CITE: 397 F.2d 856
CMON: June 1968
PLAIN: In re Tarczy-Hornoch, Zoltan
DEFND: United States Patent and Trademark Office
COURT: United States Court of Customs and Patent Appeals
DATE: June 27, 1968
HISTORY:
Appeal from a decision of the United States Paetnt Office Board of Appeals,
serial No. 23,739, affirming examiner's rejection of claims in application
relating to pulse sorting apparatus and method. The Court of Customs and
Patent Appeals, Rich, Judge, held that a process claim, otherwise
patentable, will no longer be rejected because the application of which it
is a part discloses apparatus which will inherently carry out the recited
steps; overruling decisions to the contrary. REVERSED.
SUMMARY:
A process is patentable even if only one apparatus is disclosed to
implement the process.
JUDGE: RICH, Judge
Before WORLEY, Chief Judge, and Judges RICH, SMITH, ALMOND, KIRKPATRICK. *
* Senior District Judge, Eastern District of Pennsylvania, sitting by
designation.
DECISION:
This appeal is from a decision of the Patent Office Board of Appeals {1}
affirming the examiner's rejection of claims 31-35 and 40 in appellant's
application serial No. 23,739, filed April 21, 1960, entitled "Pulse
Sorting Apparatus and Method." Claims 16-28, 29, 30, and 36-39 have been
allowed.
The invention of the claims on appeal is a method for sorting or counting
electrical pulses, effective in counting of such pulses of varying amplitudes
even at extremely high repetition rates, i.e., at rates greater than
50,000,000 (50 megacycles) per second. Appellant's method envisions the use
of a multistage apparatus. The first stage counts every pulse within its
capacity. Cancelling orders in the form of "inhibit" pulses are then sent
to each of the succeeding stages to prevent another counting of those
same pulses. Should the initial stage be unable to handle a pulse, no
cancellation order is given the second stage. Then pulse, then, is
counted by the second stage. Thereupon, cancellation orders are sent to
succeeding stages.
Claim 31 is illustrative:
31. In a method for sorting a plurality of input pulses by utilizing
a plurality of serially connected stages adapted to accept pulses,
causing each input pulse to be applied to each stage sequentially in
time, generating an inhibit pulse in each stage which accepts an input
pulse and applying the inhibit pulse to each succeeding stage in
substantial coincidence with the input pulse so that the input pulse
is canceled to thereby prevent registration of the same input pulse
in a succeeding stage.
The examiner allowed appellant's apparatus claims. However, he rejected all
the method claims on the ground that they merely defined the function of
appellant's apparatus. In appeal to the board, appellant argued mainly
against the propriety of the "function of the apparatus" rejection. However,
this point, in the board's opinion, was foreclosed: "[The] previous
decisions by the Court of Customs and Patent Appeals are binding on us
until overruled." The board did reverse the rejection of two of the method
claims on a showing that the defined methods were capable of performance
by apparatus other than that disclosed. The rejection of the other claims
was affirmed.
The issue, therefore, is whether a process claim, otherwise patentable,
should be rejected because the application, of which it is a part, discloses
apparatus which will inherently carry out the recited steps. There is no
contention that the claims on appeal can be saved by the "exceptions" to the
doctrine, exempting claims for those processes capable of performance either
manually or by another, dissimilar apparatus. See In re Parker, 23 CCPA 721,
79 F.2d 908 (1935).
We have determined that our decisions requiring the rejection of such claims
are justified neither by history nor policy. Today we overrule those
decisions.
The expression "function of an apparatus"{2} is our legacy of 19th century
controversy over the patentability of processes. Early cases proscribed
a kind of overweening claim in which the desirable result first effected
by an invention was itself appropriated by the inventor. Two notorious
examples will suffice.
Wyeth had obtained a patent for a machine for cutting ice into blocks of
uniform size. His specification read: "It is claimed as new, to cut ice
of a uniform size, by means of an apparatus worked by any other power than
human. The invention of this art, as well as the particular method of the
application of the principle, are claimed by * * * [Wyeth]." In an
infringement suit, in 1840, Justice Story, sitting on circuit, held the
claimed matter "unmaintainable" in point of law and a patent, granted for
such, void as for an abstract principle and broader than the invention.
"A claim broader than the actual invention of the patentee is, for that
very reason, upon the principles of the common law, utterly void, and the
patent is a nullity." Wyeth v. Stone, 1 Story 273, 285-86 (C.C. Mass. 1840).
The first comprehensive review of process patents by the Supreme Court
was occasioned some thirteen years later by Morse's attempt to enforce his
telegraph patent. Chief Justice Taney wrote the opinion for the Court,
which held several apparatus claims valid and infringed. O'Reilly v. Morse,
56 U.S. (15 How.) 62 (1853). The only process claim in the Morse patent was
the subject of separate discussion. The claim read:
Eighth. I do not propose to limit myself to the specific machinery
or parts of machinery described in the foregoing specification and
claims; the essence of my invention being the use of the motive power
of the electric or galvanic current, which I call electro-magnetism,
however developed for marking or printing intelligible characters,
signs, or letters, at any distances, being a new application of that
power of which I claim to be the first inventor or discoverer.
The Chief Justice commented:
If this claim can be maintained, it matters not by what process or
machinery the result is accomplished. For aught that we now know some
future inventor, in the onward march of science, may discover a mode
of writing or printing at a distance by means of the electric or
galvanic current, without using any part of the process or combination
set forth in the plaintiff's specification. His invention may be less
complicated - less liable to get out of order - less expensive in
construction, and in its operation.But yet if it is covered by this
patent the inventor could not use it, nor the public have the benefit
of it without the permission of this patentee.
