In Re Karen I. Trovato and Leendert Dorst

60 F.3d 807, 35 U.S.P.Q. 2d (BNA) 1570, 1995 U.S. App. LEXIS 20022, 1995 WL 441892

• Court: Court of Appeals for the Federal Circuit
• Decided: July 25, 1995
• Docket: 93-1050, 93-1565
• Status: Published

Opinions

Order for the court filed by Chief Judge ARCHER; Circuit Judges NEWMAN and MAYER concur in result; Circuit Judge NIES filed a dissenting opinion, in which Circuit Judge MICHEL joins.

ORDER

PER CURIAM:

Karen I. Trovato and Leendert Dorst (collectively Trovato) seek rehearing in banc of their appeals from decisions of the Patent and Trademark Office Board of Patent Appeals and Interferences (Board). In re Tro-vato, No. 92-1843, 1992 Pat.App. LEXIS 40 (Bd. Pat. Apps. & Interferences July 22, 1992); In re Trovato, No. 92-4106 (Bd. Pat. Apps. & Interferences May 26, 1993). Tro-vato challenges the Board’s affirmance of the rejection of Trovato’s patent claims for lack of statutory subject matter under 35 U.S.C. § 101 (1988). Since the challenged Board decisions, this court has decided In re Alappat, 33 F.3d 1526, 31 USPQ2d 1545 (Fed.Cir.1994) (in banc), providing further guidance on section 101. Alappat held that “a computer operating pursuant to software may represent patentable subject matter, provided, of course, that the claimed subject matter meets all of the other requirements of Title 35.” 33 F.3d at 1545 (emphasis in original); see also In re Lowry, 32 F.3d 1579, 32 USPQ2d 1031 (Fed.Cir.1994). The Patent and Trademark Office has also recently proposed new guidelines for the examination of applications like Trovato’s. See Request for Comments on Proposed Examination Guidelines for Computer-Implemented Inventions, 60 Fed.Reg. 28,778 (Dep’t Comm. Pat. & Trademark Off. June 2, 1995). Consistent with Alappat, the proposed guidelines direct patent examiners to apply all of the requirements of Title 35 when examining applications claiming computer software instead of rejecting such applications under section 101. See Request for Comments, 60 Fed.Reg. at 28,778-28,780.

On consideration of the combined petition for rehearing and suggestion for rehearing in banc,

IT IS ORDERED that the combined petition for rehearing and suggestion for rehearing in banc is accepted; that the judgment of this court entered on December 19, 1994 is vacated; and that the opinion accompanying the judgment, In re Trovato, 42 F.3d 1376, 33 USPQ2d 1194 (Fed.Cir.1994), is withdrawn.

IT IS FURTHER ORDERED that the decisions of the Board of Patent Appeals and Interferences are vacated, sua sponte, and the case is remanded for reconsideration in light of Alappat and any new guidelines adopted by the Patent and Trademark Office for examination of computer-implemented inventions.

July 25, 1995

For the Court:

/s/ Glenn L. Archer, Jr.

Glenn L. Archer, Jr.

Chief Judge