the-united-states

It is, of course, correct that Congress, not the courts, must define the limits of patentability; but it is equally true that once Congress has spoken it is “the province and duty of the judicial department to say what the law is.” Marbury v. Madison,1 Cranch 137, 177 (1803). Congress has performed its constitutional role in defining patentable subject matter in §101; we perform ours in construing the language Congress has employed. In so doing, our obligation is to take statutes as we find them, guided, if ambiguity appears, by the legislative history and statutory purpose. Here, we perceive no ambiguity. The subject matter provisions of the patent law have been cast in broad terms to fulfill the constitutional and statutory goal of promoting “the Progress of Science and the useful Arts” with all that means for the social and economic benefits envisioned by Jefferson. Broad general language is not necessarily ambiguous when congressional objectives require broad terms.

It is argued that this Court should weigh these potential hazards in considering whether respondent’s invention is <447 U.S. 317> patentable subject matter under §101. We disagree. The grant or denial of patents on microorganisms is not likely to put an end to genetic research or to its attendant risks. The large amount of research that has already occurred when no researcher had sure knowledge that patent protection would be available suggests that legislative or judicial fiat as to patentability will not deter the scientific mind from probing into the unknown any more than Canute could command the tides. Whether respondent’s claims are patentable may determine whether research efforts are accelerated by the hope of reward or slowed by want of incentives, but that is all. What is more important is that we are without competence to entertain these arguments – either to brush them aside as fantasies generated by fear of the unknown, or to act on them. The choice we are urged to make is a matter of high policy for resolution within the legislative process after the kind of investigation, examination, and study that legislative bodies can provide and courts cannot. That process involves the balancing of competing values and interests, which in our democratic system is the business of elected representatives. Whatever their validity, the contentions now pressed on us should be addressed to the political branches of the government, the Congress and the Executive, and not to the courts.

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Despite no longer making any product or service itself, epicRealm is asserting the patents against those that provide information and services to the public over the internet, a group which includes many private citizens, public service organizations and even the U.S. Patent and Trademark Office itself.  EpicRealm's assertion of the patents has included the filing of infringement lawsuits against more than a dozen mere end users of allegedly infringing web site systems.  PUBPAT challenged the patents because epicRealm's aggressive assertion of them is causing substantial public harm by threatening the way in which much of the most useful aspects of the Web are provided to the public.

Copies of the Requests for Reexamination filed by PUBPAT against the two patents epicRealm is widely asserting dynamic websites can be found at PUBPAT > EpicRealm Dynamic Website Patents.

1. Applications per year for patents, trade marks, designs, plant breeder rights
2. Patents granted in Australia to Australians (9%) and the top 5 tech groups of these (IT ranked in the Top 5).
   
3. Similar stats for Innovation patents.
4. Patents granted to Australians by the USPTO. Australia ranked 12th in 2005, with an increase of 30% in the number of patent applications over the previous year. Again, IT was in the top 5 technology groups.
5. The number of patents granted to Australians by the EPO was up only 1.7%, with Australia ranking 17th in non-EU countries for patent applications. IT was not one of the top 5 groups, unsurprisingly ;)

EU patent fight hots up

Free speech & copyright butt heads (pun intended)

UN University undermines patent stimulate competition argument

Australian Universities should give away their research

"As the Australian policy and management consultant John Howard observes, researchers and research organisations will, except in very rare situations, earn more from being paid for their work (through contracts and consultancy) than from licences and royalties flowing from intellectual property or from income earned in spin-off companies."

Citation

Jurisdiction

Facts

"the prior art teaches all the claimed steps except that drawn to computing the porosity of a formation. The essence of the appellant's invention lies in using data already available to one of ordinary skill in the art to compute the values of a parameter known to be of value in determining the geophysical properties of a formation... [T]he Appellant's point of departure from the teachings of the prior art lies in his applying his new formula to told data to calculate values of a known parameter. While this discovery of the appellant may constitute an important contribution to the art of geophysical prospecting, unless it falls within the four statutory subjects matter of 35 USCC 101 it cannot be protected by the patent laws." (cited at 1392)

Outcome

Ratio

• Mathematical formulae are unpatentable subject matter under ß101
• The addition of the old and necessary antecedent steps of establishing values for the variables in the equation cannot convert the unpatentable method to patentable subject matter

Relevance

Quotes

Lane J

Rich J

Citation

In the Matter of the Application of Calvin L. Fox (1973) 471 F.2d 1405; 1973 CCPA LEXIS 430

Jurisdiction

US Court of Customs and Patent Appeals

Facts

Relates to a patent application for a process for audio information distribution, namely the making of a tape recording, transmitting the master tape to a distribution point, making a plurality of copies and letting the users bring back their tape when they are through. The application was rejected by the examiner and board of appeals based on 35 USC ß101 as a method of doing business, and on 35 USC ß103 on the grounds of obviousness.

Outcome

The court agreed the invention was not patentable due to obviousness.

