In this case, the CCPA stated that any process, machine, manufacture, or composition of matter constitutes statutory subject matter unless it falls within a judicially determined exception to section 101.
This was an case in which the CCPA took the position that an invention can be statutory whether or not the novelty resides in the software.
Taner was decided after the Supreme Court’s decision in Diamond.
Taner’s claims were directed to a method of seismic exploration which simulated the response of subsurface earth formations to cylindrical or plane waves. An algorithm was directly recited in the claims.
In Taner, the CCPA distinguished between claims that are directed to “merely presenting and solving a mathematical algorithm,” which are not statutory subject matter, and claims that are drawn “to a process of converting one physical thing into another physical thing,” which are statutory subject matter.
The Court held that the claimed process involved taking one kind of “signal” and converting it into another kind of signal and that, thus, the claims set forth a process and were statutory within § 101.
In the History of Software Patents, this was a sensible decision. By this time, the U.S. Patent and Trademark Office was still highly reluctant to allow patent applications covering to software based inventions. In the Diamond v. Diehr case, the Supreme Court forced the USPTO to grant a patent on an invention even though computer software was utilized. The USPTO had been fairly strictly refusing to allow applications for inventions reciting algorithms. In these years, an applicant’s best shot at gaining an allowance was to disguise software as hardware; e.g., instead of reciting a comparison step, show a comparator in a block diagram for a digital machine.
This case related to a patent application for molding raw, uncured, synthetic rubber into cured precision products. The invention used measurement of actual temperature inside the mold during the curing process and used a computer calculate and control heating times. The patent examiner rejected the claims on the sole ground that they were drawn to nonstatutory subject matter under 35 U.S.C. §101 because steps in respondents’ claims that are carried out by a computer under control of a stored program constituted nonstatutory subject matter under the Supreme Court’s decision in Gottschalk v. Benson. The examiner also took the position that the remainder of the steps were already known in the industry. The Patent and Trademark Office Board of Appeals agreed with the examiner, but the Court of Customs and Patent Appeals reversed, noting that a claim drawn to subject matter otherwise statutory does not become nonstatutory because a computer is involved. The respondents claims were not directed to a mathematical algorithm or an improved method of calculation but rather recited an improved process for molding rubber articles by solving a practical problem which had arisen in the molding of rubber products. The Government sought certiorari arguing that the decision of the Court of Customs and Patent Appeals was inconsistent with prior decisions of the Supreme Court.
The invention, as defined by the claims, included not only the computer program, but also included steps relating to heating rubber, and removing the rubber from the heat. The Supreme Court found that the invention was not merely a mathematical algorithm, but was a process for molding rubber, and thus was patentable, even though the only novel feature was the timing process controlled by the computer.
More particularly, the Court stated that they viewed respondents’ claims as nothing more than a process for molding rubber products and not as an attempt to patent a mathematical formula. When a claim recites a mathematical formula (or scientific principle or phenomenon of nature), an inquiry must be made into whether the claim is seeking patent protection for that formula in the abstract. A mathematical formula as such is not accorded the protection of our patent laws, Gottschalk v. Benson, and this principle cannot be circumvented by attempting to limit the use of the formula to a particular technological environment. Parker v. Flook. Similarly, insignificant post-solution activity will not transform an unpatentable principle into a patentable process. To hold otherwise would allow a competent draftsman to evade the recognized limitations on the type of subject matter eligible for patent protection. On the other hand, when a claim containing a mathematical formula implements or applies that formula in a structure or process which, when considered as a whole, is performing a function which the patent laws were designed to protect (e.g., transforming or reducing an article to a different state or thing), then the claim satisfies the requirements of §101. Because the Court did not view the claims as an attempt to patent a mathematical formula, but rather to be drawn to an industrial process for the molding of rubber products, the Supreme Court affirmed the judgment of the Court of Customs and Patent Appeals.
The dissent stated that the claimed invention made no contribution to the art that was not entirely dependent upon the utilization of a computer in a familiar process, and they would have reversed the decision of the Court of Customs and Patent Appeals.
In the History of Software Patents, this is an often cited case. This invention related to image processing particularly as applied to computerized axial tomography or CAT scans. Specifically, the invention was directed to an improvement in computed tomography whereby the exposure to X-ray is reduced while the reliability of the produced image is improved.
