In Re Kuriappan P. Alappat, Edward E. Averill and James G. Larsen

ARCHER, Chief Judge,1 with whom NIES, Circuit Judge,

joins, concurring in part and dissenting in part.

I. OUR JURISDICTION

None of the parties has challenged at any time the legality of the composition of the board, and, in fact, both parties to this appeal defend the procedure by which the board was composed. According to our precedent and that of the Supreme Court, a challenge to the validity of the board’s composition is a procedural matter that can be waived by the parties. It is not a “jurisdictional” matter. But even if some sua sponte jurisdictional inquiry into the composition of the board were permissible, it must be strictly limited to the single question whether 35 U.S.C. § 7 has been clearly contravened.

Because we should not be deciding the so-called issue of “jurisdiction” at all in this case, and alternatively because I am not persuaded that the statute clearly has been violated, I concur in the conclusion of the majority that Alappat’s appeal is from a final decision of the board within the meaning of our jurisdictional statute, 28 U.S.C. § 1295(a)(4)(A); see also 35 U.S.C. § 141, and that therefore the merits of Alappat’s2 appeal are properly before us for disposition.

A.

Issues arising out of the combination of adjudicative and administrative functions within a single administrative agency, such *1546as partiality of adjudicative officers and unfairness to parties, are by no means uncommonly litigated. See S. Breyer & R. Stewart, Administrative Law and Regulatory Policy 815-900 (3d ed. 1992); C. Koch, Administrar tive Practice and Procedure 324-75 (2d ed. 1991). Here, two questions have been raised arising out of such a combination of functions: (1) may an expanded panel of members of the Board of Patent Appeals and Interferences, designated by the Commissioner of Patents and Trademarks, grant an examiner’s petition for reconsideration; and (2) may that expanded panel rehear an appeal and render a decision thereon?

What makes this case unusual, however, is that only the court has.raised these questions. The Patent and Trademark Office rendered what it viewed to be final action on Alappat’s appeal in his application for a patent-rejection of claims 15-19 — and Alappat and the Commissioner both desire judicial resolution of whether this action was correct on the merits. Regardless of our view, the party appealing from the agency action does not feel at all that the agency gave him inadequate process.3

Administrative agencies’ sole source of power to act is statutory; therefore any unlawful act of an administrative agency is in a sense performed without jurisdiction. But not every act of the Commissioner or the board that might possibly be contrary to a constitutional, statutory, or regulatory provision raises a jurisdictional matter that must be addressed in every case.

Beyond any constitutional restraints, there is good reason not to decide the procedural issues that are not disputed by the parties. Where the parties have not challenged the agency’s action, and when asked, both parties argue to support it, the court lacks the benefit of advocacy that a controversy otherwise engenders and should proceed with caution in setting out any very-broad rules. In addition, the agency has not been given an opportunity to resolve-or consider the challenge in the first instance, and this court might be condemning the agency for action which, had objection been raised, it might not have taken or done differently.

B.

Precedent precludes us from holding that the composition of the agency’s board is illegal where none of the parties has raised the issue. Therefore, we need not and should not address whether the board was composed according to law.

In United States v. L.A. Tucker Truck Lines, Inc., 344 U.S. 33, 73 S.Ct. 67, 97 L.Ed. 54 (1952), the Supreme Court held that a decision of the Interstate Commerce Commission rendered by an invalidly appointed hearing examiner was not an error “which deprives the Commission of power or jurisdiction, so that even in the absence of timely objection its order should be set aside as a nullity.” 344 U.S. at 38. The Supreme Court cautioned: “[Cjourts should not topple over administrative decisions unless the administrative body not only has erred but has erred against objection made at the time appropriate under its practice.” Id. at 37, 73 S.Ct. at 69. Tucker Truck Lines has recently been interpreted by Justice Scalia as holding “that, in the administrative context, the use of unauthorized personnel to conduct a hearing ... would not justify reversal of the agency decision where no objection was lodged before the agency itself.” Freytag v. Commissioner of Internal Revenue, 501 U.S. 868, 898 n. 3, 111 S.Ct. 2631, 2649 n. 3, 115 L.Ed.2d 764 (1991) (Scalia, J., concurring).

Our predecessor court the Court of Customs and Patent Appeals expressly followed Tucker Truck Lines in a case involving a situation similar to Alappat’s, In re Wiechert, 370 F.2d 927, 152 USPQ 247 (CCPA 1967). Wiechert involved an appeal from a Patent Office Board of Appeals decision. The court in Wiechert refused to consider the question whether a board composed of an examiner-in-chief, a primary examiner, and a supervisory examiner of higher grade than a primary examiner, was illegal under 35 U.S.C. *1547§ 7. The stated reason was that the parties had not properly raised the issue in the appeal from the merits of that board’s decision. Citing Tucker Truck Lines we held: “[A]n invalid appointment [of a board member by the Commissioner] would not so vitiate a board’s decision that neither waiver nor abandonment of the defect would be possible.” Id. at 936 n. 6, 152 USPQ at 253 n. 6.4 Wiechert expressly holds that a defect in the composition of the board is a waivable matter.

We followed Wiechert in later cases. In In re Marriott-Hot Shoppes, Inc., 411 F.2d 1025, 162 USPQ 106 (CCPA 1969), the Court of Customs and Patent Appeals refused to consider the question whether the Trademark Trial and Appeal Board was by statute or regulation required to be composed of all of its members in order to hear an appeal and render a decision, where the appellant had not appealed the merits of the allegedly improperly constituted board’s decision. The court stated:

While we might be able to reach that question [whether three-member panels of the board had or have jurisdiction to hear ex parte appeals in the sense of being legally constituted boards], if properly raised, in an appeal from one or more board decisions on the merits of the applications, In re Wiechert, 370 F.2d 927, 54 CCPA 957 (1967), appellant has made it amply clear that this is not such an appeal. ...

411 F.2d at 1029,162 USPQ at 110 (emphasis added, footnote and original emphasis omitted).5 So too here Alappat has “made it amply clear” that he is not challenging the board composition.

And lastly, in In re Bose Corp., 772 F.2d 866, 227 USPQ 1 (Fed.Cir.1985), the appellant challenged the composition of the Trademark Trial and Appeal Board as part of its appeal on the merits. In addition to appealing from the board decision on its merits, the appellant argued that that board was improperly constituted because the Commissioner substituted one of the three members for another member after oral argument but before the decision of the board.6 We permitted the appellant to challenge the composition of the board, following Marriott and Wiechert, and stated: “The matter of the board’s composition is ... inseparable from the merits and can be raised in the appeal from the board’s decision.” 772 F.2d at 869, 227 USPQ at 3. We characterized the alleged illegality of the board, not as a defect that could void the board decision, but merely as a “technical claim of procedural error” subject to the harmless error rule. Id. at 870, 227 USPQ at 4.

Under the Wiechert-Mamott-Bose decisions, a party can waive a challenge to the legality of the composition of the board. Since that has been done in this case, we are precluded from considering any composition question not raised in the appeal brought under 28 U.S.C. § 1295(a)(4)(A). Wiechert is binding precedent unless we overrule it in banc. South Corp. v. United States, 690 F.2d 1368, 1369, 215 USPQ 657, 657 (Fed.Cir.1982) (in bane). Although the other judges address the board composition questions that have not been raised by the parties, in apparent contravention of Wiechert, they do not *1548explain why they may do so.7 I believe that stare decisis demands that this court either adhere to Wiechert in this case or expressly justify its overruling. Therefore, I would not address the board composition question at all.

C.

Even if it were permissible and appropriate to treat the composition of this board as a jurisdictional matter, I am not persuaded that any statutory provision has clearly been violated. 35 U.S.C. §§ 6 and 7 set out the administrative and adjudicative functions within the Patent and Trademark Office. They provide as follows: “The Commissioner [of Patents and Trademarks] ... shall superintend or perform all duties required by law respecting the granting and issuing of patents _ He may ... establish regulations, not inconsistent with law, for the conduct of proceedings in the Patent and Trademark Office.” 35 U.S.C. § 6(a). “The Commissioner, the Deputy Commissioner, the Assistant Commissioners, and the examiners-in-chief shall constitute the Board of Patent Appeals and Interferences.” Id. § 7(a). “The Board of Patent Appeals and Interferences shall, on written appeal of an applicant, review adverse decisions of examiners upon applications for patents_” Id. § 7(b). “Each appeal ... shall be heard by at least three members of the Board of Patent Appeals and Interferences, who shall be designated by the Commissioner.” Id. “Only the Board of Patent Appeals and Interferences has the authority to grant rehearings.” Id.

Two other statutes are relevant: “An applicant dissatisfied with the decision in an appeal to the Board of Patent Appeals and Interferences ... may appeal the decision to” this court. 35 U.S.C. § 141. This court has “jurisdiction ... of an appeal from a decision of ... the Board of Patent Appeals and Interferences.” 28 U.S.C. § 1295(a)(4)(A).

There is no question but that the board had subject matter jurisdiction of Alappat’s appeal, that the parties regard the expanded reconsideration board’s decision to be the final “decision in [Alappat’s] appeal to the Board,” 35 U.S.C. § 141, and that that “decision of ... the Board” was appealed to us. There is no question but that all the persons who sat as the expanded panel which rendered the appealed-from decision were statutory members of the board, 35 U.S.C. § 7(a),8 and that the number of members was greater than two, id. § 7(b). There has been no showing that these particular members were designated to act for the board by a person other than the Commissioner of Patents and Trademarks, id. § 7(b). Finally, there is no question but that a group designated by the Commissioner to act for the board consisting of more than two statutory members of the board granted a petition so as to rehear an initial appeal, and that that group rendered a decision thereon.

The precise question then is whether the board that granted the rehearing and rendered a decision was designated by the Commissioner of Patents and Trademarks in a manner clearly prohibited by the enabling statute. In determining sua sponte whether there has been a “decision of ... the Board,” we are not to be guided by general considerations of whether the board’s or Commissioner’s actions were fair or in compliance with due process, or the product of bias, prejudice, partiality, or the like. These are important procedural matters but only the parties may properly raise them; they are not matters for us to raise and impose on the parties.

*154935 U.S.C. § 7(b) states expressly that for “each appeal” to the board, the persons that may hear that appeal and act as the board are to be designated by the Commissioner at his discretion (so long as he chooses at least three members from the set defined in § 7(a)). The statute then says “[o]nly” the board has authority to grant a rehearing. Then, the statute stops.

