CITE: 431 F.2d 882
CMON: October 1970
PLAIN: In re Musgrave
DEFND: United States Patent and Trademark Office
COURT: Court of Customs and Patent Appeals
DATE: October 8, 1970
HISTORY:
Musgrave, Corrections for Seismic Data Obtained from Expanding-Spread,
claims 1 to 14, 17 to 39, 47 to 58, and 60 of application allowed.
Appeal from board of Appeals of the Patent Office. Application for
patent of Albert W. Musgrave, Serial No. 496,735, filed Sept. 30, 1965;
Patent Office Group 220. From decision rejecting claims 1 to 14, 17 to 39,
47 to 58, and 60, applicant appeals.
Reversed.
SUMMARY:
"Mental" is vague. Process, to be patentable, can have mental steps
not applied to physical objects. Supercedes Prater, Berhart, Mahoney.
JUDGE: RICH, Judge
Before RICH, ALMOND, BALDWIN, and LANE, Associate Judges, and ROSENSTEIN,
Judge, United States Customs Court, sitting by designation.
Baldwin, Judge, concurring with opinion.
DECISION:
This appeal is from the decision of the Patent Office Board of Appeals {1}
affirming the rejection of claims 1-14, 17-39, 47-58 and 60 of application
serial No. 496,735, filed September 30, 1965, and entitled "Corrections
for Seismic Data Obtained from Expanding-Spread." Six apparatus claims
have been allowed.
We reverse.
The Invention
The principal object of appellant's invention is to obtain seismograms
which delineate with a high degree of precision the nature of the
subsurface formations in the earth's crust.
Background
Appellant's brief states:
A seismogram is a record of earth vibrations. In a reflection seismic
survey, dynamite is detonated at a shotpoint, as in a shallow borehole,
for the generation of seismic energy. A part of the downwardly traveling
energy is reflected upwardly at each subsurface interface. A reflecting
interface is a region where there is a change in the velocity [of the
seismic energy] as between adjoining layers of the earth, such as a layer
of rock (high velocity) and a layer of sand (low velocity). In addition
to change in velocity of the seismic energy in the earth due to the
velocity characteristics of layers, the velocity through the earth
increases with depth.
At the earth's surface, the upwardly reflected energy is detected by a
plurality of seismic detectors or geophones. These extend linearly along
a line of exploration. After each explosion of dynamite [along the line
of exploration], each detector over a period of several seconds generates
a plurality of electrical signals representative , inter alia, of
reflected energy, multiples, and noise due to random earth movements
unrelated to the effect of the reflected seismic energy. [Bracketed
insertions ours.]
A seismogram is produced by recording, on a magnetic tape for example,
the electrical signals generated by each detector. Ordinarily, a "family"
of seismograms is produced for each dynamite blast-there being one
seismogram for each detector. A plurality of dynamite blasts along a line
of exploration will therefore yield a plurality of families of seismograms.
Appellant refers to two ways in which the detectors may be arranged with
respect to the shotpoints along the line of exploration, one being referred
to as a "split-spread" and the other as an "expanded-spread". In a
split-spread, the shotpoint is located in the center of a spread of
detectors. In an expanded-spread the shotpoint is located on the line
of exploration but at some distance from the spread of detectors. It is
unnecessary for an understanding of this opinion to be aware of further
details of these arrangements. It will suffice to note that appellant
uses both arrangements simultaneously to produce two families of
seismograms for each dynamite blast.
To render meaningful the seismogram produced as described above, it is
necessary to apply to it a so-called "weathered-layer correction" and
a so-called "normal move-out correction." With respect to the former,
appellant explains that at the earth's surface there is an unconsolidated,
weathered layer (commonly called "soil") of variable depth and inclination.
The velocity of seismic energy passing through this layer is much lower
than in the consolidated layer just beneath it. Since the weathered layer
is of variable thickness and of low velocity, it is necessary to subtract
the travel time of the seismic energy in the weathered layer from the
total travel time.
Because of the high velocity contrast which exists between the base of
the weathered layer and the adjoining consolidated layer, some of the
seismic energy produced at the shotpoint will travel downward to the
interface of the weathered and consolidated layers and be reflected
upward to the detectors. The time-occurrence of the first reflection on
the seismogram (time-zero being the instant the dynamite is detonated)
provides the time-correction needed to eliminate the effect of the
weathered layer on the time or depth measurements of interest.
A normal move-out correction is necessary to compensate for the
geometrical spreading of the detectors. Since the measurements of interest
are depths below the earth's surface, the identification of reflections
in terms of vertical travel time is desired. Obviously, the travel path,
and therefore travel time, from a shotpoint to a given reflecting interface
or "horizon" and then to a given detector is greater for a detector
located some distance from the shotpoint than for a detector directly
adjacent the shotpoint. In correcting a family of seismograms for normal
move-out, however, it must also be taken into account that the effect of
geometrical spreading of the detectors decreases with increases in the
depth from which a given seismic wave is reflected. Therefore, normal
move-out corrections must be "dynamic"; that is, the magnitude of each
correction for each detector must be varied inversely with the depth
from which a wave is reflected-the greater the depth the less the
correction. Stated differently, the longer the time-occurrence of a given
wave is from time-zero on a seismogram, the less it is corrected for
normal move-out.
