material. The purely non-functional descriptive material cannot alone

provide the practical application for the manufacture.

Office personnel should be prudent in applying the foregoing

guidance. Non-functional descriptive material may be claimed in

combination with other functional descriptive material on a computer-

readable medium to provide the necessary functional and structural

interrelationship to satisfy the requirements of Sec. 101. The presence

of the claimed non-functional descriptive material is not necessarily

determinative of non-statutory subject matter. For example, a computer

that recognizes a particular grouping of musical notes read from memory

and upon recognizing that particular sequence, causes another defined

series of notes to be played, defines a functional interrelationship

among that data and the computing processes performed when utilizing

that data, and as such is statutory because it implements a statutory

process.

(c) Natural Phenomena Such as Electricity and Magnetism.--Claims

that recite nothing but the physical characteristics of a form of

energy, such as a frequency, voltage, or the strength of a magnetic

field, define energy or magnetism, per se, and as such are non-

statutory natural phenomena.\33\ However, a claim directed to a

practical application of a natural phenomenon such as energy or

magnetism is statutory.\34\

2. Statutory Subject Matter

(a) Statutory Product Claims \35\.--If a claim defines a useful

machine or manufacture by identifying the physical structure of the

machine or manufacture in terms of its hardware or hardware and

software combination, it defines a statutory product.\36\

A machine or manufacture claim may be one or two types: (1) A claim

that encompasses any and every machine for performing the underlying

process or any and every manufacture that can cause a computer to

perform the underlying process, or (2) a claim that defines a specific

machine or manufacture. When a claim is of the first type, Office

personnel are to evaluate the underlying process the computer will

perform in order to determine the patentability of the product.

(i) Claims That Encompass Any Machine or Manufacture Embodiment of

a Process. Office personnel must treat each claim as a whole. The mere

fact that a hardware element is recited in a claim does not necessarily

limit the claim to a specific machine or manufacture.\37\ If a product

claim encompasses any and every computer implementation of a process,

when read in light of the specification, it should be examined on the

basis of the underlying process. Such a claim can be recognized as it

will:

--Define the physical characteristics of a computer or computer

component exclusively as functions or steps to be performed on or by a

computer, and

--Encompass any and every product in the stated class (e.g., computer,

computer-readable memory) configured in any manner to perform that

process.

Office personnel are reminded that finding a product claim to

encompass any and every product embodiment of a process invention

simply means that the Office will presume that the product claim

encompasses any and every hardware or hardware platform and associated

software implementation that performs the specified set of claimed

functions. Because this is interpretative and nothing more, it does not

provide any information as to the patentability of the applicant's

underlying process or the product claim.

When Office personnel have reviewed the claim as a whole and found

that it is not limited to a specific machine or manufacture, they shall

identify how each claim limitation has been treated and set forth their

reasons in support of their conclusion that the claim encompasses any

and every machine or manufacture embodiment of a process. This will

shift the burden to applicant to demonstrate why the claimed invention

should be limited to a specific machine or manufacture.

If a claim is found to encompass any and every product embodiment

of the

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underlying process, and if the underlying process is statutory, the

product claim should be classified as a statutory product. By the same

token, if the underlying process invention is found to be non-

statutory, Office personnel should classify the ``product'' claim as a

``non-statutory product.'' If the product claim is classified as being

a non-statutory product on the basis of the underlying process, Office

personnel should emphasize that they have considered all claim

limitations and are basing their finding on the analysis of the

underlying process.

(ii) Product Claims--Claims Directed to Specific Machines and

Manufactures. If a product claim does not encompass any and every

computer-implementation of a process, then it must be treated as a

specific machine or manufacture. Claims that define a computer-related

invention as a specific machine or specific article of manufacture must

define the physical structure of the machine or manufacture in terms of

its hardware or hardware and ``specific software.'' 38 The

applicant may define the physical structure of a programmed computer or

its hardware or software components in any manner that can be clearly

understood by a person skilled in the relevant art. Generally a claim

drawn to a particular programmed computer should identify the elements

of the computer and indicate how those elements are configured in

either hardware or a combination of hardware and specific software.

To adequately define a specific computer memory, the claim must

identify a general or specific memory and the specific software which

provides the functionality stored in the memory.

A claim limited to a specific machine or manufacture, which has a

practical application in the technological arts, is statutory. In most

cases, a claim to a specific machine or manufacture will have a

practical application in the technological arts.

(iii) Hypothetical Machine Claims Which Illustrate Claims of the

Types Described in Sections IV.B.2(a) (i) and (ii). Two applicants

present a claim to the following process:

A process for determining and displaying the structure of a

chemical compound comprising:

(a) Solving the wavefunction parameters for the compound to

determine the structure of a compound; and

(b) Displaying the structure of the compound determined in step

(a).

Each applicant also presents a claim to the following apparatus:

A computer system for determining the three dimensional structure

of a chemical compound comprising:

(a) Means for determining the three dimensional structure of a

compound; and

(b) Means for creating and displaying an image representing a

three-dimensional perspective of the compound.

In addition, each applicant provides the noted disclosures to

support the claims:

------------------------------------------------------------------------

Applicant A Applicant B

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Disclosure:

The disclosure describes specific The disclosure states that it would

software, i.e., specific program be a matter of routine skill to

code segments, that are to be select an appropriate conventional

employed to configure a general computer system and implement the

purpose microprocessor to create claimed process on that computer

specific logic circuits. These system. The disclosure does not

circuits are indicated to be the have specific disclosure that

``means'' corresponding to the corresponds to the two ``means''

claimed means limitations. limitations recited in the claim

(i.e., no specific software or

logic circuit). The disclosure does

have an explanation of how to solve

the wavefunction equations of a

chemical compound, and indicates

that the solutions of those

wavefunction equations can be

employed to determine the physical

structure of the corresponding

compound.

Result:

Claim defines specific computer, Claim encompasses any computer

patentability stands embodiment of process claim;

independently from process claim. patentability stands or falls with

process claim.

Explanation:

Disclosure identifies the specific Disclosure does not provide any

machine capable of performing the information to distinguish the

indicated functions. ``implementation'' of the process

on a computer from the factors that

will govern the patentability

determination of the process per

se. As such, the patentability of

this apparatus claim will stand or

fall with that of the process

claim.

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(b) Statutory Process Claims. A claim that requires one or more

acts to be performed defines a process. However, not all processes are

statutory under Sec. 101. To be statutory, a claimed computer-related

process must either: (1) Result in a physical transformation outside

the computer for which a practical application in the technological

arts is either disclosed in the specification or would have been known

to a skilled artisan (discussed in (i) below,\39\) or (2) be limited by

the language in the claim to be practical application within the

technological arts (discussed in (ii) below).\40\ The claimed practical

application must be a further limitation upon the claimed subject

matter if the process is confined to the internal operations of the

computer. If a physical transformation occurs outside the computer, it

is not necessary to claim the practical application. A disclosure that

permits a skilled artisan to practice the claimed invention, i.e., to

put it to a practical use, is sufficient. On the other hand, it is

necessary to claim the practical application if there is no physical

transformation or if the process merely manipulates concepts or

converts one set of numbers into another.