Consequently § 7 says nothing about the rehearing itself. Unlike for “each appeal,” the statute does not expressly describe how “the board” is to grant rehearings and is totally silent on who may act as the board to rehear the appeal. The “board” must act through people, its members. Thus, the language of the last sentence of § 7(b) could be interpreted to mean that only all the members of the board acting together have authority to grant rehearings (and perhaps must also vote unanimously in order to decide the merits of the rehearing), or the statute could be interpreted to mean that only the members of the board who first heard the appeal have authority to grant rehearing.9 Or, if the “rehearing” is considered to be a form of “appeal,” the statute must be interpreted to mean that the Commissioner may designate members of the board who, acting together, are the only ones to have authority to grant rehearings and decide appeals. Though reasonable persons may disagree as to which of the above is the better or best interpretation, none is compelled or prohibited by the sparse language contained in the statute. In the backdrop of these possible interpretations are 35 U.S.C. § 6, which gives the Commissioner broad administrative powers, and 35 U.S.C. § 7, which contemplates that the Commissioner will play some but not a controlling role in the adjudicative aspect of the agency. See Lindberg v. Brenner, 399 F.2d 990, 158 USPQ 380 (D.C.Cir.1968). -

Finally, the legislative history of § 7 does not clearly advance the narrowest interpretation of the Commissioner’s powers. Although the legislative history shows a transfer of some functions from the Commissioner to a Board of Patent Appeals, there is nothing indicating that the board was to be completely independent of the influence of the Commissioner. Originally, under the first patent act, a board composed of the Seere-tary of State, the Secretary of the Department of War, and the Attorney General, or any two of them, examined and issued patents. Act of April 10, 1790, ch. 7, § 1,1 Stat. 109, 109-10. The refusal of a petition for patent had no appeal. It was said that Thomas Jefferson, then Secretary of State, dominated the board with his high standards of patentability. W. Wyman, Thomas Jefferson and the Patent System, 1 J.Pat.Off.Soc’y 5 (1918), cited in R. Hantman, The Doctrine of Equivalents, 70 J.Pat.Off.Soc’y 511, 513 (1988); see Graham v. John Deere Co., 383 U.S. 1, 7-10, 86 S.Ct. 684, 688-90, 15 L.Ed.2d 545, 148 USPQ 459, 463-64 (1966). In 1793, Congress dispensed with examination altogether: if a petition to the Secretary of State met the formal technical requirements of the statute, a patent was granted, leaving the responsibility for striking down invalid patents to the courts. Patent Act of 1793, eh. 11, § 3, 1 Stat. 318-23. Concerned with the need for examination, the Patent Act of 1836, ch. 357, 5 Stat. 117, established the Patent Office as a distinct bureau with a Commissioner of Patents as its head. Until 1861, the Commissioner heard all appeals from applicants for patents dissatisfied with an ex parte rejection by an examiner.

In 1861, Congress established a board of three examiners-in-chief to hear appeals from examiners’ rejections in order to secure “greater uniformity of action in the grant and refusal of letters-patent” and to assist the Commissioner with appellate work. Act of March 12, 1861, ch. 88, § 2, 12 Stat. 246. A further appeal could be taken from the board to “the Commissioner of Patents in person.” Id. The Commissioner’s power under this scheme was understood to be plenary:

The allowance of an application by the examiner, or by the examiners-in-chief upon appeal, does not oblige the Commissioner to grant the patent for which it *1550prays. The law empowers him to withhold a patent whenever in- his judgment the invention is not patentable, or the issue of the patent is forbidden by the statutes, or the patent if granted would probably be held invalid by the courts.

W. Robinson, The Law of Patents § 583 (1890).10

With the increasing number of patent applications being filed, the two levels of appeal within the Patent Office were thought to be an “antiquated procedure.” H.R.Rep. No. 1889, 69th Cong., 2d Sess. 1-2 (1927); S.Rep. No. 1313, 69th Cong., 2d Sess. 3 (1927). By Act of 1927, the two levels of appeal — first to a board then to the Commissioner — -were combined into one appeal mixing the flavor of the earlier two: an appeal could be had to a Board of Appeals; the board was given the “sole power to grant rehearings.” Act of March 2, 1927, eh. 273, § 3, 44 Stat. 1335, 1335-36. But, under the Act of 1927, the Commissioner was one of the members of the board, and the Commissioner was given the power to designate at least three members of the board who together would act as the board and hear each appeal. The Act of 1927 corresponds in substance to 35 U.S.C. § 7, the act applicable today.

The events surrounding the enactment of the 1927 Act do not indicate that Congress intended to eliminate entirely the great power understood to have been possessed by the Commissioner prior to the act. For example, during debate in the House of Representatives it was agreed that the statute did not require the entire membership of the board to act on and decide every rehearing, which of course would be unmanageable. Procedure in the Patent Office: Hearing Before the House Comm, on Patents, 69th Cong., 2d Sess. 19-29 (1926) (statement of Mr. Barnett, President, American Patent Law Association). On the other hand, discussions in the Senate focused on the ability under the statute to have in appropriate cases more than the original three-member panel rehear an appeal. Procedure in the Patent Office: Hearing Before the Senate Comm, on Patents, 69th Cong., 2d Sess. 22-23 (1926) (“Senate Hearing ”). As previously discussed, the language of the statute is unclear on the manner of exercising the “power to grant rehearings,” and is silent on the rehearing itself. This lack of clear expression is what could have enabled the House and Senate to view the prospective legislation as permitting either the full board or less than the full board to rehear a case, notwithstanding the inclusion of the word “sole.” In other words, by requiring the “board” to be the formal body to act on rehearings, instead of the Commissioner, yet at the same time reposing in the Commissioner discretionary power to define that board within certain express confines, the statute created “something that is flexible,” Senate Hearing, supra, at 23. In this way, the Senate was able to report that “the supervisory power of the Commissioner, as it has existed for a number of decades, remains unchanged.” Senate Report No. 1313, at 4 (emphasis added).

Because the decision appealed in this case was not obtained in clear contravention of § 7, and because the parties agree that it was a decision of the board that should be reviewed, I would decline to analyze further the board composition issue. By doing so, this court would not be announcing as does the majority that in all respects it approves the manner by which the rehearing was granted in this case or in another similar case. Nor would it be condemning as does the dissent the Commissioner or board for supposedly prejudicing or treating unfairly a party who has not complained of any prejudice or mistreatment. It may well be that a party could successfully challenge the procedures used in composing the board to hear an appeal in a ease similar to this one, for example, by petition to the Commissioner, under the Administrative Procedure Act in a district court, as part of an appeal from the merits of the board’s decision, etc.11 That, *1551however, should appropriately be left for another day.

II. THE SECTION 101 REJECTION A.

I disagree with the majority’s conclusion that Alappat’s “rasterizer,” which is all that is claimed in the claims at issue, constitutes an invention or discovery within 35 U.S.C. § 101. I would affirm the board’s decision sustaining the examiner’s rejection of claims 15-19 to the rasterizer under 35 U.S.C. § 101 because Alappat has not shown that he invented or discovered a machine within § 101.

In 1873, George Curtis made certain general observations about patent law, the scope of patentable subject matter being at its heart. He stated them with such force and eloquence, and in my view they have such relevance to the issue we face today, that I repeat them as follows:

It is necessary ... to have clear and correct notions of the true scope of a patent right ... which may be found to assist, in particular cases, the solution of the question, whether a particular invention or discovery is by law a patentable subject.
In this inquiry it is necessary to commence with the process of exclusion; for although, in their widest acceptation, the terms “invention” and “discovery” include the whole vast variety of objects on which the human intellect may be exercised, so that in poetry, in painting,, in music, in astronomy, in metaphysics, and in every department of human thought, men constantly invent or discover, in the highest and the strictest sense, their inventions and discoveries in these departments are not the subjects of the patent law.... The patent law relates to a great and comprehensive class of discoveries and inventions of some new and useful effect or result in matter, not referable to the department of the fine arts. The matter of which our globe is composed is the material upon which the creative and inventive faculties of man are exercised, in the production of whatever ministers to his convenience or his wants. Over the existence of matter itself he has no control....
The direct control of man over matter consists, therefore, in placing its particles in new relations. This is all that is actually done, or that can be done, namely, to cause the particles of matter existing in the universe to change their former places, by moving them, by muscular power or some other force. But as soon as they are brought into new relations, it is at once perceived that there are vast latent forces in nature, which come to the aid of man, and enable him to produce effects and results of a wholly new character, far beyond the mere fact of placing the particles in new positions. He moves certain particles of matter into a new juxtaposition, and the chemical agencies and affinities called into action by this new contact produce a substance possessed of new properties and powers, to which has been given the name of gunpowder. He takes a stalk of flax from the ground, splits it into a great number of filaments, twists them together, and laying numbers of the threads thus formed across each other, forms a cloth, which is held together by the tenacity or force of cohesion in the particles, which nature brings to his aid. He moves into new positions and relations certain particles of wood and iron, in various forms, and produces a complicated machine, by which he is able to accomplish a certain purpose, only because the properties of cohesion and the force of gravitation cause it to adhere together and enable the different parts to operate upon each other and to transmit the forces applied to them, according to the laws of motion. It is evident, therefore, that the whole of the act of invention, in the department of useful arts, embraces more than the new arrangement of particles of matter in new relations. The purpose of such new arrangements is to produce some new effect or result, by calling into activity some latent law, or force, or property, by means of which, in a new application, the new effect or result may be accomplished. In every form in which matter is used, in every production of the ingenuity of man, he relies upon the laws of nature and the properties of matter, and seeks for new effects and results through their agency *1552and aid. Merely inert matter alone is not the sole material with which he works. Nature supplies powers, and forces, and active properties, as well as the particles of matter, and these powers, forces, and properties are constantly the subjects of study, inquiry, and experiment, with a view to the production of some new effect or result in matter.
Any definition or description, therefore, of the act of invention, which excludes the application of the natural law, or power, or property of matter, on which the inventor has relied for the production of a new effect, and the object of such application, and confines it to the precise arrangement of the particles of matter which he may have brought together, must be erroneous.

G. Curtis, A Treatise on the Law of Patents for Useful Inventions at xxiii-xxv (4th ed. 1873) (emphasis added).

Alappat has arranged known circuit elements to accomplish nothing other than the solving of a particular mathematical equation represented in the mind of the reader of his patent application. Losing sight of the forest for the structure of the trees, the majority today holds that any claim reciting a precise arrangement of structure satisfies 35 U.S.C. § 101. As I shall demonstrate, the rationale that leads to this conclusion and the majority’s holding that Alappat’s rasterizer represents the invention of a machine are illogical, inconsistent with precedent and with sound principles of patent law, and will have untold consequences.

B.

The Patent Clause of the Constitution empowers the Congress to “promote the Progress of ... useful Arts, by securing for limited Times to ... Inventors the exclusive right to their ... Discoveries.” U.S. Const, art. I, § 8, cl. 8.