Ratio

• The court declined to consider the non-statutory subject matter issue.
• The claims were essentially a tape lending library operation wherein the library made copies as demand warrants.
• All of the equipment and technical knowledge was old, and "anyone desiring to carry out the process would know of the equipment and techniques to be used, none being specifically described." (per Rich J at 1407)
  

Relevance

Not much relevance really, except that the examiner and board rejected on the basis that it was a "method of doing business". The court sidestepped that issue however.

Citation

Gottschalk, Acting Commissioner for Patents v Benson et al (1972) 409 U.S. 63; 93 S.Ct. 253

Jurisdiction

US Supreme Court

Facts

Patent for the "programmed conversion of numerical information in general purpose digital computers", more specifically "a method for converting binary-coded decimal (BCD) numerals into pure binary numerals. The claims were not limited to any particular art or technology, to ary particular apparatus or machinery, or to any particular end use" ( per Douglas J at 64)

Outcome

The claimed invention was held to be non-patentable subject-matter as an attempt to patent an idea, rather than a process.

Ratio

• the method was so abstract as to cover both known and unknown uses
• the end use could vary and could be performed through any machinery, existing or future or without any apparatus at all
  
• the mathematical formula involved had no substantial practical application except in connection with a digital computer
• the result of granting the patent would be to improperly grant a patent for an idea

Relevance

This was the first, and fundamental in many ways, case to deal with the patentability of computer programs in the Supreme Court. It is of central relevance both because almost all subsequent jurisprudence built from here onwards. It launched the difficult "mathematical algorithm" test for patentability.

Quotes

Douglas J

References

• Benrey, R Understanding Digital Computers 4 (1964)
• Wild, "Computer Program Protection: The Need to Legislate a Solution," 54 Corn. L. Rev. 586 (1969)
• Bender, "Computer Programs: Should They Be Patentable?" 68 Col. L. Rev. 241 (1968)
• Buckman, "Protection of Proprietory Interest in Computer Programs," 51 J. Pat. Off. Soc. 135 (1969)
  

Citation

Jurisdiction

Facts

Outcome

Ratio

• Machine implementation vs. mental implementation is not a determinative dichotomy in deciding whether a method is non-statutory. (at 1249)
  
• A process having practical value other than enhancing the internal operation of digital computers was in the technological arts and hence statutory under ß101. (at 1249)
  

Relevance

Citation

Jurisdiction

Facts

Outcome

Ratio

• The patent office appellant tribunals, where it is found necessary, may take notice of facts beyond the record which, while not generally notorious, are capable of such instant and unquestionable demonstration as to defy dispute... Assertions of technical facts in areas of esoteric technology must always be supported by citation to some reference work recognized as standard in the pertinent art, and the appellant given, in the patent office, the opportunity to challenge the correctness of the assertion or the notoriety or repute of the cited reference.
• Allegations concerning specific "knowledge" of the prior art, which might be peculiar to a particular art should also be supported and the appellant similarlyl given the opportunity to make a challenge.
  

Relevance

Citation

Jurisdiction

Facts

Outcome

Ratio

• The present case was distinguishable from Prater in that the language of the claims made it clear that protection of a machine-implemented process was sought. (per Stone J at 945)
  
• The term "bit" when used in conjunction with "bit stream" has a meaning in the art which precludes reading the claims on a mentally performed process. (per Stone J at 945)
  

Relevance

Citation: Dolbear et al v American Bell Tel. Co.; Molecular Tel. Co. v Same; Americal Bell Tel. Co. et al v Molecular Tel. Co. et al; Clay Commercial Tel. Co. et al v American Bell Tel. Co. et al; People's Tel. Co. et al v Same; Overland Tel. Co. et al v Same (1888) 126 U.S. 1; 8 SS.Ct. 778.

Jurisdiction: US Supreme Court

Facts: All cases were bills for infringement of Alexander Graham Bell's 1876 patent for 'improvements in telegraphy' and 1877 patent for 'improvements in electric telephony'.

Outcome: The decree in all cases except Molecular was in favour of the patents. In Molecular, the decision was adverse only in relation to the 5th claim of the 1877 patent.

Ratio:

• Held that the discovery in finding the art , and invention in devising the means of making it useful, were both involved, and that the patent was properly issued.
• The fact that the particular instrument which Bell had tried did not reproduce spoken words so that they could be clearly understood, did not invalidate the patent, as other instruments made in accordance with the specifications would operate successfully.
• The claim was not for the mere use of electricty, as distinct from the particular process with which it is connected in the patent.
  

Quotes:

Waite CJ

Citation: In re Prater and Wei (1969) 56 CCPA 1381; 415 F.2d 1393

Jurisdiction: US Court of Customs and Patent Appeals

Facts: This was a rehearing of the earlier Prater & Wei case, relating to a method and apparatus for the processing, or analysis, of conventionally obtained spectrographic data to produce a quantitative spectrographic analysis with minimum error.