Correction of a family of seismograms for the weathered-layer and normal
move-out yields, in effect, a new family of seismograms on which the
positions of the representations of seismic waves relative to one another
more nearly correspond to the relative depths of the horizons from which
those waves were reflected. Perfect corrections would cause all the
reflection signals corresponding to a given horizon to be lined up across
the set of seismograms. However, since the corrections are ordinarily
somewhat imperfect, further adjustments are made by reproducing the
seismograms as traces on an oscilloscope and manipulating knobs on the
oscilloscope to bring the reflections into horizontal alignment.
Refinement of this "new" seismogram is accomplished by identification
and elimination of "multiples". Multiples represent unwanted signals
which must be eliminated to avoid errors in measurements of the
time-occurrence of reflections. These unwanted signals occur by reason
of multiple reflections of seismic waves, for example, as shown in Fig. 5A:
Reflections R, R, and R arise because of seismic waves reflected to
the earth's surface from horizons RH, RH, and RH, respectively,
Multiple M, arises because a wave is reflected from the earth's
surface to horizon RH and thence again to the surface. Its travel
time is twice that for reflection R. M and M illustrate other types
of multiple reflections. There are still others which may obscure
the time-appearance of the reflections which are the features of
principal interest.
Appellant describes still other techniques used to refine seismograms,
such a removal of noise signals due to random earth movements, but these
are not critical to appellant's invention.
Appellant's Discovery
Appellant has discovered that a family of seismograms obtained by using
an expanded-spread of detectors can be most precisely corrected for the
effect of the weathered layer by deriving the necessary time-correction
from the time-occurrence of the first reflection on a corresponding family
of seismograms obtained using a split-spread of detectors.
Appellant has also discovered that the reflection-wave-front of energy
detected by an expanded-spread of detectors is hyperbolic in character.
Based on this discovery, appellant has developed a new technique for
identifying the multiples which involves applying functions of hyperbolic
character to a family of seismograms. In this way, the magnitudes of errors
in the normal move-out corrections can be determined and multiples can be
separated from reflections, making it possible to remove the multiples
from the seismograms.
Appellant's application emphasizes that to use his techniques, the
seismograms must be "phonographically reproducible, whether on magnetic,
photographic or other reproducible medium". Apparently, this is necessary
because the refinement of seismograms as described above involves repeated
recording and playing back of the signals representative of seismic waves.
The Appealed Method Claims
We consider claims 2 and 60 to be representative. For ease of reference
and understanding we reproduce these claims in numbered paragraph format,
contributed in part by us:
2. In seismic exploration, the method of establishing weathering
corrections in the form of individual static time-corrections for
the signals from each of a plurality of seismic detecting stations
spaced one from the other along a traverse which comprises
[1] generating at generating stations seismic signals adjacent
selected ones of said detecting stations whereby the magnitudes
of said static corrections at said selected stations are known.
[2] applying said known static corrections respectively to signals
generated at said selected stations.
[3] applying relative to said known corrections interpolated static
corrections to the remaining signals generated at the remaining of
said detecting stations, and thereafter
[4] generating at generating stations further seismic signals at
spaced locations along said line,
[5] detecting at the location of a first group of said stations and
thereafter at other locations of other groups of said stations seismic
signals, said locations being selected in reference to the locations
of said second-named generating stations for the production of an
expanding-spread seismic-section having applied to the signals from
each of said detecting stations said static corrections, and
[6] applying dynamic normal moveout corrections to the signals of each
group of said detectors to correct them for geometrical spreading.
60. In seismic exploration where a family of seismograms are produced,
each seismogram including multiple reflection signals and a plurality
of single reflection signals representative of waves reflected from
subsurface reflecting points after travel to said points over a
plurality of paths, each of which for any one of said seismograms
differs from the path for any other of said seismograms, the method
which comprises:
[1] generating signals from each of said seismograms,
[2] applying to said generated signals a succession of dynamic
time-adjustments, one for each said seismogram, and of magnitude
to correct for normal moveout delays present in said seismograms,
[3] time-shifting said generated signals, the magnitude of the
time-shift varying across said family of seismograms in accordance
with a plurality of approximately hyperbolic functions of different
eccentricities, and
[4] adding together said generated signals for the production of
summation signals representing (a) multiple reflections which add
together cumulatively for certain of said hyperbolic functions, and
(b) single reflections which add together cumulatively for other of
said hyperbolic functions.
The Rejection
The sole rejection is based on 35 U.S.C. 101. We will refer only to the
board's opinion since all points raised in the examiner's Answer are
discussed therein and will refer only to the board's general remarks
applicable to all the claims and specific remarks directed to claims
2 and 60. The board stated:
The examiner rejects each of the claims on appeal on the doctrine
of In re Abrams, 38 CCPA 945 * * * 188 F.2d 165. This, of
course, is a rejection based on 35 U.S.C. 101 and is a finding
that the subject matter sought to be patented is not embraced by the
patent statutes. The examiner acknowledges that certain of the
claims [including claim 2] on appeal * * * set forth physical steps
that are clearly old in the Salvatori et al. and Jolly patents{2}
* * * but asserts that patentability of the method is not dependent
on these physical steps but on the other non-physical or "mental"
steps set forth in these claims. * * * the examiner asserts that
[the other claims including claim 60] * * * include no physical steps
but set forth merely a method of processing data which does not require
any tangible device or apparatus to carry out the method and hence
could be carried out mentally.