Congress has implemented this limited grant of power in 35 U.S.C. § 101 by enumerating certain subject matter, the invention or discovery of which may entitle one to a patent: “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.” 35 U.S.C. § 101 (1988). The terms used in § 101 have been used for over two hundred years — since the beginnings of American patent law- — to define the extent of the subject matter of patentable invention. See In re Chatfield, 545 F.2d 152, 159, 191 USPQ 730, 736-37 (CCPA 1976) (Rich, J., dissenting); 1 D. Chisum, Patents § 1.01 (1993).

Coexistent with the usage of these terms has been the rule that a person cannot obtain a patent for the discovery of an abstract idea, principle or force, law of nature, or natural phenomenon, but rather must invent or discover a practical “application” to a useful end. Diamond v. Diehr, 450 U.S. 175, 185, 187-88, 101 S.Ct. 1048, 1056, 1057, 67 L.Ed.2d 155, 209 USPQ 1, 7-9 (1981) (citing, for example, Rubber-Tip Pencil Co. v. Howard, 87 U.S. (20 Wall.) 498, 507, 22 L.Ed. 410 (1874)); Parker v. Flook, 437 U.S. 584, 589, 591, 98 S.Ct. 2522, 2525, 2526, 57 L.Ed.2d 451, 198 USPQ 193, 197-98 (1978).

Thus patent law rewards persons for inventing technologically useful applications, instead of for philosophizing unapplied research and theory. Brenner v. Manson, 383 U.S. 519, 534-35, 86 S.Ct. 1033, 1041-42, 16 L.Ed.2d 69, 148 USPQ 689, 695 (1966) (“Unless and until a process is refined and developed to this point — where specific benefit exists in currently available form — there is insufficient justification for” the reward of a patent.); Graham v. John Deere Co., 383 U.S. 1, 5, 86 S.Ct. 684, 687, 15 L.Ed.2d 545, 148 USPQ 459, 462 (1966) (“the federal patent power ... is limited to the promotion of advances in the ‘useful arts’ ”); In re Meyer, 688 F.2d 789, 795, 215 USPQ 193, 197 (CCPA 1982) (quoting O’Reilly v. Morse, 56 U.S. (15 How.) 62, 132-33, 14 L.Ed. 601 (1853) (Grier, J., concurring)); 1 D. Chisum, Patents § 1.01, at 1-5 & n. 9 (1993) (“[I]n enacting patent legislation, Congress is confined to the promotion of the ‘useful arts,’ not ‘science’ (i.e., knowledge) in general_ The general purpose of the statutory classes of subject matter is to limit patent protection to the field of applied technology, what the United States constitution calls ‘the useful arts.’”).

*1553Additionally, unapplied research, abstract ideas, and theory continue to be the “basic tools of scientific and technological work,” which persons are free to trade in and to build upon in the pursuit of among other things useful inventions. Flook, 437 U.S. at 589, 98 S.Ct. at 2525, 198 USPQ at 197 (quotations omitted).12 Even after a patent has been awarded for a new, useful, and nonobvious practical application of an idea, others may learn from the underlying ideas, theories, and principles to legitimately “design around” the patentee’s useful application. See Slimfold Mfg. Co. v. Kinkead Indus., Inc., 932 F.2d 1453, 1457, 18 USPQ2d 1842, 1845-46 (Fed.Cir.1991).

The requirement of the patent law that an invention or discovery reside in the application of an abstract idea, law of nature, principle, or natural phenomenon is embodied in the language of 35 U.S.C. § 101. A patent can be awarded to one who “invents or discovers” something within the enumerated classes of subject matter — “process,” “machine,” “manufacture,” “composition of matter.” These terms may not be read in a strict literal sense entirely divorced from the context of the patent law. Diehr, 450 U.S. at 185, 101 S.Ct. at 1056, 209 USPQ at 7 (“[E]very discovery is not embraced within the statutory terms.” (emphasis added)); In re Schrader, 22 F.3d 290, 295-96 & n. 11, 30 USPQ2d 1455, 1459-60 & n. 11 (Fed.Cir.1994) (use of terms of art in § 101 is presumed to be in accord with their well-established meaning); cf. Stafford v. Briggs, 444 U.S. 527, 535, 100 S.Ct. 774, 780, 63 L.Ed.2d 1 (1980) (statutory provisions should be considered in light of the entire statute and purpose). Rather they must be read as incorporating the longstanding and well-established limitation that the claimed invention or discovery must reside in a practical application.13

In addition to the basic principles embodied in the language of § 101, the section has a pragmatic aspect. That subject matter must be new (§ 102) and nonobvious (§ 103) in order to be patentable is of course a separate requirement for patentability, and does not determine whether the applicant’s purported invention or discovery is within § 101. Diehr, 450 U.S. at 190, 101 S.Ct. at 1058, 209 USPQ at 10. Section 101 must be satisfied before any of the other provisions apply, and in this way § 101 lays the predicate for the other provisions of the patent law. See Flook, 437 U.S. at 593, 98 S.Ct. at 2527,198 USPQ at 199 (The determination of “what type of discovery is sought to be patented must precede the determination of whether that discovery is, in fact, new or obvious.”); Diehr, 450 U.S. at 189, 101 S.Ct. at 1058, 209 USPQ at 9 (“[sjpecific conditions for patentability follow” § 101). When considering that the patent law does not allow patents merely for the discovery of ideas, principles, and laws of nature, ask whether, were it not so, the other provisions of the patent law could be applied at all. If Einstein could have obtained a patent for his discovery that the energy of an object at rest equals its mass times the speed of light squared, how would his discovery be meaningfully judged for nonobviousness, the sine qua non of patentable invention?14 35' U.S.C. § 103. When is the abstract idea “reduced to practice” as opposed to being “conceived”? See id. § 102(g). What conduct amounts to the “infringement” of another’s idea? See id. § 271.

Consider for example the discovery or creation of music, a new song. Music of course is not patentable subject matter; a composer cannot obtain exclusive patent rights for the original creation of a musical composition. But now suppose the new melody is recorded on a compact disc. In such case, the particu*1554lar musical composition will define an arrangement of minute pits in the surface of the compact disc material, and therefore will define its specific structure. See D. Macaulay, The Way Things Work 248-49 (Houghton Mifflin 1988). Alternatively suppose the music is recorded on the rolls of a player piano or a music box.

Through the expedient of putting his music on known structure, can a composer now claim as his invention the structure of a compact disc or player piano roll containing the melody he discovered and obtain a patent therefor? The answer must be no. The composer admittedly has invented or discovered nothing but music. The discovery of music does not become patentable subject matter simply because there is an arbitrary claim to some structure.

And if a claim to a compact disc or piano roll containing a newly discovered song were regarded as a “manufacture” and within § 101 simply because of the specific physical structure of the compact disc, the “practical effect” would be the granting of a patent for a discovery in music. Where the music is new, the precise structure of the disc or roll would be novel under § 102. Because the patent law cannot examine music for “nonob-viousness,” the Patent and Trademark Office could not make a showing of obviousness under § 103. The result would well be the award of a patent for the discovery of music. The majority’s simplistic approach of looking only to whether the claim reads on structure and ignoring the claimed invention or discovery for which a patent is sought will result in the awarding of patents for discoveries well beyond the scope of the patent law.

Patent cases involving the distinction between idea or principle may involve subtle distinctions. Flook, 437 U.S. at 589, 98 S.Ct. at 2525, 198 USPQ at 197.15 Section 101 embodies the very soul of the intangible nature of invention. Without ■ particular claimed subject matter in mind, it is impossible to generalize with bright line rules the dividing line between what is in substance the invention or discovery of a useful application within § 101 versus merely the discovery of an abstract idea or law of nature or principle outside § 101. Each case presenting a question under § 101 must be decided individually based upon the particular subject matter at issue. See In re Grams, 888 F.2d 835, 839, 12 USPQ2d 1824, 1828 (Fed.Cir.1989) (Section 101 analysis “depends on the claims as a whole and the circumstances of each case.”). There are however answers in every § 101 case. But they are found by applying precedent and principles of patent law to the particular claimed subject matter at issue.

C.

1. Discoveries and inventions in the field of digital electronics are analyzed according to the aforementioned principles as any other subject matter. In re Walter, 618 F.2d 758, 765, 205 USPQ 397, 405 (CCPA 1980). Digital electronics, including so-called general purpose digital computers, often call into play § 101 because digital electronic devices “operate[ ] on data expressed in digits, solving a problem by doing arithmetic as a person would do it by head and hand.” Gottschalk v. Benson, 409 U.S. 63, 65, 93 S.Ct. 253, 254, 34 L.Ed.2d 273, 175 USPQ 673, 674 (1972). Applicants sometimes attempt to claim digital-electronic related subject matter by reference to the mathematical function performed by the digital electronic structure. See Walter, 618 F.2d at 764, 205 USPQ at 404-05 (§ 101 problems are a “natural consequence” of applicants’ use of mathematics to define their alleged inventions). However, like the discovery of a law of nature, abstract *1555idea, or principle, the discovery of mathematic functions, relationships, operations, or algorithms does not entitle a person to a patent therefor. Diehr, 450 U.S. at 191, 101 S.Ct. at 1059, 209 USPQ at 10 (“a mathematical formula as such is not accorded the protection of our patent laws”); see Walter, 618 F.2d at 770, 205 USPQ at 409 (pure mathematics is not an art or technology).16 It does not matter how “original,” “inventive,” or “useful” the mathematics might be in the ordinary sense of those words.

The trilogy of Supreme Court cases in this area must be applied to determine whether an invention or discovery in the field of digital electronic related subject matter is within the scope of the patent law. These cases govern both product and process claims. Diehr, 450 U.S. at 188 n. 11, 101 S.Ct. at 1057 n. 11, 209 USPQ at 9 n. 11; accord In re Maucorps, 609 F.2d 481, 485, 203 USPQ 812, 815 (CCPA 1979).

In the first case, Gottschalk v. Benson, 409 U.S. 63, 93 S.Ct. 253, 34 L.Ed.2d 273, 175 USPQ 673 (1972), the Supreme Court held that claims to a method of converting binary-coded decimal numbers into pure decimal numbers did not recite an invention or discovery within § 101, and thus were ineligible for patent protection. In Benson, the claimed method was to be performed specifically in a general purpose digital computer, and one of the claims (claim 8) contained express digital electronic structure limitations by reciting “signals” and a “reentrant shift register.”17 409 U.S. at 64, 73, 93 S.Ct. at 254, 258, 175 USPQ at 674, 677. The Court found that the “practical effect” of a patent for the method would be the impermissible award of a patent for a discovery in mathematics because the whole of the subject matter sought to be patented was a mathematical formula that had “no substantial practical application except in connection with a digital computer.” Id. at 71-72, 93 S.Ct. at 257, 175 USPQ at 676; see Diehr, 450 U.S. at 185-86, 101 S.Ct. at 1056, 209 USPQ at 8 (so interpreting Benson)18 In Benson the Court made clear that it was “dealing] with a program only for digital computers.” 409 U.S. at 71, 93 S.Ct. at 257, 175 USPQ at 676.

