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lems. The realities here are that "mental steps" are no longer a serious problem.

The actual ruling in Prater II was that the process claims there involved covered more than the appellant conceded they were intended to cover and that those claims were therefore unpatentable under 35 USC 112. In dictum, however, the court resolved the biggest problem then facing the patent community, i.e., whether process claims drawn to cover the operation of a programmed digital computer would be subject to the protection of the patent statutes. With regard to the mental steps problem, the court further made it clear that the only proper inquiry should be as follows: Assuming the disclosure of a novel, unobvious machine-implemented process, would a reasonable 1 interpretation of the claims include coverage of the process implemented by the human mind!

More recent cases before this court have made it clear that there is now only a very narrow scope to this “fearful” mental steps doctrine. In In re Bernhart ? and In re Mahony, we found that the process claims there involved, when interpreted reasonably, did not include within their coverage mental implementation. Additionally, Rule 2 of what the majority calls the “Abrams non-rules” was given a fatal blow in Bernhart where we held that a claimed invention is not nonstatutory merely because “the novelty is indicated by an expression which does not itself fit in a statutory class.” Further, in Mahony, the Patent Office view that a claim reading on both statutory and nonstatutory subject matter could not comply with the second paragraph of section 112 was discarded.

What is left ? I submit that in reality very little remains of the “mental steps" doctrine. Before now, the court has not found it necessary to decide whether a claim, drawn to cover a disclosed machine-implemented process but broad enough, even when interpreted reasonably, to cover the same process implemented only with the aid of the human mind, would be statutory. It was also undecided as to what effect the inclusion of a purely mental step, as defined in footnote 22 of Prater II, might have on an otherwise statutory claim.“ Nor did the court decide whether claims drawn to a process consisting entirely of a sequence of purely mental steps would fit within the ambit of 35 USC 101. The majority now proposes to answer all these questions in the affirmative, regardless of the fact that this case could be decided on very narrow grounds.


1 As applied in Prater II and Mahony (infra, note 3), the standard of reasonableness would be the meaning of the claims to one of ordinary skill in the pertinent art when reaa in light of and consistently with the specification.

257 CCPA 737, 417 F. 2d 1395, 163 USPQ 611 (1969).
857 CCPA 939, 421 F. 2d 742, 164 USPQ 572 (1970).
* But see In re Jones, 54 CCPA 1218, 373 F. 2d 1007, 153 USPQ 77 (1967).


agree with appellant that claim 60, when reasonably interpreted, covers only a machine-implemented process. The decision with regard to that claim and those related to it could have been resolved on that narrow ground. With regard to claim 2 and those other claims which recite a number of “mental” steps along with physical steps, if the court found that they are predicated for patentability on the mental steps (as I believe they are), the board's decision could be reversed by simply following the Bernhart dictum mentioned earlier and approving those enlightened board decisions referred to in the majority opinion which hold, in effect, that if a mental step is not purely mental, the process including it is within the statutory category of "process" set out in 35 USC 101. This holding would flow naturally from what has been said and held in our earlier opinions, and would be all that is necessary to support reversal of the decision below.

Foreseeable Problems

It seems that whenever a court decides to go beyond what is necessary to decide the case before it, more problems are generated than are solved. I foresee quite a few with the majority's new holding.

First and foremost will be the problem of interpreting the meaning of "technological arts". Is this term intended to be synonymous with the "industrial technology” mentioned by Judge Smith? It sounds broader to me. Necessarily, this will have to be considered a question of law and decided on a case-by-case basis. Promulgation of any allencompassing definition has to be impossible. This task is now before us.

Already alluded to is the apparent decision not to require that a machine-implemented process be disclosed. This might have some salutary effect in certain circumstances, where machine implementation would be obvious from disclosure of the process steps alone. But what happens where it is not so obvious? Then we could get involved in deciding, first, whether a reasonable interpretation of the claims would include both machine and mental implementation of the process and, second, whether the absence of a disclosure of apparatus for carrying out the process would warrant rejection of the broad process claims for lack of support.

Justifying the decision finding claims drawn entirely to purely mental processes to be statutory, the majority states that “[a] step requiring the exercise of subjective judgment without restriction might be objectionable as rendering a claim indefinite.” It should not require much imagination to see the many problems sure to be involved in trying to decide whether a step requiring certain human judgment evaluations is definite or not.

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As one more example, suppose a claim happens to contain a sequence of operational steps which can reasonably be read to cover a process performable both within and without the technological arts? This is not too far fetched. Would such a claim be statutory? Would it comply with section 112! We will have to face these problems some day.

In conclusion, I think it is apparent that what the majority has done will only substitute for one set of problems another possibly more complex set. Because the problems will be new, they will add confusion to the law. We are only now beginning to make some sense out of this area of the law. To change at this time, I submit, is non-sense.

432 F.2d 473; 167 USPQ 403



1. Court of Customs and Patent Appeals Jurisdiction

Action of Board of Appeals dismissing appeal from final rejection of claims, inasmuch as applicant had not filed reply brief in response to new ground of rejection contained in Examiner's Answer, is not within court's appellate jurisdiction under 35 USC 141 since Board acted only under authority of Patent Office Rules and not in any statutory capacity; Board's action was

procedural and any error involved was solely an abuse of discretion. 2. Commissioner of Patents-Actions appealable or petitionable

Applicant's proper avenue for review of Board of Appeals' decision dismissing appeal for failure to file reply brief, in response to new ground of rejection contained in Examiner's Answer, is by recourse to Patent Office Rule 181 and 5 USC 701-6.