Appellant * * * strongly urged that the Abrams case is not applicable
law where there is a disclosure in the specification, as here, that
the process can be carried out with apparatus there specified even
though the method also could be carried out within the human mind
without the apparatus. Appellant further contends that the Abrams
Rule 1 and Rule 2 * * * are not applicable to any claim on appeal.
* * * we are not impressed by either logic or the authorities cited
by appellant that a claim which embraces within its scope and is
patentable only because it embraces non-statutory subject matter
should be allowed on the basis of a disclosure not referred to in
the claim, of a possible physical alternative to the non-physical
or "mental" steps embraced by the claim. This would seem to be no
more logical than it would be to allow a broad apparatus claim that
read on the prior art devices solely on the basis of a particular
new apparatus disclosed although not claimed specifically. In each
instance it would be a case of over-claiming by an applicant to
embrace by the claims that which cannot be patented under the statutes.
35 U.S.C. 100(b) provides a sanction for the claiming, as a method,
the use of a known machine, and obviously would be extended to
include a new use of a new machine, but the use of the machine there
contemplated must be claimed and not merely disclosed in the
specification.
Nor do we find any logic or authority for departing from the Rule 2
of Abrams so that claims which include both statutory physical steps
and non-statutory physical steps or "mental" steps can be patentable
on the sole basis of the non-statutory subject matter included
therein. Were this Rule not the case, then methods of telling fortunes
or predicting the activities of the stock market would be patentable
providing one included the use of playing cards or a desk calculator
in a claim that otherwise is for a non-statutory algorithm, such as
the hypothesized principles underlying human behavior or the fluctuating
values of the stock market.
In our view the merits of the examiner's rejection must turn on the
applicability of either Rule 1 or Rule 2 of the Abrams case to each
of the appealed claims and not on any suggested liberalization of those
rules to cause the statue to embrace non-physical or "mental" activities
even though they be valuable and meritorious discoveries.
We shall first consider claim 2 which, in our opinion, appears to be
more illustrative of the interpretive problem than any other of the
principal claims which appellant has designated as decisive of the
issues on this appeal.* * *
The preamble of claim 2 refers to "signals * * * from seismic
detecting stations" so that "signals" here could have only the
meaning of the output of a device which senses waves transmitted
through the earth. Since these signals are not specified to be
electrical, mechanical or optical or to denote any other physical
state or a material or thing, the sole connotation here would be
that "signals" (i.e. without a modifier) are synonomous with
information or data and are an abstraction and intangible.
In step (1) of claim 2 the expression "generating * * * seismic
signals" could possibly have reference to the fact that in step
(3) the detecting stations also "generate signals" and the "seismic"
modifier to the term "signals" could indicate merely the seismic
origin of the information content of the signals. However, to be
consistent with step (5) in which "seismic" signals could only have
the meaning such as earth waves, we shall construe this term in the
instant claims to mean the generation of a physical state in a
physical body, the earth, when the expression "seismic signals" is
used and to mean the generation of abstract data when the term
"signals" is used, that is unmodified as to any physical thing that
is altered to give rise to the signals.
We find no basis for interpreting "signals" to be limited to electrical
or magnetic signals as might be present in an electrical conductor or
a magnetic recording media consonant with the special analog computer
illustrated in appellant's drawing, for appellant expressly directs
otherwise in * * * his specification, which reads as follows:
"With the foregoing outline of the operations as a whole, it will
be understood that the several method steps may be carried out
by a wide variety of apparatus, including computing equipment,
which by a mathematical approach will provide solutions to
equations which may be exact or approximate, as may be desired.
In the more detailed description which follows, there will be
presented both the field techniques and a description of
simplified analog type of instruments by means of which the
invention may be utilized and which the invention may be utilized
and which are illustrative of the many features of the invention,
to which the appended claims have been directed."
The carrying out of appellant's method by a "mathematical approach",
through "solutions to equations" and with "computing equipment" (which
we presume would be digital in character in order to contrast with
the analog computer specifically illustrated) is inconsistent with
the "signals", where claimed without modifier, being the result of
a change in state of a physical or material thing.
The "whereby" clause of step (1) of claim 2 is a statement of a
wanted result that conceals the fact that mere generation and/or
detection of "seismic signals" by themselves do not make known the
static corrections specified by the claim. Omitted therefrom and
essential thereto is the step of exercising human judgment that would
be required to interpret these signals to gain any knowledge of the
static corrections needed.
However, to the extent that step (1) calls for a physical and hence
a statutory process, it is fully anticipated by the Salvatori et al.
and Jolly patents in which seismic signals are generated also to derive
corrections to be used in seismic explorations.
Steps (2) and (3) of claim 2 apply the corrections derived from the
human judgment implicit in step (1) to "signals" which are generated
at various "selected" or "detecting" stations. Since "corrections" are
data having no physical means for representing the same, application
of corrections to signals generated at the detecting stations, as
called for by these steps, necessarily is a step requiring only the
compilation of data from two sources. In step (3) the corrections are
required to be further "interpolated" which likewise is an act
requiring human judgment.