* * *
No one we suppose will maintain that Fulton could have taken out a
patent for his invention of propelling vessels by steam, describing
the process and machinery he used, and claimed under it the exclusive
right to use the motive power of steam, however developed, for the
purpose of propelling vessels. {3}
The claim was, of course, held invalid because it did not correspond in scope
to Morse's invention. "[Professor Morse] * * * has not discovered that the
electro-magnetic current, used as motive power, in any other method, and
with any other combination, will do as well." {4} The Chief Justice also
summarized the law in this area:
Whoever discovers that a certain useful result will be produced, in
any art, machine, manufacture, or composition of matter, by the use
of certain means, is entitled to a patent for it; provided he specifies
the means he uses in a manner so full and exact, that any one skilled
in the science to which it appertains, can, by using the means he
specifies, without any addition to, or subtraction from them, produce
precisely the result he describes. And if this cannot be done by the
means he describes, the patent is void. And if it can be done, then
the patent confers on him the exclusive right to use the means he
specifies to produce the result or effect he describes, and nothing
more. And it makes no difference, in this respect, whether the effect
is produced by chemical agency or combination; or by the application
of discoveries or principles in natural philosophy known or unknown
before his invention; or by machinery acting altogether upon
mechanical principles. In either case he must describe the manner
and process as above mentioned, and the end it accomplishes. And any
one may lawfully accomplish the same end without infringing the patent,
if he uses means substantially different from those described.
The latter exposition apparently cast some doubt on the validity of
claims for processes generally, whether mechanical or not. See Risdon
Locomotive Works v. Medart, 158 U.S. 68, 75 (1894); Tilghman v. Proctor,
102 U.S. 707, 726 (1880); O'Reilly v. Morse, 56 U.S. (15 How.) 62 (1853)
(Grier, J., dissenting). It shortly became clear, however, that the
patentability of chemical processes at least had been unaffected. In
Corning v. Burden, 56 U.S. (15 How.) 252 (1853), a case decided after
Morse but during the same term, the issue was whether Burden's ambiguous
claim was properly interpreted as for a process. The patent was ostensibly
directed toward a machine for rolling puddle balls in the manufacture of
iron. But the lower court had instructed the jury that the patent was for
a new method of converting puddle balls to blooms "by continuous pressure
and rotation * * * between converging surfaces." The Supreme Court held
the claim limited to the machine, since, in the Court's mind, a contrary
decision would call into question the validity of the claim. {5} In an
influential aside on the way to this conclusion, Justice Grier, for a
unanimous Court, discussed the patentability of processes:
A process, eo nomine , is not made the subject of a patent in
our act of Congress. It is included under the general term "useful art".
Any art may require one or more processes or machines in order to
produce a certain result or manufacture.The term machine includes
every mechanical device or combination of mechanical powers and devices
to perform some function and produce a certain effect or result. But
where the result or effect is produced by chemical action, by the
operation or application of some element of power of nature, or of one
substance to another, such modes, methods, or operations, are called
processes. A new process is usually the result of a discovery; a
machine, of invention. The arts of tanning, dyeing, making water-proof
cloth, vulcanizing India rubber, smelting ores, and numerous others are
usually carried on by processes, as distinguished from machines. One may
discover a new and useful improvement in the process of tanning, dyeing,
etc., irrespective of any particular form of machinery or mechanical
device. And another may invent a labor-saving machine by which this
operation or process may be performed, and each may be entitled to
his patent. As, for instance, A has discovered that by exposing India
rubber to a certain degree of heat, in mixture or connection with
certain metallic salts, he can produce a valuable product or
manufacture; he is entitled to a patent for his discovery, as a process
or improvement in the art, irrespective of any machine or mechanical
device. B, on the contrary, may invent a new furnace or stove, or
steam apparatus, by which this process may be carried on with much
saving of labor, and expense of fuel; and he will be entitled to a
patent for his machine, as an improvement in the art. Yet A could not
have a patent for a machine, or B for a process; but each would have
a patent for the means or method of producing a certain result, or
effect, and not for the result or effect produced. It is for the
discovery or invention of some practicable method or means of producing
a beneficial result or effect, that a patent is granted, and not for
the result or effect itself. It is when the term process is used to
represent the means or method of producing a result that it is
patentable, and it will include all methods or means which are not
effected by mechanism or mechanical combinations.
But the term process is often used in a more vague sense, in which
it cannot be the subject of a patent. Thus we say that a board is
undergoing the process of being planed, grain of being ground, iron
of being hammered, or rolled. Here the term is used subjectively or
passively as applied to the material operated on, and not to the method
or mode of producing that operation, which is by mechanical means, or
the use of a machine, as distinguished from a process.
In this use of the term it represents the function of a machine, or
the effect produced by it on the material subjected to the action of
the machine. But it is well settled that a man cannot have a patent
for the function or abstract effect of a machine, but only for the
machine which produces it.
The dictum is interesting for its reflection of the context in which the
"function of a machine" objection to patentability was initially applied.
It is clear that some processes were thought patentable and others not.
It is also clear that "function of a machine" was symbolic of the latter.
It is yet unclear, at this point in the development of the law, whether
the dividing line marks a difference between means and result or chemistry
and mechanics. In any event, the simple notion of undue breadth has been
abandoned or, at least, considerably refined.
Several subsequent cases upheld process patents. Cochrane v. Deener,
94 U.S. 780 (1876); Tilghman v. Proctor, 102 U.S. 707 (1880). In the
first of these a patent for a process for sifting flour was held valid
and infringed. Justice Bradley wrote for the Court:
That a process may be patentable, irrespective of the particular form of
the instrumentalities used, cannot be disputed. If one of the steps of
a process be that a certain substance is to be reduced to a powder, it
may not be at all material what instrument or machinery is used to effect
that object, whether a hammer, a pestle and mortar, or a mill. Either
may be pointed out; but if the patent is not confined to that particular
tool or machine, the use of the others would be an infringement, the
general process being the same. A process is a mode of treatment of
certain materials to produce a given result. It is an act, or a series
of acts, performed upon the subject-matter to be transformed and
reduced to a different state or thing. If new and useful, it is just
as patentable as is a piece of machinery. In the language of the patent
law, it is an art. The machinery pointed out as suitable to perform
the process may or may not be new or patentable; whilst the process
itself may be altogether new, and produce an entirely new result. The
process requires that certain things should be done with certain
substances, and in a certain order; but the tools to be used in doing
this may be of secondary consequence. {6}
This discussion as well as the validation itself of the flour-sifting
process seemed to show that the connotation of the "function of a machine"
rejection was not an objection to mechanical processes but rather to mere
effects masquerading as processes.
