CITE: 613 F.2d 809
CMON: January 1980
PLAIN: In re Sherwood
DEFND: United States Patent and Trademark Office
COURT: United States Court of Customs and Patent Appeals
DATE: January 10, 1980
HISTORY:
Appeal from Patent and Trademark Office Board of Appeals. Application for
patent of John W. C. Sherwood, Serial No. 567,458, filed Apr. 14, 1975.
From decision rejecting all claims, applicant appeals.
Reversed.
This is an appeal from the decision of the United States Patent and
Trademark Office (PTO) Board of Appeals (board) affirming the rejections
of all the claims as unpatentable under 35 USC 101 for being directed to
nonstatutory subject matter and under 35 USC 112, paragraph one, for
being based on a specification which fails to disclose the best mode.
This application, serial No. 567,458 {1}, was filed April 14, 1975, and
is entitled "Continuous Automatic Migration of Seismic Reflection Data
with Waveform Preservation". We reverse.
SUMMARY:
Conversion of English and mathematics into software is mere clerical
function for a skilled programmer that does not have to be disclosed
in patent application.
JUDGE: Baldwin, Judge
Before Markey, Chief Judge, Rich, Baldwin, and Miller, Associate Judges,
and Newman, Judge (the Honorable Bernard Newman, United States Custom
Court, sitting by designation).
DECISION:
The Invention
A very common method of geophysical prospecting involves the production of
a sonic (or seismic) wave in the earth. Certain subsurface geological
formations, which may contain petroleum deposits, will reflect this induced
seismic wave upward where it will be detected by variously spaced surface
geophones. Each resulting geophone signal, as recorded, is merely an
amplitude-time representation of that reflected sonic wave and is known
as a "seismic trace." This invention involves apparatus (or "means for")
and a method for producing a cross-sectional map (or "seismic depth
section") depicting the position and shape of those subsurface
formations.
Claim 15 is typical of the "means"-type claims which recite apparatus for
plotting the desired map:
15. A system for converting a seismic time section consisting of a
plurality of amplitude-versus-time seismic traces, into a seismic
depth section consisting of a plurality of amplitude-versus-depth
traces, so that events on the time section are migrated, both
vertically and horizonally, into positions on said depth section
corresponding to the actual spatial positions of the seismic
reflectors in the subsurface, comprising:
(a) automated data processing means for sonogramming said
amplitude-versus-time traces, a group of traces at a time, to produce
a plurality of sonograms each identified, indexed and stored with
a respective horizontal pivot coordinate of a respective group of
sonogrammed amplitude-versus-time traces, and with a represented
moveout,
(b) machine means for dividing each individual sonogram into a series
of segments in accordance with a pre-selected seismic velocity
function, and reindexing and storing, also in accordance with said
preselected velocity function, each of said series of segments into
a particular storage zonelet representing a portion of said seismic
depth section identified and indexed by a particular depth and
horizontal coordinate, each of said series of divided and stored
segments also being identified and indexed within a particular
zonelet in accordance with a represented dip angle,
(c) machine means for automatically sonogramming said segments
divided and stored within each of the zonelets to produce a final
plurality of amplitude-versus-depth representations and
(d) machine means for directing and plotting the placement of said
final representations on said seismic depth section, so that said
seismic reflectors in said subsurface can be identified, in the
vertical and horizontal location, by amplitude variations on said
amplitude-versus-depth traces of said depth section.
Claim 21 is illustrative of the "means"-type claims which do not recite
a final plotting "means."
21. An apparatus for converting a seismic time section consisting
of a plurality of amplitude-versus-time seismic traces, into a
plurality of machine generated, amplitude-versus-depth
representations, so that events on the time section are migrated,
both vertically and horizontally, according to the depth of
horizontal coordinates of the seismic reflectors within a subsurface
earth formation, [sic] they represent, comprising;
(a) automated data processing means for sonogramming said
amplitude-versus-time traces, a group of traces at a time, to
produce a plurality of sonograms each identified by and indexed
through a respective horizontal pivot coordinate and a represented
moveout,
(b) automated means for machine dividing each of said individual
sonograms into a series of segments in accordance with a seismic
velocity function characteristic of the subsurface under study, and
for each of a series of zonelets representing portions of said
subsurface under study, said automated dividing means including
separate means for placing, storing and indexing also in accordance
with said seismic velocity function, said series of segments into
said zonelets to provide said plurality of machine generated,
amplitude-versus-depth representations.