Outcome: The method claims were revoked for failure to properly point out and distinctly claim the subject matter regarding as the invention, but the apparatus claims were upheld over the objection that it was obvious.

Ratio: Decided that the mental steps doctrine has no basis in precedent and no rational basis. The patent was however rejected on the basis that it failed to adequately specify the invention because they claimed more than the mere machine-implemented process.

Relevance: The decision supersedes and in part overrules the earlier case, but the court upholds the earlier rejection of the patentability of computer-related subject matter. The decision also gives better detail of the history of the case than its earlier counterpart.

Note their limited interpretation of the mental steps doctrine: "[I]t would appear that the disclosure of apparatus for performing the process wholly without human intervention merely shows that the disclosed process does not fall within the so-called 'mental steps' exclusion." This is the basis on which Abrams and Yuan are distinguished. Is this really consistent with the doctrine as outlined in earlier cases?

Quotes:

 Baldwin J

At 1387: "[T]he examiner restated the objection of the process claims for failure to comply with 35 USC ßß101, 102 and 112."

At 1388: "The board further stated: 'It (is) beside the point that the solution of the mathematical problem can be done by machine. The claims have set forth nothing which cannot be performed purely as a mental exercise using appellants' discovery that the equations having the largest determinant are the ones to use.'"

At 1391: "We are in agreement with appellants that this case is not controlled by Abrams, Yuan or Cochrane v Deneer, as we view those cases."

At 1391: "In Abrams, no prior [1392] art reference was cited in the application..., the claims being rejected as failing to define subject matter properly ... in that 'the steps of the claims which constitute the heart of the invention are purely mental in character.'

The court referred to Abrams' specification in interpreting the steps of the claims, but Abrams had disclosed no means whatever for performing, without human intervention, two claimed steps of calculation and comparison. No analog device for carrying out the steps was disclosed in the Abrams specification; and at the time Abrams filed (April 28, 1944), general-purpose digital computers were still in the future. Thus, Abrams disclosed and claimed a process which could only be performed in the mind insofar as the teachings of the application were concerned. Abrams therefore presents a significant factual difference from the factual situation in the present case in which the teachings of the specification provide a full disclosure of at least analog apparatus for carrying out the claimed steps without requiring any steps to be performed in the human mind."

At 1392: "[A]s appellants point out, 'Yuan's disclosure was the use made of equations by pencil-and-paper with the mind of the operator at work to interpret the results.' Again, as in Abrams, insofar as the disclosure was concerned, the process (or the critical step thereof) was one that required the use of the human mind-- indeed, a purely mental process or step."

At 1393: "[The Cochrane quote (that certain this should be done with certain substances...but the tools to be used in doing this may be of secondary importance)] has  sometimes been misconstrued as a 'rule' or 'definition' requiring that all processes, to be patentable, must operate physically upon substances. ... To deduce such a rule from the statement would be contrary to its intendment that which was not to limit process patentability but to point out that a process is not limited to the means used in performing it. See In re Ernst 71 F.2d 169, 21 CCPA 1235 (1934)."

At 1393: "Appellants feel that, since they have disclosed apparatus for performing the process wholly without human intervention and since they are seeking [1394] coverage only for the machine-implemented process, they have avoided the so-called 'mental steps' doctrine. ... [I]t would appear that the disclosure of apparatus for performing the process wholly without human intervention merely shows that the disclosed process does not fall within the so-called 'mental steps' exclusion. ...

However, that is quite another question from the one before us, namely, whether appellants are entitled to claims of the breadth of those they seek here."

At 1394: "Viewed apart from the appellants' disclosure this claim is broad enough to cover the method if practiced by the use of pencil and paper by an operator, the operator directing the pencil."

At 1395: "In our view, appellants would like us to read a limitation of the specification into the claims, not merely interpret the claims in light od the specification. When read in the light of the specification, claim 9 does read on a mental process augmented by pencil and paper markings. We find no express limitation in claim 9 which, even when interpreted in the light of the specification, would support the conclusion that the claim is limited to a 'machine process' or 'machine-implemented process'. ...

Inasmuch as claim 9, thus interpreted, reads on subject matter for which appellants do not seek coverage, and therefore tacitly admit to be beyond that which 'applicant regards as his invention,' we feel that the claim fails to comply with 35 USC ß112 which requires that the specification shall conclude with  one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.' This is true notwithstanding appellants' disclosure of a machine-implemented process."

At 1397: "We have carefully considered the basic position of the Patent Office that it would be obvious to program a general purpose digital computer to practice appellants' invention and that apparatus claim 10 reads on such a computer... We find that position fatally defective in that it, in effect, assumes the existence as prior art of appellants' discovery..."

At 1398: "We do not perceive of any 'mental steps' issue in regard to apparatus claim 10. It is quite clear that claim 10, in typical means-plus-function language as expressly permitted by the third paragraph of 35 USC ß112, does not encompass the human being as the 'means' or any part thereof.

