explaining that patentable processes must "be in the technological arts so as to be in consonance with the Constitutional purpose to promote the progress of 'useful arts.' " (quoting U.S. CONST. art. I, § 8, cl. 8 )
How later courts described this case
- explaining that patentable processes must "be in the technological arts so as to be in consonance with the Constitutional purpose to promote the progress of 'useful arts.' " (quoting U.S. CONST. art. I, § 8, cl. 8 )
- noting that “[a] step requiring the exercise of subjective judgment without restriction might be objectionable as rendering a claim indefinite”
- analyzing process claims encompassing computer programs
Written by the judges who cited it.
The opinion
BALDWIN, Judge
(concurring).
I feel compelled to speak out against the majority opinion. It is my position that the doctrine promulgated by that opinion, which constitutes a major and *894 radical shift in this area of the law, is a serious breach with the time-honored judicial practice of resolving important questions of law on a case-by-case basis, a policy matter which I thought had been settled by agreement of the full court with the second Prater decision and which up to now the court has followed. In addition, I feel that the course which the majority opinion takes is not only unnecessary in order to decide this particular case (or any others in this area, for that matter), but also will probably create more problems than it is intended to solve. Finally, I must point out that the majority embarked on this course without having been asked to do so by appellant.
What The Majority Opinion Does '
One need only read the page 893 of the opinion to find the principal holding: “All that is necessary * * * to make a sequence of operational steps a statutory ‘process’ within 35 USC 101 is that it be in the technological arts.” No limitations are placed upon this holding. In effect it is a pronouncement of new law.
At first reading, it may appear that this holding is but a resurrection of that made in Judge Smith’s opinion in the first Prater decision. Closer analysis reveals that the majority now goes much beyond the holding of our late colleague. A major basis of the holding in that first Prater opinion was that the claimed process must be “disclosed as being a sequence or combination of steps, capable of performance without human intervention.” [Emphasis added]. The opinion was clearly dealing with claims drawn primarily to cover a machine-implemented process but which were found to read also on carrying out the process using mental steps.
Here, however, the majority does not só limit its holding. Musgrave obviously discloses a process which can be implemented entirely by machine. Indeed, he argues with respect to some of his claims that it is unreasonable to interpret them as covering anything but a machine-implemented process. Nevertheless, the majority now says, in effect, that one no longer need disclose apparatus for carrying out his process.
Thus, while not only being a drastic departure from the policy decision implicit in the second Prater case, i. e., to decide the problems in this area of mental processes on a case-by-case basis, the majority opinion also goes far beyond the holding in the first Prater decision. As such, it should be recognized as overruling those cases which were so carefully distinguished by Judge Smith in Prater I.
Is This Change Really Necessary?
Academically, intellectually, perhaps, the majority’s new proposal — to throw out entirely the “mental steps” doctrine and replace it with a new rule — may sound appealing. Any process which is drawn to a technological art is now held to come within the ambit of the Patent Laws. I submit, however, that this court should concern itself only with realities and let the law professors worry about academic problems. The realities here are that “mental steps” are no longer a serious problem.
The actual ruling in Prater II was that the process claims there involved covered more than the appellant conceded they were intended to cover and that those claims were therefore unpatentable under 35 U.S.C. § 112 . In dictum, however, the court resolved the biggest problem then facing the patent community, i. e., whether process claims drawn to cover the operation of a programmed digital computer would be subject to the protection of the patent statutes. With regard to the mental steps problem, the court further made it clear that the only proper inquiry should be as follows: Assuming the disclosure of a novel, un-obvious machine-implemented process, *895 would a reasonable 1 interpretation of the claims include coverage of the process implemented by the human mind?
