BALDWIN, Judge.
This appeal was originally argued
This appeal is from the Patent Office Board of Appeals decision affirming the examiner's rejection of claims 1, 6-10, 12, and 17-21, all of the claims in appellants' application,
THE INVENTION
The invention includes both a method
Appellants have made a discovery which lies at the heart of their invention. Appellants have discovered: (1) that the different subsets of equations result in varying degrees of undesired "error amplification" in transforming the spectrographic data involving peak heights to the desired concentrations;
Thus, based on their discovery, appellants have invented a method, within the otherwise conventional spectral analysis method, for selecting the optimum peaks providing that particular subset of equations least susceptible to error amplification. The essence of the method is finding the subset of equations having the largest determinant amongst all the possible subsets that might be chosen. Applicants have also disclosed in detail a machine
Claims 9 and 17 are typical of the method claims and read:
Claim 10, the only machine claim, reads:
THE EXAMINER'S REJECTION AND BOARD'S AFFIRMANCE
PROCESS CLAIMS
In his Answer, the examiner restated the rejection of the process claims for failure to comply with 35 U.S.C. §§ 101, 102, and 112. He preliminarily reasoned: (1) that, if the invention is within a statutory class of patentable subject matter under 35 U.S.C. § 101, it must be as a "process"; (2) that the appealed process claims are readable upon a mental process with the only physical limitation being the generation of physical representations, which may be merely pencil markings on paper; and (3) that processes having only mental novelty are unpatentable because they are outside the statutory "process" class, citing In re Abrams, 188 F.2d 165, 38 CCPA 945 (1951). The Answer continued:
Under 35 U.S.C. §§ 101 and 102
The examiner argued that, if a claim is readable on subject matter outside the statutory classes, then the claim is unpatentable under 35 U.S.C. § 101, it being irrelevant that the claim can also be read on subject matter within the statutory classes. The examiner felt that each of the present process claims can be read on mental calculations with the appropriate mathematics and, as the only physical steps, writing on paper. The examiner held that, to the extent that those claims require anything physical, they are fully met under 35 U.S.C. § 102 by the process of making marks on paper. The examiner concluded that the only novel subject matter recited in the claims must reside in the calculations which are outside the statutory classes of 35 U.S.C. § 101 and which, therefore, may not patentably distinguish the claims over the process of marking on paper. Thus, the claims were rejected under 35 U.S.C. §§ 101 and 102.
In regard to the examiner's 101-102 rejection, the board held that the process claims "do not fall within the statutory definition of a process as that term has been interpreted by the Courts over the years," citing In re Yuan, 188 F.2d 377, 38 CCPA 967 (1951) and Cochrane v. Deener, 94 U.S. 780, 24 L.Ed. 139. The board further stated:
Under 35 U.S.C. §§ 101 and 112
Under the 101-112 rejection, the examiner assumed that a claim is within the statutory classes of 35 U.S.C. § 101 if it is readable on subject matter within that section, even if it can also be read on subject matter outside that section.
The board did not specifically comment in regard to the 101-112 rejection of the process claims, apparently affirming the examiner. See Rule 196(a), United States Patent Office Rules of Practice.
APPARATUS CLAIM
The rejection of apparatus claim 10 was also in two forms.
Under 35 U.S.C. §§ 101, 102, and 103
The examiner noted that, in addition to reading on appellants' disclosed analog embodiment, claim 10 may also be read on a properly programmed general-purpose digital computer. He argued that, having the principle of mathematics, which is unpatentable under 35 U.S.C. § 101 even though discovered by appellants, it would be obvious under 35 U.S.C. § 103 to program a general-purpose digital computer which is old under 35 U.S.C. § 102, such a computer having been known and in public use more than a year before appellants filed. Since, in the examiner's view, a properly programmed digital computer is thus not patentable to appellants, claim 10 was rejected under 35 U.S.C. §§ 101, 102, and 103.
The board viewed claim 10 as generally an apparatus counterpart of claim 17 and thus considered claim 10 unpatentable, citing In re Yuan, supra. That is, so held the board, the sole novelty in claim 10 resides in the mathematical computations which are themselves non-statutory subject matter under 35 U.S.C. § 101. Furthermore, the board felt that the physical "means" could be, and are anticipated under 35 U.S.C. § 102 by, such commonplace means as pencil, paper, and ruler, since the essential novelty of the claim is in the mathematical calculations.
