CITE:  553 F.2d 689
CMON:  May 1977
PLAIN: In re Deutsch, Murray L.
DEFND: United States Patent and Trademark Office
COURT: United States Court of Customs and Patent Appeals 
DATE:  May 5, 1977

This is an appeal from the decision of the Patent and Trademark Office Board
of Appeals (board) affirming the examiner's final rejection under 35 USC 101
of method claims 1, 6, and 8, all the claims in appellant's (Deutsch's)
application serial No. 86,296, filed November 2, 1970, and entitled
"Multi-Unit Optimization." We reverse.

  An algorithm with a specific application is a technologically useful art
  that is patentable.  Business method for operating a manufacturing plant
  is patentable.

JUDGE: MARKEY, Chief Judge


The Invention

Deutsch controls and optimizes the operation of a system of multi-unit plants
--e.g., oil refineries at different geographic locations.  The tools and
techniques needed to achieve similar operation of a unit within a single
plant were referred to by Deutsch as known in the prior art. {1} Deutsch
adapts that technology to the operation of a multi-plant system. The claims
on appeal are:

  1.  The method of operating a system of multi-plants which produce finished
  products from material derived from a plurality of sources at fluctuating
  costs for delivery to markets of variable prices, each of said plants
  having a different, unique, cost function in producing the products, said
  method comprising operating computing apparatus to automatically perform
  the steps of:

  (a) establishing optimized control points for process units in a first

  (b) substantially continuously feeding material and energy cost data,
  product price data, and variable process data to the optimized controls
  for said process units to maintain them at operating conditions dependent
  upon said data,

  (c) periodically modifying cost and process data fed to the control for
  said first plant to set operating points for said process units in said
  first plant dependent upon optimum operation of said first plant, and

  (d) periodically modifying cost and price data fed to the control for
  said system to set an operating point for said plant dependent upon
  optimum operation of said system.

  6.  In the control of a system of multiunit plants which produce finished
  products from materials derived from a plurality of sources of supply
  wherein costs and market prices are subject to time variations and process
  variables are controllable, each of said plants operating at a different
  cost function, the method which comprises operating computing apparatus
  to automatically perform the steps of:

  (a) closing an optimizing control loop on a process unit in a first plant,

  (b) substantially continuously feeding material input functions, product
  output functions, and variable process functions to said control loop for
  maintaining said process unit at an optimum operating condition dependent
  upon said functions,

  (c) periodically closing a control loop on said first plant to modify
  input and output functions fed to said control loop for said first plant
  periodically to establish an optimum plant operating point to set an
  operating point for said unit dependent upon optimum operation of said
  first plant, and

  (d) periodically, but at less frequent intervals, closing an optimizing
  control loop on said system to modify cost and price functions fed to
  the control loop for said system to establish an optimum operating point
  and to reset operating points for said first plant for said process
  unit dependent upon optimum operation of said system.

  8.  In the control of a processing system including a plurality of plants
  which cooperate to produce finished products from materials derived from
  a plurality of sources of supply wherein costs and market prices are
  subject to time variations and process variables are controllable, each
  of said plants operating at a different cost function, the method which

  supplying from at least one of said plants to another of said plants an
  intermediate product,

  generating input signals indicating the input and operating parameters
  of each of said plants,

  applying said input signals to plant-computer-controllers, one
  plant-computer-controller for each of said plants,

  operating said plant-computer-controllers in response to said input signals
  to automatically produce an operating point signal for each of said plants,

  operating each of said plants in response to the operating point signal
  from the respective plant-computer-controller,

  operating a system computer-controller in response to inputs representing
  the cost and price of materials and finished products to automatically
  produce system control signals which optimize operation of said system,

  periodically applying said system control signals to said
  plant-computer-controllers to modify said operating point signals
  to produce optimized operation of said system as a whole.

The Board

The board reversed a rejection under 35 USC 112, para. 1, finding the
disclosure sufficient "within its four corners", and without aid of
appellant's affidavits, because "one of ordinary skill in the art without
undue experimentation would be able to practice the invention" using
Deutsch's" disclosure with its formulas or algorithms * * * together
with Phister." {2}

The board affirmed the rejection of the claims as non-statutory under 35 USC
101. It held Gottschalk v. Benson, 409 U.S. 63 (1972) to be controlling
and cited In re Christensen, 478 F.2d 1392, (CCPA 1973), wherein we
followed Benson, quoting:

  The issue before us in the instant case is also a narrow one, namely, is
  a method claim in which the point of novelty is a mathematical equation
  to be solved as the final step of the method, a statutory method?  We
  follow the Supreme Court in concluding that the answer is in the
  negative. {3}

Because Deutsch admitted in his brief below that the incorporated Phister
reference "shows control and optimization of a multi-unit system employing
a particular algorithm or formula of his own," the board found Deutsch's
"point of novelty" to be his formula or algorithm. Consequently, the 
claims were held nonstatutory within the ambit of the cited authorities.


The sole issue is whether the methods recited in independent claims 1, 6,
and 8 constitute non-statutory subject matter under 35 USC 101. {4}


Mathematical problem-solving algorithms were held non-statutory subject
matter in Benson. {5} Benson was held to have claimed a method for programming
a general-purpose digital computer to convert signals from binary-coded
decimal form into pure binary form.  That method was not "limited to any
particular art or technology, to any particular apparatus or machinery,
or to any particular end use", 409 U.S. at 64, 93 S.Ct. at 254, and had
"no substantial practical application except in connection with a digital
computer", 409 U.S. at 71, 93 S.Ct. at 257.

