In re Sarkar

Citation: In re Sarker, 588 F.2d 1330, 200 U.S.P.Q. (BNA) 132 (C.C.P.A. 1978).

Factual Background
The application, entitled “Methods of Open Channel Analysis and Control,” involved a technique for mathematically modeling an open channel, e.g., a natural stream or artificial waterway. Sarkar claimed that his method of constructing a mathematical model was capable of accurately providing the flow parameters of a river over a period of time. The model’s ability to account for additional complexities was claimed to be the principal advance over more idealized models in the prior art.

The Board of Appeals rejected all claims solely because it consider them not directed to a “process” within the meaning of 35 U.S.C. §101. There were two distinct rationales for the Board’s rejection. The first involved the interpretation and significance of a step in the claim which included the act of “measuring.” The second involved the significance of “post-solution activity” steps.

For the claim involving the act of “measuring,” Sarkar sought to meet the examiner’s rejection based upon Gottschalk v. Benson, as interpreted in In re Christensen, by arguing that the measuring step was a novel, nonobvious physical step. The Board rejected this argument, stating that the step was within the art.

For the claims involving “post-solution activity,” the Board concluded that:


 * While it is true that the final step in each of these claims makes reference to the mathematical result achieved by performing the prior recited steps, we consider the connection to be so tenuous that the several steps recited in each claim when considered as a whole do not constitute a proper method under the statute. 588 F.2d at 1332, 200 U.S.P.Q. (BNA) at 136.

C.C.P.A. Decision
The C.C.P.A. affirmed, holding that Sarkar’s claims were non-statutory subject matter, since they recited a mathematical algorithm. “[M]athematical equations expressed in algebraic form, and a technique for solving them are recited in each claim.” Id. at 1334, 200 U.S.P.Q. (BNA) at 138.