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`IN RE HIROYUKI IWAHASHI, YOSHIKI NISHIOKA and MITSUHIRO HA-
`KARIDANI
`
`No. 89-1019
`
`UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT
`
`888 F.2d 1370; 1989 U.S. App. LEXIS 16805; 12 U.S.P.Q.2D (BNA) 1908
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`November 7, 1989, Decided
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`PRIOR HISTORY: [**1] Appealed from: Unit-
`ed States Patent & Trademark Office Board of Patent
`Appeals and Interferences.
`
`CASE SUMMARY:
`
`
`PROCEDURAL POSTURE: Appellant sought review
`of a decision of the United States Patent and Trademark
`Office Board of Patent Appeals rejecting its patent ap-
`plication under 35 U.S.C.S. § 101.
`
`OVERVIEW: Appellant objected to the rejection of its
`patent application based on the finding of the United
`States Patent and Trademark Office Board of Patent Ap-
`peals and Interferences that the subject matter was a
`nonstatutory mathematical algorithm under 35 U.S.C.S. §
`101. The court reversed the rejection based on its finding
`that appellant's auto-correlation circuit for use in pattern
`recognition was an algorithm that was implemented in a
`specific manner to define structural relationships be-
`tween physical elements of the claim. The court found
`that it was no ground for holding a claim was directed to
`nonstatutory matter to say it included or was directed to
`an algorithm. The court concluded that the fact that an
`apparatus operated according to an algorithm did not
`make it nonstatutory.
`
`OUTCOME: The court reversed the decision that re-
`jected appellant's patent application because the fact that
`appellant's apparatus operated according to an algorithm
`did not make it nonstatutory for patent purposes.
`
`CORE TERMS: algorithm, auto-correlation, input, co-
`efficient, subject matter, memory, nonstatutory, mathe-
`
`matical, apparatus, patent, invention, circuitry, calculat-
`ing, drawings, signal, specification, electronic, square,
`calculation,
`multiplier,
`formula,
`squared,
`means-plus-function, step-by-step, performing, sentence,
`accuracy, preempt, solving, output
`
`LexisNexis(R) Headnotes
`
`
`
`Patent Law > Subject Matter > General Overview
`[HN1] Determination of whether a claim preempts non-
`statutory subject matter as a whole requires a two-step
`analysis. First, it must be determined whether the claim
`directly or indirectly recites an "algorithm" in the Benson
`sense of that term, for a claim which fails even to recite
`an algorithm clearly cannot wholly preempt an algo-
`rithm. Second, the claim must be further analyzed to
`ascertain whether in its entirety it wholly preempts that
`algorithm.
`
`
`Computer & Internet Law > Patent Protection > Gen-
`eral Overview
`Patent Law > Subject Matter > Processes > Computer
`Software & Mental Steps
`Patent Law > Subject Matter > Processes > New Uses
`[HN2] It is no ground for holding a claim is directed to
`nonstatutory subject matter to say it includes or is di-
`rected to an algorithm.
`
`
`Patent Law > Subject Matter > General Overview
`[HN3] Once a mathematical algorithm has been found,
`the claim as a whole must be further analyzed. If it ap-
`
`1
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`SAMSUNG-1057
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`

`

`888 F.2d 1370, *; 1989 U.S. App. LEXIS 16805, **;
`12 U.S.P.Q.2D (BNA) 1908
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`Page 2
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`pears that the mathematical algorithm is implemented in
`a specific manner to define structural relationships be-
`tween the physical elements of the claim, in apparatus
`claims, or to refine or limit claim steps, in process
`claims, the claim being otherwise statutory, the claim
`passes muster under 35 U.S.C.S. § 101.
`
`
`Patent Law > Subject Matter > General Overview
`[HN4] The fact that the apparatus operates according to
`an algorithm does not make it nonstatutory.
`
`
`Patent Law > Claims & Specifications > General Over-
`view
`Patent Law > Infringement Actions > Claim Interpreta-
`tion > Means Plus Function
`[HN5] 35 U.S.C.S. § 112, para. 6 states that each
`means-plus-function definition shall be construed to
`cover the corresponding structure, material, or acts de-
`scribed in the specification and equivalents thereof.
