33 F.3d 1526 (Fed. Cir. 1994)
Kuriappan P. Alappat, Edward E. Averill, and James G. Larsen filed patent application Serial No. 07/149,792 directed to a rasterizer for converting vector list data representing sample magnitudes of an input waveform into anti-aliased pixel illumination intensity data to be displayed on a display means.1 The rasterizer employs an arithmetic logic circuit configured to perform an absolute value function to determine vertical distance between vector endpoints, another such circuit to determine pixel row elevation, a pair of barrel shifters to normalize those values, and a read-only memory containing illumination intensity data to output intensity as a predetermined function of the normalized values.2 Each square in the disclosed waveform example represents a pixel whose intensity level is stored as a 4-bit binary number ranging from 0000 for no illumination to 1111 for maximum illumination.3
On December 5, 1989, the Examiner finally rejected claims 15-19 under 35 U.S.C. § 101 as directed to non-statutory subject matter.4 Alappat appealed pursuant to 35 U.S.C. § 134, and a three-member Board panel consisting of Examiners-in-Chief Lindquist, Thomas, and Krass reversed the rejection in a decision mailed June 26, 1991.5 The Examiner then requested reconsideration of that decision pursuant to section 1214.04 of the Manual of Patent Examining Procedure, stating that the panel's decision conflicted with PTO policy, and further requested that reconsideration be carried out by an expanded panel.6
The Commissioner designated an expanded eight-member panel that included PTO Commissioner Manbeck, Deputy Commissioner Comer, Assistant Commissioner Samuels, Board Chairman Serota, Board Vice-Chairman Calvert, and the three members of the original panel.7 On April 22, 1992, the five new members of the expanded panel issued the majority decision now on appeal, authored by Chairman Serota, in which they affirmed the Examiner's § 101 rejection.8 The three members of the original panel dissented on the merits for the reasons set forth in their original opinion, which they augmented in a dissenting opinion.9
The majority stated that its reconsideration decision was a new decision for purposes of requesting reconsideration or seeking court review and indicated that the original three-member panel decision was only modified to the extent indicated.10 Alappat appealed the April 22, 1992 reconsideration decision to the Federal Circuit.11 This court, having decided to hear the case in banc, issued an Order on December 3, 1992 requesting briefing on whether the Commissioner has authority to constitute a new panel for reconsideration, whether the decision of such a new panel is a decision of the Board for jurisdictional purposes, and the relationship between the reconsideration action and rehearings provided for in 35 U.S.C. § 7(b).12
Whether the Commissioner possesses authority under 35 U.S.C. § 7 to designate an expanded panel of the Board of Patent Appeals and Interferences to reconsider a decision rendered by an original three-member panel?13
35 U.S.C. § 7(a) provides that the Commissioner, Deputy Commissioner, Assistant Commissioners, and examiners-in-chief constitute the Board.14 Section 7(b) requires that each appeal be heard by at least three members designated by the Commissioner and vests sole authority to grant rehearings in the Board.15 The plain language grants the Commissioner authority to designate expanded panels for rehearings without statutory limitation to original panels.16
Yes. The statute in § 7(a) expressly includes the Commissioner as a Board member and in § 7(b) authorizes the Commissioner to designate at least three members for each appeal, including expanded panels, while the final sentence assigns rehearing authority exclusively to the Board.17 In the Alappat matter the Commissioner designated an expanded eight-member panel including senior PTO officials to reconsider the original three-member panel decision that had reversed the Examiner's § 101 rejection, and the expanded panel issued the April 22, 1992 decision now under review.18
The Commissioner possesses authority under 35 U.S.C. § 7 to designate an expanded panel for reconsideration of an original Board decision.19
Related opinions on this issue
Joined by Nies
Chief Judge Archer concurs in the conclusion that jurisdiction exists. He emphasizes that a challenge to board composition is a waivable procedural matter under precedents such as In re Wiechert and In re Bose Corp. Neither party contested the panel's legality. The statute does not clearly prohibit the Commissioner's designation of an expanded panel for rehearing.
Archer would decline to address the composition issue at all because the parties did not raise it and because the statute is ambiguous on the precise mechanics of rehearings.20
Judge Plager concurs that the court has jurisdiction.21 Administrative adjudicators stand in the shoes of the agency head and must implement agency policy. The Commissioner therefore retains authority to ensure Board decisions conform to official interpretations of the patent statute, including by designating panels for reconsideration, provided the Commissioner does not interfere with independent fact-finding in individual cases.22
The absence of challenge by the parties removes secondary issues and leaves only the basic question whether a decision of the Board is before the court.
Judge Schall dissents on jurisdiction.23 He reads the plain language of 35 U.S.C. § 7(b) to require that only the full Board, currently comprising roughly forty-three members, may grant rehearings.24 Because the expanded panel was not the full Board, the reconsideration decision is invalid and not a decision of the Board within the meaning of 28 U.S.C. § 1295(a)(4)(A).
The statute's use of the word Only distinguishes the initial hearing from rehearings.
