CITE: 545 F.2d 152
CMON: November 1976
PLAIN: In re Chatfield, Glen
DEFND: United States Patent and Trademark Office
COURT: United States Court of Customs and Patent Appeals
DATE: November 18, 1976
HISTORY:
This is an appeal from the decision of the Patent and Trademark Office Board
of Appeals affirming the rejection of claims 1-6 and 9-16, constituting all
of the claims in appellant's application serial No. 243,951, filed April 14,
1972, entitled "Method of Operating a Multiprogrammed Computing System".
We reverse.
SUMMARY:
Operating system algorithm not mathematical and therefore patentable.
JUDGE: MARKEY, Chief Judge.
DECISION:
The Invention
Chatfield's invention resides in the field of computer technology and
specifically in the area of multiprogrammed computer systems. Computer
systems generally include one or more central processing units (CPU's) {1}
and one or more peripheral units, e.g., input-output (I/O) devices, card
readers, etc. In multiprogram systems, the CPU and the peripheral resource
equipment may process more than one program concurrently. A problem arises
when more than one program requires the use of the same piece of equipment
at the same time.
Three earlier solutions of the problem had been employed. One physically
builds priority levels into the CPU, so that one particular program will
have priority over another particular program. A second solution assigns
each program a priority. A disadvantage encountered in both is that once
the program begins to run, the relative priority is fixed. The third solution
specifically writes the programs to take advantage of the priority-assignment
capabilities of the particular system used. The disadvantage there
encountered is that specific programs must be written for each particular
system. If the system is changed, the programs must be changed.
Chatfield's novel solution dynamically evaluates and reassigns program
priorities as the programs execute. No prior art was cited against the
appealed claims and, accordingly, Chatfield's invention must be considered
to have been new and unobvious.
The method embraced by the appealed independent claims involves operating a
computing machine system for an interval, and accumulating resource use data
{2} for that operating interval. Periodically, the processing operation
is halted and the use data are analyzed. That analysis determines the
priorities, and consequent resource access, for the next period of operation.
The processing operation is resumed for another period of time, use data
accumulated, operation halted, data analyzed, priorities and access
determined and assigned, and so on, repetitively. The net effect is an
overall gain in operating efficiency, i.e., an increased "throughput".
The appealed dependent claims describe several variant mathematical
algorithms useable in analyzing the resource use data and regulating
resource access priority.
Independent claim 1, and dependent claims 2 and 3, are representative and
are reproduced below:
1. A method of operating a computing system upon more than one processing
program concurrently for improving total resource utilization, said
computing system comprising at least one central processing unit, having
a logic and main memory function and an interrupt capability, and a
plurality of peripheral resources capable of functioning in parallel
with the central processing unit, comprising steps for:
(1) accumulating system utilization data for at least one processing
program for at least one resource, said system utilization data
comprising resource activity and/or resource degradation data;
(2)(a) at spaced intervals interrupting the processing programs and
analyzing the system utilization of at least one processing program;
(2)(b) based on this analysis regulating resource access by assigning an
individual resource access priority and/or preventing resource access
altogether in an unlike manner to at least two resources for at least
one processing program to increase thruput;
(3) resuming the operation of the computing systems on the processing
programs; and,
(4) continually repeating steps (1) to (3).
2. A method according to Claim 1 in which the regulation in step (2)(b)
comprises regulating resource access substantially to favor the more
overlapped programs, said overlapped programs being those that can use
two or more resources in parallel.
3.A method according to Claim 2 in which processing program resource access
regulated in step (2) is determined according to the following algorithm:
if CPU activity >= the Maximum Peripheral activity
CPU PRIORITY = (SUM(1..n) PERIPHERAL ACTIVITY) / CPU ACTIVITY
where n is equal to the number of peripherals measured, where PERIPHERAL
ACTIVITY(i) is the activity of the ith peripheral resource, and where
CPU ACTIVITY is the activity of the C.P.U.
or if CPU activity < the Maximum Peripheral activity
CPU PRIORITY = n + MAXIMUM PERIPHERAL ACTIVITY/TOTAL RESOURCE ACTIVITY,
where n is equal to the number of peripherals measured, where MAXIMUM
PERIPHERAL ACTIVITY is the total activity on the most active peripheral
resource, and where TOTAL RESOURCE ACTIVITY is the sum of all C.P.U. and
all peripheral resource activities, and all PERIPHERAL RESOURCE ACCESS
PRIORITIES are assigned inversely to the CPU priorities.
