Portuguese   Portuguese
English   English

In re Noll (545 F.2d 141, 1976 Nov 18)


Decision Parameters

Decisions It Cites

    In re Bernhart [417 F.2d 1395, 1969]
    Gottschalk v. Benson [409 U.S. 63, 1972]
    In re Chatfield [545 F.2d 152, 1976]

Rules & Quotes

[PHYSICAL] {1} Unlike the method claims in In re Chatfield, Cust. Pat.App., 545 F.2d 152, (CCPA 1976), decided this date, appellant's claims are drawn to apparatus for scan-converting a sequence of first data signals into a sequence of second signals. This apparatus is a "machine" or an "improvement thereof" within the meaning of 35 U.S.C. Section 101. It is the claims which define the invention. The instant claims describe an apparatus, not a program. The solicitor and the board cite various instances in the record which allegedly indicate that the appellant "perceives his invention, in fact to lie in the computer program disclosed." How appellant "perceives his invention" is irrelevant to a rejection under 35 U.S.C. Section 101, which merely lists the so-called statutory classes of subject matter. Moreover, neither the board nor the solicitor may extract that part of the claimed invention which they deem to be novel and test only that part to determine whether it belongs to one of the statutory classes of patentable subject matter. It is the claimed subject matter as a whole which must be subjected to this test.

[ABSTRACT] {2} There is nothing abstract about the claimed invention. It comprises physical structure, including storage devices and electrical components uniquely configured to perform specified functions through the physical properties of electrical circuits to achieve controlled results. Appellant's programmed machine is structurally different from a machine without that program. It thus broadly corresponds to the combination held to be statutory subject matter in claim 18 in In re Bernhart. ... Unlike the invention claimed in Benson, the instant claims are limited to a particular technology (computer graphics systems and scan-conversion of graphic information). Furthermore, not all machines for achieving appellant's results are included within the scope of appellant's claims; non-program-controlled machines are clearly excluded.

{3} In its review of Johnston, the Supreme Court, referring to its opinion in Benson, emphasized that Benson was a limited holding.

JSON Specification

Commentary

return to top