Judge Michel concurs that the reconsideration constituted a rehearing under § 7(b).25 The statute's use of the word Only distinguishes the initial hearing, which may be by a designated three-member panel, from rehearings, which the Board as a whole may grant. He finds the Commissioner's designation practice consistent with that framework. The resulting decision is properly before the court.
Joined by Michel
Judge Mayer dissents on jurisdiction.26 The Board is a quasi-judicial body whose independence from the Commissioner is protected by statute and precedent. The Commissioner's redesignation of the panel after an adverse decision violated the exclusive authority of the Board to grant rehearings.
The expanded-panel decision is a legal nullity over which the court lacks jurisdiction. He would vacate the decision as ultra vires.
Whether a decision rendered by such an expanded panel constitutes a decision of the Board for purposes of this court's jurisdiction under 28 U.S.C. § 1295(a)(4)(A) and 35 U.S.C. § 141?27
A decision of the Board of Patent Appeals and Interferences is reviewable by this court under 28 U.S.C. § 1295(a)(4)(A) and 35 U.S.C. § 141 when rendered by a panel lawfully designated pursuant to 35 U.S.C. § 7.28 Because the Commissioner possesses statutory authority to designate expanded panels for rehearings, a decision issued by such a panel is a decision of the Board.29
Yes. The Commissioner's designation of the expanded panel in Alappat's case was authorized by § 7. The five-member majority decision issued on April 22, 1992, therefore constitutes a valid decision of the Board. That decision is appealable to this court under the cited jurisdictional statutes.30
A decision rendered by an expanded panel designated by the Commissioner constitutes a decision of the Board for jurisdictional purposes.31
Related opinions on this issue
Joined by Nies
Chief Judge Archer concurs that the expanded-panel decision is reviewable.32 He stresses that the parties did not challenge the panel's composition. Precedent treats defects in board composition as waivable procedural errors rather than jurisdictional defects that void the decision. The decision of the expanded panel is therefore properly before the court for review on the merits.
Judge Plager concurs that jurisdiction exists.33 The absence of any challenge by the parties removes secondary issues. It leaves only the basic question whether a decision of the Board is before the court. He answers that question in the affirmative on the present record.
Judge Schall dissents.34 Because rehearing was granted by less than the full Board, the April 22, 1992 decision is invalid. It is not a decision of the Board. Therefore the court lacks jurisdiction under 28 U.S.C. § 1295(a)(4)(A).
Judge Michel concurs that the court has jurisdiction.35 He agrees that the reconsideration action was a rehearing authorized by § 7(b). The resulting decision is properly before the court for disposition on the merits.
Joined by Michel
Judge Mayer dissents.36 He would vacate the expanded-panel decision as ultra vires. He would dismiss the appeal for lack of jurisdiction because the panel was not constituted in conformity with the statute.
Whether claims 15-19 of the '792 application, when construed in accordance with 35 U.S.C. § 112, paragraph 6, are directed to a machine within the meaning of 35 U.S.C. § 101?37
35 U.S.C. § 101 permits patents for any new and useful machine.38 When a claim element is expressed as a means for performing a function, § 112 paragraph 6 requires that the element be construed to cover the corresponding structure disclosed in the specification and equivalents thereof.39 A claim so construed that recites a combination of known electronic circuitry elements performing a useful function is directed to a statutory machine.40
Yes. Claim 15, properly construed under § 112 paragraph 6, recites a rasterizer machine comprising an arithmetic logic circuit configured to perform an absolute value function for determining vertical distance, another such circuit for determining pixel elevation, a pair of barrel shifters for normalizing those values, and a read-only memory containing illumination intensity data for outputting intensity values.41 These structures correspond exactly to the means clauses in the claim and combine to form a machine that converts vector list data into anti-aliased pixel illumination data, producing a useful, concrete, and tangible result rather than a disembodied mathematical concept.42
Claims 15-19, when construed in accordance with 35 U.S.C. § 112, paragraph 6, are directed to a machine within the meaning of 35 U.S.C. § 101.43
Related opinions on this issue
Judge Newman concurs in the judgment on the merits.44 She emphasizes that the distinction between abstract mathematical principles and their practical applications must be observed.45 Alappat's rasterizer is an electronic device for displaying a smooth waveform by selective illumination of pixels.
The structure resides in the configuration by which the device operates, whether implemented in hardware or by programmed computer, and is therefore statutory subject matter.
Judge Rader dissents on the merits.46 He concludes that Alappat's claimed rasterizer is nothing more than a mathematical operation for converting one set of numbers into another set of numbers.47 Although the claim recites circuit elements, those elements are old and are arranged solely to perform the mathematical function that defines them.
The invention or discovery is therefore outside § 101.
Joined by Michel
Judge Mayer dissents on the merits as well as on jurisdiction.48 He would affirm the Board's rejection because Alappat has not shown that he invented or discovered a machine within § 101. The claimed rasterizer merely arranges known circuit elements to solve a particular mathematical equation and therefore does not constitute patentable subject matter.