A claimed process is clearly statutory if it results in a physical

transformation outside the computer, i.e., falls into one or both of

the following specific categories (``safe harbors'').

(i) Safe Harbors

-- Independent Physical Acts (Post-Computer Process Activity)

A process is statutory if it requires physical acts to be performed

outside the computer independent of and following the steps to be

performed by a programmed computer, where those acts involve the

manipulative of tangible physical objects and result in the object

having a different physical attribute or structure.\41\ Thus, if a

process claim includes one or more post-computer process steps that

result in a physical transformation outside the computer (beyond merely

conveying the direct result of the computer operation, see Section

IV.B.2(d)(iii) below), the claim is clearly statutory.

Examples of this type of statutory process include the following:

--A method of curing rubber in a mold which relies upon updating

process

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parameters, using a computer processor to determine a time period for

curing the rubber, using the computer processor to determine when the

time period has been reached in the curing process and then opening the

mold at that stage.

--A method of controlling a mechanical robot which relies upon storing

data in a computer that represents various types of mechanical

movements of the robot, using a computer processor to calculate

positioning of the robot in relation to given tasks to be performed by

the robot, and controlling the robot's movement and position based on

the calculated position.

--Manipulation of Data Representing Physical Objects or Activities

(Pre-Computer Process Activity)

Another statutory process is one that requires the measurements of

physical objects or activities to be transformed outside of the

computer into computer data,\42\ where the data comprises signals

corresponding to physical objects or activities external to the

computer system, and where the process causes a physical transformation

of the signals which are intangible representations of the physical

objects or activities.\43\

Examples of this type of claimed statutory process include the

following:

--A method of using a computer processor to analyze electrical signals

and data representative of human cardiac activity by converting the

signals to time segments, applying the time segments in reverse order

to a high pass filter means, using the computer processor to determine

the amplitude of the high pass filter's output, and using the computer

processor to compare the value to a predetermined value. In this

example the data is an intangible representation of physical activity,

i.e., human cardiac activity. The transformation occurs when heart

activity is measured and an electrical signal is produced. This process

has real world value in predicting vulnerability to ventricular

tachycardia immediately after a heart attack.

--A method of using a computer processor to receive data representing

Computerized Axial Tomography (``CAT'') scan images of a patient,

performing a calculation to determine the difference between a local

value at a data point and an average value of the data in a region

surrounding the point, and displaying the difference as a gray scale

for each point in the image, and displaying the resulting image. In

this example the data is an intangible representation of a physical

object, i.e., portions of the anatomy of a patient. The transformation

occurs when the condition of the human body is measured with X-rays and

the X-rays are converted into electrical digital signals that represent

the condition of the human body. The real world value of the invention

lies in creating a new CAT scan image of body tissue without the

presence of bones.

--A method of using a computer processor to conduct seismic

exploration, by imparting spherical seismic energy waves into the earth

from a seismic source, generating a plurality of reflected signals in

response to the seismic energy waves at a set of receiver positions in

an array, and summing the reflection signals to produce a signal

simulating the reflection response of the earth to the seismic energy.

In this example, the electrical signals processed by the computer

represent reflected seismic energy. The transformation occurs by

converting the spherical seismic energy waves into electrical signals

which provide a geophysical representation of formations below the

earth's surface. Geophysical exploration of formations below the

surface of the earth has real world value.

If a claim does not clearly fall into one or both of the safe

harbors, the claim may still be statutory if it is limited by the

language in the claim to a practical application in the technological

arts.

(ii) Computer-Related Processes Limited to a Practical Application

in the Technological Arts. There is always some form of physical

transformation within a computer because a computer acts on signals and

transforms them during its operation and changes the state of its

components during the execution of a process. Even though such a

physical transformation occurs within a computer, such activity is not

determinative of whether the process is statutory because such

transformation alone does not distinguish a statutory computer process

from a non-statutory computer process. What is determinative is not how

the computer performs the process, but what the computer does to

achieve a practical application. \44\

A process that merely manipulates an abstract idea or performs a

purely mathematical algorithm is non-statutory despite the fact that it

might inherently have some usefulness.\45\ For such subject matter to

be statutory, the claimed process must be limited to a practical

application of the abstract idea or mathematical algorithm in the

technological arts.\46\ For example, a computer process that simply

calculates a mathematical algorithm that models noise is non-statutory.

However, a claimed process for digitally filtering noise employing the

mathematical algorithm is statutory.

Examples of this type of claimed statutory process include the

following:

--A computerized method of optimally controlling transfer, storage and

retrieval of data between cache and hard disk storage devices such that

the most frequently used data is readily available.

--A method of controlling parallel processors to accomplish multi-

tasking of several computing tasks to maximize computing

efficiency.\47\

--A method of making a word processor by storing an executable word

processing application program in a general purpose digital computer's

memory, and executing the stored program to impart word processing

functionality to the general purpose digital computer by changing the

state of the computer's arithmetic logic unit when program instructions

of the word processing program are executed.

--A digital filtering process for removing noise from a digital signal

comprising the steps of calculating a mathematical algorithm to produce

a correction signal and subtracting the correction signal from the

digital signal to remove the noise.

(c) Non-Statutory Process Claims. If the ``acts'' of a claimed

process manipulate only numbers, abstract concepts or ideas, or signals

representing any of the foregoing, the acts are not being applied to

appropriate subject matter. Thus, a process consisting solely of

mathematical operations, i.e., converting one set of numbers into

another set of numbers, does not manipulate appropriate subject matter

and thus cannot constitute a statutory process.

In practical terms, claims define non-statutory processes if they:

--Consist solely of mathematical operations without some claimed

practical application (i.e., executing a ``mathematical algorithm'');

or

--Simply manipulate abstract ideas, e.g., a bid \68\ or a bubble

hierarchy,\49\ without some claimed practical application.

A claimed process that consists solely of mathematical operations

is non-statutory whether or not it is performed on a computer. Courts

have recognized a distinction between types of mathematical algorithms,

namely, some define a ``law of nature'' in

[[Page 7485]]

mathematical terms and others merely describe an ``abstract idea.''

\50\

Certain mathematical algorithms have been held to be non-statutory

because they represent a mathematical definition of a law of nature or

a natural phenomenon. For example, a mathematical algorithm

representing the formula E=mc\2\ is a ``law of nature''--it defines a

``fundamental scientific truth'' (i.e., the relationship between energy

and mass). To comprehend how the law of nature relates to any object,

one invariably has to perform certain steps (e.g., multiplying a number

representing the mass of an object by the square of a number

representing the speed of light). In such a case, a claimed process

which consists solely of the steps that one must follow to solve the

mathematical representation of E=mc\2\ is indistinguishable from the

law of nature and would ``preempt'' the law of nature. A patent cannot

be granted on such a process.

Other mathematical algorithms have been held to be non-statutory

because they merely describe an abstract idea. An ``abstract idea'' may

simply be any sequence of mathematical operations that are combined to

solve a mathematical problem. The concern addressed by holding such

subject matter non-statutory is that the mathematical operations merely

describe an idea and do not define a process that represents a

practical application of the idea.

