In re Grams, 1989

The invention in this case related to a method of testing a complex system to determine whether the system condition is normal or abnormal and, if it is abnormal, to determine the cause of the abnormality. As disclosed in the specification, the invention is applicable to any complex system, whether it be electrical, mechanical, chemical, biological, or combinations thereof.

The Federal Circuit stated that, intuitively, one might conclude that § 101’s “any…process” would include the diagnostic method claimed by the applicants. Indeed, even without physical step present in the claims, application of the algorithm in other steps of the claim seemed to be a type of “process” that the Supreme Court recognized as much in Flook.

The Federal Circuit stated that Flook made clear, however, as did its forerunner, Benson, that even though the application of an algorithm to data is a “process” in the literal sense, it is not one that is contemplated by § 101, i.e., it is “nonstatutory subject matter.” Thus, mathematical algorithms join the list of non-patentable subject matter not within the scope of § 101, including methods of doing business, naturally occurring phenomenon [sic], and laws of nature. Construing § 101 as excluding mathematical algorithms seems somewhat at odds with the liberal view of that section expressed in a more recent Supreme Court opinion, Diamond v. Chakrabarty. There, the Court decided that a living man-made microorganism fell within the terms manufacture” or “composition of matter” in § 101. In choosing such “expansive terms,” stated the Court, “modified by the comprehensive word ‘any,’ Congress plainly contemplated that the patent laws would be given wide scope.” The Court went so far as to note that Congress intended statutory subject matter to include “anything under the sun that is made by man.”

Chakrabarty expressly rejects the argument that patentability in a new area, “microorganisms, cannot qualify as patentable subject matter until Congress expressly authorizes such protection.” Although the Court distinguished Flook in its opinion, the court’s rejection of this argument seems to reflect a change from Flook’s admonition that “we must proceed cautiously when we are asked to extend patent rights into areas wholly unforeseen by Congress.”

The Federal Circuit noted that another case, Diehr, repeats the “anything under the sun” statement of Chakrabarty but then went on to say that notwithstanding those statements in Diehr and Chakrabarty, Benson remains the law. Indeed, it is cited in both Diehr and Chakrabarty, with no apparent attempt to overrule or disapprove of it. Thus, “an algorithm, or mathematical formula … like a law of nature … cannot be the subject of a patent.”

The Federal Circuit stated that on the other hand, the mere presence of a mathematical exercise, as a step or steps in a process involving nonmathematical steps, should not slam the door of the PTO upon an applicant. Thus, if there are physical steps included in the claim in addition to the algorithm, the claim might be eligible for patent protection. As stated in In re Walter:

Once a mathematical algorithm has been found, the claim as a whole must be further analyzed. If it appears that the mathematical algorithm is implemented in a specific manner to define structural relationships between the physical elements of the claim (in apparatus claims) or to refine or limit claim steps (in process claims), the claim being otherwise statutory, the claim passes muster under § 101.

Though satisfaction of the Walter test necessarily depicts statutory subject matter, failure to meet that test does not necessarily doom the claim. As stated in Abele, “Walter should be read as requiring no more than that the algorithm be ‘applied in any manner to elements or process steps,'” That statement is followed by this proviso: “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.

In all instances, this critical question must be answered: “What did applicants invent?” And in answering this inquiry:

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. Hence, the analysis requires careful interpretation of each claim in light of its supporting disclosure.

The Court stated that, though that analysis can be difficult, it is facilitated somewhat if, as here, the only physical step involves merely gathering data for the algorithm. As stated in In re Christensen, 478 F.2d 1392, 1394 (CCPA 1973):

Given that the method of solving a mathematical equation may not be the subject of patent protection, it follows that the addition of the old and necessary antecedent steps of establishing values for the variables in the equation cannot convert the unpatentable method to patentable subject matter.

The reason for this was explained in In re Sarkar, 588 F.2d at 1335:

No mathematical equation can be used, as a practical matter, without establishing and substituting values for the variables expressed therein. Substitution of values dictated by the formula has thus been viewed as a form of mathematical step. If the steps of gathering and substituting values were alone sufficient, every mathematical equation, formula, or algorithm having any practical use would be per se subject to patenting as a “process” under § 101. Consideration of whether the substitution of specific values is enough to convert the disembodied ideas present in the formula into an embodiment of those ideas, or into an application of the formula, is foreclosed by the current state of the law.