Steps (2) and (3) are non-statutory since they require no physical act
on any physical thing. Step (4) of claim 2 sets forth a second step
of physically generating "seismic signals" which finds its counterpart
in the successive generation of seismic waves of the cited patents.
Step (5) of claim 2 detects "seismic signals" which might at first
appear to be physical acts involving waves transmitted through the
earth but the "signals" from each detecting station must be
information or data only, since "corrections" are applied to them.
Both Salvatori et al. and Jolly have detecting apparatus that carry
out whatever physical acts are contemplated by step (5).
Step (6) of claim 2 applies further "corrections" to the data evolved
from the detectors, and necessarily requires no physical act on any
physical thing.
From the above analysis it appears that insofar as claim 2 sets forth
a statutory process, it is merely the physical steps of generating
a succession of seismic waves and detecting such waves following each
step of generation. That which is presented to distinguish these
claims over the conventional method of seismic exploration is the
broad method of applying correction data to experimental data by
every possible procedure, including mere mental processing data.
We sustain the rejection of claim 2 as for non-statutory subject matter.
Claim 60 represents a method of processing data which starts with
existing seismograms and generates signals therefrom which are
processed as data through successive transformations none of which
specify or require the use of apparatus or the employment of any
physical acts on physical things. This claim merely calls for a
general mathematical or a general graphical solution of an algorithm
which appellant has propounded but which cannot be patented directly,
as an algorithm, or indirectly, as a series of conceptual steps in
a method of solving the algorithm, under the statutes as they have
been interpreted heretofore.
The rejection of claim 60 is sustained.
The opening sentence of the argument in the Patent Office brief states
that, The opinion by the Board * * * represents the best comprehensive
statement of the Patent Office position.
Opinion
All claims here are method claims. All claims stand rejected on the sole
ground that they are non-statutory, i.e., none defines a "process" within
the meaning of 35 U.S.C. 101, read with the definition of 35 U.S.C. 100(b)
in mind. The asserted reason for holding the claims non-statutory is that
either all steps of the claims are "mental steps" or some of the steps
are "mental" and are relied on for patentability.
The examiner said his rejection was "based on the three categories of
claims developed in In re Abrams, 38 CCPA 945, 188 F.2d 165 (1951), and
was sound because the claims fall within either the first or second
categories of Abrams. In affirming, the board accepted the examiner's
reasoning and referred to the "Rules" set forth in Abrams, those rules
being the "categories" referred to by the examiner. The board opinion,
it should be noted, was rendered several months prior to even our first
opinion in In re Prater, 56 CCPA 1360, 415 F.2d 1378 (Nov. 20, 1968,
Judge Smith's opinion), on rehearing 56 CCPA 1381, 415 F.2d 1393
(Aug. 14, 1969, Judge Baldwin's opinion).
Since the three so-called "Rules of Abrams" appear to have been the
legal basis of both decisions below, as well as the basis for the Patent
Office Solicitor's brief before us, we deem it appropriate to state that
the outset our position as to those so-called rules, a matter which was
considered in penetrating detail in our initial Prater opinion, delivered
by the late Judge Smith, and in no way contradicting in our later
superseding opinion, delivered by Judge Baldwin.
In Abrams, appellant's counsel proposed, by way of argument which he hoped
would win him a reversal, "three suggested 'rules of law'". {3} In Abrams
the court pointed out that the proposed rules had evidently been submitted
to the Patent Office and that neither the examiner nor the board had either
approved or disapproved them. The court declined to adopt them. Judge
Smith said in Prater (159 USPQ at 591) - and time and restudy do not enable
us to improve on his statement - that
* * * much 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. This confusion has arisen because
the court, after initially declaring there was no necessity to
embrace the rules, apparently adopted Rule 2 toward 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.
After further discussion of the case of Don Lee, Inc., v. Walker, 61 F.2d 58,
(9th Cir. 1932), cited in Abrams and apparently the genesis of the
"mental step" concept in patent law, Judge Smith concluded, 159 USPQ at
591 and 593, and we agree.
As a partial summary of our reasoning so far, we have observed that the
"Rules" of Abrams * * * were not given the status of judicial acceptance
by the court in Abrams and remain no more than parts of the argument put
forward by Abrams' counsel. Further, we note that even if "Rule 2" had been
so adopted, the rule when traced to its origin in Don Lee rests on an
uncertain basis as precedent.
We do not feel our reasoning need be encumbered by the so-called "Rules"
of Abrams for the reasons we have indicated.
On rehearing, our new opinion by Judge Baldwin notes the fact that Abrams
had been exhaustively analyzed in Judge Smith's opinion and expresses
no disagreement with that analysis. It remains our view that we need not
be encumbered in our reasoning by the "Rules" of Abrams for the reason
that they have never enjoyed the approval of this court.