Justice Bradley's language in Tilghman v. Proctor tended to reinforce this
idea. In that case although the process in question was a chemical one, {7}
he again took up the patentability of processes in general and discussed,
among other cases, O'Reilly v. Morse, supra, to show that Chief Justice
Taney "fully acquiesced in the legality and validity of a patent for a
process." The "true ground" of that decision, that opinion points out, was
that Morse's eighth claim was directed to a principle, not a process, a
claim to a power of nature itself by one who had only first employed that
power.
In the Telephone Cases, 126 U.S. 1 (1887), 8 S.Ct. 778, the Court reiterated
this theme in upholding the validity of Bell's fifth claim which read:
5. The method of, and apparatus for, transmitting vocal or other sounds
telegraphically, as herein described, by causing electrical undulations,
similar in form to the vibrations of the air accompanying the said vocal
or other sounds, substantially as set forth.
It was urged that the decision in O'Reilly v. Morse required that this claim
be held invalid. Chief Justice Waite, who wrote for the Court, replied that
that case, on the contrary, required validation of the claim. Bell's claim,
be observed, was for a method of using electricity, not for electricity
"in its natural state."
The Court made it clear that as long as the claim delineated a means and
not a result, the inventor would not be penalized for having invented the
only means for effecting the result.
It may be that electricity cannot be used at all for the transmission of
speech except in the way Bell has discovered, and that therefore, practically,
his patent gives him its exclusive use for that purpose, but that does not
make his claim one for the use of electricity distinct from the particular
process with which it is connected in his patent. It will, if true, show
more clearly the great importance of his discovery, but it will not
invalidate his patent. {8}
Only a few years later, however, the Court seemed to turn away from the
means-result dichotomy. {9} In Risdon Locomotive Works v. Medart, 158 U.S.
68 (1894), the validity of a patent for a process of manufacturing belt
pulleys was in issue. The process involved the following steps: centering
the pulley center or spider; grinding the ends of the arms of the spider
concentrically with the axis of the pulley; boring the center; securing
the rim to the spider; grinding the face of the rim concentrically with
the axis of the pulley; and grinding or squaring the edges of the rim.
The Court rightly observed that the process was "purely a mechanical one"
and proceeded to declare it unpatentable. The Court's reasoning began with
an analysis of the "great case" of O'Reilly v. Morse, supra, and asked
whether Chief Justice Taney's comments on "processes involving chemical
effects" were not too broad to be supported by subsequent cases. After
a review of several of those cases, the Court concluded that the validity of
process patents had, in fact, been upheld when the process was chemical or
involved the use of one of the agencies of nature for a practical purpose.
158 U.S. at 77, 15 S.Ct. 745. See, e.g., Telephone Cases, supra; New Process
Fermentation Co. v. Maus, 122 U.S. 413 (1887), 7 S.Ct. 1304.
The Court then cited Corning v. Burden, supra; Wyeth v. Stone, supra, and
several fairly contemporaneous circuit court decisions for the proposition
that it was "equally clear" that no valid patent could be obtained "for
a process which involves nothing more than the operation of a piece of
mechanism, or, in other words, for the function of a machine." The patent
in issue was, of course, invalid since "it clearly falls within this
category." The Court explained:
* * * it is upon its face "for an improved process of manufacture,"
and mechanism is shown and described simply for the purpose of
exhibiting its operation, which is described in detail. The result is
a pulley more perfectly balanced, more faultless in shape, stronger
and more durable, perhaps, than any before produced; but this was
not because the patentee had discovered anything new in the result
produced, but because the mechanism was better adapted to produce that
result than anything that had before been known. As pulleys of that
description had been produced before, doubtless, with greater care in
the manufacture of them, a pulley as perfect as his might have been
made. So that all he invented in fact was a machine for the more
perfect manufacture of such pulleys. The operation of function of
such machine, however, is not patentable as a process.
This decision was understandably taken as proscribing patents for mechanical
processes. Whitney, Patentable Processes, 19 Harv.L.Rev. 30, 33 (1905).
And this impression could only have been reinforced by Westinghouse v.
Boyden Power Brake Co., 170 U.S. 537, 18 S.Ct. 707 (1897), in which the
Court held certain claims for a brake mechanism not infringed. The Court
observed that if the claims were interpreted as process claims, as the
patentee urged, they would be open to the "mere function of a machine"
objection. The Court noted that Risdon was conclusive against such
process claims, unless, perhaps, those capable of manual operation were
exempted from its strictures as several power court cases had held. On
the latter possibility the Court felt that the facts before it did not
warrant an expression of opinion.
It was at this unfortunate time that our predecessor in jurisdiction of
appeals from the Patent Office, the Court of Appeals of the District of
Columbia, attempted a synthesis of the cases on "function of an apparatus."
In re Weston, 17 App.D.C. 431 (1901). The Commissioner of Patents had
rejected certain claims for a process of manufacturing devices used in
electrical measuring instruments. {10} The question before the court on
appeal from the Commissioner was "the greatly-vexed one, how far a method
or a process is patentable, and when it is a subject of patentability."