Worley CJ

At 1398: "One of the more interesting points raised is how far congress inteded to go in conferring patentable status on mental steps as they are intertwined in computer programs generally. It is questionable whether prior decisions denying patentability of purely mental steps, or the statute, read singly or together, can support a broad rule either sanctioning or prohibiting the patentability of such steps in relation to computer programs. Where the line will be drawn can only be determined on a case by case basis in buildings, as best we can, sound and intelligible precedent...

Congress, of course, had no way of knowing in 1952 what lay in the test tube then or what would become a reality tomorrow. But it devised a statute -- a model of legislative craftsmanship and foresight -- broad enough to anticipate and nourish the technological [1399] explosion we have witnessed. Our patent system is a delicate balance of interests; it protects the fruits of the extraordinary efforts it demands of inventors compatibly with the public interest. It has largely fostered the favourable climate resulting in the tremendous strides this country has made in reaching the pinnacle in the worldwide competition in the arts and sciences -- from atomic energy to antihistamines, computers to catalysts, lasers to lunar landings.

So it is with no little surprise and concern that one learns of proposed patent 'reforms'... I have grave misgivings concerning the desirability or need for any substantive change in a system that has worked so well in following the constitutional mandate 'to promote the Progress of Science and useful Arts.'"

Citation: In re Charles D. Prater and James Wei (1969) 56 CCPA 1376; 415 F.2d 1378

Jurisdiction: US Court of Customs and Patent Appeals

Facts: This was an application for a patent rehearing in relation to an invention concerned with spectrographic analysis. The application contained a machine for carrying out the invention in the form of an analog computer, but it was was envisaged that this invention could also be carried out by a digital computer.

The examiner rejected the appellant's method claims on the basis that the invention as claimed must be considered to be a process, and as such were readable as a mental process which was unpatentable. The examiner cited In re Abrams in support. The apparatus claims were also rejected on the basis that although the applications would have been entitled to claim the analog embodiment of the invention, the claim embraced an obvious modification of a general purpose computer, and hence strayed beyond the bounds of patentable subject matter. Hence the claims did not properly describe the invention as required by ß112. The board affirmed the positon of the examiner.

Outcome: The majority allowed a rehearing.

Ratio: Rich J in dissent said that none of the reasons advances for granting a rehearing was in compliance with the court's rule on rehearings.

Relevance: The majority opinion by Smith J is interesting for the way it deals with Abrams

There are a few juicy quotes by Rich J about software patents.

Quotes:

Smith J

At 1382: "The precedents which have been principally relied on as supporting the rejection of claims of this type are Abrams, supra, and Yuan, supra. As Yuan does little more than follow and adopt Abrams, it is to the latter case that we choose to turn as a starting point for our consideration in some detail of the problem presently before us."

At 1385: "It is important to note that Abrams disclosed no means whatever for performing the claimed steps ... of calculation and comparison. Certainly no analog computer for carrying out these calculations is disclosed in the Abrams' specification and at the time Abrams filed, ... programmable general purpose computers for calculations of this nature were still in the future. Thus, Abrams disclosed a claimed process including steps which could only be performed in the mind insofar as the teachings of the application were concerned. Abrams therefore represents a significant difference ... from the facture situation in the present case in which the teachings of the specification provide a full disclosure of apparatus for carrying out the steps in the claim without requiring any steps to be performed in the human mind. Additional teaching is also provided in the presenta pplication [1386] that the steps can alternatively be performed on other apparatus, i.e., a properly programmed digital computer, which would equally permit the process to be performed without involving steps performed in the mind by those skilled in the art informed of appellants' novel discoveries."

At 1386: "[M]uch confusion in subsequent interpretation of the Abrams decision has been caused by people misreading the decision as conferring judicial sanction upon the 'rules' formulated and proposed by Abrams' attorney. The confusion has arisen because the court, after initially declaring there was no necessity to embrace the rules, apparently adopted Rule 2 towards the later part of the opinion. We believe this later statement was advanced not to show adoption of the rules by the court but merely to point out that even if, arguendo, the court had adopted his rules, Abrams would still not have prevailed in his particular fact situation... The court thus hoist Abrams with his own petard."

At 1386: "It is also important to consider the two cases, Don Lee and Halliburton, supra, considered to validate the proposed 'Rule 2' [in Abrams' case]. [In Halliburton], the court decided the claims were invalid, saying: 'We think these mental steps, even if novel, are not patentable. Cf Don Lee...' When we trace back to Don Lee, ... the court said 'We conclude that appellee's patent claim No. 1 for a method of computation ... is not patentable. We agree with appellant's contention that such a computation is not `a new and useful art, machine, manufacture or composition of matter` within the meaning of [legislation antecedent to ß101]. Neither is it novel ...' It will be seen that this statement, which appears to be the genesis of the doctrine of the unpatentability of so-called 'mental step' claims, is not only unsupported by any citation of precedent but in its inception was directed to subject matter that was not even novel."