`
`COUNSEL: Charles Gorenstein, Birch, Stewart, Ko-
`lasch & Birch, of Falls Church, Virginia, argued for Ap-
`pellant. With him on the brief was Michael K. Mutter.
`
`John C. Martin, Associate Solicitor, Office of the Solici-
`tor, of Arlington, Virginia, argued for Appellee. With
`him on the brief was Fred E. McKelvey, Solicitor.
`
`JUDGES: Rich, Circuit Judge, Nichols, Senior Circuit
`Judge, * and Bissell, Circuit Judge.
`
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`* Judge Nichols heard oral argument but, due
`to illness, did not participate in the decision.
`
`
`OPINION BY: RICH
`
`OPINION
` [*1371] RICH, Circuit Judge
`This appeal is from the decision of the United States
`Patent and Trademark Office (PTO) Board of Patent
`Appeals and Interferences (board), dated May 24, 1988,
`adhered to on reconsideration, affirming the examiner's
`final rejection of the single claim of applicants' patent
`application serial No. 454,022, filed December 28, 1982,
`entitled "Auto-Correlation Circuit for Use in Pattern
`Recognition." The sole ground of rejection is that the
`subject matter claimed is nonstatutory under 35 U.S.C. §
`101 because it [**2] is merely a mathematical algo-
`rithm. We reverse.
`The real party in interest, according to appellants'
`brief, is Sharp Kabishiki Kaisha (Sharp Corporation).
`
`The opening sentence of the specification states:
`"This invention relates to an auto-correlation unit for use
`in pattern recognition to obtain auto-correlation coeffi-
`cients as for stored signal samples." The embodiment
`more particularly discussed as a species of pattern recog-
`nition is voice recognition. The prior art calculation of
`auto-correlation coefficients is described as being based
`on a calculation formula involving a multiplication step.
`The specification states the disadvantage to be as fol-
`lows:
`
`
` Those state-of-the-art units for calcula-
`tion of the auto-correlation coefficients
`have the disadvantage of requiring expen-
`sive multipliers and also complicated cir-
`cuitry. As a result the auto-correlation unit
`circuitry within the entire pattern recogni-
`tion apparatus is proportionately large and
`auto-correlation calculation demands a
`greater amount of time during recogni-
`tion.
`. . . .
`The principal object of this invention
`is to provide an auto-correlation unit for
`pattern recognition which evaluates au-
`to-correlation coefficients
`[**3]
` by
`means of a simple circuitry without the
`need for an expensive multiplier as well
`as eliminating the above discussed disad-
`vantages.
`
`
`
`
`Underlying the auto-correlation unit claimed, is a pleth-
`ora of mathematical demonstration by which the appli-
`cants purport to show that the approximated value of the
`desired coefficient can be obtained without multipliers by
`obtaining the square of the sum of two of the factors in
`the equation and calculating the auto-correlation coeffi-
`cient therefrom according to a stated formula. The speci-
`fication concludes:
` As explained in the foregoing, this in-
`vention offers a highly cost effective au-
`to-correlation unit for pattern recognition
`with simple circuitry without the need to
`use an expensive multiplier, but [*1372]
`which has comparatively high accuracy
`and
`can, moreover,
`calculate
`au-
`to-correlation coefficients at high speed.
`
`
`
`
`Fig. 1 of the application drawings is described as "a
`block diagram schematically showing an embodiment of
`this invention" and appears as follows:
`
`2
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`

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`888 F.2d 1370, *; 1989 U.S. App. LEXIS 16805, **;
`12 U.S.P.Q.2D (BNA) 1908
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`Page 3
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`presented in the Solicitor's brief, to which we have added
`the letters in brackets designating at [a] the preamble or
`introductory clause and at [b] through [h] the several
`means-plus-function and other elements of the combina-
`tion of elements recited. Under the heading "Drawings"
`(the Solicitor's heading was "Fig. 1") we have copied
`verbatim the Solicitor's designations. Element [d], it will
`be noted, is not in means-plus-function [**5] form but
`specifies a "read only memory" or ROM, as the Solicitor
`says. Element [f] is an anomalous clause seemingly in-
`tended to indicate what data are stored in the ROM. It is
`not clear that a means for storing anything in the ROM is
`part of the disclosed "unit" since the application indicates
`that the squared values are "previously memorized" in
`the ROM. However, that has nothing to do with the sole
`question before us which is whether the claim as a whole
`is, in the words of the Solicitor, "directed to nonstatutory
`subject matter," so we shall not comment further on ele-
`ment [f].