In the second case, Parker v. Flook, 437 U.S. 584, 98 S.Ct. 2522, 57 L.Ed.2d 451, 198 USPQ 193 (1978), the Court held that a claim to a method of updating “alarm limits” (numbers) did not recite an invention or discovery within § 101, and thus was ineligible for patent protection. The claims in Flook did not “wholly preempt” the claimed mathematical formula because they did not cover every application of the formula. See 437 U.S. at 586, 589-90, 98 S.Ct. at 2523, 2525-26, 198 USPQ at 196, 197. The claimed method was expressly limited to operation “in a process comprising the catalytic chemical conversion of hydrocarbons,” and thereby to application in a particular technological environment. Id. at 586, 98 S.Ct. at 2524, 198 USPQ at 196. The claimed formula also was “primarily useful for computerized calculations.” Id. And the claim recited specific activity beyond the solution of the mathematical formula (so called “post-solution” activity), namely ad*1556justing an “alarm limit” to the figure computed according to the formula. See id. at 589-90, 98 S.Ct. at 2525, 198 USPQ at 197. The Court reasoned that the updating of alarm limits in chemical processes was well known, and all that Flook purported to invent and claim was a new formula coupled to a computer for doing so (limited to certain post-solution activity in a technological environment). Id. at 594-95, 98 S.Ct. at 2527-28, 198 USPQ at 199; see Diehr, 450 U.S. at 186, 101 S.Ct. at 1056, 209 USPQ at 8 (“the Court concluded [in Flook ] that the [patent] application sought to protect a formula for computing [a] number”); id. at 192 n. 14, 101 S.Ct. at 1060 n. 14, 209 USPQ at 10 n. 14. On these facts, the Court reasoned that the claimed invention or discovery was an alleged newly discovered mathematical formula, which was “not the kind of ‘discover[y]’ that the statute was enacted to protect.” Flook, 437 U.S. at 593-95, 98 S.Ct. at 2527-28, 198 USPQ at 198-99.

In the third case, Diamond v. Diehr, 450 U.S. 175, 101 S.Ct. 1048, 67 L.Ed.2d 155, 209 USPQ 1 (1981), the Court held that a process for operating a rubber-molding press was within § 101. An element of the claimed process was a digital computer programmed to perform a mathematical function. It was known that temperature inside a rubber-molding press determined in part the time the press was required to remain closed. 450 U.S. at 177-79, 101 S.Ct. at 1052-53, 209 USPQ at 4-5. The problem faced in the art was that when the press opened during operation, it cooled, thereby changing the amount of time needed for curing. Id. By including a thermocouple or other temperature-detecting device for measuring temperature inside the press, feeding signals to a computer which would repeatedly calculate the cure time and then cause the press to open at the right moment, the applicant claimed to have invented a new, useful, and nonobvious precision method of curing rubber. Id. The Court reasoned that the claimed subject matter was, as a whole, a process for precision rubber curing that included a computer performing a mathematical formula; the totality of claimed subject matter was not just the mathematical formula. Id. at 187, 191, 101 S.Ct. at 1057, 1059, 209 USPQ at 7, 8. Therefore, held the Court, the claimed subject matter was eligible for patent protection.19

The Court in Diehr distinguished its decision in Flook. Both cases involved claims including mathematical formulae to be performed by digital electronics, with application in chemical processes. Flook’s patent application, however, “did not purport to explain how the variables used in the formula were to be selected.” Diehr, 450 U.S. at 192 n. 14, 101 S.Ct. at 1060 n. 14, 209 USPQ at 10 n. 14; see also id. at 186, 101 S.Ct. at 1056, 209 USPQ at 8. Flook’s patent application did not “contain any disclosure relating to the chemical processes at work, the monitoring of process variables, or the means of setting off an alarm system.” Diehr, 450 U.S. at 187, 101 S.Ct. at 1057, 209 USPQ at 8; see also id. at 192 n. 14, 101 S.Ct. at 1060 n. 14, 209 USPQ at 10 n. 14. In contrast, Diehr’s claims were neither to the mathematical formula nor to the “the isolated step of ‘programming a digital computer.’ ” Id. at 193 n. 15,101 S.Ct. at 1060 n. 15, 209 USPQ at 11 n. 15. They were to a process “beginning with the loading of [a] mold and ending with the opening of [a] press and the production of synthetic rubber product that has been perfectly cured — a result [t]heretofore unknown in the art.” Id. The chemical process in Flook was not the alleged invention or discovery but only was related tangentially to the mathematic formula; the applicant simply “limit[ed] the use of the formula to a particular technological environment” and claimed “insignificant postsolution activity.” Diehr, 450 U.S. at 192 n. 14, 101 S.Ct. at 1060 n. 14, 209 USPQ at 10 n. 14. All this demonstrated that in Diehr the applicant was, in substance, asserting and claiming to have invented a new and useful chemical process, thereby qualifying the subject matter for examination under the remaining provisions of the patent law, while in Flook as in Benson the applicant was, in substance, asserting and claiming as his invention or discovery a mathematical function (to be performed by a *1557computer), thereby placing the subject matter outside the patent law.

Under Benson, Flook, and Diehr the posing and solution of a mathematic function is nonstatutory subject matter. It is nonstatu-tory even if the particular mathematics is limited to performance in digital electronic circuitry or a general purpose digital computer, even if the mathematic operations are alleged generally to have some application in one or various technologies, and even if the solution of the function is said generally to “represent” something of physical or techno-logic relevance. On the other hand, an invention or discovery of a process or product in which a mathematic operation is practically applied may be statutory subject matter. The fact that one element of the claimed process or product is a programmed digital computer or digital electronics performing a mathematic function does not necessarily preclude patent protection for the process or product. In this way, the door remains open to the advancement of technologies by the incorporation of digital electronics. But the mere association of digital electronics or a general purpose digital computer with a newly discovered mathematic operation does not per se bring that mathematic operation within the patent law.

2. Every ease involving a § 101 issue must begin with this question: What, if anything, is it that the applicant for a patent “invented or discovered”? In re Abele, 684 F.2d 902, 907, 214 USPQ 682, 687 (CCPA 1982), quoted in In re Grams, 888 F.2d 835, 839, 12 USPQ2d 1824, 1827 (Fed.Cir.1989); see Kneass v. Schuylkill Bank, 14 F.Cas. 746, 748 (C.C.Pa.1820) (No. 7875) (Washington, J.). To resolve this inquiry, the patent or patent application must be reviewed and the subject matter claimed as the invention or discovery “must be considered as a whole.” Diehr, 450 U.S. at 188, 101 S.Ct. at 1057, 209 USPQ at 9; Flook, 437 U.S. at 594, 98 S.Ct. at 2527, 198 USPQ at 199; Walter, 618 F.2d at 758, 205 USPQ at 405 (Inquiry under section 101 depends on “the relationship which the truth or principle bears to the substance of the invention as claimed.”).

In considering claimed subject matter for eligibility under § 101, “it must be determined whether a scientific principle, law of nature, idea, or mental process, which may be represented by a mathematical algorithm, is included in the subject matter” claimed as the invention or discovery. In re Meyer, 688 F.2d 789, 795, 215 USPQ 193, 198 (CCPA 1982). When the claimed invention or discovery includes “a mathematical formula (or scientific principle or phenomenon of nature), an inquiry must be made into whether the claim is seeking patent protection for that formula in the abstract,” Diehr, 450 U.S. at 191, 101 S.Ct. at 1059, 209 USPQ at 10, or whether the “claim containing a mathematical formula implements or applies that formula in a structure or process which, when considered as a whole, is performing a function which the patent laws were designed to protect,” id. at 192, 101 S.Ct. at 1059, 209 USPQ at 10.

Thus the dispositive issue is not whether the claim recites on its face something more physical than just abstract mathematics. If it were, Benson and Flook would have come out the other way and Diehr would have been a very short opinion. The dispositive issue is whether the invention or discovery for which an award of patent is sought is more than just a discovery in abstract mathematics. Where the invention or discovery is only of mathematics, the invention or discovery is not the “kind” of discovery the patent law was designed to protect and even the most narrowly drawn claim must fail. Diehr, 450 U.S. at 192 n. 14, 101 S.Ct. at 1060 n. 14, 209 USPQ at 10 n. 14. To come within the purview of § 101 and the patent law, a mathematical formula or operation must be “applied in an invention of a type set forth in 35 U.S.C. § 101.” Meyer, 688 F.2d at 795, 215 USPQ at 198.

D. .

1. The Claimed Invention or Discovery. Alappat’s specification discloses a digital oscilloscope. See Alappat specification at 1-3. The majority is quite taken in by the structure and functioning of the oscilloscope. But as the majority recognizes, the oscilloscope is not claimed as Alappat’s invention. Rather the claimed invention is, as the majority says, “a means for creating a smooth waveform *1558display in a digital oscilloscope,” or an “anti-aliasing system” for an oscilloscope.

Thus, Alappat discloses a component of a digital oscilloscope to be a “display system,” see Fig. 1, and a component of the “display system” to be a “rasterizer,” see Fig. 2. Only the “rasterizer” and the immediate handling of its input and output are described in any structural detail.

In claim 15, Alappat claims his invention to be:

15. 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 comprising:
(a) means for determining the vertical distance between the endpoints of each of the vectors in the data list;
(b) means for determining the elevation of a row of pixels that is spanned by the vector;
(c) means for normalizing the vertical distance and elevation; and
(d) means for outputting illumination intensity data as a predetermined function of the normalized vertical distance and elevation.

The specification depicts the “rasterizer” 40 in Figure 3 with the following circuit diagram:20

[[Image here]]

The claimed rasterizer is described to function as follows. It starts with “vector list” data which the specification states may be obtained by “sampling” and “digitizing” an analog input “signal.” See spec, at 2, 11. 16-18. Sequential pairs of “vector list” data are stored in registers 70 and 72. Id. at 11, 11. 30-33. Vector list data are thus simply a sequence of numbers (y coordinates on an x-y coordinate system).

With respect to each pair of data, a first arithmetic logic unit (ALU) 74 calculates their difference; the result is stored in another register 76. Id. at 11,1. 34, to 12,1. 6. This difference is called the “vertical distance.” The difference is calculated by the following formula: Ay¡ = y¡ — y¡ + i, where i and i+1 are the sequential y coordinates.