Accordingly, when a claim reciting a mathematical algorithm is

found to define non-statutory subject matter the basis of the Sec. 101

rejection must be that, when taken as a whole, the claim recites a law

of nature, a natural phenomenon, or an abstract idea.

(d) Certain Claim Language Related to Mathematical Operation Steps

of a Process. (i) Intended Use or Field of Use Statements. Claim

language that simply specifies an intended use or field of use for the

invention generally will not limit the scope of a claim, particularly

when only presented in the claim preamble. Thus, Office personnel

should be careful to properly interpret such language.\51\ When such

language is treated as non-limiting, Office personnel should expressly

identify in the Office action the claim language that constitutes the

intended use or field of use statements and provide the basis for their

findings. This will shift the burden to applicant to demonstrate why

the language is to be treated as a claim limitation.

(ii) Necessary Antecedent Step to Performance of a Mathematical

Operation or Independent Limitation on a Claimed Process. In some

situations, certain acts of ``collecting'' or ``selecting'' data for

use in a process consisting of one or more mathematical operations will

not further limit a claim beyond the specified mathematical operation

step(s). Such acts merely determine values for the variables used in

the mathematical formulae used in making the calculations.\52\ In other

words, the acts are dictated by nothing other than the performance of a

mathematical operation.\53\

If a claim requires acts to be performed to create data that will

then be used in a process representing a practical application of one

or more mathematical operations, those acts must be treated as further

limiting the claim beyond the mathematical operation(s) per se. Such

acts are data gathering steps not dictated by the algorithm but by

other limitations which require certain antecedent steps and as such

constitute an independent limitation on the claim.

Examples of acts that independently limit a claimed process

involving mathematical operations include:

--A method of conducting seismic exploration which requires generating

and manipulating signals from seismic energy waves before ``summing''

the values represented by the signals; \54\ and

--A method of displaying X-ray attenuation data as a signed gray scale

signal in a ``field'' using a particular algorithm, where the

antecedent steps require generating the data using a particular machine

(e.g., a computer tomography scanner).\55\

Examples of steps that do not independently limit one or more

mathematical operation steps include:

--``Perturbing'' the values of a set of process inputs, where the

subject matter ``perturbed'' was a number and the act of ``perturbing''

consists of substituting the numerical values of variables; \56\ and

--Selecting a set of arbitrary measurement point values.\57\

Such steps do not impose independent limitations on the scope of

the claim beyond those required by the mathematical operation

limitation.

(iii) Post-Mathematical Operation Step Using Solution or Merely

Conveying Result of Operation. In some instances, certain kinds of

post-solution ``acts'' will not further limit a process claim beyond

the performance of the preceding mathematical operation step even if

the acts are recited in the body of a claim. If, however, the claimed

acts represent some ``significant use'' of the solution, those acts

will invariably impose an independent limitation on the claim. A

``significant use'' is any activity which is more than merely

outputting the direct result of the mathematical operation. Office

personnel are reminded to rely on the applicant's characterization of

the significance of the acts being assessed to resolve questions

related to their relationship to the mathematical operations recited in

the claim and the invention as a whole.\58\ Thus, if a claim requires

that the direct result of a mathematical operation be evaluated and

transformed into something else, Office personnel cannot treat the

subsequent steps as being indistinguishable from the performance of the

mathematical operation and thus not further limiting on the claim. For

example, acts that require the conversion of a series of numbers

representing values of a wavefunction equation for a chemical compound

into values representing an image that conveys information about the

three-dimensional structure of the compound and the displaying of the

three-dimensional structure cannot be treated as being part of the

mathematical operations.

Office personnel should be especially careful when reviewing claim

language that requires the performance of ``post-solution'' steps to

ensure that claim limitations are not ignored.

Examples of steps found not to independently limit a process

involving one or more mathematical operation steps include:

--Step of ``updating alarm limits'' found to constitute changing the

number value of a variable to represent the result of the calculation;

\59\

--Final step of magnetically recording the result of a calculation;

\60\

--Final step of ``equating'' the process outputs to the values of the

last set of process inputs found to constitute storing the result of

calculations; \61\

--Final step of displaying result of a calculation ``as a shade of gray

rather than as simply a number'' found to not constitute distinct step

where the data were numerical values that did not represent anything;

\62\

--Step of ``transmitting electrical signals representing'' the result

of calculations.\63\

(e) Manipulation of Abstract Ideas Without a Claimed Practical

Application. A process that consists solely of the manipulation of an

abstract idea without any limitation to a practical application is non-

statutory.\64\ Office personnel have the burden to establish a prima

facie case that the claimed invention taken as a whole is directed to

the manipulation of abstract ideas without a practical application.

[[Page 7486]]

In order to determine whether the claim is limited to a practical

application of an abstract idea, Office personnel must analyze the

claim as a whole, in light of the specification, to understand what

subject matter is being manipulated and how it is being manipulated.

During this procedure, Office personnel must evaluate any statements of

intended use or field of use, any data gathering step and any post-

manipulation activity. See section IV.B.2(d) above for how to treat

various types of claim language. Only when the claim is devoid of any

limitation to a practical application in the technological arts should

it be rejected under Sec. 101. Further, when such a rejection is made,

Office personnel must expressly state how the language of the claims

has been interpreted to support the rejection.

V. Evaluate Application for Compliance With 35 U.S.C. 112

Office personnel should begin their evaluation of an application's

compliance with Sec. 112 by considering the requirements of Sec. 112,

second paragraph. The second paragraph contains two separate and

distance requiremtns: (1) That the claim(s) set forth the subject

matter applicants regard as the invention, and (2) that the claim(s)

particularly point out and distinctly claim the invention. An

application will be deficient under Sec. 112, second paragraph when (1)

evidence including admissions, other than in the application as filed,

shows applicant has stated that he or she regards the invention to be

different from what is claimed, or when (2) the scope of the claims is

unclear.

After evaluation of the application for compliance with Sec. 112,

second paragraph, Office personnel should then evaluate the application

for compliance with the requirements of Sec. 112, first paragraph. The

first paragraph contains three separate and distinct requirements: (1)

Adequate written description, (2) enablement, and (3) best mode. An

application will be deficient under Sec. 112, first paragraph when the

written description is not adequate to identify what the applicant has

invented, or when the disclosure does not enable one skilled in the art

to make and use the invention as claimed without undue experimentation.

Deficiencies related to disclosure of the best mode for carrying out

the claimed invention are not usually encountered during examination of

an application because evidence to support such a deficiency is seldom

in the record.

If deficiencies are discovered with respect to Sec. 112, Office

personnel must be careful to apply the appropriate paragraph of

Sec. 112.

A. Determine Whether the Claimed Invention Complies With 35 U.S.C. 112,

Second Paragraph Requirements

1. Claims Setting Forth the Subject Matter Applicant Regards as

Invention

Applicant's specification must conclude with claim(s) that set

forth the subject matter which the applicant regards as the invention.

