[Federal Register Volume 60, Number 106 (Friday, June 2, 1995)]
[Notices]
[Pages 28778-28780]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 95-13694]



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DEPARTMENT OF COMMERCE
Patent and Trademark Office
[Docket No. 9505 31 44-5144-01]


Request for Comments on Proposed Examination Guidelines for 
Computer-Implemented Inventions

AGENCY: Patent and Trademark Office, Commerce.

ACTION: Notice and request for public comments.

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SUMMARY: The Patent and Trademark Office (PTO) requests comments from 
any interested member of the public on proposed internal guidelines to 
be used by Office personnel in their review of patent applications on 
computer-implemented inventions. Because these guidelines govern 
internal practices, they are exempt from notice and comment rulemaking 
under 5 U.S.C. 553(b)(A).

DATES: Written comments on the proposed guidelines will be accepted by 
the PTO until July 31, 1995.

ADDRESSES: Written comments should be addressed to the Commissioner of 
Patents and Trademarks, marked to the attention of Jeff Kushan. 
Comments submitted by mail should be sent to Commissioner of Patents 
and Trademarks, Box 4, Patent and Trademark Office, Washington, DC 
20231. Comments may also be submitted by telefax at (703) 305-8885 and 
by electronic mail through the Internet to ``comments-
[email protected].'' Written comments should include the following 
information:

--name and affiliation of the individual responding;
--an indication of whether comments offered represent views of the 
respondent's organization or are the respondent's personal views; and
--if applicable, information on the respondent's organization, 
including the type of organization (e.g., business, trade group, 
university, non-profit organization) and general areas of interest.

    Parties presenting written comments who wish to have their comments 
included in a publicly accessible electronic database of comments must 
provide their comments in machine-readable format. Such submissions may 
be provided in the form of an electronic mail message sent through the 
Internet, or on a 3.5'' floppy disk formatted for use in either a 
Macintosh or MS-DOS based computer. Machine-readable submissions must 
be provided as unformatted text (e.g., ASCII or plain text).
    All written comments, whether submitted on paper or in machine-
readable form, will be available for public inspection no later than 
August 18, 1995, in Room 902 of Crystal Park Two, 2121 Crystal Drive, 
Arlington, Virginia. In addition, comments provided in machine-readable 
format will be available no later than August 18, 1995, through 
anonymous file transfer protocol (ftp) via the Internet (address: 
comments.uspto.gov) and through the World Wide Web (address: 
www.uspto.gov).
FOR FURTHER INFORMATION CONTACT:Jeff Kushan by telephone at (703) 305-
9300, by fax at (703) 305-8885, by electronic mail at [email protected], 
or by mail marked to his attention addressed to the Commissioner of 
Patents and Trademarks, Box 4, Washington, DC 20231.

SUPPLEMENTARY INFORMATION

I. Guidelines for Examination of Computer-Implemented Inventions

A. General Considerations

    The following guidelines have been developed to assist Office 
personnel in their review of applications drawn to computer-implemented 
inventions. These guidelines respond to recent changes in the law that 
governs the patentability of computer-implemented inventions, and set 
forth the official policy of the Office regarding inventions in this 
field of technology.
    It is essential that patent applicants obtain a prompt yet complete 
examination of their applications. The Office can best achieve this 
goal by raising any issue that may affect patentability in the initial 
action on the merits. Under the principles of compact prosecution, each 
claim should be reviewed for compliance with every statutory 
requirement of patentability in the initial review of the application, 
even if one or more claims is found to be deficient with respect to one 
statutory requirement. Deficiencies should be explained clearly, 
particularly when they serve as a basis of a rejection. Where possible, 
examiners should indicate how rejections may be overcome and problems 
resolved. A failure to follow this approach can lead to unnecessary 
delays in the prosecution of the application.
B. Procedures To Be Followed When Evaluating Computer-Implemented 
Inventions