The board took the position that the claims are drawn to non-statutory
subject matter under the Supreme Court's decision in Gottschalk v. Benson,
409 U.S. 63, 93 S.Ct. 253 (1972). In sustaining the examiner's rejection
under 35 USC 101, the board briefly reviewed our opinions in In re Musgrave,
57 CCPA 1352, 431 F.2d 882, (1970), and In re Benson, 58 CCPA 1134, 441
F.2d 682 (1971), on the question of non-statutory subject matter and
concluded that the Supreme Court had "cast aside" the reasoning in those
opinions. Although the examiner had referred to our opinion in In re
Christensen, 478 F.2d 1392 (CCPA 1973), in which this court affirmed
the rejection in view of Benson, the board did not consider Christensen
pertinent.
Arguments
Chatfield urges that the Supreme Court in Benson foreclosed only the
patentability of the particular program then before the court, not
patentability of computer programs in general. Chatfield then argues
that, unlike those in Benson, the instant claims (1) are not drawn solely
to a mathematical formula or to an algorithm for solving that formula; and
(2) are specifically drawn to a particular end use. His claims, Chatfield
contends, are drawn to a new use of a known machine, i.e., to a patentable
process as defined in 35 USC 100(b).
The solicitor argues that the Supreme Court's reference in Benson to "these
programs" must be construed as prohibiting the patentability of a "program"
such as that presently claimed. The solicitor further urges that because
the present claims include a mathematical formulation, and an algorithm
for solving it, they are similar to those held to have been drawn to
non-statutory subject matter in Benson. The solicitor contends that the
antecedent steps of the claims merely refer to gathering information
preparatory to processing the algorithm and that the "end use" limitations
depend upon the existence of other specific processing programs requiring
priority assignment. In this respect, the solicitor's basic contention
is that Chatfield's claims are no more limited than were the claims in
Benson.
OPINION
Issue
Unlike the apparatus claims in In re Noll, 545 F.2d 141, (CCPA 1976),
decided this date, the appealed claims are drawn to a "method of operating
a computing system." Although Chatfield's method of operating a computing
machine system adjusts priorities of computer processing programs, no
processing program, by itself, is claimed.
The claimed method operates to make the computing machine system more
efficient in executing a plurality of processing programs. Any algorithm
developed to be used in the claimed method would only guide the flow of the
processing programs through the computing machine system and would not provide
the informational input of the processing programs. Thus the issue is not
whether a computer processing program, claimed in method terms, is statutory
subject matter under 35 USC 101.
Because nothing in the statute or in prior judicial opinions either
authorizes or precludes patent protection of "computer programs", the mere
labeling of an invention as "a computer program" does not aid in decision
making. Of course we follow the Supreme Court in our decisional process.
In so doing, however, we take care not to unduly extend that Court's
pronouncements beyond their expressed limits. The Supreme Court having
expressly refused to extend its Benson holding to computer programs
generally, 409 U.S. at 71, 93 S.Ct. 253, we find no warrant for our doing
so. In view of the Supreme Court's expression in Benson that the involved
mathematical formula had "no substantial practical application except in
connection with a digital computer", 409 U.S. at 71, 93 S.Ct. 253, the
fundamental rationale we glean from Benson is that a patent containing
Benson's claims would have preempted all practical use of both the
underlying mathematical formula and the involved algorithm. {3}
The solicitor suggests that the Supreme Court, in its reference in Benson to
the question of whether the patent laws should be extended to cover "these
programs" [ 409 U.S. at 72, 93 S.Ct. 253] and to the President's Commission
on the Patent System, intended to include all computer programs within the
phrase "these programs." {4} We do not agree. "It is a maxim, not to be
disregarded, that general expressions, in every opinion, are to be taken in
connection with the case in which these expressions are used." Cohens v.