Discussing Cochrance v Deneer quote "A process is a mode of treatment..." at 1387: "This passage has sometimes been misconstrued as a 'rule' or 'definition' requiring that all processes, to be patentable, must operate physically upon substances. Such a result misapprehends the nature [1387] of the passage quoed as dictum, in its context, and the question being discussed by the author of the opinion. To deduce such a rule from the statement would be contrary to its intendment which was not to limit process patentability but to point out that a process is not limited to the means used in performing it."

At 1388: "We find it interesting in Tilghman and directly applicable to our analysis here is the reference... to a process as being 'an act, or mode of acting' and the further recognition that it is 'a conception of the mind, seen only by its effects when being executed or performed.' As such, it seems to us that Tilghman adds a recognizable dimension to Cochrane v Deneer which focuses attention on the mental aspect of process inventions whose patentability we presently determine under the express provisions of the Patent Act of 1952."

At 1388: "[T]he law does not require that a machine, to be patentable, must act on physical substances, for example, an electric meter. It does not seem consistent to impose such a requirement on the other category of 35 USC ß101 -- 'a process' -- without clearly evident and distinguishing reasons which are not thus far apparent."

At 1388: "In the Waxham case the [Supreme Court] said: 'By the use of materials in a particular manner he secured the performance of the function by a means which had never occurred in nature, and had not been anticipated by the prior art; this is a patentable method or process." It is noteworthy in the present appeal that although the appellants' novel calculations [1389] to be performed in the mind of a man might possibly to considered to be in nature, performance of the process of these novel calculations on a computer is by 'a means which had never occurred in nature'."

At 1389: "[W]e find nothing to indicate an intent of Congress or the courts to deny patent protection to process claims merely because they could alternatively be read on a process performed through the mind by the use of aids such as pencil and paper... We do not feel our reasoning need be encumbered by the so-called 'Rules' of Abrams for the reasons we have indicated. However, it is noted that in Abrams, unlike the present situation the claimed process could only be performed in the mind, so far as was apparent from the specification. The Abrams situation may thus be distinguished from that presently before us, in which there is adequate disclosure how the process can be performed ithout mental calculation. This distinction from Abrams leads us to our present holding which is that patent protection for a process disclosed as being a sequence or combination of steps, capable of performance without human intervention and directed to an industrial technology-- a 'useful art' within the intendment of the Constitution-- is not precluded by the mere fact that the process could alternatively be carried out by mental steps."

Rich J (dissenting)

At 1390: "[The Patent Office's] petition, which is most disrespectful in tone, charges us generally with ignoring and overlooking 'important issues' and 'prior adjudications of this court and others, including the Supreme Court.' More particularly, we [1391] are charged with 'Completely [disregarding]' the holdings in certain of our own prior cases. In the guise of demanding by way of a rehearing, 'the right to know why these pronouncements are ignored,' the solicitor is merely asking for further explanation of why we have refused to adopt his desired interpretation of our own utterances. The simple answer is that we did not agree with his desired interpretation. The reasons were fully developed in our opinion."

At 1391: "[T]he solicitor makes an argument to the effect that we have authorized the granting of a patent which would 'confer upon a patentee the right to exclude others from thingking in a certain manner.' This, we are told, would make the patent statutes, as we have construed them, unconstitutional as in violation of the First Amendment... We did not sanction claims which would preclude people from thinking, Prater did not ask for such claims, and surey no court would ever place such a construction on the claims which were before us... Prater's statement, in objecting to the petition, is that "There is no such thing as mental infringement" and that "thought is still unpatentable." This is unquestionably true.

The Telephone cases (1887) 126 US 1; 31 L.Ed 863

Smith v Snow (1935) 294 US 1; 55 S. Ct 279; 79 L.Ed 721

Waxham v Smith (1935) 294 US 20; 55 S.Ct 277; 79 L.Ed 733

Citation: In re Abrams (1951) 1951 CCPA LEXIS 309; 38 CCPA 945; 188 F.2d 165

Jurisdiction: US Court of Customs and Patent Appeals

Facts: The appellant's application for a patent for 'a method of prospecting for the presence of petroliferous deposits' was rejected on the basis that the heart of the invention was purely mental in nature and hence unpatentable.

Outcome: The court affirmed the rejection.

Ratio: Purely mental terms such as 'determining', 'registering', 'counting', 'observing', 'measuring', 'comparing', 'recording', and 'computing', are processes found to be non-statutory.

Relevance: This case pulls together prior case law on the mental steps doctrine, and contains a useful set of rules by which one may determine whether the claimed invention is patentable or not. Note that this is really a 'point of novelty' approach as set out in Flook.