`
`[SEE FIGURE IN ORIGINAL]
`Fig. 2 is described as "a block diagram showing in
`more detail the embodiment of this invention" and ap-
`pears as follows:
` [**4] [SEE FIGURE IN ORIGINAL]
`We shall not attempt a description of the electronic
`circuitry shown by these drawings beyond explaining,
`for the better understanding of the claim, that the units
`designated "ROM" and "RAM" are, respectively, a read
`only memory and a random access memory, terms well
`understood by those skilled in the art. "CPU" is a central
`processing unit. In this case, the function of the ROM, 2
`or 15, which is a permanent information storage device,
`is to deliver as output the square of a number fed to it as
`input. It is the electronic equivalent of a table in which
`one can look up the square of numbers over a desired
`range.
` [*1373] We next reproduce the claim on appeal
`and do so by presenting a copy of the claim as it has been
`
`________________________________________________________________________________
`
`
`Claim
`[a] An auto-correlation unit for providing auto-
` correlation coefficients for use as feature
` parameters in pattern recognition for N
` pieces of sampled input values
` X[n] (n=0 to N
` -1), said unit comprising:
`[b] means for extracting N pieces of sample
` input values X[n] from a series of sample val-
` ues in an input pattern expressed with an
` accuracy of optional multi-bits;
`[c] means for calculating the sum of the sam-
` ple values X[n] and X[n]- r
` (t=0-P, P< N);
`[d] a read only memory associated with said
` means for calculating;
`[e] means for feeding to said read only memo-
` ry the sum of the sampled input values as an
` address signal;
`[f] means for storing in said read only memory
` the squared value of each sum, (X[n] +
` X[n]- r)2
`
`
`[g] means for fetching and outputting the
` squared values of each such sum of the sam-
` ple input values from said read only memory
` when said memory is addressed by the sum
` of the sample input values; and
`
`Drawings
`
`
`
`
`
`
`
`Not shown in Fig.
`1; analog to digital
`converter 11 in
`Fig. 2.
`Adder 1.
`
`
`ROM 2.
`
`Signal path con-
`necting adder 1 to
`ROM 2.
`Internal structure
`of ROM 2 after be-
`ing programmed
`to store squared
`values.
`Read pulse (not
`shown) which is ap-
`plied to ROM 2; in
`Fig. 2, signal f[1] or
`f[2], applied to ROM
`
`3
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`

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`888 F.2d 1370, *; 1989 U.S. App. LEXIS 16805, **;
`12 U.S.P.Q.2D (BNA) 1908
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`Page 4
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`Claim
`
`Drawings
`
`15.
`
`Calculating circuit
`[h] means responsive to the output (X [n] +
`5.
` X[n]- r) 2
`
` of said read only memory for pro-
`
` viding an auto-correlation coefficient for use
`
` as a feature parameter according to the fol-
`
` lowing formula:
`
` [SEE FORMULA IN ORIGINAL]
`________________________________________________________________________________
`
`
` [**6] [*1374] This is one more in the line of
`cases stemming from the Supreme Court decision in
`Gottschalk v. Benson, 409 U.S. 63, 34 L. Ed. 2d 273, 93
`S. Ct. 253 (1972), decided by our predecessor, the United
`States Court of Customs and Patent Appeals. They in-
`clude in chronological order, In re Chatfield, 545 F.2d
`152, 191 U.S.P.Q. (BNA) 730 (CCPA 1976), cert. denied
`434 U.S. 875, 98 S. Ct. 226, 54 L. Ed. 2d 155, 195
`U.S.P.Q. (BNA) 465 (1977), In re Freeman, 573 F.2d
`1237, 197 U.S.P.Q. (BNA) 464 (CCPA 1978), In re
`Maucorps, 609 F.2d 481, 203 U.S.P.Q. (BNA) 812
`(CCPA 1979), In re Walter, 618 F.2d 758, 205 U.S.P.Q.
