Appeal No. 1998-3335
Application 08/014,867
35 U.S.C. § 101
The § 101 "mathematical algorithm" rejection maintained
in the Examiner's Answer entered October 24, 1997, is based on
the U.S. Patent and Trademark Office's Examination Guidelines
for Computer-Related Inventions (Guidelines), 1184 Off. Gaz.
Pat. & Trademark Office 87 (March 26, 1996). Since then, the2
U.S. Court of Appeals for the Federal Circuit has issued two
decisions clarifying the application of § 101: State St. Bank
& Trust Co. v. Signature Fin. Group, Inc., 149 F.3d 1368,
47 USPQ2d 1596 (Fed. Cir. 1998) and AT&T v. Excel
Communications, Inc., 172 F.3d 1352, 50 USPQ2d 1447 (Fed. Cir.
1999). We conclude that the § 101 rejection must be reversed
under the recently enunciated principles of State St. and
AT&T.
"[T]he judicially-defined proscription against patenting
of a 'mathematical algorithm,' to the extent such a
proscription still exists, is narrowly limited to mathematical
algorithms in the abstract." AT&T, 172 F.3d at 1356,
The Guidelines are now incorporated into the Manual of2
Patent Examining Procedure (MPEP) § 2106, except that MPEP
§ 2106 incorporates the footnotes of the Guidelines into the
body of the text and changes some wording, such as
"non-functional" in the Guidelines to "nonfunctional."
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