Quotes:

Garrett CJ

At 5: "Counsel for appellant state in the brief on his behalf that a need exists 'for a rule of guidance in so-called `mental step cases,` asserting that much confusion exists grounding out of decisions which have been rendered... [T]he brief sets forth ... three suggested 'rules of law' reading:

1. If [6] all the steps of a method claim are purely mental in character, the subject matter thereof is not patentable within the meaning of the patent statutes.
2. If a method claim embodies both positive and physical steps as well as so-called mental steps, yet the alleged novelty or advance over the art resides in one or more of the so-called mental steps, then the claim is considered unpatentable for the same reason that it would be if all the steps were purely mental in character.
3. If a method claim embodies both positive and physical steps and the so-called mental step or steps are incidental parts of the process which are essential to define, qualify or limit its scope, then the claim is patentable and not subject to the objection contained in 1 and 2 above.

...

[7] From such examination of the decisions as we have been able to make, the suggested rules appear to accord with them, but it is unnecessary for us arbitrarily to go beyond the requirements of the instant case."

At 8: "The total effect of these expressions and steps in the claims is convincing that the nature of the invention is like that found in such decisions as Ex parte Toth 63 USPQ 131 (correcting and determining); [9] In re Heritage, 66 USPQ 217, 32 CCPA [Patents] 1170, and Haliburton Oil Well Cementing Co. v Walker, 64 USPQ 278, involving therein such purely mental terms as 'determining', 'registering', 'counting', 'observing', 'measuring', 'comparing', 'recording', and 'computing', in which the processes claimed were found to be non-statutory."

At 11: "In truth, the question of whether a step in a process is mental or physical seems to us to be one of fact rather than one of law and so should not be difficult of determination, but opinions sometimes differ even as to facts."

At 19: "When the steps of the claims are considered in the light of the explanation of their character so given, it seems to us that they are eliminated from the applicability of appellant's proposed rule 3, and fall within No. 2."

Citation: In Re Middleton (1948) 77 USPQ (BNA) 615; 35 CCPA 1166; 167 F.2d 1012

Jurisdiction: US Court of Customs and Patent Appeals

Facts: The appellant applied for a patent on a method of introducing reactants to a chemical process. The examiner rejected the application on the basis that the claims involved nothing more than the function of the apparatus disclosed in the application. The board upheld this ground of rejection.

Outcome: The court affirmed the rejection.

Ratio: A process which is the mere function of an apparatus is not patentable, and a process which cannot be carried out apart from a particular apparatus is the mere function of that apparatus.

Quotes:

Hatfield J

At  616: "It is well settled that a process which is the mere function of an apparatus is not patentable, and that a process which cannot be carried out apart from a particular apparatus is the mere functino of that apparatus. See In re Weston, 17 App. D.C. 431; In re Ernst et al, 21 CCPA (Patents) 1235, 71 F.2d 169, 22 USPQ 28; In re Wadman, 25 CCPA (Patents) 936, 94 F.2d 993, 36 USPQ 542, and authorities therein cited."

At 616: "It is clear that it would be impracticable to carry out the processes of the appealed claims by hand, and, although we have carefully considered the modifications suggested by counsel for appellant, we are of opinion that it has not been disclosed that the claimed processes could be satisfactorily carried out by any apparatus differing substantially from that disclosed in appellant's application. It follows that the appealed claims are drawn to the mere function of the apparatus disclosed in appellant's application and were properly rejected for the reason stated."

At 616: "Although the reaction involved may be a chemical one, the reaction is not distinguishable from the function of the machine disclosed in appellant's application, even though that machine, if used in some other manner, might function [617] differently."

Citation: In Re Yuan (1951) 38 CCPA 967; 188 F.2d 377

Jurisdiction: US Court of Customs and Patent Appeals

Facts: The appellant applied for a patent on a high speed airfoil having low drag characteristics. The process of determining the profile was a mathematical formula, and as a result the application was rejected on the grounds that as metal processes, the claims were not patentable. The Board upheld the rejection.

Outcome: The CCPA affirmed the decision of the examiner and board, holding that the claims were not patentable subject matter.

Ratio: Purely mental acts are not proper subject matter for protection under the patent statutes. The appellant's contribution was held to reside in the method of mathematical computation by which the profile of the airfoil was determined. This contribution involved purely mental steps dependant on the fomula, and as such was not patentable.

Quotes:

Garrett CJ

At 6: " Appealed claim 9 relates to a method of determining an airfoil profile having certain desired aerodynamic characteristics by mathematical procedures. Claim 8 purports to be a claim to the airfoil as an article of manufacture, and the airfoil is defined in terms of the mathematical computations involved in determining the profile which will meet the specified requirements."

At 6: "Appellant points out that it has previously been the custom in designing airfoil profiles to select a known one having characteristics approaching those desired and to modify it in the light of experience to produce a trial profile. A model employing this trial profile is built and tested in a wind tunnel and further modified as indicated by the results of the test... [7] This procedure is expensive and time-consuming.

Appellant's contribution as stated in his brief lies in a mathematical procedure by which the aircraft designer can start with a pressure distribution curve of the required characteristics and convert it into a velocity distribution curve... [8] Appellant states that by using his mathematical approach the final or near final form can be calculated in one operation so that much of the 'cut and try' procedure is eliminated. That appellant's mathematical approach can produce a practical embodiment is indicated by an affidavit..."