A second ALU 80 calculates the “elevation.” The elevation is the distance between the starting y value and a particular y value *1559under consideration. It is calculated by the following formula: Ayy = y¡ — Sj, where Sj is distance of the point under consideration and y¡ is the “vertical distance” described above. The “elevation” is stored in a fourth register 82. Id. at 12, 11. 27-31.

The vertical distance and elevation are each then “normalized” in barrel shifters 84 and 88, respectively, to make the values larger, and the results are stored in a fifth register 90. Id. at 13, 11. 3-16. Normalization means in this context multiplying in base two.

A read-only-memory (ROM) 92 operates on the stored “vertical distance” and “elevation.” The ROM contains a table of values, namely “intensity” data as a function of the elevation and vertical distance data. Id. at 13, 11. 27-32. The mathematical function for calculating the intensity data is described generally as follows:

When the vector trajectory [ie., the line that would have been had the starting coordinates been connected] passes through or very near the center of a pixel [the point under consideration], the pixel is given maximum intensity.... When the ... distance between the center point of a pixel and any vector trajectory is greater than or equal to the ... distance between center points of contiguous pixels, the pixel intensity is set to 0. For pixels having center points intermediate in distance from the vector trajectory, pixel intensity is selected to be roughly in inverse proportion to such distance. [Spec, at 9, 11. 23-33.]

The most basic formula for selecting the pixel intensity is given as follows: I’(i,j) = [1 - (Ayy 4- Ay,) ] x F, where F = 15. Id. at 14, 1. 18.

Figure 5 provides an example of what the “rasterizer” does. The input to the rasterizer is given as two consecutive y coordinates, i = 0 and i + 1 = 7.21 (The “vertical distance” therefore is 7 - 0 = 7.) The rasterizer outputs the following array of “I” data (vector endpoints are emphasized):

[[Image here]]

According to the preamble of the claim the data is to be displayed on a display means. The specification gives as an example a ea-thode-ray-tube. The “I” data produced above by “rasterizing” is “anti-aliased” when a cathode-ray-tube is illuminated according to the data. This means that there would be no discontinuity, jaggedness, or oscillation that might otherwise appear had merely a line been attempted to be graphed. There is no discussion in the specification of the structure of the means for actually displaying the data or of the oscilloscope.

2. The Original Panel Decision

The examiner rejected claims 15-19 as not being directed to an invention or discovery within § 101. As the majority notes, the examiner rejected the claims even though he recognized that claim 15 recited “physical elements” to perform number crunching and an output of the data for eventual display.

On appeal to the board, the original panel found that “[e]ach clause of the body of claim 15 recites a mathematical operation and they are recited to operate together to reach a numeric value or pure number as the end product of the claim.” The original panel also found that the claim does not include display of the output data on a cathode-ray-tube but simply a transmission of the result of the mathematical operations. That panel decided, however, that the “critical analysis” for whether claimed subject matter including a mathematical algorithm is within § 101 is whether the claims on their face recite “specific apparatus distinct from other apparatus capable of performing the identical [mathe-matic] function.” (Emphasis added.)

*1560From this general rule about claiming structure, the panel reasoned that where a claim recites “means for performing functions,” the claimed invention is within § 101, unless the functionally-defined means are so broad that they encompass “every means for performing the recited [mathematical] functions.” Since the means must be construed to correspond to the structures disclosed in the specification and their equivalents per 35 U.S.C. § 112, the original board’s test for whether an invention or discovery was of the type enumerated in § 101 depended on the quantity of disclosure in the specification.

Applying this rule, the original panel found that the structures disclosed in the specification as corresponding to the means were two ALUs, two barrel shifters, and a ROM. It concluded that these were “specific apparatus” because they were “clearly disclosed to be conventional structure in the art” and were not simply “rectangular block diagrams” that “may not be ascertained to be disclosed as conventional structure in the art,” nor were they means described in a “very broad, generic sense.” The original panel therefore concluded that the claimed invention or discovery was within § 101 and reversed the examiner’s contrary rejection of claims 15-19.

3. The Decision of the Reconsideration Panel

The reconsideration panel of the board also felt that the dispositive issue under § 101 was whether the claims recited “specific apparatus.” Ex Parte Alappat, 23 USPQ2d 1340, 1341 (BPAI 1992). The reconsideration panel, however, applied this test to an opposite conclusion. First it reasoned that the means-for-function clauses must be interpreted as covering every structure for performing the recited function, and the burden was on the applicant to prove otherwise. Id. at 1343; see In re Donaldson Co., 16 F.3d 1189, 1192, 1193-94, 29 USPQ2d 1845, 1847-48, 1849 (Fed.Cir.1994) (in banc) (discussing PTO practice of not applying § 112, ¶ 6, during prosecution). The panel refused to interpret the means-for-function clauses as limited to the corresponding circuit structure disclosed in the specification and equivalents thereof. Thus, this panel concluded that the claim was to every structure for performing the recited mathematic functions, and that the claim was to be analyzed as though it actually was directed to a “method” comprising the functions performed by the claimed means. 23 USPQ2d at 1344-45.

Alternatively, the reconsideration panel found that a “general purpose digital computer” was within the range of equivalents contemplated by § 112, ¶ 6. It reasoned that in such cases the claimed structure should be treated as a method. Id. at 1345.

In passing, the reconsideration panel rejected the original panel’s holding that claims containing means-for-function clauses are nonstatutory only when the corresponding structure in the specification is so generic as to be illusory, although it recognized that where the structure is illusory, the claim would be to the mathematic function and would fail under § 101.

Applying the “method” analysis, the reconsideration panel agreed with the original panel that each element of the claim recited a mathematical operation and that the displaying of the waveform on a cathode-ray-tube was not claimed. It found that the specification did not disclose, nor was it claimed, where the input data — the vector list — was to come from or how it was to be generated. The reconsideration panel concluded that the claimed invention was simply a method of computing a set of numbers from another set of numbers, and therefore was a nonstatuto-ry claim to a mathematical algorithm. Id. at 1346-47.

4. The Majority’s Decision in this Case

The majority of this court first recognizes that the reconsideration panel erred by refusing to interpret the means-for-function clauses as not being directed to the specific structures disclosed in the specification — two ALUs, two barrel shifters, and a ROM — and their equivalents, and that the original panel was correct in its construction of claim 15. Thus, pursuant to § 112, ¶ 6, and in view of the specification, the claims do recite specific digital circuitry structures.

*1561The majority concludes that because the claim recites connected structures, the claim “unquestionably recites a machine.” Page 1541. Although stating that it is unquestionable, the court asks whether the claimed apparatus is not a machine within § 101 because of one of the “judicially-created” exceptions called the “mathematical algorithm” exception. Page 1542. The majority explains in answering this question that the “claim as a whole” must be analyzed, and that a portion thereof is not dispositive. The court first concludes that the claimed subject matter is not a “disembodied mathematical concept” because the claim recites a “combination of interrelated [circuitry] elements” for converting data into data. Page 1544. Second, the majority reasons that because the claim is limited to specific structural elements, it would not “wholly preempt” the mathematical algorithm contained therein. Page 1544. Third, the majority holds that the word “rasterizer” in the preamble is not a mere “field-of-use” limitation, but limits the claimed subject matter to the production of “output illumination data.” Id.

Finally, the court concludes that if the claimed “rasterizer” were equivalent to a “general purpose digital computer” programmed to perform the calculations performed by the rasterizer, such programmed computer would be the invention of a “new machine” within § 101. Page 1545.

E.

1. Of course, I agree that the means-for-function elements in claim 15 must be construed to cover the corresponding structure described in Alappat’s specification and equivalents thereof. 35 U.S.C. § 112, ¶ 6; see In re Donaldson Co., 16 F.3d 1189, 1195, 29 USPQ2d 1845, 1850 (Fed.Cir.1994) (in banc). Accordingly, Alappat correctly argues and the majority properly holds that when the “means” elements of the claim are construed under 35 U.S.C. § 112, ¶ 6, paragraphs (a) to (d) of the claim read as follows (the preamble has been shortened for brevity):

A rasterizer for converting vector fist data ... into ... pixel illumination intensity data to be displayed ... comprising:
(a) a first ALU;
(b) a second ALU;
(c) two barrel shifters; and
(d) a ROM.

Further, pursuant to 35 U.S.C. § 112, ¶ 6, elements (a)-(d) also cover equivalents of the two ALUs, the two barrel shifters, and the ROM.

Because the “means” clauses of claim 15 correspond to structure described in the specification, under Donaldson the reconsideration panel of the board erred in failing to construe the claims to recite that structure and equivalents.

2. The § 112, ¶ 6, issue, however, is a red herring in this case. Although the reconsideration panel erred by ignoring specific structure recited in the claims, Alappat’s claimed invention still is not the invention or discovery of a machine. The presence of structure on the face of the claims does not ipso facto make the claimed invention or discovery one of statutory subject matter.

To hold that a claim reciting structure necessarily defines an invention within § 101, the majority implicitly resurrects long-dead precedent of the Court of Customs and Patent Appeals in direct conflict with Supreme Court precedent and subsequent precedent of that court. Early precedent of the Court of Customs and Patent Appeals held that a claimed invention or discovery is outside § 101 only if the claim on its face recites in its entirety mathematics, because claims like that would wholly preempt the mathematical operation at issue. That was the extent of the boundaries of the patent law under § 101. E.g., In re Bernhart, 417 F.2d 1395, 1399, 163 USPQ 611, 616 (CCPA 1969); In re Chatfield, 545 F.2d 152, 156, 191 USPQ 730, 733 (CCPA 1976); In re Freeman, 573 F.2d 1237, 1245, 197 USPQ 464, 471 (CCPA 1978). As a corollary, the court reasoned that if the claim does recite structure, the claim necessarily does not “wholly preempt” an abstract idea. E.g., In re Noll, 545 F.2d 141, 148, 191 USPQ 721, 726 (CCPA 1976) (“The instant claims, however, are drawn to physical structure and not to an abstract” mathematical formula.); In re Johnston, 502 F.2d 765, 771, 183 USPQ 172, 177 (CCPA 1974) (“the in*1562stant claims, in apparatus form, do not claim or encompass a law of nature, a mathematical formula, or an algorithm” (emphasis in original)), rev’d on other grounds sub nom. Dann v. Johnston, 425 U.S. 219, 96 S.Ct. 1393, 47 L.Ed.2d 692, 189 USPQ 257 (1976).

