Application of Zoltan TARCZYHORNOCH

KIRKPATRICK, Judge

(dissenting), with whom WORLEY, Chief Judge, joins.

In order to reverse the decision of the Patent Office Board of Appeals, the majority overrules a line of decisions of this court affirming and applying a rule which is about as solidly established as any rule of the patent law. Beginning with a decision in 1901 of the Court of Appeals for the District of Columbia, the predecessor of this court in jurisdiction of appeals from the Patent Office, the rule that a process which amounts to no more than the mere function of a machine is not patentable has been consistently followed over a period of nearly seventy years. So far as I know, the rule has been generally acquiesced in and accepted, and has been applied in a score or more of cases in this court without challenge.

The question presented by this appeal is therefore whether this court is now justified in disregarding the rule of stare decisis which all agree is vital to *869 the preservation of the uniformity and predictability of the law. In such a situation, the principles by which the court should be guided are clear and well settled.

In a system of jurisprudence founded upon stare decisis, as our system is, an established rule or principle will not be departed from except in case of grave necessity when cogent reasons require such departure. If a rule of law, well established by decisions, is erroneous, it is still not to be lightly set aside by the courts but any abandonment or alteration of it should be by the legislature, the body charged with the responsibility of making the law and not by us whose only duty is to define and construe it.

Accepting then, the proposition that a heavy burden rests upon those who go about upsetting thoroughly settled precedent, it appears to me that the reasons advanced in the majority opinion for doing so in this case are wholly insufficient to justify its decision. I have no fault to find with the scholarly and scrupulously fair review and analysis of the development of the rule, which appears in the majority opinion. It may well be that “the decisions of the Supreme Court have not required the rejection of process claims merely because the process apparently could be carried out only with the disclosed apparatus.” But note also that no decision of the Supreme Court has disapproved of the rejection of process claims for that reason. I do not dispute that “the doctrine has been shown not to proceed from its purported well-springs,” and it may have been the product of an essentially illogical distinction. However, I cannot agree that it is at odds with the basic purposes of the patent system or that “it is productive of a range of undesirable results from the highly inequitable to the silly” or that the rule denies to certain inventors the exclusive rights to their discoveries or that, in some cases, “the inventor may be cheated of his invention.”

I cannot overlook the fact that there has been no showing that the practical working of the rule has been other than entirely satisfactory. The patent bar which exists for the purpose of obtaining patent rights for those who invent any new or useful process, machine, manufacture or composition of matter and has been always vigilant to protect those rights has not, to my knowledge, made any effort at any time to change the rule and one wonders why not if it is a rule so destructive of the rights of inventors and so subversive of the basic purpose of the patent system as the majority fears.

Nor has Congress seen fit to make any change in this supposedly unjust and confiscatory rule which may operate to “cheat” inventors of their inventions. Since In re Weston, the case which adopted the “mere function of an apparatus” rejection upon review of Patent Office action, some thirty-two Congresses have met and adjourned without taking any action to modify the law in that respect. On the contrary, in the Patent Act of 1952 Congress dealt specifically with the patentability of processes but did not disturb the existing decisional law upon the point here involved. Since Graham v. John Deere Co., 383 U.S. 1 , 86 S.Ct. 684 , 15 L.Ed.2d 545 , it has been generally accepted that the Act of 1952 was in effect a codification of statutory law and judicial precedents and not intended to change the “general level of patentable inventions.” Thus, the principle that a process which is merely the function of an apparatus is unpatentable, which by that time had become settled law, 1 was, by implication, adopted by Congress.

*870 As a matter of fact, it is highly questionable whether the rule curtails the rights of inventors to any substantial extent. Certainly it cannot be said that it perpetuates error from which grievous wrong results, or that there is any grave necessity for its repeal. And it may be pointed out that while the present rule limits the patentee’s rights in one respect the law as adopted by the majority puts him in á position to exclude from any commercial exploitation every new and unobvious apparatus which may use the patented process to obtain an improved result in a more efficient manner — a consequence which, it would seem, could tend to discourage, rather than promote, the progress of science and useful arts. As the Government points out:

It is alleged that the rejection is inequitable. However, equity is satisfied if appellant can obtain claims which adequately protect his invention. Appellant has been allowed such claims on his apparatus. The apparatus claims provide concrete protection for appellant’s invention. In the present state of the art the specific method which appellant claims can only be performed by the apparatus claimed by appellant. The only purpose served by granting appellant the specific method claims would be to discourage- others from inventing a different apparatus to perform the specific method. Such discouragement is not in accord with the policy of the Patent system. In re Flint [ 330 F.2d 363 ], 51 CCPA 1230, 144 USPQ 299 , states:

[I]t is advantageous to the public in the promotion of progress of the useful arts, the constitutional objective of the patent law, to provide inducement for the invention of devices which are the functional equivalents of devices already known. It is not the object of the policy behind the patent system to encourage satisfaction with or commercialization only of the first device for performing a given function that happens to come along. And for those who may be interested in promoting competition in the interest of the consuming public, the greater the number of functionally equivalent devices which are encouraged onto the market by patent protection, the better off the consumer will be.

We have, of course, no way of assessing with certainty the accuracy of the Government’s theory any more than we can assess the accuracy of the majority’s supposition that denying appellant his process claim will deprive him of the fruits of his invention. It serves to point up, however, that the “equities” are not weighted so heavily on one side as the majority assumes. If the Government’s theory is correct, the majority’s newly-charted course is contrary to the basic constitutional objective of promoting the progress of the useful arts; if that espoused by the majority is correct, the many prior decisions of this court have seemingly been causing progress in the useful arts to languish, which does not appear to have been the fact to any noticeable extent.

I think that it takes much more than the discovery of a possible flaw in the reasoning of a court of years ago, which may or may not have misunderstood the purport of earlier decisions, to overturn a well established and accepted rule of nearly seventy years’ standing. It does not seem to me that the facts here justify the wholesale reversal of the settled law of this court on the abstract proposition of “equity.” Rather, it should be asked “equity” for whom? The inventor here? Other inventors in this and related fields ? The public ?

In view of the foregoing, I feel bound to record my disagreement with the majority opinion.

. In In re Horvath, 211 F.2d 604 , 41 CCPA 844, decided March 23, 1954, this court affirmed the rejection of seven claims of an application, saying “ * * * we recognize the well settled law that process or method claims merely claiming the function of the apparatus are not allowable, as has been held in a long line of decisions from this court * *