The court reviewed the case law, with great emphasis on the Supreme
Court's most recent pronouncements on the subject, viz., Risdon and
Westinghouse, and came to the following conclusion: {11}
It seems to us from all these authorities the deductions to be drawn
are these: First, that processes involving a chemical or other elemental
action, if new and useful, are patentable; second, that a process,
which amounts to no more than the mere function of a machine, is not
patentable; third, that a process or method of a mechanical nature,
not absolutely dependent upon a machine, although perhaps best
illustrated by mechanism, may, if new and useful, be the proper subject
of a patent, even though it involves no chemical or other elemental
action.
In this last class of cases, possibly a very large class, and thus
far certainly a very indefinite class, the criterion of patentability,
so far as it seems possible yet to state any definite criterion, would
seem to be that the process may be performed by hand or by other
mechanism than that exhibited, although perhaps not with equal
efficiency. That we must at all events recognize the existence of such
a class would seem to be beyond doubt.
It is probably more than a quibble to inquire whether the Telephone Cases
are at all reconcilable with the ban on processes not chemical or, in fact,
whether Risdon will support the exemption for those capable of manual
operation. Under the circumstances, however, it could hardly be unexpected
that a wrap-up of the law would leave a corner or two protruding. This was
underscored by the next Supreme Court decision on the patentability of
processes. In Busch v. Jones, 184 U.S. 598 (1902), the Court upheld four
apparatus claims for a new paper press but found invalid the following
process claim:
5. The process herein described for treating folded printed sheets of
paper in dry pressing, the same consisting of subjecting a collection
of such sheets to pressure without the use of fuller-boards, and while
under such pressure tying them into a compact bundle with end boards,
then removing them immediately from the press, and allowing them to
remain tied sufficiently long to fix and complete dry pressing.
The inquiry, the Court insisted, was "entirely independent of questions
as to what constitutes a patentable process discussed * * * in Risdon
Locomotive Works v. Medart * * * and in Westinghouse v. Baden [sic,
Boyden] Power Brake Co. * * *." Nonetheless the process was held to be
no more than the operation and effect of a machine and apparently held
invalid for that reason.
The Supreme Court, however, was not finished with patents for mechanical
processes. In a leading case, Expanded Metal Co. v. Bradford, 214 U.S.
366 (1908), upon which the Patent Office here principally relies, the Court
sustained a patent for a process for making "expanded metal", over the
express contention of the infringers that Risdon and Corning restricted
patents to processes involving chemical action. The Court commented that
it was not disposed to question the decision in those cases. However, it
did not feel that the unpatentability of mechanical processes had been
established by them. Cases subsequent to Risdon, the Court pointed out,
showed that its language should not be taken as an absolute proscription
of patents for mechanical processes. The Court quoted the passage from
Westinghouse v. Boyden Power Brake Co. {12} which admitted the possibility,
at least, of patents for mechanical processes susceptible of performance
"by simple manipulation."
The Court also appealed to text writers and its own previous decisions:
What then is the statutory right to a patent for a "process" when the
term is properly considered? Curtis, in his work on the Law of Patents,
says:
"A process may be altogether new, whether the machinery by which it
is carried on be new or old. A new process may be invented or
discovered, which may require the use of a newly-invented machine.
In such case, if both the process and the machine were invented by
the same person, he could take separate patents for them. A new
process may be carried on by the use of an old machine, in a mode
in which it was never used before * * *. In such a case, the
patentability of the process in no degree depends upon the characteristic
principle of the machine, although machinery is essential to the
process, and although a particular machine may be required." Curtis,
4th ed. section 14, note.
In Robinson on Patents, vol. 1, section 167, it is said:
"While an art cannot be practiced except by means of physical agents,
through which the force is brought in contact with or directed toward
its object, the existence of the art is not dependent on any of the
special means employed. It is a legal, practical invention in itself.
Its essence remains unchanged, whatever variation takes place in its
instruments as long as the acts of which it is composed are properly
performed."
And Walker on Patents, 4th ed. section 3, states that valid process
patents may be granted for "operations which consist entirely of mechanical
transactions, but which may be performed by hand or by any of several
different mechanisms or machines."
It is undoubtedly true, and all the cases agree, that the mere function of
effect of the operation of a machine cannot be the subject-matter of a lawful
patent. But it does not follow that a method of doing a thing, so clearly
indicated that those skilled in the art can avail themselves of mechanism to
carry it into operation, it not the subject-matter of a valid patent. The
contrary has been declared in decisions of this court. A leading case is
Cochrane v. Deener, 94 U.S. 780, in which this court sustained a process
patent involving mechanical operations * * *.
The Court's conclusion was "that an invention or discovery of a process
or method involving mechanical operations, and producing a new and useful
result, may be within the protection of the Federal statute, and entitle
the inventor to a patent for his discovery." This conclusion, combined with
the Court's earlier approving comments on the "function * * * of a machine"
objection to patentability emptied that phrase of its purported equivalence
to "mechanical processes". The Court's specific equation of "function of
a machine" with "effect of the operation of a machine" was less effective
than it might have been to restore the means-result distinction, discernible
in almost all the cases before Risdon, since it occurred in the shadow, as
it were, of the quoted passages from the Westinghouse opinion and the Walker
text. It is, in fact, on these incidental, almost neutral, references
that the solicitor now relies to show the Court's imprimatur upon the
Weston view of "function of a machine". That the Court meant to adhere
to the means-result dichotomy seems fairly clear when the Expanded Metal
opinion is read against the background of seventy years' opinions on
patentability of processes and when it is recalled that Risdon and
(perhaps) Westinghouse represent the only substantial deviations from
the means-result test in the Supreme Court's history.
The Court seems to have confirmed this interpretation the last time this
issue was before it. In Waxham v. Smith, 294 U.S. 20, 55 S.Ct. 277 (1934),
the Court held valid and infringed a claim to a process for incubating
eggs. It was argued that the claim was an attempt to patent a function.
The Court replied:
But the function which a machine performs, here the hatching of eggs,
is to be distinguished from the means by which that performance is
secured * * *. A method, which may be patented irrespective of the
particular form of the mechanism which may be availed of for carrying
it into operation, is not to be rejected as "functional", merely because
the specifications show a machine capable of using it.