Moreover, the board found that the essence of the rejection of claim 10 is that it defines nothing more than a general-purpose digital computer programmed to perform the required mathematical operations and that the programming would be obvious under 35 U.S.C. § 103. The board agreed that such a machine would be obvious.
Under 35 U.S.C. §§ 101, 102, 103, and 112
Here, the examiner argued that claim 10 does not particularly point out and distinctly claim appellants' invention as required by 35 U.S.C. § 112 since, in addition to reading "on a device (the analog embodiment) to which they are entitled to coverage," (emphasis added) the claim also covers or reads on a properly programmed general-purpose digital computer on which appellants are not entitled to coverage for the reasons set forth above.
The board did not specifically address itself to the 101-102-103-112 rejection of claim 10, again apparently affirming the examiner.
THE SOLICITOR'S POSITION
The solicitor, in his original brief, stated that:
APPELLANTS' POSITION
In their original brief under the heading "The Facts Support Patentability," appellants contended that:
Appellants further contended that the decisions relied upon below, namely, In re Abrams, supra, In re Yuan, supra, and Cochrane v. Deener, supra, are not here applicable. Appellants have not argued against the soundness of the results reached in those cases or of the so-called "mental steps" doctrine (i. e., the non-patentability of mental processes) as it may be based upon the Constitution,
Appellants point out that in both Abrams and Yuan, as contrasted with the present case, there was not disclosed a machine or apparatus for carrying out the invention automatically and without human intervention. Appellants argue that, where no such completely automated machine or apparatus has been disclosed, it is quite reasonable that certain steps of a process might be considered purely mental in nature. On the other hand, appellants urge that their disclosure of apparatus for carrying out the invention without human intervention precludes the process or any part thereof from being considered purely mental. In summary, they think that neither Abrams nor Yuan supports the proposition that a claim, limited to a process performed by apparatus by con-
Insofar as Cochrane v. Deener is concerned, appellants urge that that case represented a reaffirmation or an extension, as opposed to limitation, of the subject matter which may be patented, Appellants feel that Cochrane v. Deener merely made it clear that a broad area of invention may be protected by process claims, not limited to any special arrangement of machinery, and that the decision did not set forth the metes and bounds of subject matter for which process claims may be granted.
As to the apparatus claim, appellants argue that it matters not whether the claim reads on a general-purpose digital computer, properly programmed to perform their invention. They urge that they are entitled to such protection inasmuch as such a properly programmed general-purpose digital computer was neither old nor obvious at the time of appellants' invention.
OPINION
PROCESS CLAIMS
We are in agreement with appellants that this case is not controlled by Abrams, Yuan, or Cochrane v. Deener, as we view those cases. Insofar as we can determine, this is a case of first impression in that the claims in a mechanical, as distinguished from chemical, case have been rejected because of their breadth, notwithstanding that no prior art reference has been cited and that the claims read on admittedly patentable statutory subject matter disclosed in the specification.
A more exhaustive analysis of Abrams may be found in Judge Smith's previous opinion, supra; however, for the present purposes, Abrams need not be discussed in such depth. In Abrams, no prior art reference was cited in the application entitled "Petroleum Prospecting Method," the claims being rejected as failing to define subject matter properly within the terms of R.S. 4886, the precursor of 35 U.S.C. §§ 101 and 102, in that "the steps in the claims which constitute the heart of the invention are purely mental in character."
The court referred to Abrams' specification in interpreting the steps of the claims, but Abrams had disclosed no means whatever for performing, without human intervention, two claimed steps of
Yuan, decided about a month after Abrams, contained the following oftquoted statement:
But, as appellants point out, "Yuan's disclosure was the use made of equations by pencil-and-paper with the mind of the operator at work to interpret the results." Again, as in Abrams, insofar as the disclosure was concerned, the process (or the critical step thereof) was one that required the use of the human mind — indeed, a purely mental process or step.
That a process was an "art" capable of being patented was already considered beyond dispute
This passage has sometimes been misconstrued as a "rule" or "definition" requiring that all processes, to be patentable, must operate physically upon substances. Such a result misapprehends the nature of the passage quoted as dictum, in its context, and the question being discussed by the author of the opinion. To deduce such a rule from the statement would be contrary to its intendment which was not to limit process patentability but to point out that a process is not limited to the means used in performing it.