The invention set forth in the claims is presumed to be that which

applicant regards as the invention, unless applicant considers the

invention to be something different from what has been claimed as shown

by evidence, including admissions, outside the application as filed. An

applicant may change what he or she regards as the invention during the

prosecution of the application.

2. Claims Particularly Pointing Out and Distinctly Claiming the

Invention

Office personnel shall determine whether the claims set out and

circumscribe the invention with a reasonable degree of precision and

particularity. In this regard, the definiteness of the language must be

analyzed, not in a vacuum, but always in light of the teachings of the

disclosure as it would be interpreted by one of ordinary skill in the

art. Applicant's claims, interpreted in light of the disclosure, must

reasonably apprise a person of ordinary skill in the art of the

intervention. However, the applicant need not explicitly recite in the

claims every feature of the invention. For example, if an applicant

indicates that the invention is a particular computer, the claims do

not have to recite every element or feature of the computer. In fact,

it is preferable for claims to be drafted in a form that emphasizes

what the applicant has invented (i.e., what is new rather than old).

A means plus function limitation is distinctly claimed if the

description makes it clear that the means corresponds to well-defined

structure of a computer or computer component implemented in either

hardware or software and its associated hardware platform. Such means

may be defined as:

--A programmed computer with particular functionality implemented in

hardware or hardware and software;

--A logic circuit or other component of a programmed computer that

performs a series of specifically identified operations dictated by a

computer program; or

--A computer memory encoded with executable instructions representing a

computer program that can cause a computer to function in a particular

fashion.

The scope of a ``means'' limitation is defined as the corresponding

structure or material (e.g., a specific logic circuit) set forth in the

written description and equivalents.\65\ Thus, a claim using means plus

function limitations without corresponding disclosure of specific

structures or materials that are not well-know fails to particularly

point out and distinctly claim the invention. For example, if the

applicant discloses only the functions to be performed and provides no

express, implied or inherent disclosure of hardware or a combination of

hardware and software that performs the functions, the application has

not disclosed any ``structure'' which corresponds to the claimed means.

Office personnel should reject such claims under Sec. 112, second

paragraph. The rejection shifts the burden to the applicant to describe

at least one specific structure or material that corresponds to the

claimed means in question, and to identify the precise location or

locations in the specification where a description of least one

embodiment of that claimed means can be found. In contrast, if the

corresponding structure is disclosed to be a memory or logic circuit

that has been configured in some manner to perform that function (e.g.,

using a defined computer program), the application has disclosed

``structure'' which corresponds to the claimed means.

When a claim or part of a claim is defined in computer program

code, whether in source or object code format, a person of skill in art

must be able to ascertain the metes and bounds of the claimed

invention. In certain circumstances, as where a self-documenting

programming code is employed, use of programming language in a claim

would be permissible because such program source code presents

``sufficiently high-level language and descriptive identifiers'' to

make it universally understood to others in the art without the

programmer having to insert any comments.\66\ Applicants should be

encouraged to functionally define the steps the computer will perform

rather than simply reciting source or object code instructions.

[[Page 7487]]

B. Determine Whether the Claimed Invention Complies with 35 U.S.C. 112,

First Paragraph Requirements

1. Adequate Written Description

The satisfaction of the enablement requirement does not satisfy the

written description requirement.\67\ For the written description

requirement, an applicant's specification must reasonably convey to

those skilled in the art that the applicant was in possession of the

claimed invention as of the date of invention. The claimed invention

subject matter need not be described literally, i.e., using the same

terms, in order for the disclosure to satisfy the description

requirement.

2. Enabling Disclosure

An applicant's specification must enable a person skilled in the

art to make and use the claimed invention without undue

experimentation. The fact that experimentation is complex, however,

will not make it undue if a person of skill in the art typically

engages in such complex experimentation. For a computer-related

invention, the disclosure must enable a skilled artisan to configure

the computer to possess the requisite functionality, and, where

applicable, interrelate the computer with other elements to yield the

claimed invention, without the exercise of undue experimentation. The

specification should disclose how to configure a computer to possess

the requisite functionality or how to integrate the programmed computer

with other elements of the invention, unless a skilled artisan would

know how to do so without such disclosure.\68\

For many computer-related inventions, it is not unusual for the

claimed invention to involve more than one field of technology. For

such inventions, the disclosure must satisfy the enablement standard

for each aspect of the invention.\69\ As such, the disclosure must

teach a person skilled in each art how to make and use the relevant

aspect of the invention without undue experimentation. For example, to

enable a claim to a programmed computer that determines and displays

the three-dimensional structure of a chemical compound, the disclosure

must

--enable a person skilled in the art of molecular modeling to

understand and practice the underlying molecular modeling processes;

and

--enable a person skilled in the art of computer programming to create

a program that directs a computer to create and display the image

representing the three-dimensional structure of the compound.

In other words, the disclosure corresponding to each aspect of the

invention must be enabling to a person skilled in each respective art.

In many instances, an applicant will describe a programmed computer

by outlining the significant elements of the programmed computer using

a functional block diagram. Office personnel should review the

specification to ensure that along with the functional block diagram

the disclosure provides information that adequately describes each

``element'' in hardware or hardware and its associated software and how

such elements are interrelated.\70\

VI. Determine Whether the Claimed Invention Complies With 35 U.S.C.

102 and 103

As is the case for inventions in any field of technology,

assessment of a claimed computer-related invention for compliance with

sections 102 and 103 begins with a comparison of the claimed subject

matter to what is known in the prior art. If no differences are found

between the claimed invention and the prior art, the claimed invention

lacks novelty and is to be rejected by Office personnel under section

102. Once distinctions are identified between the claimed invention and

the prior art, those distinctions must be assessed and resolved in

light of the knowledge possessed by a person of ordinary skill in the

art. Against this backdrop, one must determine whether the invention

would have been obvious at the time the invention was made. If not, the

claimed invention satisfies section 103. Factors and considerations

dictated by law governing section 103 apply without modification to

computer-related inventions.

If the difference between the prior art and the claimed invention

is limited to descriptive material stored on or employed by a machine,

Office personnel must determine whether the descriptive material is

functional descriptive material or non-functional descriptive material,

as described supra in Section IV. Functional descriptive material is a

limitation in the claim and must be considered and addressed in

assessing patentability under section 103. Thus, a rejection of the

claim as a whole under section 103 is inappropriate unless the

functional descriptive material would have been suggested by the prior

art. Non-functional descriptive material cannot render non-obvious an

invention that would have otherwise been obvious.\17\

Common situations involving non-functional descriptive material

are:

--A computer-readable storage medium that differs from the prior art

solely with respect to non-functional descriptive material, such as

music or a literary work, encoded on the medium,

--A computer that differs from the prior art solely with respect to

non-functional descriptive material that cannot alter how the machine

functions (i.e., the descriptive material does not reconfigure the

computer), or

--A process that differs from the prior art only with respect to non-

functional descriptive material that cannot alter how the process steps

are to be performed to achieve the utility of the invention.