Additionally, it is our view that "Rules" 2 and 3, at least, are
logically unsound. According to these "Rules", a process containing both
"physical steps" and so-called "mental steps" constitutes statutory
subject matter if the "alleged novelty or advance in the art resides in"
steps deems to by "physical" and non-statutory if it resides in steps
deemed to be "mental." It should be apparent, however, that novelty and
advancement of an art are irrelevant to a determination of whether the
nature of a process is such that it is encompassed by the meaning of
"process" in 35 U.S.C. 101. Were that not so, as it would not be if "Rules"
2 and 3 were the law, a given process included both "physical" and "mental"
steps could be statutory during the infancy of the field of technology to
which it pertained, when the physical steps were new, and non-statutory
by some later time after the physical steps became old, acquiring prior
art status, which would be an absurd result. Logically, the identical
process cannot be first within and later without the categories of
statutory subject matter, depending on such extraneous factors.
Whether "Rule" 1 of Abrams would lead to a correct result on the ultimate
question of patentability would depend on how one interprets "purely
mental". {4} If so construed as to encompass only steps incapable of being
performed by a machine or apparatus, it might lead to a correct result.
Clearly there are no steps of that nature in the presently appealed claims.
If the expression "purely mental" is construed (as the board apparently
did here) so as to encompass steps performable by apparatus, as well as
mentally, then the "Rule" is unsound for reasons expressed below.
The sole rejection in this case being based on the ground that the
subject matter of the appealed claims is "non-statutory," we here set
down the involved statute, 35 U.S.C. 101 (emphasis ours):
101. Inventions patentable
Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful
improvement thereof, may obtain a patent therefor, subject to the
conditions and requirements of this title.
Since no question is raised as to novelty or utility, the only question
is whether the claimed subject matter falls within one of the enumerated
categories of patentable inventions and the only categories of patentable
inventions and the only category here involved is "process." A definition
of process is provided in 35 U.S.C. 100(b) reading:
(b) The term "process" means process, art or method, and includes a
new use of a known process, machine, manufacture, composition of
matter, or material.
The Patent Office has raised no question involving application of the
definition. It simply insists that the methods of the appealed claims are
not such as are encompassed by the term "process" because the claims
all fall into one of two categories: (1) "all mental steps"; (2) "some
mental steps and some physical steps with patentability dependent on the
mental steps." The examiner himself categorized his rejection as a
"mental step rejection" and this raises two questions: Are some or all of
the steps in each claim "mental" and, if so, is that fatal to patentability?
[2] As may be seen from the statutory language, it contains nothing
whatever which would either include or exclude claims containing "mental
steps" and whatever law there may be on the subject cannot be attributed
to Congress. It is purely a question of case law. That law we, like others,
have found to be something of a morass. As indicated by footnote 22 in
Judge Baldwin's Prater opinion, "mental" is a vague term of indefinite
meaning, and whether a given step is "mental" or "purely mental," is a
question which has had to be determined on a case-by-case basis,
"considering all of the surrounding circumstances." Since, additionally,
the legal significance of a finding that a given step was or was not
"mental" or "purely mental" was itself in doubt, characterizing steps of
method claims as "mental", "purely mental", "physical", or "purely
physical" gave little certainty to the law. Nothing points this up as
well as consideration of some of the opinions by the Patent Office Board
of Appeals in cases in which the board has reversed "mental step" rejections.
Ex parte Moser et al. 124 USPQ 454, 455 (Board of Appeals, 1959), involved
claims to a process of operating a fluidized-bed coking unit, which process
contained steps of determining a maximum permissible feed rate in
accordance with a relationship between viscosity and another factor on a
continuous basis and varying the severity of the coking operation in
accordance therewith. The examiner rejected the claims as unpatentable
in that they recited "mental steps." In reversing, the board said:
While determination of the relationship between viscosity and
Conradson carbon of the feed may be in the nature of a mental
process, we are not satisfied that the step of "continuously
measuring the viscosity of the feed passing into the coking zone"
is itself a wholly mental step requiring condemnation of the
claims. Where, as here, operating conditions of a process are
varied directly in accordance with the changes in a certain
physical characteristic of the feed stock, it appears proper
and necessary to recite the continuous measurement of this property.
* * * We agree with the appellants that the essential novelty in
the case is in the positive and physical step of controlling the
severity of the coking operation in response to variations in
viscosity of the iced oil and not in the determination of the
relationship between the viscosity and Conradson carbon or in the
measurement of the viscosity, which are incidental steps in the
process although desirably included in the claims in order to
properly define, qualify or limit their scope. We will, accordingly,
not sustain the rejection of the appealed claims as drawn to
unpatentable subject matter because of the recitation of mental steps.
Ex parte McNabb, 127 USPQ 456, 457-458 (Board of Appeals 1959), was
concerned with claims to a method of locating defects in wooden objects
such as telephone poles by radiographic methods involving several steps.
A reference was cited showing radiographic testing of objects such as
welded pipe to locate defects. The examiner rejected the claims on the
reference because, he said, it showed the first three steps of the claims
to be old and the other steps could not be relied on because they were
"purely mental." In disagreeing with the examiner, the board said (emphasis
ours):
We have carefully considered the examiner's position but are not
in agreement therewith. The step of reading the film with a
densitometer is obviously not a mental step since a densitometer
is a piece of apparatus which functions to measure the density of
the film by its inherent mode of operation. Plotting the optical
densities as a function of the film likewise is no more of a mental
step than reading a thermometer or gauge and plotting the value
therefrom. Ascertaining the deviations from the norm of the curve
can obviously be done by means of a French curve and a pair of
dividers. The deviations, if any, from the norm are clearly evident
from the graph plotted from the densitometer data. Orienting the
deviations with respect to the test object is merely aligning the
graph in its proper position, as indicated by the graph itself. None
of these steps are purely mental or interpretative mental steps.