The Expanded Metal and Waxham processes could have been performed in some
manual fashion or by apparatus different from that disclosed by the patents.
The cases are not, on their facts, therefore, at variance with the Weston
recapitulation of the law. Thus Weston has survived. {13}
In the Court of Customs and Patent Appeals, the Weston views have more than
survived, they have flourished. In In re Ernst, 21 CCPA 1235, 71 F.2d 169
(1934), the Weston doctrine was embraced by this court. Appellant's
reliance on Expanded Metal was unavailing - the court relied on the
possibility of manual operation and distinguished that case. The "mere
function of an apparatus" rejection was regularly upheld thereafter.
See, e.g., In re McCurdy, 22 CCPA 1140, 76 F.2d 400 (1935); In re Wadman,
25 CCPA 936, 94 F.2d 993 (1938); In re Mead, 29 CCPA 1001, 127 F.2d 302
(1942); In re Solakian, 33 CCPA 1054, 155 F.2d 404 (1946); In re Nichols,
36 CCPA 759, 171 F.2d 300 (1948); In re Ashbaugh, 36 CCPA 902, 173 F.2d 273
(1949); In re Horvath, 41 CCPA 844, 211 F.2d 604 (1954); In re Gartner,
42 CCPA 1022, 223 F.2d 502 (1955).
The Patent Office Board of Appeals has generally followed the direction of
this court on the "function of the apparatus" rejection. {14} See Ex parte
Goldsmith, 94 USPQ 403 (Pat. Off. Bd. App. 1952); Ex parte Wright, 72 USPQ 196
(Pat. Off. Bd. App. 1946); Ex parte Hunter, 34 USPQ 337 (Pat. Off. Bd. App.
1937). In 1952, however, Examiner-in-Chief Bailey wrote a dissenting
opinion in Ex parte Goldsmith, supra, in which he listed Supreme Court
decisions bearing upon the "function of the apparatus" rejection. He
concluded:
The above Supreme Court decisions when all are considered and
correlated hold:
(1) That useful methods are statutory subject matter, whether they
involve chemical or other elemental action, or are purely mechanical,
and when a claim in fact defines a method its patentability is
determined by comparison with the prior art.
(2) That the mere function or effect of a machine is not a method,
and thus not statutory subject matter, so, when a claim that purports
to define a method, is found to in fact define only the desired function
or effect (and not the acts or steps which result in the desired
function or effect), it is properly refused or held invalid on such
grounds.
Mr. Bailey did not argue that the board majority's adherence to the Weston
rule was at variance with the decisions of this court. Rather, he urged that
those decisions should not be followed in view of their inconsistency with
decisions of the Supreme Court. See also Ex parte Hart, 117 USPQ 193 (Pat.
Off. Bd. App. 1957) (concurring opinion); Ex parte Roth, 118 USPQ 112 (Pat.
Off. Bd. App. 1957) (concurring opinion).
Ten years later Mr. Bailey wrote the majority opinion in In re Symons, 134
USPQ 74 (Pat. Off. Bd. App. 1962), in which the rejection of certain process
claims as a function of the apparatus was reversed, primarily because the
processes were capable of operation by different apparatus and, additionally,
because the rejection was thought inconsistent with the Patent Act of 1952.
The latter conclusion was predicated upon the provisions in the act for the
patentability of processes eo nomine and of new uses of old machines as
processes. 35 USC 100, 101 (1964); cf. Ex parte Kangas, 125 USPQ 419
(Pat. Off. Bd. App. 1960). It was also based on the mandatory language of
the statute: "A person shall be entitled to a patent unless - * * *."
35 USC 102 (1964); see In re Stempel, 44 CCPA 820, 241 F.2d 755 (1957);
In re Ratti, 46 CCPA 976, 270 F.2d 810 (1959).
Ex parte Symons was overruled the following year by a specially convened
panel of seven members of the board. Ex parte Packard, 140 USPQ 27 (Pat.
Off. Bd. App. 1963). In Packard, a majority reversed a rejection of three
method claims for defining merely the function of the apparatus when it was
shown that the apparatus was capable of other uses. {15} The majority
then went on "to re-evaluate and restate the position of the Board of
Appeals" on the function of the apparatus rejection. That position, in
essence, was that no statutory basis was required to sustain these
rejections and that, it one were required, 35 USC 112 might well suffice.
The opinion concluded:
While there is some doubt in our minds as to the equity of rejecting
otherwise proper method claims as being drawn to the function of the
apparatus, nevertheless, we are of the opinion that the several
decisions of the Court of Customs and Patent Appeals before and after
the 1952 Patent Act affirming this ground of rejection are binding on
us unless and until this ground of rejection is expressly overruled
by the Court of Customs and Patent Appeals. Insofar as the decision of
Ex pate Symons is inconsistent with our present holding, it is overruled.
[Emphasis ours.]
Two members of the board, one of whom was Mr. Bailey, dissented. Mr. Bailey
noted that all members of the special panel agreed on the proposition that
such rejections are inequitable.
The issue in this case, therefore, is whether this court will continue to
insist upon the connotation its decisions and those of its predecessor in
jurisdiction have breathed into the "function of an apparatus" symbol or
will restore to that phrase its former meaning.
Appellant argues that the "function of the apparatus" doctrine as it is
presently conceived is historically unsound, devoid of statutory basis,
and at variance with the new Congressional policy evidenced by the Patent
Act of 1952.
The solicitor, on the other hand, argues that the present doctrine is
required by Expanded Metal v. Bradford, supra. He urges, in rebuttal, that no
specific prohibition is required to reject a claim as embracing non-statutory
subject matter, and that there has been no shift in Congressional policy.