At 8: "None of the references cited states that an airfoil of specified performance characteristics can be achieved exactly, nor that any method is available other than the 'cut and try' method, well known and practiced in the prior art. None of the methods suggests anything that would eliminate the laborious 'cut and try' method...

In considering the foregoing statement [10] it must be borne in mind that all the so-called steps ... are purely mental steps dependent upon the mathematical formula which is recited in, and constitutes the heart of, the claims.

This court has deemed it to have been thoroughly established by decisions of various courts that purely mental steps do not form a process which falls within the scope of patentability as defined by statute."

At 13: "In the case of Cochrane v Deneer 94 US 780, 788, the Supreme Court of the United States said: 'A process is a mode of treatment of certain materials to produce a given result. It is an act, or series of acts, performed on the subject matter to be transformed and reduced to a different state or thing. If new and useful, it is just as patentable as is a piece of machinery...'

[14] Robinson on Patents, 1890 Edition, Vol 1, page 230, citing the Cochrane v Deneer case, supra, states: 'An art or operation is an act or a series of acts performed by some physical agent upon some physical object, and producing in such object some change either of character or of condition. It is also called a 'process,' or a 'mode of treatment;' and is said to require that 'certain things should be done with certain substances in a certain order'. It is so far abstract that it is capable of contemplation by the mind apart from any one of the specific instruments by which it is performed. It is so far concrete that it consists in the application of physical force through physical agents to physical objects, and can thus become apparent to the senses only in connection with some tangible instrument and object."

At 15: "Though an art embraces so wide a field of inventive skill, it includes only such operations as are capable of producing physical effects. Every invention, when applied according to the design of its inventor, must accomplish some change in the character or condition of material objects. This is as essential in a patentable art as in an instrument." (citing Robinson on Patents, supra).

At 15: "In Patentability and Validity by Rivise and Caesar, 1936 edition, at page 35 et seq... there is a discusiion of mental processes which have been held unpatentable in which it is said inter alia: 'There are a number of decisions which hold that [16] a process to be patentable must produce a change in the condition of matter, and that processes whose results can be apprehended only through the intellect are not patentable. As a result of these decisions it is considered to be well settled that processes involving mental operations and processes that merely produce a desired state of mind are not patentable. In this category are included methods and systems for transacting business, methods of training animals, methods of solving problems, and rules for playing games.'

Several cases are cited as illustrative of the text, and the authors then cite decisions of the Supreme Court which they say 'have sustained the validity of patents covering methods whose results can be apprehended only through the intellect." They state that the most important of these are The Telephone Cases, 126 US 1 (1887), and say "It is to be noted that the Supreme Court did not in these cases directly pass upon the patentability of mental processes, for the question was not raised by the parties to the litigation.'"

At 17: "The question of mental processes has not as yet been presented to the Supreme Court in such a manner as to call for a direct decision, and it is very doubtful whether even our highest tribunal would go so far at this late date to overturn the long line of adverse decisions." (citing Rivise and Caesar, supra)

At 22: "In affirming the examiner's rejection of the article claim, 8, the board said inter alia: 'The sole novelty in the claim, ... resides in the method of mathematical computation by which the profile of the airfoil is determined.'

Citation: In Re Walter D. Bernhart and William A. Fetter (1969) 57 CCPA 737

Jurisdiction: US Court of Customs and Patent Appeals

Facts: This appeal related to a rejection of a patent application for a method of and apparatus for making a 2 dimensional portrayal of a 3 dimensional object using a general purpose computer, a computer program, and a plotting device. The claims were rejected by the examiner on the grounds that "for patentability they were predicated on mental steps" as the claimed invention lay in the particular equations to be solved.

Outcome: The court upheld the rejection of the apparatus claim as obvious, but reversed the rejection of the method claim because they were not obvious and not an old combination. Both apparatus and method claims were held to be patentable subject matter.

Ratio: Although Congress intended principles and laws of nature to be unpatentable subject matter, all machines function according to laws of nature, and hence describing the operation of a machine by reference to an equation is not sufficient to make it unpatentable subject matter.

The mental steps doctrine was not relevant because mere use of the equations would not amount to infringement - use of a computer and plotting device in conjunction with the equation would be required.

A computer when programmed is a new machine to an unprogrammed computer, or at least a 'new and useful improvement'. The inability to physically see the difference is irrelevant.

Relevance: This early software patent case came down strongly on the side of the patentability of software. It touches on a couple of the recurring themes of the patentability of software debate, and is quite explicit in its standpoint. It could be used to better explain the pro-patent standpoint, and hence the basis of a useful critical analysis.

The part about a programmed computer being a new machine is particularly thought provoking.