    The following procedures should be used when reviewing applications 
drawn to computer-implemented inventions.
    1. Determine what the applicant has invented by reviewing the 
written description and the claims.
    (a) Identify any specific embodiments of the invention that have 
been disclosed, review the detailed descripton of the invention and 
note the specific utility that has been asserted for the invention.
    (b) Analyze each claim carefully, correlating each claim element to 
the relevant portion of the written description that describes that 
element. Give claim elements their broadest reasonable interpretation 
that is consistent with the written description. If elements of a 
claimed invention are defined in means plus function format, review the 
written description to identify the specific structure, materials or 
acts that correspond to each such element.
    (c) Considering each claim as a whole, classify the invention 
defined by each claim as to its statutory category (i.e., process, 
machine, manufacture or composition of matter). Rely on the following 
presumptions in making this classification.
    (i) A computer or other programmable apparatus whose actions are 
directed by a computer program or other form of ``software'' is a 
statutory ``machine.''
    (ii) A computer-readable memory that can be used to direct a 
computer to function in a particular manner when used by the computer 
[1] is a statutory ``article of manufacture''. [[Page 28779]] 
    (iii) A series of specific operational steps to be performed on or 
with the aid of a computer is a statutory ``process''.
    A claim that clearly defines a computer-implemented process but is 
not cast as an element of a computer-readable memory or as implemented 
on a computer should be classified as a statutory ``process.'' [2] If 
an applicant responds to an action of the Office based on this 
classification by asserting that subject matter claimed in this format 
is a machine or an article of manufacture, reject the claim under 35 
U.S.C. 112, second paragraph, for failing to recite at least one 
physical element in the claims that would otherwise place the invention 
in either of these two ``product'' categories. The Examiner should also 
object to the specification under 37 CFR 1.71(b) if such an assertion 
is made, as the complete invention contemplated by the applicant has 
not been cast precisely as being an invention within one of the 
statutory categories.
    A claim that defines an invention as any of the following subject 
matter should be classified as non-statutory.

--a compilation or arrangement of data, independent of any physical 
element;
--a known machine-readable storage medium that is encoded with data 
representing creative or artistic expression (e.g., a work of music, 
art or literature) [3], [4];
--a ``data structure'' independent of any physical element (i.e., not 
as implemented on a physical component of a computer such as a 
computer-readable memory to render that component capable of causing a 
computer to operate in a particular manner); or
--a process that does nothing more than manipulate abstract ideas or 
concepts (e.g., a process consisting solely of the steps one would 
follow in solving a mathematical problem [5]).