{16}
Our present review of the major precedents has persuaded us that the
decisions of the Supreme Court have not required the rejection of
process claims merely because the process apparently could be carried
out only with the disclosed apparatus. These rejections have been the
product of decisions in the lower courts and especially in this court.
We decide today that we will not longer follow those decisions. {17}
In taking this step we are moved, to some extent, by the fact that the
doctrine has been shown not to proceed from its purported well-springs.
Even so, we would leave it undisturbed were it not the product of an
essentially illogical distinction unwarranted by, and at odds with, the
basic purposes of the patent system and productive of a range of
undesirable results from the harshly inequitable to the silly.
The illogic of the "function of the apparatus" objection to patentability
was clearly seen by Robinson even before it was fastened on our
jurisprudence. He observed:
Where a process consists entirely in the operation of a machine or other
instrument, it approaches so nearly to the function of the instrument
employed that several decisions have been rendered identifying it
therewith, and hence denying its patentability. But the process and
the function are, after all, two entirely separate entities, both in
intellectual and physical contemplation; the former being capable of
conception apart from any object acted on, the latter, not so. The
difficulty is another form of the old confusion between the end and
the means, and is to be avoided by defining sharply the end to be
accomplished, and determining whether the machine or the operation
performed by it is the actual means. For if the operation
performed by the machine is new in reference to the object upon
which it is employed, a new process has been invented; and this is
no less true if the machine or instrument employed is new than if it
were old, or if the process can be performed in no other known way
than by this particular machine. While, on the other hand, if
the operation is known in reference to the object, the invention of
a new machine for performing it does not make a new process, but only
a new instrument for applying it. {18} [Emphasis ours.]
We agree with this analysis. We feel that the basic rationale of the patent
system demands the upholding of properly drawn claims for new, useful, and
unobvious processes, regardless of whether the inventor has invented one,
two, or more machines to carry them out. Cf. Waxham v. Smith, supra.
Exceptional treatment for this narrow class of processes is, pro tanto,
inconsistent with the broad goal of the patent system, the promotion of
the useful arts, in that it necessarily denies to certain inventors the
exclusive rights to their discoveries and thus defeats the intent which
must be presumed of Congress in enacting the Patent Statutes.
We think there is no merit in the suggestion that section 112 of the
Patent Act of 1952 sanctions such a practice. See Ex parte Packard,
supra. Section 112 does require that the specification conclude with
claims which particularly point and distinctly claim the subject matter
which is regarded as the invention. But the "mere function of the
machine" cases do not involve imprecisely defined subject matter. The
notion of undue breadth in the claims may be consistent with the
proscription of claims directed merely to effects or results. See
O'Reilly v. Morse, supra. The "mere function of the machine" cases,
however, have clearly regarded the question as whether the processes
at bar were within the statutory classes of invention. The emphasis has
never been on the claims but always on the processes .
The inquiry has been into whether these are "proper subjects" for a patent
after a reference, more often than not, to the celebrated observation in
Corning v. Burden, supra, that although it is included under the general
term useful art , "a process eo nomine is not made
the subject of a patent" by our laws. See, e.g., In re Weston, supra.
Furthermore, during the entire gestation period of the "function of the
apparatus" objection, the patent statutes contained the following or
a similar provision: {19}
[The inventor] shall particularly point out and distinctly claim
the part, improvement, or combination which he claims as his
invention or discovery.
The provision, indistinguishable for our purposes from the present statute,
{20} was never referred to at all, as far as we know, in the elaboration
of the "function of the apparatus" rejection. And we see no indication
in the legislative history of section 112 or in the commentary on the
section that there was contemplated any change in the significance of
its provision for claims. See Federico, Commentary on the New Patent Act,
35 U.S.C.A. 1 (1954).
Furthermore, perpetuation of this doctrine only invites inequitable
consequences. The essential difficulty is in the fact that, although at the
time of the application only one apparatus may be known which is capable of
carrying out the process, others may become available later. In which case,
of course, the inventor may be cheated of his invention. It is peculiarly
our responsibility to see that the decisional law does not require this
kind of inequity.
In the Telephone Cases, supra, it was pointed out that Bell's invention,
primarily a method, would have been lost to him had his process claim
been held invalid since he had failed to claim the apparatus which later
became commercially important. But the Court upheld the method claim:
"Surely a patent for such a discovery is not to be confined to the mere
means he improvised to prove the reality of his conception." We think it
clear that justice militates against so confining any process patent.
This case illustrates one of the peculiarities of the doctrine. Several
method claims, generic to those rejected, have been allowed, simply
because they admit of operation by two sets of apparatus. This would
suggest that any two process claims, each unpatentable under the
"function of the apparatus" theory, could be merged into a patentable
claim. We see no interest of the Patent System well served by such
a practice.
Accordingly, the decision of the board is REVERSED.
DISSENT:
KIRKPATRICK, Judge, dissenting, with whom WORLEY, Chief Judge, joins.
In order to reverse the decision of the Patent Office Board of Appeals, the
majority overrules a line of decisions of this court affirming and applying
a rule which is about as solidly established as any rule of the patent law.
Beginning with a decision in 1901 of the Court of Appeals for the District of
Columbia, the predecessor of this court in jurisdiction of appeals from the
Patent Office, the rule that a process which amounts to no more than the mere
function of a machine is not patentable has been consistently followed over a
period of nearly seventy years. So far as I know, the rule has been
generally acquiesced in and accepted, and has been applied in a score
or more of cases in this court without challenge.
The question presented by this appeal is therefore whether this court is
now justified in disregarding the rule of stare decisis which all agree
is vital to the preservation of the uniformity and predictability of the
law. In such a situation, the principles by which the court should be
guided are clear and well settled.
In a system of jurisprudence founded upon stare decisis, as our system is,
an established rule or principle will not be departed from except in case
of grave necessity when cogent reasons require such departure. If a rule
of law, well established by decisions, is erroneous, it is still not to be
lightly set aside by the courts but any abandonment or alteration of it
should be by the legislature, the body charged with the responsibility of
making the law and not by us whose only duty is to define and construe it.