Virginia, 19 U.S. (6 Wheat.) 264, 398 (1821). {5} If, however, doubt should
remain with respect to the solicitor's suggestion, we think it fully removed
by the Supreme Court's unanimous characterization of its holding in Benson
as "limited" in Dann v. Johnston, 425 U.S. 219, 224, 96 S.Ct. 1393 (1976).
The unique technological aspects of digital computers and the changes wrought
in their operation by associated software programs, coupled with the limited
number of precedential court decisions, illustrate the undesirability of
deciding the issue of patentability by mere use of the label "computer
program". We join the Supreme Court's suggestion in Benson that those who
seek to preclude the patenting of all software or "computer program"
inventions submit an appropriate proposal to the Congress. In the meantime,
we must and will decide such cases on the law as we find it. In the present
case we find no basis for treating methods of operating computing machine
systems differently from methods of operating any other form of machine
system.
The issue before us is thus whether these particular claims define statutory
subject matter. {6}
Analysis
The statute, 35 USC 101, provides that new and useful processes and
improvements thereof are patentable subject matter. A "process" is defined
in 35 USC 100(b) as a "process, art or method, and includes a new use of
a known process, machine, manufacture, composition of matter, or material."
Some inventions, however meritorious, do not constitute patentable subject
matter, e.g., printed matter, In re Miller, 57 CCPA 809, 418 F.2d 1392
(1969); methods of doing business, In re Wait, 22 CCPA 822, 73 F.2d 982
(1934); purely mental steps, In re Prater, 56 CCPA 1381, 415 F.2d 1393
(1969), In re Musgrave, 57 CCPA 1352, 431 F.2d 882 (1970); naturally
occurring phenomena or laws of nature, O'Reilly v. Morse, 56 U.S. (15 How.)
62 (1853); a mathematical formula and the algorithm therefor,
Gottschalk v. Benson, 409 U.S. 63, 93 S.Ct. 253 (1972).
Because Chatfield's claim 1 defines the invention as a "method of operating
a computing system upon more than one processing program * * * comprising",
the claim prima facie is directed to a "method" and the wording of the
claim would bring it within the statutorily defined "process" category.
However, a claim to a "method" or "process" may fall within the literal
terms of the statute and yet not define proper subject matter for patent
protection. Benson and Christensen, supra. The question is whether the
claimed method falls within either of two categories judicially determined
to be non-statutory, i.e., claims drawn to mathematical problem solving
algorithms or to purely mental steps. We hold that the present claims
fall within neither. {7}
Chatfield's inventive contribution, as set forth in the appealed claims and
described above, is a unique method for improving the operating efficiency
of a system of electro-mechanical machines, i.e., a computing system.
No formula or algorithm appears in Chatfield's independent claims. The
dependent claims set forth a number of different algorithms which may be
used in carrying out intermediate steps in the overall process of operating
the computer system. We faced a similar situation in In re Bernhart,
57 CCPA 737, 417 F.2d 1395 (1969). Bernhart's apparatus claims included
a mathematical equation. The examiner contended that the point of
patentability of the invention lay in the equation itself, the remainder
of the subject matter in the claims being admittedly old. Because the
point of patentability was non-statutory, the examiner argued, the claims
failed to define statutory subject matter. The examiner referred to
"mental steps," and the board referred to "printed matter" as the
non-statutory subject matter. We found neither relevant. We did, however,
consider the principle extracted by the examiner and the board from
earlier "mental step" and "printed matter" cases to be 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 (in this case not a machine or
a part thereof), then the whole invention is non-statutory since all else in
the claim is old." (57 CCPA at 743, 417 F.2d at 1399). In rejecting that
view as incorrect, we said:
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
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 those equations. As we have
pointed out above, 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. Moreover,
all machines function according to 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
if we are to obey the mandate of Congress that a machine is subject
matter for a patent. 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 not disclose the laws by
which it operates. The mandate of Congress in 35 U.S.C. 103 is that
"patentability shall not be negatived by the manner in which the
invention was made." For the foregoing reasons, we conclude that under
the statute the apparatus herein claimed constitutes statutory subject
matter. [ 57 CCPA at 743-44, 417 F.2d at 1399-1400].