Thus, it is clear that this case is not controlled by Abrams, Yuan, or Cochrane v. Deener. However, we do not feel that the distinction which appellants have very clearly pointed out is entitled to the significance which they would attribute thereto. Appellants feel that, since they have disclosed apparatus for performing the process wholly without human intervention and since they are seeking coverage only for the machine-implemented process,
However, that is quite another question from the one before us, namely, whether appellants are entitled to claims of the breadth of those they seek here. As already noted, we view appellants' position to be that they are not seeking patent coverage of any purely mental process or any mental process coupled only with pencil and paper markings,
Claim 9
With respect to claim 9, the broadest claim, appellants acknowledged in their original brief that:
However, appellants urge that claim 9 cannot be read in a vacuum but instead must be read in the light of the specification. We agree.
Nevertheless, "reading a claim in the light of the specification," to thereby interpret limitations explicitly recited in the claim, is a quite different thing from "reading limitations of the specification into a claim," to thereby narrow the scope of the claim by implicitly adding disclosed limitations which have no express basis in the claim. This distinction is difficult to draw and is often confused by courts; but it is even more difficult for attorneys, attempting to work within the framework of the former, not to cross over into the latter.
In our view, appellants would really like us to read a limitation of the specification into the claims, not merely interpret the claims in the light of the specification. When read in the light of the specification, claim 9 does read on a mental process augmented by pencil and paper markings. We find no express limitation in claim 9 which, even when interpreted in the light of the specification, would support the conclusion that the claim is limited to a "machine process" or "machine-implemented process." This is particularly important in this case since the board noted that, in their brief before the board, appellants acknowledged that "[t]hough not practical for most of the needed applications, their method, theoretically, can be practiced by hand."
Inasmuch as claim 9, thus interpreted, reads on subject matter for which appellants do not seek coverage, and therefore tacitly admit to be beyond that which "applicant regards as his invention," we feel that the claim fails to comply with 35 U.S.C. § 112 which requires that "[t]he specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention." (Emphasis added.) This is true notwithstanding appellants' disclosure of a machine-implemented process. There are quite sound reasons why, in an infringement suit on an issued patent, courts may sometimes "interpret patent claims in the light of the specification" so as to protect only that phase of the claimed invention that constitutes patentable subject matter and thus do justice and equity between the parties.
Thus, with respect to claim 9, appellants have not particularly pointed out and distinctly claimed the subject matter which they regard as their invention as required by 35 U.S.C. § 112, it therefore being unnecessary for us to consider 35 U.S.C. § 101 or its applicability here. Accordingly, the board's decision as to claim 9 is affirmed.
Claims 1, 6-8, 12, and 17-21
Claim 17, supra, is representative of the claims falling within this group.
In arguing that claims 1, 6-8, 12, and 17-21 do not read on a purely mental process or a mental process coupled with pencil and paper marking, appellants further advise us that:
Having given careful consideration to appellants' additional arguments concerning the proper interpretation to be given to claims 1, 6-8, 12, and 17-21, we feel that the rejection must nevertheless be affirmed. "Generating physical representations" appears to us to be broad enough, even when read in the light of the specification, to encompass pencil and paper markings which a mathematician might make in documenting or recording his mental calculations. Hence, since appellants do not seek such broad coverage as hereinbefore discussed, we think that claims 1, 6-8, 12, and 17-21 must also fail under 35 U.S.C. § 112 for the reasons expressed with regard to claim 9; with respect to those claims also, the board's decision is affirmed.
APPARATUS CLAIM
Apparatus claim 10 presents quite a different question and, in our view, requires a different answer. As we see it, the underlying statutory basis for the rejection of apparatus claim 10 is 35 U.S.C. § 103 which precludes the grant of a patent if and only if "the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art." Appellants' discovery, discussed in the second paragraph under the heading "THE INVENTION," supra, is, it seems to us, part of their contribution to the art. On that basis, appellants' discovery should be considered as part of "the subject matter as a whole" and not part of the prior art. It is conceded by the Patent Office that that discovery is both new and unobvious. Thus, based on the record before us, we do not perceive any reasonable basis for concluding that "the subject matter as a whole," as defined by apparatus claim 10, would have been obvious at the time of appellants' invention.
