Appeal 2006-2107
Application 09/969,833
subject-matter, the claim would be statutory subject-matter if it instead pre-
empted an “entire class” of mathematical algorithms. We do not agree.
The mere fact that the claims do not involve a “particular”
mathematical algorithm is not by itself sufficient to show that the Examiner
erred. Pre-empting an “entire class” of mathematical algorithms inherently
includes pre-empting all “particular” mathematical algorithms included
within that class.
Appellant’s method claims are directed to “generating one or more
output values of a one-way chain.” That a “one-way chain” is a class of
mathematical algorithms is readily apparent from Findings of Fact 3-10.
Specifically, as shown in Finding of Fact 7, a so-called one-way chain is a
sequence of values v1 . . . vs such that vi-1=f(vi).
Further, Appellant’s method claims were not limited to any particular
art or technology, to any particular apparatus or machinery, or to any
particular end use. Rather, Appellant’s method claims cover any use of the
claimed method in a processor coupled to a memory, i.e., a general-purpose
computer of any type. Because Appellant’s claimed “generating one or
more output values of a one-way chain” has no substantial practical
application except in applications (see Finding of Fact 2) performed by a
computer (processor coupled to a memory), the method claims would
“wholly pre-empt” all substantial applications of the claimed mathematical
algorithm and in practical effect would be a patent on the algorithm itself.
See Benson, 409 U.S. at 68-72, 175 USPQ at 675-677; see also Alappat, 33
F.3d at 1544, 31 USPQ2d at 1558 (quoting Benson).
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