However, the Supreme Court expressly reversed the court’s wholesale preemption test in Parker v. Flook, 437 U.S. 584, 98 S.Ct. 2522, 57 L.Ed.2d 451, 198 USPQ 193 (1978). There the Supreme Court concluded that the claimed discovery was nonstatutory even though the applicant’s claim did not wholly preempt the mathematic function involved. 437 U.S. at 589-90, 98 S.Ct. at 2525-26, 198 USPQ at 197; accord Diekr, 450 U.S. at 192 n. 14, 101 S.Ct. at 1060 n. 14, 209 USPQ at 10 n. 14; Walter, 618 F.2d at 767, 205 USPQ at 407 (under Flook subject matter can be outside § 101 without “literal preemption”). Flook should have made clear that satisfaction of § 101, and eligibility for the patent reward in general, requires a judgment that the applicant for the patent has actually invented or discovered something in the useful arts and for that reason is deserving of exclusive patent rights. To determine whether the applicant has invented or discovered something within the patent law, it makes no sense for the sole question to be, “Does the applicant happen to recite structure in the claims or not?” See Diehr, Flook, and Benson, supra part II.C.l. (no patent for discovery of mathematical function); Funk Bros. Seed Co. v. Kalo Inoculant Co., 333 U.S. 127, 68 S.Ct. 440, 92 L.Ed. 588, 76 USPQ 280 (1948) (no patent for discovery of naturally occurring phenomenon); Brenner v. Manson, 383 U.S. 519, 86 S.Ct. 1033, 16 L.Ed.2d 69, 148 USPQ 689 (1966) (no patent for creation of a product without discovering a specific practical utility for it) (discussed supra part U.A.); Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470, 480-81, 94 S.Ct. 1879, 1885-86, 40 L.Ed.2d 315, 181 USPQ 673, 679 (1974) (discussing generally the practical policy of the patent law). Because the wholesale preemption test cares nothing about the nature of the alleged invention or discovery,22 the Supreme Court not surprisingly rejected it.

Although the wholesale preemption test became outmoded, the inquiry into specific structure has survived, and indeed has been elevated to the inquiry under § 101, as this ease evidences. See also In re Iwahashi, 888 F.2d 1370, 1375, 12 USPQ2d 1908, 1911 (Fed. Cir.1989) (The claimed subject matter is a statutory “machine” or “manufacture” because the claim is to “apparatus with specific structural limitations” and the claim “defines apparatus in the form of a combination of interrelated means.”). However, the majority’s test under § 101 that looks simply to whether specific structure is claimed is as inconsistent with Supreme Court precedent as is the wholesale preemption test.

The Supreme Court has held that a claimed invention may represent merely the discovery of a law of nature and be outside the patent law, even though the claim entirely recites a specific and complete structure. See Funk Bros. Seed Co., 333 U.S. at 130, 68 S.Ct. at 441, 76 USPQ at 281 (claim to species of bacteria represented discovery of law of nature and was outside § 101). The Supreme Court has also held that a claimed process may be non-statutory even if it implements a principle in a “specific fashion.” Flook, 437 U.S. at 593, 98 S.Ct. at 2527, 198 USPQ at 198. And the Supreme Court has held that a claimed invention may represent the discovery of mathematics alone and be outside § 101 even though the claim recites specific structural limitations. E.g., Benson, 409 U.S. at 64, 73, 93 S.Ct. at 254, 258, 175 USPQ at 674, 677.

In addition, this court’s predecessor court has expressly stated that a “claimed computing system” does not necessarily reflect the invention or discovery of a “machine” within § 101. In re Maucorps, 609 F.2d 481, 485, 203 USPQ 812, 816 (CCPA 1979) (claimed apparatus was nonstatutory even though it referred to a disclosed dedicated hard-wired circuit); see also Meyer, 688 F.2d at 796, 215 USPQ at 199 (claimed apparatus nonstatuto-ry even though it was limited to a computer *1563performing the claimed mathematical operations and displaying the result).

Furthermore, the statute does not support a simple “structure” test. 35 U.S.C. § 101 plainly refers to several classes of subject matter having longstanding usage in the patent law and requires that the applicant have “invent[ed] or discover[ed]” a new and useful one of them. “Structure” is not one of these classes. Nor does § 101 simply require a claim that recites structure. Finally, there is no reason to suppose that § 101 should depend only on the adequacy of disclosure when specificity of disclosed and claimed structure is expressly required in 35 U.S.C. § 112.

As the Supreme Court and this court have said, and as the majority says now, the claimed subject matter must be considered as a whole to determine whether the invention or discovery is within § 101. A claim may thus include a limitation directed to a “mathematical formula, computer program or digital computer,” and yet the invention or discovery will be within § 101 so long as the claimed invention in total represents an application of such formula, program, or computer. See Diehr, 450 U.S. at 187, 101 S.Ct. at 1057, 209 USPQ at 8. Likewise, a claim may include the recitation of something physical (ie., structure), and yet the invention or discovery is essentially only mathematical. See In re Grams, 888 F.2d 835, 838-40, 12 USPQ2d 1824, 1827 (Fed.Cir.1989) (“[I]f there are physical steps included in the claim in addition to the [mathematical] algorithm, the claim might be eligible for patent protection.” (emphasis added)). Where the claimed invention is nothing more than a newly discovered mathematical formula or solution, the claimed subject matter will not be statutory simply because included in the claim are one or more references to structure.23

3. So what did Alappat invent or discover? Alappat’s specification clearly distinguishes between an “oscilloscope” and a “rasterizer,” and Alappat claims his invention in claims 15-19 to be only the “rasterizer.”

The “rasterizer” as claimed is an arrangement of circuitry elements for converting data into other data according to a particular mathematical operation. The rasterizer begins with vector “data” — two numbers. “[I]t does not matter how they are ascertained.” Brief for Alappat at 39. The two numbers, as they might to any algebra student, “represent” endpoints of a line.

The claimed “rasterizer” ends with other specific “data” — an array of numbers, as the original and reconsideration panels of the board both expressly agreed. See Diehr, 450 U.S. at 186, 101 S.Ct. at 1056, 209 USPQ at 8 (“The claims [in Flook ] were drawn to a method for computing an ‘alarm limit.’ An ‘alarm limit’ is simply a number....”); Abele, 684 F.2d at 909, 214 USPQ at 688 (the “claim presents no more than the calculation of a number and display of the result”); Walter, 618 F.2d at 768, 205 USPQ at 407 (“if the end-product of a claimed invention is a pure number, as in Benson and Flook, the invention is nonstatutory”). The end-data of the “rasterizer” are a predetermined and claimed mathematic function of the two input numbers.24

Alappat admits that each of the circuitry elements of the claimed “rasterizer” is old. He says they are merely “form.” Thus, they are only a convenient and basic way of electrically representing the mathematical operations to be performed, that is, converting vector data into matrix or raster data. In Alappat’s view, it is the new mathematic operation that is the “substance” of the claimed invention or discovery. Claim 15 as a whole thus claims old circuitry elements in an arrangement defined by a mathematical operation, which only performs the very mathematical operation that defines it-Rather than claiming the mathematics itself, *1564which of course Alappat cannot do, Alappat claims the mathematically defined structure. But as a whole, there is no “application” apart from the mathematical operation that is asserted to be the invention or discovery.25 What is going on here is a charade. Alappat asks the following:

An input to ... a circuit or processing function is converted into a different thing at the output (otherwise why have the circuit or function in the first place?). If the process is new, useful, and nonobvious, does it really matter whether the implementation is in the form of analog components, digital components, programs for a computer, or a combination thereof? Isn’t such a differentiation exalting form over substance? ... [Br. for Alappat at 48.]

The questions are properly answered thusly: “No,” in Alappat’s claimed “rasterizer” it really does not matter how the mathematics is implemented, and “Yes,” assigning § 101 significance to the disclosed structure would be exalting form over substance. So where the claimed structure does not matter and the invention or discovery is only of a “new, useful, and nonobvious” process for solving a mathematical formula, Benson, Flook, Diehr, and years of precedent command that the patent law shall not exalt form over substance, but rather recognize that the substance is outside § 101.

The subject matter of claim 15, as in Flook, “has no substance apart from the calculations involved. The calculations are the beginning and end of the claim[ ].” Walter, 618 F.2d at 769, 205 USPQ at 409. Also as in Flook, the oscilloscope disclosed in Alappat’s specification presents a general technological environment for the claimed “rasterizer,” insignificant in relation to it. Claim 15 is not even limited to the environment of an oscilloscope. See Abele, 684 F.2d at 909, 214 USPQ at 688. The claimed rast-erizer mathematical function presumably has application in conjunction with any current or future device that prints in an x-y coordinate grid, such as oscilloscopes, computer monitors, televisions, laser printers, mechanical printing devices, etc.

This is not to say that digital circuitry cannot be an element in an otherwise statutory machine. Under Diehr, it can.26 But Alappat expressly recognizes the distinction between a “machine,” even giving some examples, and the “digital processing” one of its components might perform:

In today’s technological environment virtually every machine, from cars to washing machines to instruments [e.g., oscilloscopes], uses digital processing, either with specific digital circuitry and/or a microprocessor executing a program. [Brief for Alappat at 47.]

Thus unlike the rubber curing process in Diehr, the claimed rasterizer here is not an application of mathematics in an otherwise statutory process or product. The rasterizer is simply the mathematical conversion of data. In Diehr, the input data were derived by a claimed component of the overall rubber curing process — the press and thermocouple — which fed data to the claimed computer. Here, however, as the specification and claims indicate, the waveform data converted by the claimed rasterizer are not required to come from a particular machine connected up to the rasterizer, and, as Alappat admits, it does not matter how the data are selected. The sets of waveform numbers converted by the claimed rasterizer could come simply from the mind and hand of a person. The end product of the claimed rasterizer is not *1565precisely cured rubber as it was in Diehr but rather different data as a mathematical function of the original data. Sure the data have some use. Most data have uses, and that is why people spend time calculating data. But just having some use for data does not make the creation of particular data patentable. Like the subject matter in Flook and Benson, and unlike the subject matter in Diehr, Alappat’s claimed rasterizer is newly discovered mathematics and not the invention or discovery of a process or product applying it. Cf. Alappat, 23 USPQ2d at 1345 (“The claimed invention must be evaluated for what it is. The claimed invention is a mathematical algorithm for computing pixel information.” (citation omitted)). Even though it recites structure, claim 15 should be rejected under § 101.

Rejection under § 101 is especially important for the following reason. The examination of Alappat’s “rasterizer” must focus on, as Alappat says, the “process” of the circuit elements — the mathematic function performed by them. Because the patent law does not examine abstract mathematics, if the “rasterizer” is held to be within § 101, there can be no meaningful examination for compliance with § 103, and other sections of the patent statute become inapplicable. The practical result is that there is patentability so long as the mathematics is “new.” This is reflected in Alappat’s statement that the rasterizer is a “novel combination of conventional electronic circuits which, as functionally defined in the claims, is patentably distinct from prior art rasterizers.” Brief for Alappat at 7 (emphasis added). But standing alone, “the novelty of the mathematical algorithm is not a determining factor at all.” Flook, 437 U.S. at 591, 98 S.Ct. at 2526, 198 USPQ at 198.