We have thus specifically rejected the broad notion that if a portion of
a claim be non-statutory the whole claim is ipso facto non-statutory.
The requirement is that the invention set forth in a claim be construed
as a whole.
In In re Christensen, 478 F.2d 1392 (CCPA 1973), we were called upon
to decide whether method claims reciting a mathematical equation defined
statutory subject matter. The claims in Christensen defined the invention as
a "method of determining the porosity of a subsurface formation in situ" by
solving a particular equation. The invention comprised gathering data and
using it to solve a particular equation. In affirming the rejection of the
claims, we followed the tenet of Benson that solving an equation constituted
non-statutory subject matter. We determined that the several steps antecedent
to the solving of the equation in Christensen's claims merely established the
variables for the equation and did not suffice to render the claimed method
patentable as a whole. Our reference in Christensen to the mathematical
equation as being "at the point of novelty" does not equate to a holding
that a claim may be dissected, the claim components searched in the prior
art, and, if the only component found novel is outside the statutory
classes of invention, the claim may be rejected under 35 USC 101. That
procedure is neither correct nor within the intent of Congress, for
the reasons we stated in Bernhart.
As above indicated, Chatfield's independent claims contain neither a
mathematical formula nor a mathematical algorithm. Mathematical algorithms
appear only in the dependent claims and do not themselves constitute the
method per se. The dependent claims are drawn to several different
mathematical formulae and algorithms and, conceivably, numerous other
algorithms could be developed and used in the novel method. The dependent
claims are not, of course, claims to the mathematical algorithms appearing
therein but are claims to the method of the independent claims in which
the analysis steps are carried out by use of the specified algorithm.
A patent issuing on Chatfield's claimed method would thus preempt neither
the mathematical formulae nor the algorithms specified in such a patent,
unless used in the performance of the entire claimed method. Such a patent
would thus not be "in practical effect * * * a patent on the algorithm
itself." See note 4, supra.
The appealed claims, analyzed as a whole, simply define a novel method for
operating a particular machine system in a particular mode. The method is
claimed in a series of discrete method steps of the type one might expect to
find governing the operation of a system of non-computing machines, e.g., a
milling machine system.The claimed process does not end with solution of a
particular equation, as in Christensen. Nor are the appealed claims so
"abstract and sweeping" as those in Benson, being limited to the particular
operation of a computing machine system as specified in the claims. Thus,
the claimed method differs materially and significantly from the invention
in either Christensen or Benson. We therefore are not persuaded to discount
Chatfield's novel contribution to the useful arts as outside the field of
endeavor intended to be encouraged by our patent laws.
The decision of the board is REVERSED.
DISSENT:
RICH, Judge, dissenting, with whom LANE, Judge, joins.
Are programs for general-purpose digital computers patentable subject matter
under 35 USC 101?
Such programs are "software" in the jargon of the computer technicians.
More generally, therefore, the question is: can software ever be patented?
It is a question of whether it falls within the statutory classes of
patentable subject matter which are recited in 101, which mentions neither
programs nor software. The reason for this lacuna is clear and not unusual;
the language of 101 was developed long before computer technology evolved.
The statute was, of course, written for the future and intended to
encompass future inventions in unknown technologies or "useful arts",
mentioned in Article 1, section 8 of the Constitution. See In re Waldbaum,
59 CCPA 940, 457 F.2d 997 (1972), in which we held a program, claimed as
method, to be statutory subject matter.