`(BNA) 397 (CCPA 1980), In re Abele, 684 F.2d 902, 214
`U.S.P.Q. (BNA) 682 (CCPA 1982), and In re Meyer, 688
`F.2d 789, 215 U.S.P.Q. (BNA) 193 (CCPA 1982). The
`list is not exhaustive but representative.
`Out of these cases came the Freeman-Walter test to
`determine whether a claim defines nonstatutory subject
`matter. It was stated in Freeman as follows:
`
`
`[HN1] Determination of
`
` [**7]
`whether a claim preempts nonstatutory
`subject matter as a whole, in the light of
`Benson, requires a
`two-step analysis.
`First, it must be determined whether the
`claim directly or indirectly recites an "al-
`gorithm" in the Benson sense of that term,
`for a claim which fails even to recite an
`algorithm clearly cannot wholly preempt
`an algorithm. Second, the claim must be
`further analyzed to ascertain whether in
`its entirety it wholly preempts that algo-
`rithm.
`
`
`
`
`
`573 F.2d at 1245, 197 USPQ at 471. The opinion next
`discusses the meaning of "algorithm" quoting from Chat-
`field footnote 5:
` Over-concentration on the word "algo-
`rithm" alone, for example, may mislead.
`The Supreme Court carefully supplied a
`
`definition of the particular algorithm be-
`fore it [in Benson], i.e., "[a] procedure for
`solving a given type of mathematical
`problem." The broader definition of algo-
`rithm is "a step-by-step procedure for
`solving a problem or accomplishing some
`end." Webster's New Collegiate Diction-
`ary (1976).
`. . . It would be unnecessarily detri-
`mental to our patent system to deny in-
`ventors patent protection on the sole
`ground that their [**8]
` contribution
`could be broadly termed an "algorithm".
`[Emphasis of "sole" original, otherwise
`ours.]
`
`
`
`In footnote 8 of the Freeman opinion the court further
`said:
`
` The preferred definition of "algorithm"
`in
`the computer art
`is: "A
`fixed
`step-by-step procedure for accomplishing
`a given result; usually a simplified proce-
`dure for solving a complex problem, also
`a full statement of a finite number of
`steps." C. Sippl & C. Sippl, Computer
`Dictionary and Handbook (1972).
`
`
`
`
`
`Id. at 1246 n. 8, 197 USPQ at 471 n. 8. Appellants state
`that the apparatus claimed "may properly be character-
`ized as a computer."
`We note these discussions of the meaning of "algo-
`rithm" to take the mystery out of the term and we point
`out once again that every step-by-step process, be it elec-
`tronic or chemical or mechanical, involves an algorithm
`in the broad sense of the term. Since § 101 expressly
`includes processes as a category of inventions which
`may be patented and § 100(b) further defines the word
`"process" as meaning "process, art or method, and in-
`cludes a new use of a known process, machine, manu-
`
`4
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`

`

`888 F.2d 1370, *; 1989 U.S. App. LEXIS 16805, **;
`12 U.S.P.Q.2D (BNA) 1908
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`Page 5
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`facture, composition of matter, or material," it follows
`[**9] [HN2] that it is no ground for holding a claim is
`directed to nonstatutory subject matter to say it includes
`or is directed to an algorithm. This is why the proscrip-
`tion against patenting has been limited to mathematical
`algorithms and abstract mathematical formulae which,
`like the laws of nature, are not patentable subject matter.