4. Finally, a “general purpose computer” issue has been raised as an aside in this ease. The parties agree that each of the “means” elements in claim 15 would find an “equivalent” within the meaning of 35 U.S.C. § 112, ¶ 6, in a “general purpose digital computer.” Alappat goes so far as to plead emphatically for recognition of equivalency, saying, “Any employable circuit designer could readily design around claims ... limited” to two ALUs, two barrel shifters, and one ROM. Brief for Alappat at 21.

Yet Alappat also concedes that a claim drawn to “a method which amounted to a mathematical algorithm [without] any disclosed hardware or structure, other than a programmed general purpose computer,” is nonstatutory. Br. for Alappat at 22; see Majority Opinion at Page 1540 (agreeing with this premise). Alappat’s argument is that “bona fide hardware supporting the ‘means plus function’ recitals” in claim 15 renders the claimed subject matter statutory, but then the claim may cover general purpose digital computers as equivalents through § 112, ¶ 6, even though that subject matter could not be claimed outright. Br. for Alappat at 22.

Alappat cannot have it both ways. If a programmed general purpose digital computer is not statutory subject matter, then a claim cannot be drawn to that subject matter whether outright or by application of equivalents under 35 U.S.C. § 112, ¶ 6. Paragraph 6 of § 112 is not a magical way to expand patent protection into nonstatutory subject matter.

As to equivalency, finding equivalency in a programmed general purpose computer proves the nonstatutory nature of Alappat’s purported invention or discovery. Alappat argues that the electrical circuitry of the “rasterizer” is equivalent to a programmed general purpose computer because “powerful, inexpensive microprocessors” are equivalent to “discrete digital components, such as AND, OR, NAND, etc., gates, registers, latches, and the like” are equivalent to “analog components, such as transistors, operational amplifiers, and resistors.” They are all equivalents, in Alappat’s view, because they all may achieve the same effect: performing the particular mathematics that is the claimed rasterizer.

A patent is awarded only “for the discovery or invention of some practical method or means of producing a beneficial result or effect, ... and not for the result or effect itself.” Diehr, 450 U.S. at 183 n. 7, 101 S.Ct. at 1055 n. 7, 209 USPQ at 7 n. 7 (quoting Coming v. Burden, (15 How.) 252, 268, 14 L.Ed. 683 (1854)) (emphasis added). The *1566patent’s “substance is a new mode of operation, by means of which a new result is obtained. It is this new mode of operation which gives it the character of an invention, and entitles the inventor to a patent....” Winans v. Denmead, 56 U.S. (15 How.), 330, 341, 14 L.Ed. 717 (1854) (emphasis added).

If Alappat’s claimed rasterizer represents statutory subject matter, which I do not believe it does, then Alappat’s claims must be strictly construed. Mackay Radio & Tel Co. v. Radio Corp. of Am., 306 U.S. 86, 94, 59 S.Ct. 427, 431, 83 L.Ed. 506, 40 USPQ 199, 202 (1939) (assuming the invention is within the patent law, the invention would be “a narrow one, consisting of a structure conforming to [a] formula, ... and is to be strictly construed with regard ... to ... devices” alleged to be covered by the claims.). Thus, assuming for the moment that Alappat’s “rasterizer” is statutory subject matter, then determining what circuit elements are equivalent to the various means claimed in the rasterizer must be performed by reference to the claimed apparatus and means and the means of the alleged equivalent. The majority, however, reasons that any “general purpose computer” is “in effect” the claimed invention or discovery because they do the same mathematics, without knowing anything particular about the general purpose computer. To find equivalence based solely on the identity of mathematical function, with absolute disregard for the particular claimed circuitry, therefore, is to concede that Alappat’s claimed circuitry is irrelevant and nonstatutory.

Getting back to the music analogy, Alappat is like a composer who claims his song on a compact disc, and then argues that the compact disc is equivalent to a player piano or a music box with the song on a roll or even sheet music because they all represent the same song. The composer is thus clearly asking for (and getting from the majority) a patent for the discovery of a song and a patent covering every physical manifestation of the song.

In any event, even if a programmed general purpose computer is “equivalent” to the rasterizer, it cannot be deemed to be within § 101 by simply reasoning as does the majority that it is a “new machine.” See Page 1545. Alappat posits that a “programmed digital computer becomes a special purpose digital computer to perform the function specified by the software![27] The special purpose computer can be implemented likewise by digital components, or even by analog components.” The majority casually agrees that a “general purpose computer in effect becomes a special purpose computer once it is programmed to perform particular functions from program software.” Id. (emphasis added).28 One cannot, however, just call a programmed computer a “new machine” without going through the § 101 analysis required by the trilogy of Supreme Court decisions. Whether or not subject matter is a “new machine” within § 101 is precisely the same question as whether or not the subject matter satisfies the § 101 analysis I have described. See Johnston, 502 F.2d at 773, 183 USPQ at 178-79 (Rich, J., dissenting) (accepting the validity of the “new and different machine” principle, but then analyzing that issue according to Supreme Court § 101 precedent).

Thus, a known circuit containing a light bulb, battery, and switch is not a new machine when the switch is opened and closed to recite a new story in Morse code, because the “invent[ion] or discover[y]” is merely a new story, which is nonstatutory subject mat*1567ter. An old stereo playing a new song on a compact disc is not a new machine because the invention or discovery is merely a new song, which is nonstatutory subject matter. The “perforated rolls [of a player piano] are parts of a machine which, when duly applied and properly operated in connection with the mechanism to which they are adapted, produce musical tones in harmonious combination.” White-Smith Music Publishing Co. v. Apollo Co., 209 U.S. 1, 18, 28 S.Ct. 319, 323, 52 L.Ed. 655 (1908). Yet a player piano playing Chopin’s scales does not become a “new machine” when it spins a roll to play Brahms’ lullaby. The distinction between the piano before and after different rolls are inserted resides not in the piano’s changing quality as a “machine” but only in the changing melodies being played by the one machine. The only invention by the creator of a roll that is new because of its music is the new music. Because the patent law does not examine musical compositions to determine their relation to those that have gone before, the distinction between new and old music can never qualify for patent protection.29

It is not the computer — the machine qua computer — that performs the [mathematic] function, but, rather, the [mathematic function] is attained only through “use” of the general-purpose computer. The general-purpose digital computer is itself a total and self-complete machine entity. Versatility in electronic data processing is its endowment, its reason for being, its stock in trade.

Digitronics Corp. v. New York Racing Ass’n, Inc., 187 USPQ 602, 640, 1975 WL 21112 (E.D.N.Y.1975), aff'd on other grounds, 553 F.2d 740, 193 USPQ 577 (2d Cir.1977). A programmed general purpose digital computer alleged to be patentable subject matter because of the program presents an independent § 101 inquiry that is not resolved simply by calling the structure a “new machine.”

Finally, a claim formally to a general purpose computer running a certain program cannot be deemed to satisfy § 101 simply because the computer is a physical, tangible device. As the invalidated claims in Flook and Benson demonstrate, and consistent with my earlier discussion, a computer program for use in a physical electronic thing called a computer may nevertheless be held to be nonstatutory subject matter. It is illogical to say that although a claim to a newly discovered mathematical operation to be performed by a computer is merely a nonstatutory discovery of mathematics, a claim to any computer performing that same mathematics is a statutory invention or discovery. Our precedent has rejected reasoning that way. See Abele, 684 F.2d at 909, 214 USPQ at 688; Walter, 618 F.2d at 768, 205 USPQ at 408; Maucorps, 609 F.2d at 485, 203 USPQ at 815-16; Freeman, 573 F.2d at 1247, 197 USPQ at 472; accord Noll, 545 F.2d at 152, 191 USPQ at 730 (Lane, J., joined by Rich, J., dissenting). Furthermore, the broad statement that a computer using any program is patentable subject matter trivializes the principles and distinctions wrestled with in Benson, Flook, and Diehr, and the case law thereunder.

In summary, it cannot be said that Alap-pat’s circuit means each find equivalents in a programmed general purpose digital computer. If it can be said that Alappat’s claimed circuit elements are each equivalent to a programmed general purpose computer just because they will perform the same claimed mathematics, then this demonstrates that Alappat’s claimed circuitry does not represent the invention or discovery of statutory subject matter. As to the programmed general purpose computer itself, there is no justification for saying that it must constitute statutory subject matter. When a particular claim directed to an isolated general purpose digital computer instructed to store, compute, or retrieve information comes before us, the claimed invention or discovery must be analyzed as a whole by reference to the Supreme Court eases, cases of this court, and *1568principles of § 101, as has been done in this opinion with regard to Alappat’s claimed rasterizer. Neither the recitation in the claim of structure nor the expedient label of “new machine” is sufficient for § 101.

CONCLUSION

This opinion discusses several contexts involving inventions or discoveries in the field of digital electronics: One might invent or discover a new and useful product or process that includes as an element therein digital electronics performing mathematics, such as the rubber curing process in Diamond v. Diehr, or the improved washing machine mentioned by Alappat. One might invent or discover a mode of operation of a digital electronic device, capable ultimately of being used to perform mathematics, such as an improved transistor, chip, or computer. Or, one might discover a particular mathematic operation and claim the use of digital electronics to perform the mathematic operation, such as the methods of calculating numbers in Gottschalk v. Benson and Parker v. Flook, and the rasterizer for converting numbers claimed by Alappat. This last category, however, is at best newly discovered mathematics which is not being “implemented] or applie[d] ... in a structure or process which, when considered as a whole,” Diehr, 450 U.S. at 192, 101 S.Ct. at 1059, 209 USPQ at 10 (emphasis added), represents an invention or discovery of a machine or process (as in the case of Diehr) for which one may obtain a patent pursuant to § 101.

The majority’s holding is dangerous in the following way. First, it reasons that one can obtain a patent for a discovery in mathematics as long as some structure is formally recited on the face of the claim. Under this aspect of the holding, many of the requirements for patentability other than “newness,” such as nonobviousness, make no sense and eannot be meaningfully applied. Thus, mathematical patents will be easier to obtain than other patents. Moreover, the patent law will now engage in the charade wherein claims directed to a particular method of calculating numbers (for use in a computer) are unpat-entable, but claims directed to a computer (performing a particular method of calculating numbers) are patentable.30

Second, the majority accepts the argument that all digital electronic circuitry is statutory subject matter when it performs a mathematical operation, and it is all equivalent when the particular mathematical operation is the same. Under this aspect, the mathematical patents will create an enormous scope of technological exclusivity. The lack of meaningful examination and the breadth of exclusive rights conferred by patents for discoveries of bare mathematical operations are repugnant to Congress’s careful statutory scheme for the promotion of the useful arts.