The categories of patentable inventions named in 101 are an evolution from
the first patent act of 1790 where they were named as "any useful art,
manufacture, engine, machine, or device, or any improvement therein." The
1793 act changed it to "any new and useful art, machine, manufacture, or
composition of matter, or any new and useful improvement on any art,
machine, manufacture, or composition of matter." The 1836 act, which
established the first Patent Office, retained the identical language.
The Consolidated Patent Act of 1870 (@ 24) simplified it to "any new and
useful art, machine, manufacture, or composition of matter, or any new
and useful improvement thereof," language which was repeated in the
Revised Statutes of 1874 (@ 4886) and which remained the same until 1952.
The only change in the wording made by the Patent Act of 1952 - which was
not a change in substance - was the replacing of the word "art" by the
word "process" (@ 101) coupled with a new definition in 100(b) stating:
"The term 'process' means process, art or method, and includes a new use
of a known process, machine, manufacture, composition of matter, or
material", a mere modernization of language and a declaration of existing
case law. {1'}
It has never been otherwise than perfectly clear to those desiring patent
protection on inventions which are new and useful programs for general purpose
computers (software) that the only way it could be obtained would be to
describe and claim (35 USC 112) the invention as a "process" or a "machine."
Method is the equivalent of process by statutory definition; apparatus is the
equivalent of machine by long-established custom. Webster defines apparatus
as including machinery. In patent law, machine and apparatus have for over a
century been interchangeable words. See Corning v. Burden, 56 U.S. 252, 267
(1853); In re Prater, 56 CCPA 1381, n. 11, 415 F.2d 1393, n. 11 (1969). As
I have previously said in my dissenting opinion in In re Johnston,
502 F.2d 765, 772 (1974), given an invention which is in essence a new
program for a general-purpose digital computer, a competent patent
draftsman can readily define the invention as either a process or a machine,
or both. This has been demonstrated time and again by the computer
program cases which have come to this court.
In the first such case, In re Prater, supra, we had both process or method
and apparatus or machine claims. It was in that case that we stated an
incontrovertible fact and a principle of patent law which, until recently, we
have consistently since followed, to the effect that a new program makes an
old computer into a new machine, as follows:
In one sense, a general-purpose digital computer may be regarded as but
a storeroom of parts and/or electrical components. But once a program
has been introduced, the general-purpose digital computer becomes a
special-purpose digital computer (i.e., a specific electrical
circuit with or without electro-mechanical components) which, along
with the process by which it operates, may be patented subject, of
course, to the requirements of novelty, utility, and non-obviousness.
Based on the present law, we see no other reasonable conclusion.
[Footnote 29. Emphasis mine.]
We applied that principle in a long line of cases that came to us as a
result of the policy of the Patent Office to deny patentability to program
inventions on the ground of non-statutory subject matter - and on any
other ground it could find.
Finally, we came to the two software cases in which our decisions were
reviewed by the Supreme Court, In re Benson, 58 CCPA 1134, 441 F.2d 682
(1971), rev'd., Gottschalk v. Benson, 409 U.S. 63, 93 S.Ct. 253 (1972);
and In re Johnston, 502 F.2d 765 (1974), rev'd., Dann v. Johnston,
425 U.S. 219, 96 S.Ct. 1393 (1976). Benson involved two method claims and
the sole question was whether they were directed to non-statutory subject
matter. Johnston involved five apparatus claims directed to "machine
systems." Johnston sought to distinguish his case from Gottschalk v. Benson
on the ground that Benson's claims were for process and his were for
apparatus, which is no distinction at all in the computer program field
because of the option the specification writer has to cast the claims
in either format. Johnston persuaded a majority of this court to his
point of view. I dissented on the point, saying:
I conclude that the Benson decision requires us to affirm the rejection
of claims 20-24 as directed to non-patentable subject matter under
35 USC 101.
In the present case and in In re Noll, decided concurrently, a differently
constituted majority of this court is again finding computer program
inventions to be subject matter which is patentable within the
contemplation of 101, notwithstanding the Supreme Court's Benson opinion.