The Examiner at the U.S. Patent and Trademark Office rejected the claims on appeal under the authority of Parker v. Flook. The examiner construed Flook as mandating the following test:
Taking each claim as a whole, it is assumed, for analysis purposes only, that any mathematical calculation in the claim is part of the prior art. If what is left is new and unobvious, then the claim, taken as a whole, protects more than a mathematical calculation and it is deemed statutory. But if the remainder of the claim is not novel nor unobvious, then the claim, taken as a whole, merely seeks to protect the mathematical calculation and, as such, does not comprise statutory subject matter.
Applying the above test, the examiner determined that, apart from the mathematical calculations, the remaining steps were well known or were “merely a necessary antecedent step to provide values for solving the mathematical equations,” and, thus, were directed to nonstatutory subject matter.
The Board of Patent Appeals and Interferences did not address the examiner’s contentions, relying instead of In re Freeman, as modified by In re Walter. The board affirmed the rejection as follows:
When the claims are analyzed in [the manner dictated by Walter], it is manifest that the mathematical algorithm is not implemented in a manner to define structural relationships between physical elements in the apparatus claims or to refine or limit claim steps in the process claims. The claims do no more than present and solve a mathematical algorithm and are manifestly nonstatutory.
The United States Court of Customs and Patent Appeals noted that in the Walter case, the claims were directed to a process6 for correlating and cross-correlating signals. All of the claims steps were algorithm steps for performing the correlation or cross-correlation. There were no limitations in the claims, other than a field of use set forth in the preamble of the claims which stated that the algorithm was for use in connection with seismic surveying. The court concluded that the claims were directed to claiming only the algorithm, were not applied in any manner to any process steps, and were, therefore, directed to nonstatutory subject matter.
The court stated that Walter should be read as requiring no more than that the algorithm be “applied in any manner to physical elements or process steps,” provided that its application is circumscribed by more than a field of use limitation or non-essential post-solution activity. Thus, if the claim would be “otherwise statutory,” albeit inoperative or less useful without the algorithm, the claim likewise presents statutory subject matter when the algorithm is included. This broad reading of Walter is in accord with the Supreme Court decisions.
The court went on to say that the goal is to answer the question “What did applicants invent?” If the claimed invention is a mathematical algorithm, it is improper subject matter for patent protection, whereas if the claimed invention is an application of the algorithm, §101 will not bar the grant of a patent.
In answering that question, each invention must be evaluated as claimed; yet semantogenic considerations preclude a determination based solely on words appearing in the claims. In the final analysis under §101, the claimed invention, as a whole, must be evaluated for what it is.
Applying this test, the court noted that each of the independent claims and, necessarily, each of the dependent claims, included the limitation “calculating * * * the difference” either as a step in a process or as a means in an apparatus. Accordingly, all of the claims may be directed to nonstatutory subject matter as each presents a mathematical formula or a sequence of mathematical operations.
The court then turned to the second part of the analysis to determine whether what is claimed is a statutory process or apparatus or a nonstatutory algorithm.
The court contrasted the two broadest process claims, claims 5 and 6:
5. A method of displaying data in a field comprising the steps of
calculating the difference between the local value of the data at a data point in the field and the average value of the data in a region of the field which surrounds said point for each point in said field, and
displaying the value of said difference as a signed gray scale at a point in a picture which corresponds to said data point.
6. The method of claim 5 wherein said data is X-ray attenuation data produced in a two dimensional field by a computed tomography scanner.
The court concluded that claim 5 is directed solely to the mathematical algorithm portion of appellants’ invention and is, thus, not statutory subject matter under § 101. The court reached the opposite conclusion with respect to claim 6.
The method of claim 6, unlike that of claim 5, requires “X-ray attenuation data.” The specification indicates that such attenuation data is available only when an X-ray beam is produced by a CAT scanner, passed through an object, and detected upon its exit. Only after these steps have been completed is the algorithm performed, and the resultant modified data displayed in the required format.
Absent the algorithm, the production, detection and display steps would still be present and would result in a conventional CAT-scan process. Accordingly, production and detection cannot be considered mere antecedent steps to obtain values for solving the algorithm.
Other claims were analyzed in a similar manner.
In the History of Software Patents, this was one of the more sensible cases. Diamond v. Chakrabarty is another Supreme Court case. A genetic engineer named Chakrabarty had developed a bacterium capable of breaking down crude oil, which he proposed to use in treating oil spills. He requested a patent for the bacterium in the United States but was turned down by a patent examiner, because the law dictated that living things were not patentable.