Any method or step in a method which can be manually performed and
requires the use of the human eyes for detection or determination
of any condition, such as temperature, pressure, time, etc., and/or
the use of the hands for the purpose of manipulating, such as turning
off or on or regulating a given device in a certain manner or at a
certain time, etc., to produce a certain result necessarily involves
the human mind and hence can be classed as a mental step. Such steps,
however, are not purely mental or interpretative mental steps and are
not the kind which are prohibited by the decisions relating to purely
mental steps.
Ex parte Kahn, 124 USPQ 511, 512-514 (Board of Appeals 1959), related to
a method of insect control. Evidently insects were to be selectively
attracted according to species by a sound recording, to their ultimate
disadvantage. The claim recited a number of steps including recording a
sound signal produced by "one live female member of the selected insect
species" while she was feeding during the periods around sunrise and
sunset, modifying the signal by amplifying the high-frequency component
to obtain an output signal, recording that signal, and then reproducing
the sound from said recording in the presence of captive live members of
the insect species to be controlled, marking portions of the recording
representing sounds most attractive to the captive insects based upon
the behavior of the insects and re-recording the marked portions
repetitively. The examiner cited no prior art and rejected the claim
because, he said, the invention could not be practiced "without the
exercise of mental steps."
The board prefaced its opinion by saying,
We know of no decision that holds that a method is per se unpatentable
merely because its practice requires that the operator thereof must
think.
The board stated it to be the examiner's view that in selecting the
portions of the recording to be repetitively reproduced the selection had
to be made on the basis of an evaluation "in the light of the knowledge
and judgment of the individual or individuals making the recording". This
he felt was "mental" and fatal to the claim. The board disagreed, saying
(our emphasis):
The claim recites, however, that the first recorded sounds are
reproduced in the presence of live insects and the portions of this
first recording are selected or marked on the basis of the observed
effect on captive insects. In other words, captive insects indicate
the parts of the record attractive to them (do the selecting), the
operator observes such fact and appropriately marks the record. While
it may be true that it would be advisable for the operator to think
while observing whether or not the portion of the record being
played attracts the captive insects, the actual steps set out in
the claim are independent of such thought and thus do not come under
the types of decisions herein considered. Thus, the challenged portion
of the claim is clearly a proper limitation and should be evaluated
in connection with pertinent prior art as to its patentable effect
or lack thereof upon the ground that it is proper limitation.
For further opinions containing similar reasoning by the board see
Ex parte Egan, 129 USPQ 23 (1960), a case which, incidentally, accepted
the Abrams "Rules" as established law; Ex parte Garrett, 132 USPQ 514
(1961); Ex parte Bond, 135 USPQ 160 (1961), which reaffirms the Kahn
statement that a method is not unpatentable merely because its practice
requires the operator to think; and Ex parte Tripp, 141 USPQ 918 (1963).
Turning now to the board decision in the present appeal, we have said
above that the board used the Abrams non-rules as the primary basis of
its decision that the claims are non-statutory. This was legal error for
the reasons already stated.
The above-quoted extracts from the board opinion further reveal that
the board repeatedly asserted that steps were "mental" and rendered the
claims non-statutory because they were not physical acts applied to
physical things. This presumes that the law requires all steps of a
statutory "process" to be physical acts applied to physical things. We
considered this matter in Prater. In the first opinion by Judge Smith we
showed how this erroneous idea arose from a dictum in Cochrane v. Deener,
94 U.S. 780 (1876), and is inconsistent with several later Supreme Court
opinions. In Judge Baldwin's Prater opinion we readopted a large portion
of Judge Smith's opinion on this point and again pointed out that it was
a misconstruction to assume that "all process, to be patentable, must
operate physically upon substances". As above noted, the board's opinion
herein was rendered before the dates of our Prater opinions. The board's
contrary presumption as to the statutory requirements further infects
its conclusions with legal error.
[4] Another aspect of the board's reasoning which we consider legally
unsound in holding claims non-statutory resides in its giving weight to
the fact that certain individual steps in the claims lacked novelty, as
shown by cited art. In considering the patentability of a process
consisting of a plurality of steps we think it is immaterial to the
question whether the combination is a statutory "process" that individual
steps are old. The whole process could be old and yet be statutory;
a fortiori, it matters not that one or more steps are old.
The board also considered individual steps in the claims to be
"non-statutory," as in its conclusion about steps (2) and (3) of claim 2.
While it may be a minor matter or a mere lapsus linguae, we are here
concerned only with whether the combinations of steps constituting the
claimed processes are statutory "processes."
Although representative claims 2 and 60, quoted above, are directed to
different aspects of appellant's invention, each of the claimed processes
basically involves manipulation of certain "signals" to obtain a more
meaningful record of seismic events. The "signals' may take the form
of impressions on a magnetic tape, electrical impulses in an analog or
digital computer, or visible patterns on graph paper or on an oscilloscope
screen. The actual manipulation of the signals may be effected by
apparatus or manually, depending on the form taken by the "signals",
the proper degree of manipulation being definable mathematically.