`The above-listed line of CCPA cases held some
`claims statutory and other claims nonstatutory, depend-
`ing entirely on what they said. We have to do the same
`here. Appellants cautiously admit that their claim "at
`least indirectly, recites an algorithm in some manner,"
`and thus [*1375] meets the first part of the Free-
`man-Walter test, but argue strenuously and convincingly
`that it does not meet the second part of the test, relying,
`inter alia, on the following statement in Walter (footnote
`omitted):
`
`
` [HN3] Once a mathematical algorithm
`has been found, the claim as a whole must
`be further analyzed. If it appears that the
`mathematical algorithm is implemented in
`a specific manner to define structural
`[**10] relationships between the physi-
`cal elements of the claim (in apparatus
`claims) or to refine or limit claim steps (in
`process claims), the claim being otherwise
`statutory, the claim passes muster under §
`101.
`
`
`
`
`
`618 F.2d at 767, 205 USPQ at 407 (footnote omitted).
`Though the claim starts out by saying in clause [a] that it
`is a "unit", appellants prefer to characterize what they
`claim as apparatus with specific structural limitations. By
`the Solicitor's own analysis of the claim in the column
`labeled "Drawings", supra, we are constrained to agree.
`Appellants emphasize that they specify a ROM in clause
`[d] to which is fed an input from an adder specified in
`clause [c]. The Solicitor states that [c] and [d] are con-
`nected together by a signal path. Next are means in the
`form of disclosed electronic circuitry which take from
`the ROM its output in the form of squares of numbers
`supplied as ROM input and feed them to a calculating
`circuit [h]. The claim as a whole certainly defines appa-
`ratus in the form of a combination of interrelated means
`and we cannot discern any logical reason why it should
`not be deemed statutory subject matter as either a ma-
`chine [**11] or a manufacture as specified in § 101.
`[HN4] The fact that the apparatus operates according to
`an algorithm does not make it nonstatutory. See In re
`Abele, 684 F.2d at 906, 214 USPQ at 686. See also the
`discussion of that case in In re Grams, 888 F.2d 835, 12
`
`U.S.P.Q.2d (BNA) 1824 (Fed. Cir. 1989), slip opin. at
`11-12. We therefore hold that the claim is directed to
`statutory subject matter.
`In the Solicitor's brief the summary of argument
`states that the claim "encompasses any and every means
`for performing the functions recited therein." We point
`out that the claim is a combination of means all but one
`of which is a means-plus function limitation, the one
`exception being the ROM, clause [d], which is a specific
`piece of apparatus. The claim is therefore subject to the
`limitation stated [HN5] in 35 U.S.C. § 112 para. 6 that
`each means-plus-function definition "shall be construed
`to cover the corresponding structure, material, or acts
`described in [**12] the specification and equivalents
`thereof." 1 This provision precludes the Solicitor's inter-
`pretation of the claim. The Solicitor's summary also con-
`tends that since the claim should be interpreted as he
`does, we should regard it as though it were a method
`claim. Since he is wrong on the first score, he is wrong
`on the second.
`
`
`1 The accuracy of this statement may be ques-
`tioned in view of a sentence in the opinion in In
`re Sweet, 55 C.C.P.A. 1191, 393 F.2d 837,
`841-42, 157 U.S.P.Q.2d (BNA) 495, 499 (CCPA
`1968), which reads: "[A] recitation of "means"
`for performing a function is interpreted broadly to
`cover all means capable of performing the stated
`function and is not limited to the particular
`structure which the application may disclose."
`(Emphasis added.) This statement, considered in
`a vacuum, is partly true and partly untrue. It must
`be read, however, in light of the opinion as a
`whole. It should not be removed from its context.
`The untrue part is the initial statement that the
`means clause is interpreted to cover all means to
`perform the function. It should have said it is in-
`terpreted to cover the means disclosed and all
`equivalents thereof which perform the function.
`The immediately preceding two paragraphs of the
`opinion show that the court actually was reading
`the "means" clause "in the light of 35 U.S.C. 112
`[last paragraph]," just as we are doing here. The
`statute is set forth in note 5. The truth of the em-
`phasized portion of the above sentence is beyond
`question because the "means" clause includes
`equivalents of the disclosed structure. Section 112
`para. 6 cannot be ignored when a claim is before
`the PTO any more than when it is before the
`courts in an issued patent.
` [**13] The decision of the board is reversed.
`REVERSED.
`
`5
`
`