Clearly the reason for this is that the Benson opinion is open to different
interpretations with respect to the patentability of software. That should
have been obvious from the division in this court which occurred in
Johnston, yet nothing was said in Dann v. Johnston to clear up the
ambiguity because the Court avoided discussing the 101 patentable
subject-matter issue which was before it, preferring to reverse this court
on the single ground of 103 obviousness. The seven justices participating
in the unanimous opinion said in its second paragraph:
Petitioner and respondent, as well as various amici, have presented lengthy
arguments addressed to the question of the general patentability of computer
programs. Cf. Gottschalk v. Benson, 409 U.S. 63 (1972). We find no
need to treat that question in this case , however, because we
conclude that in any event respondent's system is unpatentable on
grounds of obviousness. 35 U.S.C. 103. [Emphasis mine.]
The Court did not leave the statutory subject matter question strictly alone,
however, because, in reciting the background of the issues (Part II of
opinion) and the decisions below, the Court thus characterized its Benson
decision:
In Benson, the respondent sought to patent as a "new and useful process",
35 U.S.C. 101, "a method of programming a general-purpose digital computer
to convert signals from binary-coded decimal form into pure binary form."
409 U.S., at 65. As we observed, "[the] claims were not limited to any
particular art or technology, to any particular apparatus or machinery,
or to any particular end use." Id., at 64. Our limited holding, id., at
71, was that respondent's method was not a patentable "process" as that
term is defined in 35 U.S.C. 100(b).
That brief observation adds considerably to the already existing ambiguity
inherent in the Benson opinion. Does it say Benson's two claims were held
non-statutory only because they were not limited to any particular
technology, apparatus, or end use?
Does the Supreme Court not regard data processing as a technology,
data-processing equipment as apparatus, or the necessary conversion in such
apparatus of binary-coded-decimal to pure binary signals as an end use?
The answers to these questions are very important because in the instant
case, and in In re Noll, the invention relates only to the operation of
data-processing equipment ("computers") without reference to any other "
technology," "apparatus," or "end use." How, then, can this case be
distinguished from Benson even when the narrowest possible view of that
decision is taken? Just how "limited" was the holding in Benson supposed
to be? Benson's claims were in fact limited to a method carried out in
data-processing apparatus (including a "reentrant shift register," claim 8)
and to "A data processing method" (claim 13). Benson did not claim a
"formula."
In the Benson opinion, the Court states at the outset that "The question is
whether the method described and claimed is a 'process' within the meaning of
the Patent Act." (Sections 101 and 100(b) were quoted in a footnote to that
statement.) But nowhere in the Benson opinion have I ever, after many
attempts, been able to find an express answer to that question, for which
reason, as more fully explained in my dissenting opinion in Johnston, supra,
I have turned to the competing contentions which were presented to the
Supreme Court in Benson, to its decision that we erred in holding the
claims statutory, which was our only holding, and have concluded that
the members of the Court participating in that decision were unanimous
in holding that programs for general-purpose digital computers, at least
when claimed as a "process", are not within the meaning of that category
of inventions in the statute. It is my own view that claiming as a
"machine" instead of as a "process" is no distinction at all because
it is merely a drafter's choice.
My colleagues of the majority take a narrower view of Benson and arrive
at an opposite result in these two new cases, as another majority did in
Johnston. This, to me, signals an urgent need to settle the question of
patent protection for software by higher authority than this court so
that the Patent and Trademark Office, the Federal judiciary as a whole,
and the data-processing industry (hardware and software both) may know what
the law on software patentability is. It is a socioeconomic issue with
an impact of considerable magnitude, particularly on the practical
operation of the Patent and Trademark Office. It is obviously not going
to be finally decided in this court. Two Commissioners (Gottschalk and
Dann) have obtained review of our decisions in the Supreme Court and in
both instances (Benson and Johnston) obtained reversals; but here we are
in two more cases, three-to-two, reversing findings by the Office that
program inventions are non-statutory under 101. It seems to me like
taking the problem of school segregation to court on a case-by-case basis,
one school at a time.