Accepting then, the proposition that a heavy burden rests upon those who
go about upsetting thoroughly settled precedent, it appears to me that the
reasons advanced in the majority opinion for doing so in this case are
wholly insufficient to justify its decision.I have no fault to find with
the scholarly and scrupulously fair review and analysis of the development
of the rule, which appears in the majority opinion. It may well be that
"the decisions of the Supreme Court have not required the rejection of
process claims merely because the process apparently could be carried
out only with the disclosed apparatus." But note also that no decision
of the Supreme Court has disapproved of the rejection of process claims
for that reason. I do not dispute that "the doctrine has been shown not
to proceed from its purported well-springs," and it may have been the
product of an essentially illogical distinction. However, I cannot agree
that it is at odds with the basic purposes of the patent system or that
"it is productive of a range of undesirable results from the highly
inequitable to the silly" or that the rule denies to certain inventors
the exclusive rights to their discoveries or that, in some cases,
"the inventor may be cheated of his invention."
I cannot overlook the fact that there has been no showing that the practical
working of the rule has been other than entirely satisfactory. The patent
bar which exists for the purpose of obtaining patent rights for those who
invent any new or useful process, machine, manufacture or composition of
matter and has been always vigilant to protect those rights has not, to my
knowledge, made any effort at any time to change the rule and one wonders
why not if it is a rule so destructive of the rights of inventors and
so subversive of the basic purpose of the patent system as the majority
fears.
Nor has Congress seen fit to make any change in this supposedly unjust and
confiscatory rule which may operate to "cheat" inventors of their inventions.
Since In re Weston, the case which adopted the "mere function of an apparatus"
rejection upon review of Patent Office action, some thirty-two Congresses
have met and adjourned without taking any action to modify the law in that
respect. On the contrary, in the Patent Act of 1952 Congress dealt
specifically with the patentability of processes but did not disturb
the existing decisional law upon the point here involved. Since Graham v.
John Deere Co., 383 U.S. 1, it has been generally accepted that the
Act of 1952 was in effect a codification of statutory law and judicial
precedents and not intended to change the "general level of patentable
inventions." Thus, the principle that a process which is merely the
function of an apparatus is unpatentable, which by that time had become
settled law, {1'} was, by implication, adopted by Congress.
As a matter of fact, it is highly questionable whether the rule curtails
the rights of inventors to any substantial extent. Certainly it cannot be
said that it perpetuates error from which grievous wrong results, or that
there is any grave necessity for its repeal. And it may be pointed out
that while the present rule limits the patentee's rights in one respect,
the law as adopted by the majority puts him in a position to exclude from
any commercial exploitation every new and unobvious apparatus which may
use the patented process to obtain an improved result in a more efficient
manner - a consequence which, it would seem, could tend to discourage,
rather than promote, the progress of science and useful arts. As the
Government points out:
It is alleged that the rejection is inequitable. However, equity is
satisfied if appellant can obtain claims which adequately protect
his invention. Appellant has been allowed such claims on his apparatus.
The apparatus claims provide concrete protection for appellant's
invention. In the present state of the art the specific method which
appellant claims can only be performed by the apparatus claimed by
appellant. The only purpose served by granting appellant the specific
method claims would be to discourage others from inventing a different
apparatus to perform the specific method. Such discouragement is not
in accord with the policy of the Patent system. In re Flint, 51 CCPA
1230, 144 USPQ 299, states:
[It] is advantageous to the public in the promotion of progress of
the useful arts, the constitutional objective of the patent law,
to provide inducement for the invention of devices which are the
functional equivalents of devices already known. It is not the
object of the policy behind the patent system to encourage
satisfaction with or commercialization only of the first device
for performing a given function that happens to come along. And
for those who may be interested in promoting competition in the
interest of the consuming public, the greater the number of
functionally equivalent devices which are encouraged onto the
market by patent protection, the better off the consumer will be.
We have, of course, no way of assessing with certainty the accuracy of
the Government's theory any more than we can assess the accuracy of the
majority's supposition that denying appellant his process claim will
deprive him of the fruits of his invention. It serves to point up,
however, that the "equities" are not weighted so heavily on one side
as the majority assumes. If the Government's theory is correct, the
majority's newly-charted course is contrary to the basic constitutional
objective of promoting the progress of the useful arts; if that espoused
by the majority is correct, the many prior decisions of this court have
seemingly been causing progress in the useful arts to languish, which does
not appear to have been the fact to any noticeable extent.
I think that it takes much more than the discovery of a possible flaw
in the reasoning of a court of years ago, which may or may not have
misunderstood the purport of earlier decisions, to overturn a well
established and accepted rule of nearly seventy years' standing. It
does not seem to me that the facts here justify the wholesale reversal
of the settled law of this court on the abstract proposition of "equity."
Rather, it should be asked "equity" for whom? The inventor here? Other
inventors in this and related fields? The public?
In view of the foregoing, I feel bound to record my disagreement with the
majority opinion.
FOOTNOTES:
{1} Consisting of McCann and Friedman, Examiners-in-Chief, and Andrews,
Acting Examiner-in-Chief, opinion by McCann.
{2} Alternatively, especially in early cases, "function of a machine."
{3} 56 U.S. (15 How.) at 113.
{4} 56 U.S. (15 How.) at 117.
{5} The Court reasoned that the law's requirement for a description of the
invention may have been ignored if the patent were interpreted as for a
process. 56 U.S. (15 How.) at 269.
{6} 94 U.S. at 787-88.
{7} The claim read: "I claim * * * manufacturing of fat acids and glycerine
from fatty bodies by the action of water at a high temperature and pressure."