The specification is largely directed to a discussion of analog computer
apparatus suitable for producing the desired subsurface map by solving
the disclosed equations. The specification also states:
The final seismic depth section reproduced in FIGURE 8 was actually
prepared by performing the method of the present invention on a
large scale digital computer. It should be understood that the analog
apparatus here shown as mechanical devices electrically interconnected
are intended to assist in the understanding of the invention. The
best mode contemplated by the inventor of carrying out the invention
is to perform the processing steps of the invention on a large scale
digital computer with the processed data imprinted into visible form
on any of the presently available plotting devices.
The Rejection
The examiner stated in the Answer that the rejection was two-fold.
First, the examiner noted:
Claims 15, 18-23, and 27 are rejected under 35 USC 112, paragraph one,
as based upon an inadequate disclosure in that the best mode
contemplated by the applicant has not been described in sufficient
detail to enable a person of ordinary skill in the art to make and
use it. Applicant has failed to disclose any computer hardware, any
flow charts, any algorithms or any programs with which his best mode
would operate. [Emphasis in original.]
* * *
To achieve Applicant's invention a person skilled in the art would
have to find digital hardware equipment able to carry out the
invention, and devise flow charts and write programs which are not
set out in the prior art.
To achieve Applicant's objectives would thus require experimentation
at length and an inordinate amount of speculation, industry and
ingenuity, as the disclosure is merely an invitation to others to see
if they can obtain Applicant's objectives which Applicant does not
disclose how to obtain.
Secondly:
Claims 15, 18-23, and 27 are rejected under 35 USC 100 and 101 as
directed to a non-statutory class of invention. The presented claims
are directed to an automated digital processing system and method.
And the best mode disclosed is a programmed digital computer for
carrying out the process. Since initiation and reception of seismic
signals, computer operations on seismic signals and sonogramming
for seismic records are old in the art, any patent that would issue
on applicant's claims would wholly preempt the algorithm and program
for carrying out the invention. This would on practical effect be
a patent on the algorithm and program themselves.
Applicant's assertion that the Benson decision [Gottschalk v. Benson,
409 U.S. 63 (1976)] upholds the patentability of the presently
claimed invention fails to take into consideration the
entire opinion as presented by Mr. Justice Douglas. Although the
Court barred the conclusion that all software is unpatentable per
se. 409 U.S. at 71, the Court did cite the Report of the President's
Commission, see supra, and several law journal articles and
concluded its opinion by admonishing the legislature
that "considered action by the Congress is needed", 409 U.S. at 73.
Thus, Benson has merely stated that some computer process may be
patentable without stating any prerequisites for such
patentability. The policy basis for the decision, however, precludes
a patentability where, as in the present application, the invention
comprises a program and algorithm utilized in conjunction with a
digital computer. The method sought to be patented has as its best
mode application by programmed digital computer. This being the case,
the instant claims if allowed would wholly preempt the mathematical
process as described by applicant in the specification and would in
practical effect be a patent on the mathematics, algorithm and
program. [Emphasis in original.]
The examiner responded to appellant's brief in stating:
As regards to the rejection under 35 USC 100 and 35 USC 101
Appellant's distinguishing arguments are not without merit, but
they fail to remove the instant invention from the scope of the
decision in Benson. The novelty of the procedure herein claimed
is merely in sequencing of operations within a digital computer
in response to external signals, as to process seismic data in
accordance with prior signals. The process is assertedly new
merely in the nature of a program and algorithm.
