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In re Alappat ruling by US CAFC on 29 July 1994

(Redirected from In re Alappat)

In re Alappat, 33 F.3d 1526, 1543 is a 1994 decision of the US Court of Appeals for the Federal Circuit.

Alappat applied for a patent, at the USPTO, on a particular method used in a particular kind of electronic instrument. The patent examiner rejected the application, the Board of Patent Appeals and Interferences (BPAI) of the USPTO then found in favour of the application and the case then went to the Federal Circuit Court of Appeals, where it is known as In re Alappat. The Federal Court reversed the decision of the BPAI, denying the patent.

(Alappat is often misspelt Allapat or Alapatt.)


As cited by SAP in their amicus brief for the 2008 in re Bilski case:

[i]t is estimated that 85-90% of the world's technology is disclosed only in patent documents.
(Newman, J., concurring)

Of course, using this quote when discussing software is disingenuous given the massive, complete, and freely reusable information disclosed by free software such as GNU/Linux, and given that many authorities have said of software patents that the disclosure is useless.

Regarding limitations on the patentability of mathematical subject matter:

[The Court] never intended to create an overly broad, fourth category of [mathematical] subject matter excluded from 101. Rather, at the core of the Court's analysis . . . lies an attempt by the Court to explain a rather straightforward concept, namely, that certain types of mathematical subject matter, standing alone, represent nothing more than abstract ideas until reduced to some type of practical application, and thus that subject matter is not, in and of itself, entitled to patent protection.

And, unfortunately:

We have held that such programming creates a new machine, because a general purpose computer in effect becomes a special purpose computer once it is programmed to perform particular functions pursuant to instructions from program software

Piano players with new music

Although not part of the majority opinion, Justice Newman's concurring opinion contains this useful and succinct analogy:

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 Section 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 Section 102. Because the patent law cannot examine music for “nonobviousness,” the Patent and Trademark Office could not make a showing of obviousness under Section 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.


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.


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 (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.

Wikipedia has an article about this: Piano roll blues.

Who wrote, concurred, dissented, etc.

The court's opinion was written by Judge Giles Sutherland Rich‎. The court concluded that the rejection should be reversed - i.e. the patent could be grantable.

A minority opinion, written by Judge C.J. Archer joined by Judge J. Nies, disagreed, saying:

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. Section 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. Section 101 because Alappat has not shown that he invented or discovered a machine within Section 101.

The opinion was split in two parts, both written by Judge Rich. The first was about the jurisdiction of the court, and isn't particularly interesting. The second is about the crucial issue of patentable subject matter.

Part I:

Rich, J., with whom: as to Part I (Jurisdiction): Pauline Newman, Lourie, and Rader, JJ., join;

Archer, C.J., Nies, and Plager, JJ., concur in conclusion;
and Mayer, Michel, Clevenger, and Schall, JJ., dissent;

Part II

and as to Part II (Merits): Pauline Newman, Lourie, Michel, Plager, and Rader, JJ., join;
Archer, C.J., and Nies, J., dissent;
and Mayer, Clevenger, and Schall, JJ., take no position.

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