We have carefully considered the basic position of the Patent Office that it would be obvious to program a general-purpose digital computer to practice appellants' invention and that apparatus claim 10 reads on such a computer, as well as the disclosed analog device. We find that position fatally defective in that
We do not perceive of any "mental steps" issue in regard to apparatus claim 10. It is quite clear that claim 10, in typical means-plus-function language as expressly permitted by the third paragraph of 35 U.S.C. § 112, does not encompass the human being as the "means" or any part thereof. Cf. Brown v. Davis, 116 U.S. 237, 6 S.Ct. 379, 29 L.Ed. 659 (1886); Republic Iron & Steel Co. v. Youngstown Sheet & Tube Co., 272 F. 386 (6th Cir. 1921); Permutit Co. v. Village of Poynette, 61 F.Supp. 305 (W. D.Wisc.1945) aff'd per curiam 158 F.2d 799 (7th Cir. 1947); Wilcox v. Danner, 53 F.2d 711, 19 CCPA 802 (1931); Mabon v. Sherman, 161 F.2d 255, 34 CCPA 991 (1947). The pencil, paper, and ruler — referred to by the board in regard to 35 U.S.C. § 102 — do not anticipate the claimed "means" since the former additionally require human manipulation.
Accordingly, the board's decision as to claim 10 is reversed.
SUMMARY
As to claims 1, 6-9, 12, and 17-21, the board's decision is affirmed; as to claim 10, the board's decision is reversed.
MODIFIED
WORLEY, Chief Judge (concurring).
The court is indebted to counsel for the respective parties and amici curiae for the able and earnest fashion in which they have, in both argument and briefs, presented their understandably diverse positions.
One of the more interesting points raised is how far Congress intended to go in conferring patentable status on mental steps as they are intertwined in computer programs generally. It is questionable whether prior decisions denying patentability of purely mental steps, or the statute, read singly or together, can support a broad rule either sanctioning or prohibiting the patentability of such steps in relation to computer programs. Where the line will be drawn can only be determined on a case by case basis in building, as best we can, sound and intelligible precedent. While I agree here with the results reached by my colleagues I do not necessarily subscribe to all that is said.
Congress, of course, had no way of knowing in 1952 what lay in the test tube then or what would become a reality tomorrow. But it devised a statute — a model of legislative craftsmanship and foresight — broad enough to anticipate and nourish the technological explosion we have witnessed. Our patent system is a delicate balance of interests; it protects the fruits of the extraordinary efforts it demands of inventors compatibly with the public interest. It has largely
So it is with no little surprise and concern that one learns of proposed patent "reforms". I can appreciate, from my own Congressional experience, the difficulty of enacting legislation acceptable to all concerned. However, after having dealt with the patent statutes, particularly the 1952 Patent Act, for nearly twenty years as a member of this court, I have grave misgivings concerning the desirability or need for any substantive change in a system that has worked so well in following the constitutional mandate "to promote the Progress of Science and useful Arts."
FootNotes
Indeed, the solicitor has not controverted the novelty or non-obviousness of appellants' discovery.
The various mathematical coefficients to be dealt with in utilizing appellants' method are represented in the disclosed machine by various voltages in various circuits. In this manner, the coefficients of the relevant mathematical equations appear as electro-mechanical elements in appellants' machine.
The specification sets forth in detail the electrical and mechanical components of this machine and their respective functions to relate the constant coefficients inherent in the present invention to a step in the method and to a means in the machine which directly performs the functions which underlie the present invention. The specification describes the operation of the machine in relation to the mathematical content of the invention and points out that, as the motor rotates the armatures of the ganged rotary switch banks through pre-set positions, the values of the determinants for the subsets represented by the positions can be ascertained.
Appellants go on:
In the same paper, appellants stated that they "have not urged * * * that any claim will be infringed by one sitting at a desk and making mental calculations. There is no such thing as mental infringement." In fact, appellants argue that "Thought Is Still Unpatentable."
Appellants' reply to IBM's amicus brief states that they "have contended all along that the meaning to be deduced from appellants' specification, as well as the dictionary, suggests that the method claims do not cover purely mental operations."
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