Thus, if the prior art suggests storing a song on a disk, merely

choosing a particular song to store on the disk would be presumed to be

well within the level of ordinary skill in the art at the time the

invention was made. The difference between the prior art and the

claimed invention is simply a rearrangement of non-functional

descriptive material.

VII. Clearly Communicate Findings, Conclusions and Their Bases

Once Office personnel have concluded the above analyses of the

claimed invention under all the statutory provisions, including

sections 101, 112, 102 and 103, they should review all the proposed

rejections and their bases to confirm their correctness. Only then

should any rejection be imposed in an Office action. The Office action

should clearly communicate the findings, conclusions and reasons which

support them.

Notes

\1\ These Guidelines are final and replace the ``Proposed

Examination Guidelines for Computer-Implemented Inventions,'' 60 FR

28,778 (June 2, 1995) and the supporting legal analysis issued on

October 3, 1995.

\2\ ``Computer-related inventions'' include inventions

implemented in a computer and inventions employing computer-readable

media.

\3\ In re Abele, 684 F.2d 902, 905-07, 214 USPQ 682, 685-87

(CCPA 1982); In re Walter, 618 F.2d 758, 767, 205 USPQ 397, 406-07

(CCPA 1980); In re Freeman, 573 F.2d 1237, 1245, 197 USPQ 464, 471

(CCPA 1978).

\4\ See, e.g., In re Toma, 575 F.2d 872, 877-78, 197 USPQ 852,

857 (CCPA 1978); In re Musgrave, 431 F.2d 882, 893, 167 USPQ 280,

289-90 (CCPA 1970). See also In re Schrader, 22 F.3d 290, 297-98, 30

USPQ2d 1455, 1461-62 (Fed. Cir. 1994) (Newman, J., dissenting);

Paine, Webber, Jackson & Curtis, Inc. v. Merrill Lynch, Pierce,

Fenner & Smith, Inc., 564 F. Supp. 1358, 1368-69, 218 USPQ 212, 220

(D. Del. 1983).

[[Page 7488]]

\5\ As the courts have repeatedly reminded the Office: ``The

goal is to answer the question `What did applicants invent?' ''

Abele, 684 F.2d at 907, 214 USPQ at 687. Accord, e.g., Arrhythmia

Research Tech. v. Corazonix Corp., 958 F.2d 1053, 1059, 22 USPQ2d

1033, 1038 (Fed. Cir. 1992).

\6\ Brenner v. Manson, 383 U.S. 519, 528-36, 148 USPQ 689, 693-

96 (1966); In re Ziegler, 992 F.2d 1197, 1200-03, 26 USPQ2d 1600,

1603-06 (Fed. Cir. 1993).

\7\ See, e.g., Musgrave, 431 F.2d at 893, 167 USPQ at 289-90,

cited with approval in Schrader, 22 F.3d at 297, 30 USPQ2d at 1461

(Newman, J., dissenting). The definition of ``technology'' is the

``application of science and engineering to the development of

machines and procedures in order to enhance or improve human

conditions, or at least to improve human efficiency in some

respect.'' Computer Dictionary 384 (Microsoft Press, 2d ed. 1994).

\8\ E.g., In re Alappat, 33 F.3d 1526, 1543, 31 USPQ2d 1545,

1556-57 (Fed. Cir. 1994) (in banc) (quoting Diamond v. Diehr, 450

U.S. 175, 192, 209 USPQ 1, 10 (1981)). See also id. at 1569, 31

USPQ2d at 1578-79 (Newman, J., concurring) (``unpatentability of the

principle does not defeat patentability of its practical

applications'') (citing O'Reilly v. Morse, 56 U.S. (15 How.) 62,

114-19 (1854)); Arrhythmia, 958 F.2d at 1056, 22 USPQ2d at 1036;

Musgrave, 431 F.2d at 893, 167 USPQ at 289-90 (``All that is

necessary, in our view, to make a sequence of operational steps a

statutory `process' within 35 U.S.C. 101 is that it be in the

technological arts so as to be in consonance with the Constitutional

purpose to promote the progress of `useful arts.' Const. Art. 1,

sec. 8.'').

\9\ Arrhythmia, 958 F.2d at 1057, 22 USPQ2d at 1036: It is of

course true that a modern digital computer manipulates data, usually

in binary form, by performing mathematical operations, such as

addition, subtraction, multiplication, division, or bit shifting, on

the data. But this is only how the computer does what it does. Of

importance is the significance of the data and their manipulation in

the real world, i.e., what the computer is doing.

\10\ Many computer-related inventions do not consist solely of a

computer. Thus, Office personnel should identify those claimed

elements of the computer-related invention that are not part of the

programmed computer, and determine how those elements relate to the

programmed computer. Office personnel should look for specific

information that explains the role of the programmed computer in the

overall process or machine and how the programmed computer is to be

integrated with the other elements of the apparatus or used in the

process.

\11\ Products may be either machines, manufacturers or

compositions of matter. Product claims are claims that are directed

to either machines, manufacturers or compositions of matter.

\12\ Examples of language that may raise a question as to the

limiting effect of the language in a claim:

(a) statements of intended use or field of use,

(b) ``adapted to'' or ``adapted for'' clauses,

(c) ``wherein'' clauses, or

(d) ``whereby'' clauses.

This list of examples is not intended to be exhaustive.

\13\ Markman v. Westview Instruments, 52 F.3d 967, 980, 34

USPQ2d 1321, 1330 (Fed. Cir.) (in banc), cert. granted, 116 S. Ct.

40 (1995).

\14\ See, e.g., In re Paulsen, 30 F.3d 1475, 1480, 31 USPQ2d

1671, 1674 (Fed. Cir. 1994) (inventor may define specific terms used

to describe invention, but must do so ``with reasonable clarity,

deliberateness, and precision'' and, if done, must `` `set out his

uncommon definition in some manner within the patent disclosure' so

as to give one of ordinary skill in the art notice of the change''

in meaning) (quoting Intellicall, Inc. v. Phonometrics, Inc., 952

F.2d 1384, 1387-88, 21 USPQ2d 1383, 1386 (Fed. Cir. 1992)).

\15\ Id. at 1480, 31 USPQ2d at 1674.

\16\ See, e.g., In re Zletz, 893 F.2d 319, 321-22, 13 USPQ2D

1320, 1322 (Fed. Cir. 1989) (``During patent examination the pending

claims must be interpreted as broadly as their terms reasonably

allow. * * * The reason is simply that during patent prosecution

when claims can be amended, ambiguities should be recognized, scope

and breadth of language explored, and clarification imposed. * * *

An essential purpose of patent examination is to fashion claims that

are precise, clear, correct, and unambiguous. Only in this way can

uncertainties of claims scope be removed, as much as possible,

during the administrative process.'').

\17\ Two in banc decisions of the Federal Circuit have made

clear that the Office is to interpret means plus function language

according to 35 U.S.C. Sec. 112, sixth paragraph. In the first, In

re Donaldson, 16 F.3d 1189, 1193, 29 USPQ2d 1845, 1848 (Fed. Cir.