* * *
Regarding appellant's arguments that the present invention can be
carried out by an analog computer, it is noted that the claims read
upon a general purpose digital computer implemented mode for carrying
out the present invention. Furthermore, at page 24, lines 20-24 of
the specification, applicant states that the best mode he contemplates
for carrying out the invention is to perform the processing steps on
a large scale digital computer. Concomitantly, the present claims,
if allowed, would provide applicant with a patent monopoly on the
digital processing mode, a mode unpatentable under 35 USC 100 and
35 USC 101.
Appellant's arguments as to the 35 USC 112, "best mode" rejection are
directed to the proposition that "as long as there is a statement
in the specification that the best mode is by way of a properly
programmed digital computer there is no problem with this portion
of Section of 112." (Brief at page 12). It is the examiner's contention
however, that when an applicant states that a particular method of
carrying out his invention is the best mode contemplated by him as
of the time he executes the application, he must disclose such an
invention so as to enable one of ordinary skill in the art of make
and use it. Only with such a requirement would inventors be
restrained from applying for patents while at the same time
concealing from the public how to make and use such preferred
embodiments. Appellant's enabling disclosure of the non-preferred
embodiment, i.e. the analog does not suffice to replace the
requisite disclosure of the preferred embodiment.
It is seemingly clear that a reasonable level of ordinary skill
in programming should be the capability of proceeding from
adequately detailed algorithms and flow charts to an operative
program. The detailing thereof should be at least to the level
where all mathematical formulae, as well as all logic for the
transformation or manipulation of data have been specified in terms
commensurate with the usual subroutines available in the computer
languages. The specification fails to provide any such requisite
detailing. [Emphasis in original.]
The Board
The board, in a first opinion, considered only the Sect. 101 rejection and
stated:
For the purpose of discussion, we address the details of claim 15
although our remarks are germane to the remainder of the claims
also. Features (a)-(d), although characterized in "means" plus
function language, describe the mathematical processing of data
in accordance with equations given in appellant's specification
* * * for the purposes of reaching a solution to a seismic problem,
namely, the generation of a seismic depth section indication. These
features of claim 15 and the comparable subject matter of the
remainder of the claims are directed to an algorithm within the
definition provided in Gottschalk v. Benson * * *
* * *
We think the decision in Parker v. Flook, 437 US . . . (1978), is
supportive of the position taken by the examiner. As the Court makes
clear, appellant's algorithm can be assumed to be within the prior
art. Moreover, the use of a calculation in a post solution activity
cannot transform an unpatentable principle into a patentable process.
We recognize the instant claims are within the technological arts,
and have an end use, however, the Court in Flook, footnote 18, makes
the following statement:
"Very simply, our holding today is that a claim for an improved
method of calculation, even when tied to a specific end use,
is unpatentable subject matter under Sect. 101."
We consider that the Court's observation is applicable to the facts
of the instant case.
We affirm the rejection.
In a second opinion, initiated by a request for reconsideration, the board
discussed the Sect. 101 rejection. In this initial portion of the opinion
(all members joining this section), the board responded to a number of
appellant's arguments concerning that rejection:
Beginning with the second paragraph of page 2 of the most recent
paper, appellant urges that he produced a final new depth display
previously unachieved. Appellant * * * admits that producing
seismic time sections such as shown in Figure 1 is old in the art.
Appellant's claimed subject matter appears directed to the data
processing incident to the use of appellant's equations set forth
on pages 18, 20 and 22, as we indicated in our original decision.
We reiterate that, notwithstanding the purported novelty urged,
the subject matter of the equations as claimed must be considered
to be algorithmic and that, as the Court indicated in Flook, may be
considered to be algorithmic and that, as the Court indicated in
Flook, may be considered to be part of the prior art for the purposes
of considering the compliance of appellant's claimed subject matter
with regard to the statute.
In the same paragraph, appellant contrasts the magnitude of the
data processing incident to the practice of his invention with that
which appeared to be required in the Flook [Parker v. Flook, 437
U.S. 584 (1978)] case. Appellant has not adverted to any language
in that decision however which sets out the magnitude of data
processing as a criterion for determining whether claimed subject
matter falls within 35 USC 100 and 101 and we know of none.
