Citation[]
In re Mahony, 421 F.2d 742, 164 U.S.P.Q. (BNA) 572 (C.C.P.A. 1970) (full-text).
Factual Background[]
Mahony was the first case to consider claims to a process beginning and ending within a digital computer. The applicant claimed a new method of identifying framing bits in a "receiver of digital information, such as a digital computer" and disclosed digital circuitry in block diagram form as well as an algorithm.[1]
C.C.P.A. Proceedings[]
The "mental steps" doctrine constituted the basis of the Patent Office's rejections; and the examiner demonstrated to the court that the algorithm could be practiced by pencil and paper.[2] The court declined to address the "mental steps" issue and reaffirmed its intention to confine the relevance of mental practice to Section 112 scrutiny.[3]
The claims were sustained when the court found the recital of "bits" and "bit stream" sufficient to limit the claims to machine practice.[4] The examiner was found to be operating not on a bit stream but on a "character representation" of a bit stream when following the algorithm by hand.[5]