1994), the court held:

The plain and unambiguous meaning of paragraph six is that one

construing means-plus-function language in a claim must look to the

specification and interpret that language in light of the

corresponding structure, material, or acts described therein, and

equivalents thereof, to the extent that the specification provides

such disclosure. Paragraph six does not state or even suggest that

the PTO is exempt from this mandate, and there is no legislative

history indicating that Congress intended that the PTO should be.

Thus, this court must accept the plain and precise language of

paragraph six.

Consistent with Donaldson, in the second decision, Alappat, 33

F.3d at 1540, 31 USPQ2d at 1554, the Federal Circuit held:

Given Alappat's disclosure, it was error for the Board majority

to interpret each of the means clauses in claim 15 so broadly as to

``read on any and every means for performing the function'' recited,

as it said it was doing, and then to conclude that claim 15 is

nothing more than a process claim wherein each means clause

represents a step in that process. Contrary to suggestions by the

Commissioner, this court's precedents do not support the Board's

view that the particular apparatus claims at issue in this case may

be viewed as nothing more than process claims.

\18\ 1162 O.G. (May 17, 1994).

\19\ See, e.g. Diamond v. Diehr, 450 U.S. at 188-89, 209 USPQ at

9 (``In determining the eligibility of respondents' claimed process

for patent protection under Sec. 101, their claims must be

considered as a whole. It is inappropriate to dissect the claims

into old and new elements and then to ignore the presence of the old

elements in the analysis. This is particularly true in a process

claim because a new combination of steps in a process may be

patentable even though all the constituents of the combination were

well known and in common use before the combination was made.'').

\20\ See supra note 18 and accompanying text.

\21\ Diamond v. Chakrabarty, 447 U.S. 303, 308-09, 206 USPQ 193,

197 (1980):

In choosing such expansive terms as ``manufacture'' and

``composition of matter,'' modified by the comprehensive ``any,''

Congress plainly contemplated that the patent laws would be given

wide scope. The relevant legislative history also supports a broad

construction. The Patent Act of 1793, authored by Thomas Jefferson,

defined statutory subject matter as ``any new and useful art,

machine, manufacture, or composition of matter, or any new or useful

improvement [thereof].'' Act of Feb. 21, 1793, Sec. 1, 1 Stat. 319.

The Act embodied Jefferson's philosophy that ``ingenuity should

receive a liberal encouragement.'' 5 Writings of Thomas Jefferson

75-76 (Washington ed. 1871). See Graham v. John Deere Co., 383 U.S.

1, 7-10 (1966). Subsequent patent statutes in 1836, 1870, and 1874

employed this same broad language. In 1952, when the patent laws

were recodified, Congress replaced the word ``art'' with

``process,'' but otherwise left Jefferson's language intact. The

Committee Reports accompanying the 1952 Act inform us that Congress

intended statutory subject matter to ``include anything under the

sun that is made by man.'' S. Rep. No. 1979, 82d Cong., 2d Sess. 5

(1952); H.R. Rep. No. 1923, 82d Cong., 2d Sess. 6 (1952).

This perspective has been embraced by the Federal Circuit:

The plain and unambiguous of Sec. 101 is that any new and useful

process, machine, manufacture, or composition of matter, or any new

and useful improvement thereof, may be patented if it meets the

requirements for patentability set forth in Title 35, such as those

found in Secs. 102, 103, and 112. The use of the expansive term

``any'' in Sec. 101 represents Congress' intent not to place any

restrictions on the subject matter for which a patent may be

obtained beyond those specifically recited in Sec. 101 and the other

parts of Title 35. * * * Thus, it is improper to read into Sec. 101

limitations as to the subject matter that may be patented where the

legislative history does not indicate that Congress clearly intended

limitations. [Alappat, 33 F.3d at 1542, 31 USPQ2D at 1556.]

\22\ 35 U.S.C. 101 (1994).

\23\ 35 U.S.C. Sec. 100(b) (``The term `process' means process,

art, or method, and includes a new use of a known process, machine,

manufacture, composition of matter, or material.'').

\24\ E.g., Alappat, 33 F.3d at 1542, 31 USPQ2d at 1556; In re

Warmerdam, 33 F.3d 1354, 1358, 31 USPQ2d 1754, 1757 (Fed. Cir.

1994).

[[Page 7489]]

\25\ See. e.g., Rubber-Tip Pencil Co. v. Howard, 87 U.S. 498,

507 (1874) (``idea of itself is not patentable, but a new device by

which it may be made practically useful is''); Mackay Radio &

Telegraph Co. v. Radio Corp. of America, 306 U.S. 86, 94 (1939)

(``While a scientific truth, or the mathematical expression of it,

is not patentable invention, a novel and useful structure created

with the aid of knowledge of scientific truth may be.''); Warmerdam,

33 F.3d at 1360, 31 USPQ2d at 1759 (``steps of `locating' a medical

axis, and `creating' a bubble hierarchy * * * describe nothing more

than a manipulation of basic mathematical constructs, the

paradigmatic `abstract idea' '').

\26\ The concern over preemption was expressed as early as 1852.

See Le Roy v. Tatham, 55 U.S. 156, 175 (1852) (``A principle, in the

abstract, is a fundamental truth; an original cause; a motive; these

cannot be patented, as no one can claim in either of them an

exclusive right.'')' Funk Brothers Seed Co. v. Kalo Inoculant Co.,

333 U.S. 127, 132, 76 USPQ 280, 282 (1948) (combination of six

species of bacteria held to be non-statutory subject matter).

\27\ The definition of ``data structure'' is ``a physical or

logical relationship among data elements, designed to support

specific data manipulation functions.'' The New IEEE Standard

Dictionary of Electrical and Electronics Terms 308 (5th ed. 1993).

\28\ Compare In re Lowry, 32 F.3d 1579, 1583-84, 32 USPQ2d 1031,

1035 (Fed. Cir. 1994) (claim to data structure that increases

computer efficiency held statutory) and Warmerdam, 33 F.3d at 1360-

61, 31 USPQ2d at 1759 (claim to computer having specific memory held

statutory product-by-process claim) with Warmerdam, 33 F.3d at 1361,

31 USPQ2d at 1760 (claim to a data structure per se held non-

statutory).

\29\ In re Sarkar, 588 F.2d 1330, 1333, 200 USPQ 132, 137 (CCPA

1978):

[E]ach invention must be evaluated as claimed; yet semantogenic

considerations preclude a determination based solely on words

appearing in the claims. In the final analysis under Sec. 101, the

claimed invention, as a whole, must be evaluated for what it is.

Quoted with approval in Abele, 684 F.2d at 907, 214 USPQ at 687.

See also In re Johnson, 589 F.2d 1070, 1077, 200 USPQ 199, 206 (CCPA

1978) (``form of the claim is often an exercise in drafting'').

\30\ See, e.g., Warmerdam, 33 F.3d at 1361, 31 USPQ2d at 1760

(claim to a data structure per se held non-statutory).

\31\ Computer Dictionary 210 (Microsoft Press, 2d ed. 1994):

Data consists of facts, which become information when they are

seen in context and convey meaning to people. Computers process data

without any understanding of what that data represents.