On page 3 of the request, appellant maintains:
"It should be brought to the Board's attention that the
end-product of Flook was a number, and the Supreme Court
indicated that the only difference between the claimed method
and those available in the art was in the formula there
presented."
Further, at the bottom of page 3, employing claim 15 as an example,
appellant contrasts the detail set out in his claimed subject matter
with the nature of the disclosure in the Flook patent application
as commented upon by the Court in that case. Appellant urges that
he produced not an improved method of calculation, but a new depth
section represented by a series of novel steps. [Emphasis in original.]
To these matters we say that in appellant's applicant, the end
product, as disclosed in Figure 2, is a seismic trace "produced by
the method of the present invention from the data represented in
Figure 1." (Specification, page 5, lines 20-22). We repeat, the
only difference between the claimed subject matter which produces
an output such as Figure 2 and a conventional seismic time section
as shown in Figure 1 appears to lie in the calculations performed
in connection with the aforementioned equations.
In response to appellant's contentions that the best mode was adequately
disclosed, a majority (two out of three members) noted in the final part
of the opinion:
Appellant in his specification thus indicates (a) that "in most
cases" the invention will be performed by a large storage capacity
high speed digital computer, sand (b) that Fig. 8 was obtained in
such a fashion.
* * *
We think (a) coupled with (b) constitute an indication that the best
mode of appellant's invention is a digital one which mode has been
concealed, the concealment being of the nature described in In re Gay,
50 CCPA 725, 309 F.2d 769 (1962), cited by appellant. See also
In re Hay, 534 F.2d 917 (CCPA, 1976).
Additionally, the majority discussed two affidavits submitted by appellant
in support of the argument that the best mode was adequately disclosed.
With regard to the Miller affidavit {2}, it is not clear whether the
work performed as described in paragraph 8 thereof was done solely as
a result of the explanation provided by Dr. Sherwood as described in
paragraphs 4-7 or whether subsequent interaction by the affiant with
Dr. Sherwin was required in order to complete the project.
It appears that affiant, together with co-workers participated in
preparing a Fourier transform program, following which affiant prepared
a sonogram program. The time employed in these endeavors is not set
forth. Further, no facts or evidence are adduced from which a
determination can be made that the latter program was successful
as averred and that it corresponded satisfactorily to the claimed
subject matter. It thus cannot be determined whether or not undue
experimentation was required in the effort described in paragraph 8
and accordingly, affiant's averment must be considered to be
conclusory in character.
As for the Cardwell affidavit {3}, no data or evidence is adduced to
substantiate the averments made in paragraphs 10 and 11 and these
must for this reason be considered conclusory.
One member of the board concurred in the result reached by the majority
in the best mode issue, but advanced other reasoning in affirming the
rejection. He considered the fact that appellant produced the seismic
depth section found in Figure 8 of the specification via a digital
computer to be evidence of concealment. Specifically, he stated:
[T]he appellant tells us that the "best mode" contemplated by him
of carrying out the invention involves the use of a digital
computer and has presented the results in Figure 8 of the drawings.
Hence, the appellant must have known more about this embodiment
than he disclosed. This failure to disclose what was known about
the preferred embodiment of the invention at the time the present
application was filed constitutes concealment prohibited by the
best mode clause of the first paragraph of 35 USC 112.
Opinion
Section 112 -- Best Mode
As was noted in Weil v. Fritz, 601 F.2d 551, 555 (CCPA 1979) "[I]t is not
up to this court to state how the applicant displays his
information [disclosing best mode], but only, under proper circumstances,
to review whether he has done so adequately under the statute."
[Emphasis in original.]
This case presents the question of whether appellant has "adequately"
disclosed the contemplated best mode.
The board correctly recognized that there is no objective standard
by which to judge the adequacy of a best mode disclosure.{4} Instead, only
evidence of concealment (accidental or intentional) is to be considered.
That evidence, in order to result in affirmance of a best mode rejection,
must tend to show that the quality of an applicant's best mode disclosure
is so poor as to effectively result in concealment. {5}
The evidence in this case, which is said to be probative of concealment,
consists of the inventor's notation in the specification that the use of
a digital computer was the best mode, the specification's Fig. 8
(a subterranean map produced by a digital computer) and the Miller affidavit
which indicated the existence of useable computer programs.