Whether § 101 precludes patentability in every case where the physical step of obtaining data for the algorithm is the only other significant element in mathematical algorithm–containing claims is a question we need not answer. Analysis in that area depends on the claims as a whole and the circumstances of each case. Rather, we address only the claims and other circumstances involved here.

The sole physical process step in Grams’ claim 1 is step [a], i.e., performing clinical tests on individuals to obtain data. The specification does not bulge with disclosure on those tests. To the contrary, it focuses on the algorithm itself, although it briefly refers to, without describing, the clinical tests that provide data. Thus, it states: “The [computer] program was written to analyze the results of up to eighteen clinical laboratory tests produced by a standard chemical analyzer that measures the levels of the chemical and biological components listed.” The specification also states that “[t]he invention is applicable to any complex system, whether it be electrical, mechanical, chemical or biological, or combinations thereof.” From the specification and the claim, it is clear to us that applicants are, in essence, claiming the mathematical algorithm, which they cannot do under Benson. The presence of a physical step in the claim to derive data for the algorithm will not render the claim statutory.

The Court then distinguished Abele. Allowed claim 6 in Abele required operation of an algorithm on X-ray attenuation data, with a subsequent display. The data were available for the algorithm only after the production and detection steps, i.e., after an X-ray beam was passed through an object using a CAT scanner, and detected upon exit. The court concluded that in the absence of the algorithm, “the production, detection, and display steps would still be present and would result in a conventional CAT-scan process.” Thus, the production and detection steps were not viewed as mere antecedent steps to obtain values to solve the algorithm. In Abele, therefore, the algorithm served to improve the CAT-scan process. As such, the algorithm satisfied the Walter guideline of “refining a step in a process that is otherwise statutory,” and hence, it presented statutory subject matter. In this case, because algorithm steps [b]-[e] do not operate to change any aspect of the physical process of step [a], the claim does not satisfy the Walter guideline. Though this by itself is not dispositive (see discussion of Walter, supra), patentability here is precluded by the fact that physical step [a] merely provides data for the algorithm.

In re Meyer, 1982

Meyer’s invention related to a system for aiding a neurologist in diagnosing patients. Meyer’s claims were directed to a method of storing and correlating test responses on a complex system.

The CCPA upheld the Board of Patent Appeals and Interferences’ affirmance of an Examiner’s rejection of Meyer’s claims as being unstatutory under 35 USC § 101.

The court applied the first part of the two-part Freeman-Walter test to the Meyer claims, relying on the applicants’ specification and arguments, and found that the invention was concerned with partly replacing the thinking processes of a neurologist with a computer. The court then concluded that a mathematical algorithm was involved in the claims.

With respect to the second part of the Freeman-Walter test, the Court stated that Walter had modified Freeman to require an inquiry into whether the algorithm is implemented in a specific manner to define steps in process claims. The court stated that Walter was not intended to be an exclusive test, but that a more comprehensive test is to be found in Abele.

The Court state that the question should be whether the mental process is applied to physical elements or process steps in an otherwise statutory process, machine, manufacture, or composition of matter.

Applying this analysis to the Meyer claims, the Court found that the algorithm of the applicants’ claims had not been applied to physical elements or process steps and were not to an otherwise statutory process or apparatus.

Diamond v. Diehr and Lutton, 1981

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 re Walter, 1980

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.

The court stated that specific end use recited in the preambles does not save the claims from the holding in Flook, since they are drawn to methods of calculation, albeit improved. Examination of each claim demonstrates that each has no substance apart from the calculations involved. The calculations are the beginning and end of the claims. The court therefore held that this case falls squarely within the holding in Flook, and the claims must be held to be nonstatutory.

In re Freeman, 1978

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.

Gottschalk v. Benson, 1972

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:

    “Uncertainty now exists as to whether the statute permits a valid patent to be granted on programs. Direct attempts to patent programs have been rejected on the ground of nonstatutory subject matter. Indirect attempts to obtain patents and avoid the rejection, by drafting claims as a process, or a machine or components thereof programmed in a given manner, rather than as a program itself, have confused the issue further and should not be permitted.
    “The Patent Office now cannot examine applications for programs because of a lack of a classification technique and the requisite search files. Even if these were available, reliable searches would not be feasible or economic because of the tremendous volume of prior art being generated. Without this search, the patenting of programs would be tantamount to mere registration and the presumption of validity would be all but nonexistent.
    “It is noted that the creation of programs has undergone substantial and satisfactory growth in the absence of patent protection and that copyright protection for programs is presently available.”

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.