\32\ See supra note 29.

O'Reilly v. Morse, 56 U.S. (15 How.) at 112-14.

\34\ Id. at 114-19.

\35\ Products may be either machines, manufactures or

compositions of matter.

A machine is:

a concrete thing, consisting of parts or of certain devices and

combinations of devices.

Burr v. Duryee, 68 U.S. (1 Wall.) 531, 570 (1863).

A manufacture is:

the production of articles for use from raw or prepared

materials by giving to these materials new forms, qualities,

properties or combinations, whether by hand-labor or by machinery.

Diamond v. Chakrabarty, 447 U.S. at 308, 206 USPQ at 196-97

(quoting American Fruit Growers, Inc. v. Brogdex Co., 283 U.S. 1, 11

(1931).

A composition of matter is:

a composition[] of two or more substances [or] * * * a[]

composite article[], whether * * * [it] be the result of chemical

union, or of mechanical mixture, whether * * * [it] be [a] gas[],

fluid[], powder[], or solid[].

Diamond v. Chakrabarty, 447 U.S. at 308, 206 USPQ at 197

(quoting Shell Development Co. v. Watson, 149 F. Supp. 279, 280, 113

USPQ 265, 266 (D.D.C. 1957), aff'd per curiam, 252 F.2d 861, 116

USPQ 428 (D.C. Cir. 1958).

\36\ See, e.g., Lowry, 32 F.3d at 1583, 32 USPQ2d at 1034-35;

USPQ2d at 1760.

\37\ Cf. In re Iwahashi, 888 F.2d 1370, 1374-75, 12 USPQ2d 1908,

1911-12 (Fed. Cir. 1989), cited with approval in Alappat, 33 F.3d at

1544, n.24, 31 USPQ2d at 1558 n.24.

\38\ ``Specific software'' is defined as a set of instructions

implemented in a specific program code segment. See Computer

Dictionary 78 (Microsoft Press, 2d ed. 1994) for definition of

``code segment.''

\39\ See Diamond v. Diehr, 450 U.S. at 183-84, 209 USPQ at 6

(quoting Cochrane v. Deener, 94 U.S. 780, 787-88 (1877) (``A

[statutory] process is a mode of treatment of certain materials to

produce a given result. It is an act, or a series of acts, performed

upon the subject-matter to be transformed and reduced to a different

state or thing. * * * The process requires that certain things

should be done with certain substances, and in a certain order; but

the tools to be used in doing this may be of secondary

consequence.'').

\40\ See Alappat, 33 F.3d at 1543, 31 USPQ2d at 1556-57 (quoting

Diamond v. Diehr, 450 U.S. at 192, 209 USPQ at 10). See also id. at

1569, 31 USPQ2d at 1578-79 (Newman, J., concurring)

(``unpatentability of the principle does not defeat patentability of

its practical applicants'') (citing O'Reilly v. Morse, 56 U.S. (15

How.) at 114-19).

\41\ Diamond v. Diehr, 450 U.S. at 187, 209 USPQ at 8.

\42\ See In re Gelnovatch, 595 F.2d 32, 41 n.7, 201 USPQ 136,

145 n.7 (CCPA 1979) (data-gathering step did not measure physical

phenomenon).

\43\ Schrader, 22 F.3d at 294, 30 USPQ2d at 1459 citing with

approval Arrhythmia, 958 F.2d at 1058-59, 22 USPQ2d at 1037-38;

Abele, 684 F.2d at 909, 214 USPQ at 688; In re Taner, 681 F.2d 787,

790, 214 USPQ, 678, 681 (CCPA 1982).

\44\ See supra note 9.

\45\ In Sarkar, 588 F.2d at 1335, 200 USPQ at 139, the court

explained why this approach must be followed:

No mathematical equation can be used, as a practical matter,

without establishing and substituting values for the variables

expressed therein. Substitution of values dictated by the formula

has thus been viewed as a form of mathematical step. If the steps of

gathering and substituting values were alone sufficient, every

mathematical equation, formula, or algorithm having any practical

use would be per se subject to patenting as a ``process'' under

Sec. 101. Consideration of whether the substitution of specific

values is enough to convert the disembodied ideas present in the

formula into an embodiment of those ideas, or into an application of

the formula, is foreclosed by the current state of the law.

\46\ See supra note 40.

\47\ See, e.g., In re Bernhart, 417 F.2d 1395, 1400, 163 USPQ

611, 616 (CCPA 1969).

\48\ Schrader, 22 F.3d at 293-94, 30 USPQ2d at 1458-59.

\49\ Warmerdam, 33 F.3d at 1360, 31 USPQ2d at 1759.

\50\ See, e.g., In re Meyer, 688 F.2d 789, 794-95, 215 USPQ 193,

197 (CCPA 1982) (``Scientific principles, such as the relationship

between mass and energy, and laws of nature, such as the

acceleration of gravity, namely, a=32 ft./sec.\2\, can be

represented in mathematical format. However, some mathematical

algorithms and formulae do not represent scientific principles or

laws of nature; they represent ideas or mental processes and are

simply logical vehicles or communicating possible solutions to

complex problems. The presence of a mathematical algorithm or

formula in a claim is merely an indication that a scientific

principle, law of nature, idea or mental process may be the subject

matter claimed and, thus, justify a rejection of that claim under 35

USC Sec. 101; but the presence of a mathematical algorithm or

formula is only a signpost for further analysis.''). Cf. Alappat, 33

F.3d at 1543 n.19, 31 USPQ2d at 1556 n.19 in which the Federal

Circuit recognized the confusion:

The Supreme Court has not been clear * * * as to whether such

subject matter is excluded from the scope of Sec. 101 because it

represents laws of nature, natural phenomena, or abstract ideas. See

Diehr, 450 U.S. at 186 (viewed mathematical algorithm as a law of

nature); Benson, 409 U.S. at 71-72 (treated mathematical algorithm

as an ``idea''). The Supreme Court also has not been clear as to

exactly what kind of mathematical subject matter may not be

patented. The Supreme Court has used, among others, the terms

``mathematical algorithm,'' ``mathematical formula,'' and

``mathematical equation'' to describe types of mathematical subject

matter not entitled to patent protection standing alone. The Supreme

Court has not set forth, however, any consistent or clear

explanation of what it intended such terms or how these terms are

related, if at all.

\51\ Walter, 618 F.2d at 769, 205 USPQ at 409 (Because none of

the claimed steps were explicitly or implicitly limited to their

application in seismic prospecting activities, the court held that

``[a]lthough the claim preambles relate the claimed invention to the

art of seismic prospecting, the claims themselves are not drawn to

methods of or apparatus for seismic prospecting; they are drawn to

improved mathematical methods for interpreting the results of

seismic

[[Page 7490]]

prospecting.''). Cf. Alappat, 33 F.3d at 1544, 31 USPQ2d at 1558.

\52\ Walter, 618 F.2d at 769-70, 205 USPQ at 409.

\53\ See supra note 45.

\54\ Taner, 681 F.2d at 788, 214 USPQ at 679.