{8} It was also argued that the patent should be restricted to the apparatus
claimed, "the magneto instrument." A "variable resistance apparatus" had
been disclosed but not claimed. The Court said:
The patent is both for the magneto and variable resistance methods,
and for the particular magneto apparatus which is described, or its
equivalent. There is no patent for any variable resistance apparatus.
It is undoubtedly true that when Bell got his patent he thought the
magneto method was the best. Indeed, he said, in express terms, he
preferred it, but that does not exclude the use of the other if it
turns out to be the most desirable way of using the process under any
circumstances.
{9} By "means-result dichotomy" we refer to the division of patentable and
uppatentable claims along the line separating claims which define means and
those which merely describe results.
{10} The claimed matter was as follows:
1. The described method of manufacturing a symmetrical movable coil
for an electrical measuring instrument, consisting in first forming a
supporting frame or spool by subjecting a short tube of metal to pressure
until the desired conformation and shape is obtained, then winding the
coil thereon and finally securing the pivot-pins thereto in the axial
line of the coil.
2. The described method of manufacturing a movable coil for an
electrical measuring instrument, consisting in first forming a
supporting frame or spool of a single piece of metal by subjecting the
same to pressure until the desired conformation and shape is obtained,
winding the coil thereon and then securing the pivot-pins thereto in the
axial line of the coil and simultaneously adjusting the needle-supporting
pivot in such manner that the point of the needle is located in the
central plane of coil, or in a plane at a definite angle thereto.
3. The described method of manufacturing a supporting frame or spool
without joint or seam for an electrical coil, consisting in giving to a
short section of tubing the desired configuration, then subjecting it to
pressure until the desired curvature is obtained, and finally turning down
the lateral edges thereof in such manner as to constitute the flanges of
the frame or spool.
4. The described method of manufacturing a supporting frame or spool
without joint or seam for an electrical coil, consisting in giving a
short section of tubing the desired configuration, then giving to the
lateral faces thereof the desired curvature to adapt it to the curvilinear
field in which it is designed to be used, and finally turning down the
lateral edges thereof so as to constitute the flanges of the frame or
spool.
{11} The decision of the Commissioner with respect to claims 3 and 4 was
affirmed: "[They] involve merely well-known mechanical operations." The
decision with respect to claims 1 and 2, however, was reversed, applying
the test for patentable processes set forth:
It does not appear to us that the mechanism which he uses for the
purposes of such adjustment is a necessary part of his process. He
might possibly effect the purpose by mere mainpulation. It is not
impossible that he might effect it by mechanism of a radically different
character from that which he exhibits. Ordinarily a process can be
carried into practical effect by mechanism only; and it is the function
of such mechanism to effect the process. But the process and the
function of the mechanism are not for that reason one and the same
thing in law or in our conception of the discovery.
{12} Written by Justice Brown who also wrote for the Court in Risdon.
{13} The Weston tests for the patentability of processes have become the
conventional wisdom. See, e.g., Black-Clawson Co. v. Centrifugal Eng'r.
Corp., 83 F.2d 116 (6th Cir. 1936); In re Ernst, 21 CCPA 1235, 71 F.2d 169
(1934); Chisholm-Ryder Co. v. Buck, 65 F.2d 735 (4th Cir. 1933); Ferro
Engineering Co. v. Watson, 151 F.Supp. 167 (D.D.C. 1957). Lapses from
orthodoxy have been few. But see C. F. Mueller Co. v. A. Zeregas Sons,
12 F.2d 517 (2d Cir. 1926); Societe Anonyme Des Manufactures v. Marzall,
108 F.Supp. 310 (D.D.C. 1952); and several opinions of the Patent Office
Board of Appeals discussed infra.
{14} Some deviation from the doctrine has been tolerated under the guise of
permitting latitude in claim drafting. See, e.g., Ex parte Stephanoff,
81 USPQ 565 (Pat. Off. Bd. App. 1948); Ex parte Lorenz, 11 USPQ 105 (Pat.
Off. Bd. App. 1931); Ex parte Fahrenwald, 3 USPQ 191 (Pat. Off. Bd. App.
1929). And, in other cases, the board has emphasized a requirement that
the disclosed apparatus be incapable of utilization in other processes,
i.e., that the process be the inherent (necessary) function of the
apparatus. See Ex parte Scherer, 103 USPQ 107 (Pat. Off. Bd. App. 1954);
Ex parte Coburn, 87 USPQ 222 (Pat. Off. Bd. App. 1950); Ex parte Harnett,
61 USPQ 100 (Pat. Off. Bd. App. 1944).
{15} See note 14, supra.
{16} Our decision makes unnecessary any consideration of appellant's
arguments directed to the need for statutory bases for rejections or
for alignment of this court's approach with current Congressional policy.
Nor need we consider the solicitor's rebuttal.
{17} "Surely we are not bound by reason or by the considerations that
underline stare decisis to persevere in distinctions taken in the
application of a statue which, on further examination, appear consonant
neither with the purposes of the statute nor with this Court's own
conception of it." Helvering v. Hallock, 309 U.S. 106, 122 (1940).
{18} 1 Robinson, Patents 256 n. 2 (1890); see also Whitney, op. cit.
supra at 48.
{19} Act of July 8, 1870, ch. 230, section 26, 16 Stat. 201. The earlier
statute provided:
[The inventor] shall particularly specify and point out the part,
improvement, or combination, which he claims as his own invention
or discovery. Act of July 4, 1836, ch. 357, section 6, 5 Stat. 117.
{20} The present statute reads:
The specification shall conclude with one or more claims particularly
pointing out and distinctly claiming the subject matter which the
applicant regards as his invention. 35 USC 112 (1964).
{1'} In In re Horvath, 41 CCPA 844, 211 F.2d 604, decided March 23, 1954,
this court affirmed the rejection of seven claims of an application,
saying "... we recognize the well settled law that process or method
claims merely claiming the function of the apparatus are not allowable,
as has been held in a long line of decisions from this court ..."