Certainly the evidence unequivocally shows the existence of a working
computer program as of the filing date. The board accurately notes that
the inventor had more information in his possession concerning his
contemplated best mode than he disclosed in the specification. Whether
failure to disclose a listing of that known computer program is fatal
is the question.
In general, writing a computer program may be a task requiring the
most sublime of the inventive faculty or it may require only the droning
use of a clerical skill. The difference between the two extremes lies in
the creation of mathematical methodology to bridge the gap between the
information one starts with (the "input") and the information that is
desired (the "output"). If these bridge-gapping tools are disclosed, there
would seem to be no cogent reason to require disclosure of the menial
tools known to all who practice this art. {6}
The Cardwell affidavit outlines in a very reasonable manner the
human-to-human elements necessary in communicating the concepts of a
particular computer program to one having ordinary (or, indeed, less
than ordinary) skill in this art. The specification provides the general
mathematical equations used and teaches the further "trick" of chopping
the physical input seismic traces into segments via a mathematical
manipulation. {7} For this reason, the specification in our view delineates
the best mode in a manner sufficient to require only the application of
routine skill to produce a workable digital computer program. {8}
Therefore, the quality of appellant's disclosure is not so poor as to
result in the concealment of the best mode.
Section 101
The technical subject matter and statutory rejection in this case are
quite closely related to those considered in In re Johnson, 589 F.2d 1070
(CCPA 1978). The legal analysis here is, for that reason, quite similar
in effect and method to that in Johnson.
In any event, as was done in Johnson, the analysis of the claims should
start with the two-pronged test accepted by the full court in In re Freeman,
573 F.2d 1237 (CCPA 1978), i.e., first, determine whether the claims
directly or indirectly recite process steps {9} which are themselves
calculations, formulae or equations. In In re Maucorps, supra; In re Diehr,
602 F.2d 982 (CCPA 1979).
The solicitor, however, urges that Parker v. Flook, supra, modified, to
the point of extinction, the second step of the Freeman "nutshell" {10}
analysis. The solicitor apparently would substitute, as a second stage
of analysis, a consideration of each of the steps in a process in
isolation and determine whether each is "old or conventional." {11} Indeed,
the PTO brief is little more than a catalog of steps considered to be old
and steps considered to be mathematical in nature. This manner of viewing
only portions of claims certainly is not countenanced in a fair reading
of Parker v. Flook. The Court specifically noted therein "[o]ur approach
to respondent's application is, however, not at all inconsistent with the
view that a patent claim must be considered as a whole." Id. at 594.
As was noted in In re Dieh, supra at 988, "[t]he novelty * * * of any
element or even of all the elements or steps or of the combination has
no bearing on whether the process is encompassed by Section 101." {12}
In any event, appellant concedes that the first step of the Freeman test
is met. Each of the claims recites "re-indexing and storing" in accordance
with the "seismic velocity function." An examination of the specification
does indicate that certain mathematical equations are used in conjunction
with such steps. The claims must be said to include the indirect
recitation of a mathematical equation.
The second Freeman step requires analysis of a claim, as a whole,
"to determine whether or not it merely defines a method of solving a
mathematical problem. If it does not, then it defines statutory subject
matter." In re Johnson, supra at 1079.
The solicitor makes the argument that a number of the claims {13} are
only mathematical in nature. It is said that as the appellant's "claim
preambles indicates, appellant is really mathematically converting one set
of numbers into a new set of numbers." {14} We do not agree with such
a characterization. Each of the claim preambles recites a system for
converting a "seismic time section consisting of * * * amplitude-versus-time
seismic traces" (these seismic traces are electrical signals from
geophones, i.e., physical apparitions, or particular patterns of
magnetization on magnetic tape, i.e., the pattern of the magnetization
being a physical manifestation, or a physical line on a paper chart)
into a "seismic depth section consisting of * * * amplitude-versus-depth
traces" (a subterranean cross-sectional map). The claimed invention,
contrary to the solicitor's arguments, converts one physical thing into
another physical thing just as any other electrical circuitry would do.