\55\ Abele, 684 F.2d at 908, 214 USPQ at 687 (``The

specification indicates that such attenuation data is available only

when an X-ray beam is produced by a CAT scanner, passed through an

object, and detected upon its exist. Only after these steps have

been completed is the algorithm performed, and the resultant

modified data displayed in the required format.'').

\56\ Gelnovatch, 595 F.2d at 41 n.7, 201 USPQ at 145 n.7

(``Appellants' claimed step of perturbing the values of a set of

process inputs (step 3), in addition to being a mathematical

operation, appears to be a data-gathering step of the type we have

held insufficient to change a nonstatutory method of calculation

into a statutory process. * * * In this instance, the perturbed

process inputs are not even measured values of physical phenomena,

but are instead derived by numerically changing the values in the

previous set of process inputs.'').

\57\ Sarkar, 588 F.2d at 1331, 200 USPQ at 135.

\58\ See Sarkar, 588 F.2d at 1332 n.6, 200 USPQ at 136 n.6

(``post-solution'' construction that was being modeled by the

mathematical process not considered in deciding Sec. 101 question

because applicant indicated that such construction was not a

material element of the invention).

\59\ Parker v. Flook, 437 U.S. 584, 585, 198 USPQ 193, 195

(1978).

\60\ Walter, 618 F.2d at 770, 205 USPQ at 409 (``If Sec. 101

could be satisfied by the mere recordation of the results of a

nonstatutory process on some record medium, even the most unskilled

patent draftsman could provide for such a step.'').

\61\ Gelnovatch, 595 F.2d at 41 n.7, 201 USPQ at 145 n.7.

\62\ Abele, 684 F.2d at 909, 214 USPQ at 688 (``This claim

presents no more than the calculation of a number and display of the

result, albeit in a particular format. The specification provides no

greater meaning to `data in a field' than a matrix of numbers

regarding of by what method generated. Thus, the algorithm is

neither explicitly nor implicitly applied to any certain process.

Moreover, that the result is displayed as a shade of gray rather

than as simply a number provides no greater or better information,

considering the broad range of applications encompassed by the

claim.'').

\63\ In re De Castelete, 562 F.2d at 1236, 1244, 195 USPQ 439,

446 (CCPA 1977) (``That the computer is instructed to transmit

electrical signals, representing the results of its calculations,

does not constitute the type of `post solution activity' found in

Flook, [437 U.S. 584, 198 USPQ 193 (1978)], and does not transform

the claim into one for a process merely using an algorithm. The

final transmitting step constitutes nothing more than reading out

the result of the calculations.'').

\64\ E.g., Warmerdam, 33 F.3d at 1360, 31 USPQ2d at 1759. See

also Schrader, 22 F.3d at 295, 30 USPQ2d at 1459.

\65\ See supra note 18 and accompanying text.

\66\ Computer Dictionary 353 (Microsoft Press, 2d ed. 1994)

(definition of ``self-documenting code'').

\67\ See In re Barker, 559 F.2d 588, 591, 194 USPQ 470, 472

(CCPA 1977), cert. denied, Barker v. Parker, 434 U.S. 1064 (1978) (a

specification may be sufficient to enable one skilled in the art to

make and use the invention, but still fail to comply with the

written description requirement). See also In re DiLeone, 436 F.2d

1404, 1405, 168 USPQ 592, 593 (CCPA 1971).

\68\ See, e.g., Northern Telecom v. Datapoint Corp., 908 F.2d

931, 941-43, 15 USPQ 2d 1321, 1328-30 (Fed. Cir.), cert. denied,

Datapoint Corp. v. Northern Telecom, 498 U.S. 920 (1990) (judgment

of invalidity reversed for clear error where expert testimony on

both sides showed that a programmer of reasonable skill could write

a satisfactory program with ordinary effort based on the

disclosure); DeGeorge v. Bernier, 768 F.2d 1318, 1324, 226 USPQ 758,

762-63 (Fed. Cir. 1985) (superseded by statute with respect to

issues not relevant here) (invention was adequately disclosed for

purposes of enablement even though all of the circuitry of a word

processor was not disclosed, since the undisclosed circuitry was

deemed inconsequential because it did not pertain to the claimed

circuit); In re Phillips, 608 F.2d 879, 882-83, 203 USPQ 971, (CCPA

1979) (computerized method of generating printed architectural

specifications dependent on use of glossary of predefined standard

phrases and error-checking feature enabled by overall disclosure

generally defining errors); In re Donohue, 550 F.2d 1269, 1271, 193

USPQ 136, 137 (CCPA 1977) (``Employment of block diagrams and

descriptions of their functions is not fatal under 35 U.S.C.

Sec. 112, first paragraph, providing the represented structure is

conventional and can be determined without undue experimentation.'')

In re Knowlton, 481 F.2d 1357, 1366-68, 178 USPQ 486, 493-94 (CCPA

1973) (examiner's contention that a software invention needed a

detailed description of all the circuitry in the complete hardware

system reversed).

\69\ See In re Naquin, 398 F.2d 863, 866, 158 USPQ 317, 319

(CCPA 1968) (``When an invention, in its different aspects, involves

distinct arts, that specification is adequate which enables the

adepts of each art, those who have the best chance of being enabled,

to carry out the aspect proper to their specialty.'') Ex parte

Zechnall, 194 USPQ 461, 461 (Bd. App. 1973) (``appellants'

disclosure must be held sufficient if it would enable a person

skilled in the electronic computer art, in cooperation with a person

skilled in the fuel injection art, to make and use appellants'

invention'').

\70\ See In re Scarbrough, 500 F.2d 560, 565, 182 USPQ 298, 301-

02 (CCPA 1974) (``It is not enough that a person skilled in the art,

by carrying on investigations along the line indicated in the

instant application, and by a great amount of work eventually might

find out how to make and use the instant invention. The statute

requires the application itself to inform, not to direct others to

find out for themselves (citation omitted).''); Knowlton, 481 F.2d

at 1367, 178 USPQ at 493 (disclosure must constitute more than a

``sketchy explanation of flow diagrams or a bare group of program

listings together with a reference to a proprietary computer on

which they might be run''). See also In re Gunn, 537 F.2d 1123,

1127-28, 190 USPQ 402 (CCPA 1976); In re Brandstadter, 484 F.2d

1395, 1406-07, 17 USPQ 286, 294 (CCPA 1973); and In re Ghiron, 442

F.2d 985, 991, 169 USPQ 723, 727-28 (CCPA 1971).

\71\ Cf. In re Gulack, 703 F.2d 1381, 1385, 217 USPQ 401, 404

(Fed. Cir. 1983) (when descriptive material is not functionally

related to the substrate, the descriptive material will not

distinguish the invention from the prior art in terms of

patentability).

Appendix to Examination Guidelines for Computer-Related Inventions

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Dated: February 16, 1996.

Bruce A. Lehman,

Assistant Secretary of Commerce and Commissioner of Patents and

Trademarks.

[FR Doc. 96-4140 Filed 2-27-96; 8:45 am]

BILLING CODE 3510-16-C