Appeal No. 1998-2263
Application No. 08/692,612
with respect to the prior art. Therefore, skilled artisans would have had the ability to make
and use the claimed program in light of the enabled method of claim 28. Therefore, we will
not sustain the rejection of claim 35 since, in our view and in the examiner’s view, the
method would have been enabled.
35 U.S.C. § 101
Here, on its face, the examiner appears to have provided a reasoned analysis of
the claimed and disclosed inventions under the Guidelines for Examination of
Computer Implemented Inventions, 61 Fed. Reg. 7478 (Feb. 28, 1996) (Guidelines),
but the final analysis by the examiner is based upon the Freeman-Walter-Abele test. (See
answer at pages 5-13.)
The examiner found that the claimed invention, as recited in claim 28, was directed
to a mathematical algorithm. (See answer at page 8.) We disagree with the examiner.
Appellant argues that the examiner's limited interpretation of the Guidelines is
inconsistent with the Guidelines and with precedent. We agree with appellant. (See brief
at page 10.) With respect to appellant's analysis of the claimed invention at pages 10-15
of the brief, we disagree with appellant that the claimed method is a “specific” machine or
process under the Guidelines. Appellant relies upon In re Alappat, 33 F.3d 1526, 31
USPQ2d 1545 (Fed. Cir. 1994) to support the proposition that claim 28 is a specific
process. We distinguish the claims in Alappat which were written in means-plus-function
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