More recent cases before this court have made it clear that there is now only a very narrow scope to this “fearful” mental steps doctrine. In re Bernhart 2 and In re Mahony, 3 we found that the process claims there involved, when interpreted reasonably, did not include within their coverage mental implementation. Additionally, Rule 2 of what the majority calls the “Abrams non-rules” was given a fatal blow in Bernhart where we held that a claimed invention is not non-statutory merely because “the novelty is indicated by an expression which does not itself fit in a statutory class.” Further, in Mahony, the Patent Office view that a claim reading on both statutory and non-statutory subject matter could not comply with the second paragraph of section 112 was discarded.
What is left? I submit that in reality very little remains of the “mental steps” doctrine. Before now, the court has not found it necessary to decide whether a claim, drawn to cover a disclosed machine-implemented process but broad enough, even when interpreted reasonably, to cover the same process implemented only with the aid of the human mind, would be statutory. It was also undecided as to what effect the inclusion of a purely mental step, as defined in footnote 22 of Prater II, might have on an otherwise statutory claim. 4 Nor did the court decide whether claims drawn to a process consisting entirely of a sequence of purely mental steps would fit within the ambit of 35 U.S.C. § 101 . The majority now proposes to answer all these questions in the affirmative, regardless of the fact that this case could be decided on very narrow grounds.
I agree with appellant that claim 60, when reasonably interpreted, covers only a machine-implemented process. The decision with regard to that claim and those related to it could have been resolved on that narrow ground. With regard to claim 2 and those other claims which recite a number of “mental” steps along with physical steps, if the court found that they are predicated for pa-tentability on the mental steps (as I believe they are), the board’s decision could be reversed by simply following the Bernhart dictum mentioned earlier and approving those enlightened board decisions referred to in the majority opinion which hold, in effect, that if a mental step is not purely mental, the process including it is within the statutory category of “process” set out in 35 U.S.C. § 101 . This holding would flow naturally from what has been said and held in our earlier opinions, and would be all that is necessary to support reversal of the decision below.
Foreseeable Problems
It seems that whenever a court decides to go beyond what is necessary to decide the case before it, more problems are generated than are solved. I foresee quite a few with the majority’s new holding.
First and foremost will be the problem of interpreting the meaning of “technological arts”: Is this term intended to be synonymous with the “industrial technology” — mentioned by Judge Smith? It sounds broader to me. Necessarily, this will have to be considered a question of law and decided on a case-by-case basis. Promulgation of any all-encompassing definition has to be impossible. This task is now before us.
Already alluded to is the apparent decision not to require that a machine-implemented process be disclosed. This might have some salutary effect in certain circumstances, where machine im *896 plementation would be obvious from disclosure of the process steps alone. But what happens where it is not so obvious ? Then we could get involved in deciding, first, whether a reasonable interpretation of the claims would include both machine and mental implementation of the process and, second, whether the absence of a disclosure of apparatus for carrying out the process would warrant rejection of the broad process claims for lack of support.
Justifying the decision finding claims drawn entirely to purely mental processes to be statutory, the majority states that “[a] step requiring the exercise of subjective judgment without restriction might be objectionable as rendering a claim indefinite.” It should not require much imagination to see the many problems sure to be involved in trying to decide whether a step requiring certain human judgment evaluations is definite or not.
As one more example, suppose a claim happens to contain a sequence of operational steps which can reasonably be read to cover a process performable both within and without the technological arts? This is not too far fetched. Would such a claim be statutory? Would it comply with section 112? We will have to face these problems some day.
In conclusion, I think it is apparent that what the majority has done will only substitute for one set of problems another possibly more complex set. Because the problems will be new, they will add confusion to the law. We are only now beginning to make some sense out of this area of the law. To change at this time, I submit, is nonsense.
. As applied in Prater II and Mahony (infra, note 3), the standard of reasonableness would be the meaning of the claims to one of ordinary skill in the pertinent art when read in light of and consistently with the specification.
. 417 F.2d 1395 , 57 CCPA 737 (1969).
. 421 F.2d 742 , 57 CCPA 939 (1970).
. But see In re Jones, 373 F.2d 1007 , 54 CCPA 1218 (1967).