FOOTNOTES:
{1} The central processing unit or units perform the main logic and memory
functions for the system.
{2} The resource use data include resource activity data and data respecting
resource degradation, i.e., the inefficiency resulting from more than one
program competing for the same resource.
{3} Though the Supreme Court stated in Benson that the process there involved
could be performed without a computer or other apparatus, 409 U.S. at 67, 68,
it recognized that conversion to pure binary numerals was the only practical
application of the formula and algorithm, and that binary numerals have their
only practical application in connection with a digital computer, and thus
that all practical uses of the formula and algorithm were in effect
preempted by the claims. 409 U.S. at 71-72, 93 S.Ct. 253.
{4} The dissenting opinion in Noll concludes that Benson stands for the
proposition that computer programs are not statutory subject matter under
section 101, basing its conclusion on language in Benson that "[if] these
programs are to be patentable, considerable problems are raised which only
committees of Congress can manage * * *." (Emphasis added and footnote
omitted.) However, "these programs" refers to the specific type of claimed
program involved in Benson and not to computer programs in general, as
clearly evidenced by the immediately preceding paragraphs of the Benson
opinion (409 U.S. at 71-72, 93 S.Ct. at 257):
It is argued that a process patent must either be tied to a particular
machine or apparatus or must operate to change articles or materials to a
"different state or thing." We do not hold that no process patent could
ever qualify if it did not meet the requirements of our prior precedents.
It is said that the decision precludes a patent for any program servicing
a computer. We do not so hold. * * * What we come down to in
a nutshell is the following.
It is conceded that one may not patent an idea. But in practical effect
that would be the result if the formula for converting [binary coded
decimal] numerals to pure binary numerals were patented in this case.
The mathematical formula involved here has no substantial practical
application except in connection with a digital computer, which means
that if the judgment below is affirmed, the patent would wholly pre-empt
the mathematical formula and in practical effect would be a patent on
the algorithm itself.
It may be that the patent laws should be extended to cover these
programs, a policy matter to which we are not competent to speak.
The President's Commission on the Patent System rejected the proposal
that these programs be patentable * * *. [Emphasis added
and footnotes omitted.]
{5} Over-concentration on the word "algorithm" alone, for example, may
mislead. The Supreme Court carefully supplied a definition of the particular
algorithm before it, i.e., "[a] procedure for solving a given type of
mathematical problem." The broader definition of algorithm is "a step-by-step
procedure for solving a problem or accomplishing some end." Webster's New
Collegiate Dictionary (1976). It is axiomatic that inventive minds seek and
develop solutions to problems and step-by-step solutions often attain the
status of patentable invention. It would be unnecessarily detrimental to our
patent system to deny inventors patent protection on the sole ground that
their contribution could be broadly termed an "algorithm."
{6} We are not unmindful of literature discussing broad public policy
considerations involved in the question of software patent protection.
See, e.g., Keeffe & Mahn, Protecting Software: Is It Worth All The Trouble?,
62 A.B.A.J. 906 (1976). We are limited, however, to determination of issues
presented in specific cases. Though we decide the present case, as we must,
in the light of our best understanding of the statute and prior decisions
of the Supreme Court, we join our brother Rich's scholarly call for
definitive guidance by higher authority.
{7} The "formula-algorithm" category is treated in the text. We have
extensively reviewed the doctrine of "mental steps" in In re Prater, 56 CCPA
1381, 415 F.2d 1393 (1969) and In re Musgrave, 57 CCPA 1352, 431 F.2d 882
(1970), and find no need to repeat that analysis herein. It is enough to
say that we find the claims herein to be limited to a method of operating
a machine system.
{1'} I make this statement as a matter of personal knowledge as one of the
drafters.Many lawyers have thought the definition added new patentable subject
matter but that is not so. New uses claimed in the form of process or method
had long been deemed patentable by the Patent Office and the courts. See
In re Waldbaum, supra.