In In re Chatfield, 545 F.2d 152 (C.C.P.A. 1976), the majority found the
"fundamental rationale" of Benson to be that a method encompassing all
practical use of a mathematical formula and the involved algorithm constituted
non-statutory subject matter. Chatfield's method, however, manipulated the
machines of a computing machine system for improved efficiency in executing
multiple processing programs.  Any algorithm used in his method was
incidental thereto.

Each of Deutsch's claimed methods, considered as an industrial process,
is even further removed from that of Benson than was that of Chatfield.
Each of Deutsch's methods is a method of operating a system of manufacturing
plants. Though Deutsch's specification teaches that the claimed methods may be
carried out by the use of known optimization techniques and apparatus, the
claimed system control is exercised externally to a specific optimization
or computing technique.  The "processing" programs, if such they are, are
incidental to the invention.

Unlike the abandoned claims, which included formulae and algorithms, the
claims on appeal are drawn to system operating methods in which system control
is applied at less frequent intervals than those at which individual plant
controls are applied.  Claim 6 states the concept explicitly and claims 1 
and 8 do so by calling for periodic application of the system control. 
Thus, the claimed invention lies in the timing and sequencing of control
application, not in the control means ("optimization technique") itself.

Nothing in the methods claimed by Deutsch preempts a mathematical formula,
an algorithm, or any specific computer program.  Assuming eventual issue
of the claims on appeal, the formulae, algorithms, and programs disclosed in
Deutsch's specification would be freely available to all and could be used
for any purpose other than the operation of a system of plants or their
equivalent, as spelled out in the appealed claims.

The manufacturing plants upon which Deutsch's claimed methods operate do
use computing "apparatus" to produce finished products from raw materials.
Deutsch's specification does disclose such apparatus as useful in carrying
out his methods, and computing "apparatus" includes a "programmed" digital
computer. The specification, however, encompasses alternative means adverted
to in appellant's Beam affidavit:

  The "computer-controllers" and "optimizer controller" referred to in [the]
  specification and drawings are not further characterized as to type except,
  on p. 15, line 1 where "memory capacity" is referred to; this is usually
  characteristic of programmable digital computers.  Further
  references to
  "programming" are on p. 15 of the disclosure, suggesting the inventor's
  intent to use a programmable digital computer for the optimization task.
  It is however fully conceivable that the (computers) could be "hardwired",
  i.e. that programming be implemented via particular circuit configurations.
  It is also conceivable that an analog computer could be used, in which
  case the memory referred to (and required, for the specified intermittent
  operation of the computer) could perhaps also be in analog form.
  [Emphasis in original.]

Deutsch's specification included the disclosure of viable alternatives to his
preferred optimization technique:

  Other optimizing systems and techniques are known in the art and may be
  employed as alternatives to that shown in Phister [sic] et al. For example,
  Patent 3,044,701 to Kerstukos et al. describes the method of optimization
  of a given process unit.

Thus, Deutsch's specification as a whole reflects, as the board found, the
full accomplishment of the specification function, i.e., the enabling of those
skilled in the art in the practice of the invention. As above indicated,
consideration of the claimed invention as a whole, in the light of the
specification, reflects no effort to preempt, and no resulting preemption of,
a mathematical formula, an involved algorithm, or a program.  Though ably
argued by the Solicitor, the questions of whether the programs fed to the
computers described in Deutsch's specification are "processing" programs,
and whether programs are themselves patentable, are thus not relevant on
this appeal.

A determination of the presence or absence of statutory subject matter must
rest upon the claimed invention considered as a whole, not upon selected
unclaimed portions of the specification. It was error, therefore, for the
board to focus upon one of Deutsch's disclosed optimization techniques
and to transpose it from the specification to the claims as though the
optimization technique were being claimed and preempted.

Because the claimed invention considered as a whole does not preempt a
mathematical formula, an involved algorithm, or a program per se, and
because it is within the technologically useful art of controlling and
optimizing a system of manufacturing plants to a particular end use, it
is a statutory "process" within the purview of 35 USC 101. In re Foster,
58 CCPA 1001, 438 F.2d 1011, 58 CCPA 1001 (1971).

The decision of the board is REVERSED.


{1}  Phister, Jr., et al. (Phister) U.S. Patent No. 3,079,079 and Kerstukos
et al., U.S. Patent No. 3,044,701.

{2} A paper entitled "SPECIFICATION OF SERIAL NO. 86,296 AS AMENDED" was
attached to a supplemental brief submitted after the examiner's answer but
prior to the board's decision.  That amended specification contains no
"formulas or algorithms." Because the status of that paper is unclear from
the record and because it was not apparently considered by the board,
we do not consider it here.

{3} In Chatfield, infra, 545 F.2d at 158, decided subsequent to the
board's decision herein, we clarified the passage of Christensen, quoted
by the board:
   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.

{4} Deutsch acknowledged below that Phister teaches control and optimization
of a unit in a multi-unit plant. The claimed methods call for similar control,
but for an entire system of multi-unit plants. No rejection under 35 USC 103,
however, was entered below.  Hence no such rejection may be considered by us
at this stage in the prosecution process.

{5} Methods of doing business and mental steps were discussed at oral
argument.  Deutsch's methods are not methods of doing business. See
In re Wait, 22 CCPA 822, 73 F.2d 982, 22 CCPA 822 (1934). They do not
merely facilitate business dealings.  That translation of business data
into mathematical language intelligible to computers is employed in
carrying them out does not make a method of automatically controlling
a system of manufacturing plants a method of "doing business". For that
reason, also, the doctrine of mental steps is inapposite.  See In re
Musgrave, 57 CCPA 1352, 431 F.2d 882 (1970); In re Prater, 56 CCPA 1381,
415 F.2d 1393 (1969).