Accordingly, we see no basis for adjudging any of the claims to be
mere methods (or means) for solving mathematical equations and find
the claims to be within the bounds of Section 101.
Conclusion
We reverse the decision of the board with regard to each issue.
Reversed.
FOOTNOTES:
{1} This case is a continuation of a series of applications; the earliest
of which is serial No. 768,149, filed October 16, 1968.
{2} The Miller affidavit essentially stated that, on the basis of a
presentation given by appellant in 1967, a program for a digital
computer using a Fourier transform method was written by affiant and
three co-workers and successful computer runs made with the program.
Subsequently, affiant alone wrote another program suing the disclosed
"sonogram" method. It was the opinion of the affiant that persons
having education and work experience similar to his own (B.S. & M.S.
in electrical engineering, 5 years in the "design and development of
geophysical recording instrumentation and geophysical recording
instrumentation" and 4 years of FORTRAN IV programming) would be able
to easily write a successful computer program to carry out the
method of the disclosure. Further, it was opined:
[B]ased on his personal experience and observations, the English
and mathematical statements, standing alone in said specification,
and even without the physical analog embodiment, describe in such
full, clear, concise and exact terms that a person of electrical
engineering background with some experience in programming (a common
background for workers in geophysical instrumentation and data
processing) would be able to make and use a computer program for
carrying out the method of the described invention.
{3} The Cardwell affidavit (after establishing the not insubstanial
credentials of the affiant) discusses the kind and quality of information
that, in the affiant's opinion, is desirable in communicating the manner
of solving a problem using a computer program. The essence of the
affidavit noted:
9. That the desirable elements of human-to-human communication in
formulating, programming, and using computer programs are:
(1) an over-all statement (in English and mathematics) of the problem
to be solved.
(2) the specification of the expected input, and desired output,
quantities.
(3) the specification of the forms of input and output,
(4) the specification of the significant internal parameters of the
process.
(5) a set of statements of the mathematical and physical assumptions
underlying the sought solution of the stated problem.
(6) the writing of the relevant mathematical solution equations.
(7) the specification of the conditional logic (according to which
control is to be transferred between program statements depending
on computer results). (Elements (5), (6) and (7) constitute the
"algorithm" or the "trick" by which the problem, which may never
have been solved at all before, may not be solved.)
10. That it is his opinion, based on his personal experiences and
observations, that in the specification of the patent application,
Serial No. 768,149, filed October 16, 1968, the English statements,
the figures showing forms of input and output, and the mathematical
statements, of the specification of the patent application, Serial
No. 768,149, filed October 16, 1968, comprehend all the elements
(1) to (7) mentioned above with a completeness that is unusual, and
beyond what is necessary for the human-to-human communication that
precedes the writing of computer programs to solve problems such as
that treated in the subject specification.
{4} The question of a specification's adequacy in this context is in
no way related to the question of the specification's sufficiency in
complying with the enablment requirement. In re Gay, supra at 731,
309 F.2d at 772. Occasionally, the analysis of the technical information
may be similar.
{5} A similar standard has been applied by other courts. For instance,
in Union Carbide v. Borg-Warner, 550 F.2d 355 (6th Cir. 1977), the generic
disclosure of an "extruder" apparatus as the best mode was insufficient
in view of evidence that the inventor considered a special type of extruder
to be necessary an desirable for practice of the invention. Similarly, in
Dale Electronics v. R.C.L. Electronics, 488 F.2d 382 (1st Cir. 1973), the
disclosure of the class "epoxys, phenolics or silicones" as a "recommended
hardonable insulative material" was found to be an inadequate disclosure
of the best mode in that the inventor testified that a number of materials
within that class did not work and additionally he knew of a specific
undisclosed material, Rogers RX600, that worked very well.