The court held that a live, human-made micro-organism is patentable subject matter under 35 U.S.C. 101. Chakrabarty’s micro-organism constitutes a “manufacture” or “composition of matter” within that statute.
The court stated that in choosing such expansive terms as “manufacture” and “composition of matter,” modified by the comprehensive “any,” Congress contemplated that the patent laws should be given wide scope, and the relevant legislative history also supports a broad construction. While laws of nature, physical phenomena, and abstract ideas are not patentable, respondent’s claim is not to a hitherto unknown natural phenomenon, but to a nonnaturally occurring manufacture or composition of matter, a product of human ingenuity “having a distinctive name, character and use.”
The court took the position that passage of the 1930 Plant Patent Act, which afforded patent protection to certain asexually reproduced plants, and the 1970 Plant Variety Protection Act, which authorized protection for certain sexually reproduced plants but excluded bacteria from its protection, does not evidence congressional understanding that the terms “manufacture” or “composition of matter” in Section 101 do not include living things.
Nor does the fact that genetic technology was unforeseen when Congress enacted Section 101 require the conclusion that micro-organisms cannot qualify as patentable subject matter until Congress expressly authorizes such protection. The unambiguous language of Section 101 fairly embraces respondent’s invention. Arguments against patentability under Section 101, based on potential hazards that may be generated by genetic research, should be addressed to the Congress and the Executive, not to the Judiciary.
This case is famous for taking the position that Congress had intended patentable subject matter to “include anything under the sun that is made by man”
In the History of Software Patents, this is an important case. The invention in this case related to seismic prospecting and surveying. Seismic source waves are generated and transmitted downwardly into the earth. There they are deflected by subsurface formations and anomalies. The deflected waves return to the earth’s surface and are detected by transducers, known as geophones, which are distributed on the surface over the area of exploration. The geophones convert the returning mechanical vibrations into electrical signals, which are then recorded on a record medium, such as magnetic tape or chart recorder, for analysis. By studying the records of the deflected waves, analysts are able to make determinations concerning the nature of the subsurface structure of the earth.
In a final rejection, the examiner at the U.S. Patent and Trademark Office stated that the claims were directed to the mathematical procedure outlined in the specification for cross-correlating the sets of signals. He found no reason to distinguish between the method and apparatus claims, holding that distinction to be legally immaterial “Where the only mode of practicing an invention is disclosed by way of an algorithm for use in a computer program.”
The applicant’s main contention was that his claims were not directed to a mathematical procedure but to a method that produces a physical result (the partial product signals) by physical processing of physical signals, all of which are described in mathematical terms, and to apparatus for carrying out special forms of the process.
The U.S. Court of Customs and Patent Appeals stated that the common thread running through prior decisions regarding statutory subject matter is that a principle of nature or a scientific truth (including any mathematical algorithm which expresses such a principle or truth) is not the kind of discovery or invention which the patent laws were designed to protect.
The court also stated that various indicia are helpful in determining whether a claim as a whole calls merely for the solution of a mathematical algorithm. For instance, if the end-product of a claimed invention is a pure number, as in Benson and Flook, the invention is nonstatutory regardless of any post-solution activity which makes it available for use by a person or machine for other purposes. If, however, the claimed invention produces a physical thing, such as the noiseless seismic trace in In re Johnson, the fact that it is represented in numerical form does not render the claim nonstatutory.
With regard to “means for” claims, the court noted that both the examiner and the board of appeals and interferences refused to separately consider appellant’s apparatus claims because the method and apparatus claims were deemed indistinguishable. This problem arises in computer-arts inventions when the structure in apparatus claims is defined only as “means for” performing specified functions. If the functionally-defined disclosed means and their equivalents are so broad that they encompass any and every means for performing the recited functions, the apparatus claim is an attempt to exalt form over substance since the claim is really to the method or series of functions itself. In computer-related inventions, the recited means often perform the function of “number crunching” (solving mathematical algorithms and making calculations). In such cases the burden must be placed on the applicant to demonstrate that the claims are truly drawn to specific apparatus distinct from other apparatus capable of performing the identical functions. The court went on to say that if this burden has not been discharged, the apparatus claim will be treated as if it were drawn to the method or process which encompasses all of the claimed “means” and that the statutory nature of the claim under §101 will then depend on whether the corresponding method is statutory. In this case, the court held that all of appellant’s claims should be treated as method claims because the apparatus claims differ from the method claims only in that the term “means for” has been inserted before each process step to convert the step into the “means” for performing it, wherefore they do not have separate meaning as apparatus claims.
