In re Christensen

RICH, Judge

(concurring).

I agree, reluctantly, with the result reached in Judge Lane’s opinion because, in view of Gottschalk v. Benson, 409 U.S. 63 , 93 S.Ct. 253 , 34 L.Ed.2d 273 (1972), we have no alternative but to affirm the rejection of claims 4 and 5. However, I wish to state my own views as to the bearing on this ease of the Supreme Court’s Benson decision.

This ease is quite unlike Benson , which we decided in 1971, 441 F.2d 682 , 58 CCPA 1134, and which the Supreme Court reversed. The rejection by the examiner in the present case was based on a combination of a holding of obviousness under 35 U.S.C. § 103 , using two prior art references, and application of the old “mental steps” doctrine. He found the only advance over the prior art to be the computation step, recited in the claims, which he said was “purely mental” and, in itself, therefore “non-statutory.” He relied primarily, for legal support, on this court's old opinions in In re Abrams, 188 F.2d 165 , 38 CCPA 945 (1951), and in the companion case of In re Yuan, 188 F.2d 377 , 38 CCPA 967 (1951), containing ideas which we have partially rejected and considerably refined in recent years. The board, in a two-paragraph opinion, added nothing and affirmed the section 103 obviousness rejection. In a second opinion, in response to a request for reconsideration, the board added a short discussion of the mental step aspect of the case, Abrams , and Yuan and said 35 U.S.C. § 101 had applicability to the decision. The implication in that observation, which was not explained, is that under section 101 a mental step is not patentable subject matter.

In Benson , on the other hand, the sole rejection was purely and simply that the rejected method or process claims, as a whole, were directed to non-statutory subject matter in that they were not “processes” within the meaning of 35 U.S.C. § 101 . Stated another way, Benson’s process was said not to be the kind of process the statute contemplates. That was the only question we decided in Benson . That was the only question presented to the Supreme Court. As its opinion states at the outset,

The question is whether the method described and claimed is a “process” within the meaning of the Patent Act [quoting 35 USC 101 and the section 100(b) definition of “process” in a footnote].

Unfortunately, after stating that to be the question, the Supreme Court opinion does not again advert to it and never decides it, except inferentially by reversing our decision that the claims were directed to statutory processes. Since the Court’s opinion does not discuss the meaning of “process” in the statute, it sheds no light on that subject. It ends up discussing the patentability of programs for digital computers but no program was before us in Benson. Nor is a program before us in this case.

Since the issue in Benson was not the same as the issue in this case, one must ask what bearing the Supreme Court’s Benson decision has here. The answer for me is that, notwithstanding the fact that the Supreme Court never discussed the issue presented to it, its opinion went on at some length about the “abstract and sweeping” scope of the claims, making that the pivot on which *1396 its decision turned, proceeding on the assumption — of doubtful validity — that the processes they defined could be carried out “through any existing machinery or future-devised machinery or without any apparatus.” Having set up these hypothetical abstract and sweeping claims as the subject of its consideration, it treated them as for a “mathematical formula” or “the algorithm itself,” because of their breadth, and as such, held them unpatentable.

Thus the reasoning of the Supreme Court’s opinion has more bearing on the facts in this case than it had on the facts before it in Benson . The claims in this case do contain a mathematical formula; in Benson they did not. I therefore agree with Judge Lane that the Benson opinion “must influence our decision in the instant case.”

It was made quite clear in the “nutshell” summation in the Benson opinion that patents are not to issue where their effect would be to enable the patentee to prevent others from making use of a mathematical formula. That would be the effect here. I think it matters not, under the Supreme Court’s rationalization, that appellant’s claims are limited to porosity-determination application of the novel formula, characterized by the examiner as a possible “important contribution to the [useful] art of geophysical prospecting.” In Benson , the Supreme Court specifically assumed that the “mathematical formula involved here has no substantial practical application except in connection with a digital computer” yet it went on in the same sentence to say that “the patent would wholly pre-empt the mathematical formula * * Whether or not that statement conforms to fact, it expresses the view of the Supreme Court which we must follow in administering the patent law, at least until such time as it may clarify the situation.

If the process claimed in Benson , having no practical application other than in operating a digital computer, constituted pre-emption of a formula, it follows that the processes claimed here pre-empt a formula notwithstanding they have application only to subsoil porosity determinations. According to the reasoning of the Supreme Court, this appears to be a question of scope, or at least the abstract nature of the claims, not a question of what the Patent Act means by “process.” I can read the opinion only as saying that the abstraction or undue scope of the claims is the result of their assumed pre-emption or exclusion from the use of a formula, algorithm, or “generalized formulation,” though for a specific application in a useful art. “Algorithm” has been used in the sense of a “procedure for solving a given type of mathematical problem” and “formula” is used in the sense of a mathematical formula. The Supreme Court in Benson appears to have held that claims drafted in such terms are not patentable — for what reason remaining a mystery. Under the rules of the legal game, we are obliged to follow its lead as best we can.

But for the Benson decision, I would reverse the rejection here because I see no reason why such a specific, useful, technological process as a process for determining subsurface porosity, concededly a contribution to the useful arts, cannot be defined in the language of mathematics which is widely used as a medium of communication in that field. I have no more doubt it is a “process” within the meaning of § 101 than I had about Benson’s process; but on that point I seem to have been reversed.