Ex Parte Brueckner et al - Page 9



             Appeal 2007-1200                                                                                   
             Application 09/900,251                                                                             
                   As the court observed in Sherwood, the writing of a program may require                      
             varying degrees of skill:                                                                          
                          In general, writing a computer program may be a task                                  
                          requiring the most sublime of the inventive faculty or it                             
                          may require only the droning use of clerical skill. The                               
                          difference between the two extremes lies in the creation                              
                          of mathematical methodology to bridge the gap between                                 
                          the information one starts with ("the input") and the                                 
                          information that is desired ("the output").                                           
             In re Sherwood, 613 F.2d at 816-17, 204 USPQ at 544; but see Fonar Corp. v.                        
             General Electric Co., 107 F.3d 1543 (Fed.Cir.1997) (stating, in the context of a                   
             best mode analysis, "normally, writing code for . . . software is within the skill of              
             the art, not requiring undue experimentation, once its functions have been                         
             disclosed").                                                                                       
                          The claimed invention . . . is not in the details of the                              
                          program writing, but in the apparatus and method whose                                
                          patentability is based on the claimed combination of                                  
                          components or steps. . . .  The possible design of superior                           
                          software, or whether each programmer would work out                                   
                          the details in the identical way, is not relevant in                                  
                          determining whether the inventor has complied with the                                
                          enablement requirement.                                                               
             Northern Telecom, 908 F.2d at 941, 15 USPQ2d at 1329.                                              







                                                       9                                                        



Page:  Previous  1  2  3  4  5  6  7  8  9  10  11  12  13  Next

Last modified: September 9, 2013