{6} In assessing any computer-related invention, it must be remembered
that the programming is done in a computer language. The computer
language is not a conjuration of some black art, it is simply a highly
structured language. Analogously, if a person were to express a complete
thought in German, it would be no trick for a translator to convert that
thought into a palpable English form. The thought, thus expressed, might
not be worthy of Shakespeare, but it would be understandable to one who
uses the English language. Similarly, the conversion of a complete thought
(as expressed in English and mathematics, i.e., the known input, the
desired output, the mathematical expressions needed and the methods of
using those expressions) into the language a machine understands is
necessarily a mere clerical function to a skilled programmer.
{7} The step of dividing the traces into small segments is disclosed
to provide the advantageous result of allowing the detection of small
geologic subsurface irregularities otherwise undetectable.
{8} Taking into account the expert opinions found in the two affidavits,
it would appear that the detailed disclosure of the analog method in
combination with the suggestion that a digital method should be used
might be more enlightening to one having ordinary skill in the art than
the computer listing or flow chart required by the PTO. We view the PTO's
requirement as quite formalistic in view of the verbal flow chart provided
by appellant in the specification. In any event, the touchstone is the
content, not its form.
{9} In Freeman, for the purpose of testing compliance with Section 101,
process and "means for" claims were treated in the same manner. We do the
same here. In re Maucorps, 609 F.2d 481 (CCPA 1979).
{10} This "nutshell" analysis follows that found in Gottschalk v. Benson,
409 U.S. 63 (1973).
{11} The Supreme Court in Parker v. Flook discussed Mackay Radio and
Telegraph v. Radio Corporation of America, 306 U.S. 86 (1939) and pointed
to the analysis therein as proper in cases involving this issue. We would
observe that use of the solicitor's analysis on the claims in Mackay:
4"15. An antenna comprising a pair of relatively long conductors
disposed with respect to each other at an angle substantially
equal to twice * * * degrees, 1 being the length of the wire
and 2 the operating wave length in like units, and means in
circuit with said antenna for exciting the conductors in phase
opposition whereby standing waves of opposite instantaneous
polarity are formed on the conductors throughout their length."
Claim 16 claims an antenna arranged in comformity to the empirical
formula, as in Claim 15, with a "similar parallel pair of
conductors spaced an odd number of quarter wave lengths away from
said first mentioned pair * * *" These parallel wires constitute
the "reflector," which, as already noted, was old in the art.
[Id. at 96 n.4, 40 UPSQ at 203 n.4.]
would result in a finding that those claims were unpatentable since the
"conductors" were old and the equation is to be ignored. The Supreme
Court has told us by its decision in Mackay Radio that the
interrelationship of equations and other claim portions is of
paramount importance. Parker v. Flook had no such interrelationship in
that the steps of the claims only produced a number.
{12} The PTO contends that this statement in Diehr conflicts with Parker
v. Flook. We disagree. We believe the Court adequately treated such
dichotomy in noting:
This case turns entirely on the proper construction of Section 101
of the Patent Code, which describes the subject matter that is
eligible for patent protection. It does not involve the familiar
issues of novelty and obviousness that routinely arise under
Sections 102 and 103 when the validity of a patent is challenged.
[Emphasis added. Id. at 588.]
{13} The remainder of the claims, 15 and 18-20, provide for plotting the
"refined signals" and are apparently conceded to be more than merely
mathematical in nature. Nevertheless, the plotting step is said to be
only a "post-solution activity" and, in the solicitor's view of Parker
v. Flook, additional evidence that these claims recite non-statutory
subject matter.
{14} The board relied on a somewhat similar analysis when it noted that
the "only difference between the claimed subject matter which produces
an output such as Figure 2 and a conventional seismic time section as
shown in Figure 1 appears to lie in the calculations performed in
connection with the aforementioned equations." Even if this is an
attempt to follow Parker v. Flook, it is an overbroad recital of the
Court's analysis.
The error of this broadbrush analysis is amply exemplified by its simple
application to the claims found patentable by the Supreme Court in Mackay
Radio, supra at footnote, 11. In that case, the only difference between
the claimed antenna and prior art antennas lay in the calculation used
to describe the physical relationship between the elements. Under the
board's analysis such a claim would be nonstatutory.