[5] We cannot agree with the board that these claims (all the steps of
which can be carried out by the disclosed apparatus) are directed to
non-statutory processes merely because some or all the steps therein
can also be carried out in or with the aid of the human mind or because
it may be necessary for one performing the processes to think. All that
is necessary, in our view, to make a sequence of operational steps a
statutory "process" within 35 U.S.C. 101 is that it be in the technological
arts so as to be in consonance with the Constitutional purpose to promote
the progress of "useful arts." Const. Art. 1, sec. 8.
Of course, to obtain a valid patent the claim must also comply with all
the other provisions of the statute, including definiteness under 35
U.S.C. 112. A step requiring the exercise of subjective judgment without
restriction might be objectionable as rendering a claim indefinite, but
this would provide no statutory basis for a rejection under 35 U.S.C. 101.
Moreover, as pointed out previously, the claims here on appeal clearly
contain no steps of that type.
In view of the errors of reasoning of the board in reaching the legal
conclusion that the claims are all non-statutory, and finding no other
reasons warranting that conclusion, its decision affirming the rejection
of all the appealed claims must be reversed.
BALDWIN, Judge, concurring.
I feel compelled to speak out against the majority opinion. It is my
position that the doctrine promulgated by that opinion, which constitutes
a major and radical shift in this area of the law, is a serious breach
with the time-honored judicial practice of resolving important questions
of law on a case-by-case basis, a policy matter which I thought had been
settled by agreement of the full court with the second Prater decision
and which up to now the court has followed. In addition, I feel that the
course which the majority opinion takes is not only unnecessary in order
to decide this particular case (or any others in this are, for that
matter), but also will probably create more problems that it is intended
to solve. Finally, I must point out that the majority embarked on this
course without having been asked to do so by appellant.
What The Majority Opinion Does
One need only read the last page of the opinion to find the principal
holding: "All that is necessary * * * to make a sequence of operational
steps a statutory 'process' within 35 U.S.C. 101 is that it be in the
technological arts." No limitations are placed upon this holding. In effect
it is a pronouncement of new law.
At first reading, it may appear that this holding is but a resurection
of that made in Judge Smith's opinion in the first Prater decision. Close
analysis reveals that the majority now goes much beyond the holding of
our late colleague. A major basis of the holding in that first Prater
opinion was that the claimed process must be "disclosed as being a
sequence or combination of steps, capable of performance without human
intervention." [Emphasis added]. The opinion was clearly dealing with
claims drawn primarily to cover a machine-implemented process but which
were found to read also on carrying out the process using mental steps.
Here, however, the majority does not so limit its holding. Musgrave
obviously discloses a process which can be implemented entirely by
machine. Indeed, he argues with respect to some of his claims that it
is unreasonable to interpret them as covering anything but a
machine-implemented process. Nevertheless, the majority now says, in
effect that one no longer need disclose apparatus for carrying out his
process.
Thus, while not only being a drastic departure from the policy decision
implicit in the second Prater case, i.e., to decide the problems in this
area of mental processes on a case-by-case basis, the majority opinion
also goes far beyond the holding in the first Prater decision. As such,
it should be recognized as overruling those cases which were so carefully
distinguished by Judge Smith in Prater I.
Is This Change Really Necessary?
Academically, intellectually, perhaps, the majority's new proposal - to
throw out entirely the "mental steps" doctrine and replace it with a
new rule-may sound appealing. Any process which is drawn to a technological
art is now held to come within the ambit of the Patent Laws. I submit,
however, that this court should concern itself only with realities and
let the law professors worry about academic problems. The realities here
are that "mental steps" are not longer a serious problem.
The actual ruling in Prater II was that the process claims there involved
covered more than the appellant conceded they were intended to cover and
that those claims were therefore unpatentable under 35 U.S.C. 112. In
dictum, however, the court resolved the biggest problem then facing the
patent community, i.e., whether process claims drawn to cover the operation
of a programmed digital computer would be subject to the protection of the
patent statutes. With regard to the mental steps problem, the court further
made it clear that the only proper inquiry should be as follows: Assuming
the disclosure of a novel, unobvious machine-implemented process, would a
reasonable {1'} interpretation of the claims include coverage of the process
implemented by the human mind?
More recent cases before this court have made it clear that there is now
only a very narrow scope to this "fearful" mental steps doctrine. In
In re Bernhart {2'} and In re Mahony {3'}, we found that the process claims
there involved, when interpreted reasonably, did not include within their
coverage mental implementation. Additional, Rule 2 of what the majority
calls the "Abrams non-rules" was given a fatal blow in Bernhart were we
held that a claimed invention is not non-statutory merely because
"the novelty is indicated by an expression which does not itself fit
in a statutory class", 163 USPQ at 615. Further, in Mahony, the Patent
Office view that a claim reading on both statutory and non-statutory
subject matter could not comply with the second paragraph of section 112
was discarded.