United States Court of Customs and Patent Appeals, October 22, 1970

Appeal From Patent Office, Serial No. 324,207 [Dismissed.]

Arnold B. Christen, attorney of record, for appellant. Christen, Sabol & O'Brien, of counsel.

S. Wm. Cochran for the Commissioner of Patents.

(Oral argument February 3, 1970 by Mr. Cochran; appellant submits on brief]

Before Rich, ALMOND, BALDWIN, LANE, Associate Judges, and Ford, Judge,

sitting by designation

BALDWIN, Judge, delivered the opinion of the court:

James appeals from the action taken by the Patent Office Board of Appeals dismissing his appeal to that tribunal for failure to file a reply brief. For reasons stated herein, we have decided that this court lacks jurisdiction over the subject matter of the controversy and therefore dismiss this appeal.

The facts are as follows:

Certain claims ? in appellant's application 2 were given a final rejection as "unpatentable over Montgomery, et al. in view of Berger, et al.”

Appellant appealed the Final Rejection and submitted a brief to the Board of Appeals where in he listed all references of record (including 4 patents not mentioned in the Final) but only discussed and argued the two patents relied upon in the final.

In his Answer, the examiner listed two additional references, Nelles and Lincoln, as "NEW REFERENCES CITED TO FURTHER SHOW THE STATE OF THE ART.” Nelles and Lincoln were discussed under the heading "THE REFERENCES" but were not mentioned in "THE REJECTION". In "THE ARGUMENT” the examiner used Lincoln to rebut one of appellant's contentions but added that a particular point emphasized would be apparent to one skilled in the art even absent Lincoln's disclosure; he also briefly mentioned Nelles, again referred to as "cited to further show the state of the art.” The Answer was concluded by the following paragraph:

Since the use of the newly cited reference to further show the state of the art may be considered a new ground of rejection, appellant has sixty days within which to file a reply to this answer. Such reply may include any new amendment or material appropriate to the new ground and may request remand to the Examiner to consider such amendment or material. Prosecution other wise remains closed.

The record is silent as to to any further action by either appellant or examiner.

The Board of Appeals took the following action (which we reproduce in its entirety), listed in the record as "Decision of Board of Appeals”: 8


The Examiner in his Answer added two new references to "show the state of the art”. However, it is quite clear in studying the Answer (note particularly the application of the Lincoln et al. patent in page 4 and of the Nelles et al. patent in page 5) that the new references are key references required to support the rejection of the appealed claims as unpatentable over the art.

Recognizing that the inclusion of these newly cited references might be con

1 The application orginally contained 27 claims. Among the issues left unsettled by the board's action in this case was the propriety of a restriction requirement which left the status of a number of claims uncertain. Beyond this comment we will say nothing further concerning either the subject matter of the claims or the merits of any rejection.

2 Serial No. 324,207, filed November 18, 1963, entitled “Corrosion Protection and Compositions Therefor."

3 The board was apparently prompted by a "Commissioner's Notice" dated May 4, 1966 (827 0.G.1), which admonished applicants that "Lack of response by way of brief to any ground of rejection will result in dismissal of the appeal as to the claims affected." We presume that appellant was aware of this notice.

sidered as a new ground of rejection, the Examiner in the last page of his Answer granted appellant additional time to file a reply brief. Since appellant did not file such reply brief and has neither acknowledged nor discussed the additional references nor the application thereof to the claims at issue, we do not have appellant's position as to the rejection (Rule 192a) and are not presented with proper appealable issues.

In view of appellant's failure to file a brief directed to the rejection based upon all the references relied upon in the Examiner's Answer, this appeal is dismissed (see Rule 192b and In re Dismissal of Appeal to Board of Appeals if no Brief is Filed, 152 USPQ 292).

Appellant proceeded no further in the Patent Office, but directly appealed to this court, submitted a printed record, and filed a brief asserting that the board's dismissal was improper and should be reversed. That brief in no way discusses the merits of the prior art rejection, but argues only the impropriety of the board's dismissal.

The solicitor has responded to appellant's position, first in a motion to dismiss the appeal to this court (which was denied without prejudice), later in his brief and finally at oral hearing, with the contention that this court lacks jurisdiction to review the protested action of the board. Briefly summarized, the solicitor's position is that the action taken by the board in this case, since it did not involve review of the examiner's position on the patentability of appellant's claims, but merely consisted of a factual determination that there was a new ground of rejection and a notice that there would be no decision on patentability, was not such a “decision” which, under 35 USC 141, this court is authorized to review.

Appellant has met this contention with the argument that the court does have jursidiction since the board did review the examiner's position and “decided” that the Nelles and Lincoln references were "key" references and that a new ground of rejection was made.

Neither party has argued the merits of the claimed invention on appeal, confining themselves to their respective positions regarding the question of our jurisdiction and the propriety of the board's action. Of necessity, the jurisdictional question must be settled first.

The solicitor's entire argument is based on the premise that the jurisdiction of this court in ez parte patent cases is defined and limited by the provision of 35 USC 141 which reads:

An applicant dissatisfied with the decision of the Board of Appeals may appeal to the United States Court of Customs and Patent Appeals, thereby waiving his right to proceed under section 145 of this title. * * * That premise apparently had its genesis in the opinion of this court handed down almost forty years ago, in Sundback v. Blair, 18 CCPA 1016, 47 F. 2d 378, 8 USPQ 220 (1931). In that case, the court had before it an appeal from a decision of the Board of Appeals sustaining

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