With regard to the method claims, the court stated that correlation or cross-correlation is a mathematical exercise which relates two mathematical functions. It remains a mathematical exercise even when verbally tied to the specific end use of seismic prospecting. Although the claim preambles relate the claimed invention to the art of seismic prospecting, the claims themselves are not drawn to methods of or apparatus for seismic prospecting; they are drawn to improved mathematical methods for interpreting the results of seismic prospecting.
In the History of Software Patents, this is an important case. The subject matter of Freeman’s invention was a system for typesetting alphanumeric information, using a computer-based control system in conjunction with a phototypesetter of conventional design. The claims included claims directed to methods of controlling a computer display system, as well as claims to a hierarchical “tree structure” computer storage arrangement. U.S. Patent and Trademark Office had rejected the patent application on the basis that the Benson case precluded patentability of an invention where the only novel part was the computer program.
The U.S. Court of Customs and Patent Appeals noted that with no reference to the nature of the algorithm involved, the U.S. Patent and Trademark Office’s Board of Appeals board merely stated that the coverage sought “in practical effect would be a patent on the algorithm itself.” Though the board gave no clear reasons for so concluding, its approach would appear to be that every implementation with a programmed computer equals “algorithm” in the Benson sense. If that rubric was the law, every claimed method that can be so implemented would equal nonstatutory subject matter under 35 USC 101.
The Court noted that a claim expressed in “means for” terms, though said to be an apparatus claim, may be indistinguishable from that of a method claim drawn to the steps performed by the “means.” The court agreed with the solicitor’s contention that if allowance of a method claim is proscribed by Benson, it would be anomalous to grant a claim to apparatus encompassing any and every “means for” practicing that very method.
The court held that because neither the apparatus claims nor the present method claims recite or preempt a mathematical algorithm as forbidden by Benson, both sets of claims are immune from a rejection based solely on the opinion in that case. The court then reversed the decision of the board rejecting claims 1-10 under 35 USC 101.
This case has been cited for laying out a two part test:
First, it must be determined whether the claim directly or indirectly recites an ” algorithm” in the Benson sense of that term, for a claim which fails even to recite an algorithm clearly cannot wholly preempt an algorithm.
Second, the claim must be further analyzed to ascertain whether in its entirety it wholly preempts that algorithm.
In the History of Software Patents, this is an important early Supreme Court case. In 1972, the U.S. Supreme Court reviewed a case involving patent application describing an invention as a method for converting binary-coded decimal numerals into pure binary numerals in a general purpose digital computer. The Court found that the invention was not patentable. The Supreme Court stated that this decision did not preclude ever finding a computer program patentable.
However, for years after this case came out, patent office examiners felt that no software was patentable, and they would routinely issue 101 rejections against patent applications that contained the word “algorithm.” A direct quote from the Gottschalk v. Benson case follows:
It is argued that a process patent must either be tied to a particular machine or apparatus or must operate to change articles or materials to a “different state or thing.” We do not hold that no process patent could ever qualify if it did not meet the requirements of our prior precedents. It is said that the decision precludes a patent for any program servicing a computer. We do not so hold. It is said that we have before us a program for a digital computer but extend our holding to programs for analog computers. We have, however, made clear from the start that we deal with a program only for digital computers. It is said we freeze process patents to old technologies, leaving no room for the revelations of the new, onrushing technology. Such is not our purpose. What we come down to in a nutshell is the following.
It is conceded that one may not patent an idea. But in practical effect that would be the result if the formula for converting BCD numerals to pure binary numerals were patented in this case. The mathematical formula involved here has no substantial practical application except in connection with a digital computer, which means that if the judgment below is affirmed, the patent would wholly pre-empt the mathematical formula and in practical effect would be a patent on the algorithm itself.
It may be that the patent laws should be extended to cover these programs, a policy matter to which we are not competent to speak. The President’s Commission on the Patent System rejected the proposal that these programs be patentable:
If these programs are to be patentable, considerable problems are raised which only committees of Congress can manage, for broad powers of investigation are needed, including hearings which canvass the wide variety of views which those operating in this field entertain. The technological problems tendered in the many briefs before us indicate to us that considered action by the Congress is needed.