As the player piano playing new music is not the stuff of patent law, neither is the mathematics that is Alappat’s “rasterizer.” And the Supreme Court has in its decisions required it so. Alappat’s claimed discovery is outside 35 U.S.C. § 101, and for this reason I would affirm the board’s rejection. I dissent from the majority’s decision on the merits to the contrary.

. Chief Judge Archer assumed the position of Chief Judge on March 18, 1994.

. Throughout this opinion I shall refer to appellants Kuriappan P. Alappat, Edward E. Averill, and James G. Larsen collectively in the singular as "Alappat."

. As the majority recognizes, Alappat does not challenge the action of the Commissioner or board under, for example, the Administrative Procedure Act, 5 U.S.C. § 551 et seq, the Due Process Clause of the Fifth Amendment of the Constitution, or as part of its appeal on the merits of the board's decision, e.g.] In re Bose Corp., 772 F.2d 866, 227 USPQ 1 (Fed.Cir.1985).

. We are not the only circuit to have so held. See NLRB v. Newton-New Haven Co., 506 F.2d 1035, 1038 (2d Cir.1974) (party can abandon challenge to illegality of composition of NLRB); We Shung v. Brownell, 207 F.2d 132, 133 (D.C.Cir.) (party can abandon challenge to composition of immigration Board of Special Inquiry), vacated on other grounds, 346 U.S. 906, 74 S.Ct. 237, 98 L.Ed. 405 (1953).

. The statutes relating to the composition of the Trademark Trial and Appeal Board and the Commissioner's powers vis-a-vis that board are, for purposes of the issues here involved, substantially the same as the statute relating to the Board of Patent Appeals and Interferences. Compare 35 U.S.C. § 7 (patents) with 15 U.S.C. §§ 1067, 1070 (trademarks).

. Compare MPEP § 1201 (1993): If a board member becomes incapacitated after a hearing but before the decision, the Chairman of the Board, at his discretion, may without rehearing substitute a different board member for the incapacitated one, or offer the applicant an opportunity for rehearing; if a member becomes unavailable to reconsider a decision, normally the Chairman of the Board will designate another member as a substitute.

. Any reliance on In re Bose to reach the composition question in the present case is misplaced. The CCPA's decision in Wiechert precludes consideration of composition questions that are not properly raised by the parties, and the Federal Circuit’s later panel decision in Bose could not have overruled that CCPA decision. In any event, Bose was consistent with Wiechert's holding that board composition challenges are waiva-ble because the party in Bose challenged the composition of the board as a procedural challenge raised as part of its appeal from the merits of the board's decision. In the present case, however, Alappat has purposefully waived the procedural challenge and therefore Wiechert applies, not Bose.

. The members of the reconsideration board were the Commissioner of Patents and Trademarks, the Deputy Commissioner, an Assistant Commissioner, the Board Chairman and Vice-Chairman, and three examiners-in-chief.

. Under either of these interpretations, § 7 would still offer no guidance whatsoever on the actual rehearing itself.

. Although we need not decide, Congress may intend that it still be plenary under the present statute. See infra, Senate Report No. 1313, at 4.

. For example, a case in which the Commissioner designated a panel to rehear a case in order to redo what the Commissioner believed to be incorrect historical fact-finding might well be deemed arbitrary and capricious.

. Even Sir Isaac Newton, who is credited with among other things the formtdation of differential calculus, conceded that he traded in prior ideas, stating, "If I have seen further it is by standing upon the shoulders of Giants.”

. It is erroneous therefore to characterize, as the majority does, nonstatutory subject matter such as a mathematical algorithm as an "exception” to § 101. Defining patentable subject matter is the raison d’etre of § 101.

. See Graham, 383 U.S. at 9, 86 S.Ct. at 689, 148 USPQ at 464 (nonobviousness "draw[s] a line between the things which are worth to the public the embarrassment of an exclusive patent, and those which are not”) (quoting Thomas Jefferson).

. Similarly, the copyright law prohibits exclusive appropriation of "ideas,” but provides for rights in the idea’s "expression.” 17 U.S.C. § 102(a), (b). Although our sister circuits find the task of distinguishing between idea and expression difficult and somewhat imprecise, see Peter Pan Fabrics, Inc. v. Martin Weiner Corp., 274 F.2d 487, 489, 124 USPQ 154, 155 (2d Cir.1960) (Learned Hand, J.); Nichols v. Universal Pictures Corp., 45 F.2d 119, 121, 7 USPQ 84, 86 (2d Cir.1930) (same), they nevertheless continue to make those important distinctions. E.g., Whelan Assocs., Inc. v. Jaslow Dental Lab., Inc., 797 F.2d 1222, 1233-42, 230 USPQ 481, 488-95 (3d Cir.1986); Gates Rubber Co. v. Bando Chem. Indus., Ltd., 9 F.3d 823, 834-46, 28 USPQ2d 1503, 1508-19 (10th Cir.1993); Kepner-Tregoe, Inc. v. Leadership Software, Inc., 12 F.3d 527, 533-34, 29 USPQ2d 1747, 1750 (5th Cir.1994).

. It is unnecessary to discuss what is or is not a "mathematical algorithm,” as opposed to being a mathematical "relationship," “formula,” "operation,” “function,” "principle,” “theory,” or the like. The Supreme Court did not arrive at its holdings in Benson, Flook, and Diehr, discussed infra, by creating a new rule about “algorithms” and finding in two cases algorithms and in the other no algorithm. Rather, the holdings are expressly based upon the axioms that abstract ideas, principles, and laws of nature are not patentable subject matter, but that their useful applications may be. Mathematic operations, like ideas and laws of nature, are not useful applications and therefore not statutory subject matter. The hypertechnical distinction between calling something a mathematical "algorithm” versus another mathematic noun is without legal distinction.

. Based on the specification, the claim term “signals" was construed to mean "signals of the kind upon which the disclosed electronic digital computer hardware operates” and the claim term “reentrant shift register" was construed to mean a “particular apparatus." See In re Benson, 441 F.2d 682, 687, 169 USPQ 548, 552 (CCPA1971) (emphasis in original), rev’d sub nom. Gottschalk v. Benson, 409 U.S. 63, 93 S.Ct. 253, 34 L.Ed.2d 273, 175 USPQ 673 (1972).

. Consider in Benson the subject matter that would have been examined if it had passed muster under § 101. When is a method for converting numbers to numbers nonobvious, and how is such a method reduced to practice as opposed to being conceived?

. Consider that in Diehr, the subject matter to be examined would be a precision rubber curing process. Examination would not merely be of the particular mathematical formula.

. As can be seen from the circuit diagram, it is not clear what circuitry in particular "40” refers to. Alappat's specification locates the beginning of the rasterizer at ALU 74 and the end at ROM 92.

. The numbers in the digital circuit are of course in binary (base two) format. The figure in the specification uses hexadecimal (base 16). For my discussion, I shall refer to the decimal equivalent.

. See, e.g., Bernhart, 417 F.2d at 1399, 163 USPQ at 616 ("To allow the claims in issue here would not prohibit all uses of [the] equations [disclosed by appellants in their patent application].").

. See Arrhythmia Research Technology, Inc. v. Corazonix Corp., 958 F.2d 1053, 1063, 22 USPQ2d 1033, 1041 (Fed.Cir.1992) (Rader, J„ concurring) (accurately pointing out that precedent fails to "suggest how many physical steps a claim must take to escape the fatal ‘mathematical algorithm’ category”).

. The preamble calls the data "anti-aliased pixel illumination intensity data.” Of course, no matter how many adjectives the claim uses to describe data, data are still data — i.e., pure numbers.

. This is very different from the example given in Flook of a directional antenna system in which the wire arrangement is defined by the logical application of a mathematical formula, but the effect of the arrangement is an improved antenna that achieves "the greatest directional radio activity.” See Mackay Radio & Tel. Co. v. Radio Corp. of Am., 306 U.S. 86, 94, 59 S.Ct. 427, 431, 83 L.Ed. 506, 40 USPQ 199, 202 (1939) (expressly assuming without deciding that such arrangement could be patentable subject matter).

. Likewise, but not present in this case, improved digital circuitry itself, such as faster digital processors, would be statutory subject matter. Unlike the "rasterizer” in this case, they are not simply a claimed arrangement of circuit elements defined by a mathematical operation which does nothing more than solve the operation that defines it. See Maucorps, 609 F.2d at 486 n. 3, 203 USPQ at 816 n. 3; Freeman, 573 F.2d at 1247 n. 10, 197 USPQ at 472 n. 10; cf. infra note 29 and accompanying text (player piano analogy).

. Because the term "general purpose digital computer” is a definition of apparatus broadly by its effect — i.e., a particular mathematical computation — it is a truism that a "general purpose computer” becomes a "special purpose computer” when instructed with a special purpose.

. The Freeman case cited by the majority did not hold that a general purpose computer when programmed becomes a special purpose computer and a “new machine” within § 101. 573 F.2d 1237, 197 USPQ 464. Although the Noll and Prater cases did so state, they predated Parker v. Flook and their vitality on this point is as questionable as the proposition for which the majority cites them. See 1 D. Chisum, Patents § 1.03[6], at 102 (1993); P. Samuelson, Benson Revisited: The Case Against Patent Protection for Algorithms and Other Computer Program-Related Inventions, 39 Emory L.J. 1025, 1045 n. 62, 1048 n. 70 (1990) (arguing that much of the reasoning supporting patentability in the early cases has been impliedly overruled).

. Of course, a player piano itself could be a new machine, for example in relation to a music box, and, likewise, a player piano capable because of design of improved piano-playing might also be a new machine. E.g., Aeolian Co. v. Schubert Piano Co., 261 F. 178 (2d Cir.1919). In such cases, the invention or discovery is the quality of the structure of the piano — its mode of operation — and not the particular piece of music being played. Cf. supra note 26 and accompanying text (digital electronic devices).

. Mercifully, the majority leaves open the possibility that a claim reciting structure on its face can still be rejected under § 101. The majority says that this will happen where the claim reciting structure on its face is merely a "guise" for a claim to a mathematical process. Pages 1540-41. Although the majority finds that Alappat’s claim to a rasterizer is clearly not a "guise” for a discovery of a mathematical process, the majority does not describe in detail how one distinguishes in general a "true” apparatus claim from an apparatus claim in "guise.” Presumably, the way this is done is to determine what is the invention or discovery for which the patent applicant seeks an award of patent, and then to determine whether that discovery is the kind the statute was enacted to protect, as this dissenting opinion does.