    Claims in this form are indistinguishable from abstract ideas, laws 
of nature and natural phenomena and may not be patented. Non-statutory 
claims should be handled in the manner described in section (2)(c) 
below.
    2. Analyze each claim to determine if it complies with Sec. 112, 
second paragraph, and with Sec. 112, first paragraph.
    (a) Determine if the claims particularly point out and distinctly 
claim the invention. To do this, compare the invention as claimed to 
the invention as it has been described in the specification. Pay 
particular attention to the specific utility contemplated for the 
invention--features or elements of the invention that are necessary to 
provide the specific utility contemplated for that invention must be 
reflected in the claims. If the claims fail to accurately define the 
invention, they should be rejected under Sec. 112, second paragraph. A 
failure to limit the claim to reflect features of the invention that 
are necessary to impart the specific utility contemplated may also 
create a deficiency under Sec. 112, first paragraph.
    If elements of a claimed invention are defined using ``means plus 
function'' language, but it is unclear what structure, materials or 
acts are intended to correspond to those elements, reject the claim 
under Sec. 112, second paragraph. A rejection imposed on this basis 
shifts the burden to the applicant to describe the specific structure, 
material or acts that correspond to the means element in question, and 
to identify the precise location in the specification where a 
description of that means element can be found. Interpretation of means 
elements for Sec. 112, second paragraph purposes must be consistent 
with interpretation of such elements for Secs. 102 and 103 purposes.
    Computer program-related elements of a computer-implemented [6] 
invention may serve as the specific structure, material or acts that 
correspond to an element of an invention defined using a means plus 
function limitation. For example, a series of operations performed by a 
computer under the direction of a computer program may serve as 
``specific acts'' that correspond to a means element. Similarly, a 
computer-readable memory encoded with data representing a computer 
program that can cause a computer to function in a particular fashion, 
or a component of a computer that has been reconfigured with a computer 
program to operate in a particular fashion, can serve as the ``specific 
structure'' corresponding to a means element.
    Claims must be defined using the English language. See, 37 CFR 
1.52(a). A computer programming language is not the English language, 
despite the fact that English words may be used in that language. Thus, 
an applicant may not use computer program code, in either source or 
object format, to define the metes and bounds of a claim. A claim which 
attempts to define elements of an invention using computer program 
code, rather than the functional steps which are to be performed, 
should be rejected under Sec. 112, second paragraph, and should be 
objected to under 37 CFR 1.52(a).
    (b) Construe the scope of the claimed invention to determine if it 
is adequately supported by an enabling disclosure. Construe any element 
defined in means plus function language to encompass all reasonable 
equivalents of the specific structure, material or acts disclosed in 
the specification corresponding to that means element. Special care 
should be taken to ensure that each claim complies with the written 
description and enablement requirements of 35 U.S.C. Sec. 112.
    (c) A claim as a whole that defines non-statutory subject matter is 
deficient under Sec. 101, and under Sec. 112, second paragraph. 
Determining the scope of a claim as a whole requires a clear 
understanding of what the applicant regards as the invention. The 
review performed in step 1 should be used to gain this understanding.
    (i) If the invention as disclosed in the written description is 
statutory, but the claims define subject matter that is not, the 
deficiency can be corrected by an appropriate claim amendment. 
Therefore, reject the claims under Secs. 101 and 112, second paragraph, 
but identify the features of the invention that, if recited in the 
claim, would render the claimed subject matter statutory.
    (ii) If the invention, both as disclosed and as claimed, is not 
statutory subject matter, reject the claims under Sec. 101 for being 
drawn to non-statutory subject matter, and under Sec. 112, second 
paragraph, for failing to particularly point out and distinctly claim 
an invention entitled to protection under U.S. patent law.
    An invention is not statutory if it falls within any of the non-
statutory claim categories outlined in section (1)(c) above. Also, in 
rare situations, a claim classified as a statutory machine or article 
of manufacture may define non-statutory subject matter. Non-statutory 
subject matter (i.e., abstract ideas, laws of nature and natural 
phenomena) does not become statutory merely through a different form of 
claim presentation. Such a claim will (a) define the ``invention'' not 
through characteristics of the machine or article of manufacture 
claimed but exclusively in terms of a non-statutory process that is to 
be performed on or using that machine or article of manufacture, and 
(b) encompass any product in the stated class (e.g., computer, 
computer-readable memory) configured in any manner to perform that 
process.
    3. Determine if the claimed invention is novel and nonobvious under 
Secs. 102 and 103. When evaluating claims defined using ``means plus 
function'' language, refer to the specific guidance provided in the In 
re Donaldson guidelines [1162 OG 59] and section (3)(a) 
above. [[Page 28780]] 

C. Notes on the Guidelines

    [1] Articles of manufacture encompassed by this definition consist 
of two elements: (1) a computer-readable storage medium, such as a 
memory device, a compact disc or a floppy disk, and (2) the specific 
physical configuration of the substrate of the computer-readable 
storage medium that represents data (e.g., a computer program), where 
the storage medium so configured causes a computer to operate in a 
specific and predefined manner. The composite of the two elements is a 
storage medium with a particular physical structure and function (e.g., 
one that will impart the functionality represented by the data onto a 
computer).
    [2] For example, a claim that is cast as ``a computer program'' but 
which then recites specific steps to be implemented on or using a 
computer should be classified as a ``process.'' A claim to simply a 
``computer program'' that does not define the invention in terms of 
specific steps to be performed on or using a computer should not be 
classified as a statutory process.
    [3] The specific words or symbols that constitute a computer 
program represent the expression of the computer program and as such 
are a literary creation.
    [4] A claim in this format should also be rejected under Sec. 103, 
as being obvious over the known machine-readable storage medium 
standing alone.
    [5] A claim to a method consisting solely of the steps necessary to 
converting one set of numbers to another set of numbers without 
reciting any computer-implemented steps would be a non-statutory claim 
under this definition.
    [6] This includes the software and any associated computer hardware 
that is necessary to perform the functions directed by the software.

II. Additional Information

    An analysis of the law supporting the examination guidelines for 
computer-implemented inventions is being prepared. Interested members 
of the public are invited to comment on this legal analysis. Copies of 
the legal analysis can be obtained from Jeff Kushan on or after June 
23, 1995, who can be reached using the information indicated above.

    Dated: May 30, 1995.
Bruce A. Lehman,
Assistant Secretary of Commerce and Commissioner of Patents and 
Trademarks.
[FR Doc. 95-13694 Filed 5-31-95; 2:13 pm]
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