accepting the validity of the "new and different machine" principle, but then analyzing that issue according to Supreme Court Sec. 101 precedent
How later courts described this case
- accepting the validity of the "new and different machine" principle, but then analyzing that issue according to Supreme Court Sec. 101 precedent
- “the in stant claims, in apparatus form, do not claim or encompass a law of nature, a mathematical formula, or an algorithm” (emphasis in original)
- noting that “[e]very competent draftsman” knows how to cast method claims “in machine system form”
- “Under our judicial system, it is the duty of a judge of a lower court to try to follow in spirit decisions of the Supreme Court—that is to say, their ‘thrust’.”
Written by the judges who cited it.
The opinion
MARKEY, Chief Judge
(dissenting).
I would affirm the decision of the board on its rejection under 35 U.S.C. 103. In that event, discussion of the rejections under 35 U.S.C. 112 and 101 becomes unnecessary. That we decline to discuss rejections which are thus rendered moot does not, of course, reflect in any way upon the validity or invalidity of such rejections.
The majority opinion finds differences between the claimed subject matter and the prior bank data processing system. Thereupon, the majority opinion appears to treat the obviousness rejection below as though it were based on 35 U.S.C. 102. There is no doubt, as the board recognized, that appellant’s programmed computer differs from the conventional programmed computers previously employed in banks. But the question under 35 U.S.C. 103 is whether appellant’s programmed computers as claimed, i. e., his “record-keeping machine system,” would have been obvious to those skilled in the art applicable to such record-keeping machine systems. In my view one skilled in the art, presented with the conventional machine system, would have found it obvious, without knowledge of appellant’s disclosure, to have modified the system as set forth in the appealed claims.
Similarly, I regard the differences between the claimed subject matter and the relevant portions of the Dirks’ patent to be such as to have rendered obvious the claimed subject matter as a whole at the time the invention was made. That only portions of the Dirks’ specification are relied on by the board is of course, irrelevant if such portions do in fact render obvious the subject matter of the appealed claims. Whether or not Dirks discloses category codes or their equivalent would not appear to be the question. If it did, the rejection might well be under 35 U.S.C. 102. The question is whether the contribution of such category codes by appellant is a difference sufficient to render the claimed subject matter unobvious to one skilled in the applicable art. As above indicated, I differ from my brothers in the majority and would answer that question in the negative.
Thus, I find no clear error on the part of the board in its rejection of the appealed claims under 35 U.S.C. 103. In the absence of such clear error we must, and I would, affirm the decision of the board.