What is left? I submit that in reality very little remains of the "mental
steps" doctrine. Before now, the court has not found it necessary to
decide whether a claim, drawn to cover a disclosed machine-implemented
process but broad enough, even when interpreted reasonably, to cover the
same process implemented only with the aid of the human mind, would be
statutory. It was also undecided as to what effect the inclusion of
purely mental step, as defined in footnote 22 of Prater II, might have
on an otherwise statutory claim. {4'} Nor did the court decide whether
claims drawn to a process consisting entirely of a sequence of purely
mental steps would fit within the ambit of 35 U.S.C. 101. The majority
now proposes to answer all these questions in the affirmative, regardless
of the fact that this case could be decided on very narrow grounds.
I agree with appellant that claim 60, when reasonably interpreted, covers
only a machine-implemented process. The decision with regard to that claim
and those related to it could have been resolved on that narrow ground.
With regard to claim 2 and those other claims which recite a number of
"mental" steps along with physical steps, if the court found that they
are predicated for patentability on the mental steps (as I believe they
are), the board's decision could be reversed by simply following the
Bernhart dictum mentioned earlier and approving those enlightened board
decisions referred to in the majority opinion which hold, in effect, that
if a mental step is not purely mental, the process including it is within
the statutory category of "process" set out in 35 U.S.C. 101. This holding
would flow naturally from what has been said and held in our earlier
opinions, and would be all that is necessary to support reversal of the
decision below.
Foreseeable Problems
It seems that whenever a court decides to go beyond what is necessary
to decide the case before it, more problems are generated than are solved.
I foresee quite a few with the majority's new holding.
First and foremost will be the problem of interpreting the meaning of
"technological arts". Is this term intended to be synonymous with the
"industrial technology" mentioned by Judge Smith? It sounds broader to
me. Necessarily, this will have to be considered a question of law and
decided on a case-by-case basis. Promulgation of any all-encompassing
definition has to be impossible. This task is now before us.
Already alluded to is the apparent decision not to require that a
machine-implemented process be disclosed. This might have some salutary
effect in certain circumstances, where machine implementation would be
obvious from disclosure of the process steps alone. But what happens where
it is not so obvious? Then we could get involved in deciding, first,
whether a reasonable interpretation of the claims would include both
machine and mental implementation of the process and, second, whether
the absence of a disclosure of apparatus for carrying out the process
would warrant rejection of the broad process claims for lack of support.
Justifying the decision finding claims drawn entirely to purely mental
processes to be statutory, the majority states that "[a] step requiring
the exercise of subjective judgment without restriction might be
objectionable as rendering a claim indefinite." It should not require
much imagination to see the many problems sure to be involved in trying
to decide whether a step requiring certain human judgment evaluations
is definite or not.
As one more example, suppose a claim happens to contain a sequence of
operational steps which can reasonably be read to cover a process
performable both within and without the technological arts? This is not
too far fetched. Would such a claim be statutory? Would it comply with
section 112? We will have to face these problems some day.
In conclusion, I think it is apparent that what the majority has done
will only substitute for one set of problems another possibly more
complex set. Because the problems will be new, they will add confusion
to the law. We are only now beginning to make some sense out of this
area of the law. To change at this time, I submit, is non-sense.
FOOTNOTES:
{1} Consisting of Kreek, Keely, and Andrews, Examiners-in-Chief, opinion
by Andrews.
{2} United States patents to Salvatori et al., 2,087,120, July 13, 1937,
and Jolly, 3,105,568, Oct. 1, 1963.
{3} Abrams' counsel's proposed rules were:
1. If 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 as well
as so-called mental steps, yet the novelty or advance over the art
resides in one or more of the positive and physical steps and the
so-called mental steps 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.
{4} In this regard, see footnotes 22 and 23 of Judge Baldwin's Prater
opinion. In "The Field of the Statutory Useful Arts," by Coulter,
34 J. Pat. Off. Soc'y 417 (1952), the author points out at p. 426 what
"peculiarly human activities" involve, in the second paragraph of the
following extract:
There is an important point that should not be overlooked. In all of
the technological "mental step" cases, the claims say nothing about
mental steps or a human operator. The situation is that one or more
steps are of such nature that they can be performed by a human
operator, who is required to use his brain, and that no device for
automatically performing such steps is specifically described in
the specification.
The claims are held not to define a statutory "useful art" even
though, if the method were performed without a human operator
(which is not excluded from the claims), it would constitute a
statutory "useful art." In the Abrams case, for instance, there
was not intimation that the specified petroleum prospecting method
would not be a "useful art" if the criticized steps were performed
by devices.
And to a person familiar with the available devices, it is clear that in
principal all of the steps could be performed by devices. None of the steps
involve peculiarly human mental activities which cannot, in principle, be
performed by devices. None of them involve aesthetic, emotional, imaginative,
or creative thought or reactions on the part of the practitioners
(operators). None of them involve human "value judgments" - that is,
judgments on human conduct, ethics, morals, economics, politics, law,
aesthetics, etc.
{1'} As applied in Prater II and Mahony (infra. Note 3), the standard of
reasonableness would be the meaning of the claims to one of ordinary
skill in the pertinent art when read in light of and consistently with
the specification.
{2'} 57 CCPA 737, 417 F.2d 1395 (1969).
{3'} 57 CCPA 939, 421 F.2d 742 (1970).
{4'} But see In re Jones, 54 CCPA 1218, 373 F.2d 1007 (1967).