Quotes:

Lane J

At 739: "The disclosure provides equations definitive of the geometric relationships between the three-dimensional coordinates of each point of interest and the corresponding two-dimensional coordinates which determine the location of that point on a planar drawing to be made... The disclosure then teaches that the original data can be written in a form acceptable as input into a general purpose computer; that ... the equation can be programmed into the computer; that an operator can select particular values for certain terms in the programmed equations, thereby determining the kind of portrayal to be produced; that the computer output will be a sequence of signals [740] representative of the locations of points on the desired portrayal; and that those signals can be used to control the operation of a plotting machine which will produce the desired view of the object on paper."

At 741: "The apparatus claims were further rejected by the examiner as failing to define a machine within the statutory class (35 USC 101)... The examiner indicated that the novelty in applicants' claims ... lay in the equations with which the computer was programmed, and that this is not a structural difference over the prior art. The examiner concluded that since programming was not structural, the claims were "predicated for patentability on mental steps. As to the method claim, the examiner similarly argued that since the novelty of the applicants' [742] claimed invention lay in the particular equations to be solved, the invention is non-statutory, citing Ex Parte Meinhardt 1907 CD 238; In Re Abrams, 33 CCPA 945, 188 F.2d 165, 89 USPQ 266 (1951); In re Yuan, 38 CCPA 967, 188 F.2d 377, 89 USPQ 324 (1951); and In re Middleton, 35 CCPA 1166, 167 F.2d 1012, 77 USPQ 615 (1948)."

At 742: "The board affirmed these rejections, but it reasoned with respect to the apparatus claims that the issues were analogous to the "printed matter" cases such as Ex parte Gwinn, 112 USPQ 439 (PO Bd. App. 1955). Regarding these cases the board said: 'The rationale of these cases appears to be that the law does not favor the granting of a patent for non-statutory subject matter by indirection, and this should be applicable to a mathematical formula or an algorithm as well as to printed text, when the real substance of the contribution by its originator clearly is unpatentable in its own right.

Turning to the apparatus claims ... we note that the only apparatus recited is the admittedly old computer and plotting machine and the sole distinction presented therein upon which patentability could be predicated is the identification in the claims of meaning which certain signals represent to the human mind, or the algorithm which the computer is to solve. We find that these claims are founded on non-statutory subject matter.'"

At 742: "Looking first at the apparatus claims, we see no recitation therein of mental steps, nor of any element requiring or even permitting the incorporation of human faculties in the apparatus. These claims recite and can be infringed only by,  a digital computer in a certain physical condition, i.e. electromagnetically set or programmed to carry out the recited routine... [743] We know of no authority for holding that a human being, suc as a draftsman, could ever be the equivalent of a machine disclosed in a patent application, and we are not prepared to so hold in this case."

At 743: "Nor are the 'printed matter' cases, cited by the board, supra, controlling as to these apparatus claims either on the facts or in principle. On their facts, those cases dealt with claims defining as the invention certain novel arrangements of printed lines or characters, useful and intelligible only to the human mind. Here the invention as defined by the claims requires that the information be processed not by the mind but by a machine, the computer, and that the drawing be done not by a draftsman but by a plotting machine here. Those 'printed matter' cases therefore have no factual relevance here.

A much closer question arises, however, when we consider the principle extracted by the examiner from the mental step cases and by the board from the printed matter cases. The principle may, we think, be fairly stated as follows: If, in an invention defined by a claim, the novelty is indicated by an expression which does not itself fit in a statutory class, ... then the whole invention is non-statutory since all else in the claim is old. We do not believe this view is correct under the Patent Act and the case law thus far developed."

At 743: "We think it is clear that in enacting section 101 Congress meant to exclude principles or laws of nature and mathematics, of which equations are an example, from even temporary monopolization by a patent. Accordingly, no rule of law should be announced which would impress a monopoly upon all uses of the equations disclosed by appellants here in their patent application. To allow the claims in issue here would not prohibit all uses of the equations disclosed... [A] member of the public would have to do much more than use the equations to infringe any of these claims. He would have to use them in the physical equipment recited in the claim."

At 743: "[A]ll machines function according to the laws of physics which can be mathematically set forth if known. We cannot deny patents on machines merely because their novelty may be explained in terms of such laws ... We should not penalize the inventor who makes his invention by discovering new and unobvious mathematical relationships which he then utilizes in a machine, as against the inventor who makes the same machine by trial and error and does [744] not disclose the laws by which it operates."

At 744: "There is one further rationale used by both the board and the examiner, namely, that the provision of new signals to be stored by the computer does not make it a new machine, i.e. it is structurally the same, no matter how new, useful and unobvious the result... To this question we say that if a machine is programmed in a certain new and unobvious way, it is physically different from the machine without the program; its memory elements are differently arranged. The fact that these physical changes are invisible to the eye should not tempt us to conclude that the machine has not yet been changed. If a new machine has not been invented, certainly a 'new and useful improvement' of the unprogrammed machine has been, and Congress has said in 35 USC 101 that such improvements are statutory subject matter for a patent."

At 744: "It may well be that the vast majority of newly programmed machines are obvious to those skilled in the art and hence unpatentable under 35 USC 103."