Amicus Curiae Brief — Gottschalk v. Benson

Supreme Court brief1972

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Application of Benson, 441 F. 2d 682 (C. C. P. A.

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IX. Tux Tacit Approvat sy tHe Patent Orrice or THe

Eartizr Decisions, Discussep Apove ............. 3

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APPENDICES :

I. U. S. Patent No. 3,339,457—Pun ............... Al

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III. U. S. Patent No. 3,551, 568— Prater & Wei A4

IV. U. S. Patent No. 3,564,221—Wheeling ............ AS

V. The Benson and Tabbot Invention ................

TABLE OF AUTHORITIES.

In re Abrams, 188 F. 2d 165 (C. C. P. A. 1951) ......... 22. 24

Application of Benson, 441 F. 24 682 (C. C. P. A. 1971) ..4, 34, 37

Application of Bernhart, 417 F. 24 1395 (C. C. P. A. 1969) 25,27, 39

Cochrane v. Deener, 94 U. S. 780 (1876) ...... 6, 10, 11, 12,22, 24

Comptograph Co. v. Mechanical Accountant Co., 145 Fed. 331

JJ 8b 6 ¼ ͤ ... ... 18

Don Lee Inc. v. Walker, 61 F. 2d 58 (9th Cir. 1932) 22

Expanded Metal Company v. Bradford, 214 U. S. 366 (1909) 14

Application of Foster, 438 F. 2d 1011 (C. C. P. A. 171 — 31

Application of Chiron, 442 F. 24 985 (C. C. P. A. 171) 31

Halliburton Oil Well Cementing Co. v. Walker, 146 F. 2d 817

ce c ( 22

Application of Hammack, 427 F. 2d 1384 (C. C. P. A. 1970) 29,33

Application of Hammack, 427 F. 2d 1378 (C. C. P. A. 1970) . 2

MacKay Radio and Telegraph Company v. Radio Corporation

of America, 306 U. S. 86 (19 . ͥ 28

Application of Mahony, 421 F. 2d 742 (C. C. P. A. 1970) ..27,29

Application of Mcliroy, 442 F. 24 1397 (C. C. P. A. 1971) 32

Application of Musgrave, 431 F. 2d 882 (C. C. P. A. 1970)

29, 30, 32, 33

Application of Naquin, 398 F. 2d 863 (C. C. P. A. 1968) 30

O'Reilly v. Morse, 36 U. S. 62 (18583) 5,6

Application of Prater, 415 F. 2d 1378 (C. C. P. A. 1968) . .20, 21, 23

Application of Prater, 415 F. 2d 1393 (C. C. P. A. 1969) 20, 23, 24

Risdon Iron and Locomotive Works v. Medart, 158 U. S. 68

yVyVyjyu Z ͤ tow dese 11, 12

In re Shao Wen Yuan, 188 F. 2d 377 (C. C. P. A. 1951) ..22,24

TV OSB COGS vn cssccccdccesscoscoss 22

Sperry Rand Corporation v. Bell Telephone Laboratories, In-

corporated, 208 F. Supp. 598 (S. D. N. Y. 1962), 317

Oe ED sino scencncvcceeecesacs 18

TABLE OF AUTHORITIES (Continued).

Page

Application of Tarczy-Hornoch, 397 F. 2d 856 (C. C. P. A.

1968)

The Telephone Cases, 126 U. S. 1 (1887)

Tilghman v. Proctor, 102 U. S. 707 (1880)

United States v. Adams, 383 U. S. 39 (1966)

Application of Waldbaum, 173 U. S. P. Q. 430 (No. 8619,

C. C. P. A. April 20, 1972) 32, 39, 40

Waxham v. Smith, 294 U. S. 20 (1935)

Application of Wheeling, 413 F. 2d 1187 (C. C. P. A. 1969) .,

FOREIGN CASES CITED.

Badger Company, Incorporated’s Application [1970] Pat. Cas.

36 (Great Britain)

Gever’s Application [1970] Pat. Cas. 91 (Great Britain) 38, 39, 42

In the Matter of a Patent Application Serial No. 961,392

JJ. bas hou cddkauevieshcckvecocccdeces 39

National Research Development Corporation’s Application

(1961) Pat. Cas. 135 (Australia)

Philips Electrologica GmbH, Docket 17 W(pat) 6/68 (Fed-

eral Republic of Germany)

Slee and Harris’s Application [1966] Pat. Cas. 194 (Great

IN THE

Supreme Court of the United States

Ocroszr Tau 1971.

—— —

No. 71-485.

ROBERT GOTTSCHALK, ACTING COMMISSIONER

OF PATENTS,

Petitioner,

GARY R. BENSON AND ARTHUR C. TABBOT,

ney Respondents.

———

Ox Wair or CxRTIORARL To THE

Uxrrep States Court or Customs AND Patent Appzats.

BRIEF AMIOUS CURIAE FOR MOBIL on.

CORPORATION.

Mobil Oil Corporation respectfully submits this brief

with the consent of both parties. The letters of consent

have been filed with the Clerk of this Court.

QUESTION PRESENTED.

Whether the Court of Customs and Patent Appeals

erred in finding the method of operation of a general pur-

pose computer as set forth by claims 8 and 13 comprises

subject matter which may be patented under 35 U. S. C.

100 and 101.

Brief Amicus Curiae for Mobil Oil Corporation

II.

THE INTEREST OF AMIOUS OURIAE.

Mobil Oil Corporation is a corporation originally or-

ganized August 10, 1882 under the laws of New York. Its

principal business is the exploration for, production, refin-

ing and marketing of petroleum hydrocarbon on a world-

wide basis. As a supporting activity Mobil has several

research facilities in different parts of the country utilized

for original research to develop the full potential of com-

puter applications in its various fields of activity. Mobil;

computers are in twenty-four hour a day use in processing

seismic signals to identify oil bearing subsurface formations

and in operation of its refineries to increase yield and to

enhance qualjty of products therefrom. Its large expendi-

tures in research and practical applications involving com-

puter operation have given rise to proprietary information

deemed of great value.

In order to determine company policy as to how best

to protect its proprietary rights in the new methods of

operation and control of computers and their use as com-

ponent parts of other systems, Mobil appealed adverse

decisions of the Patent Office rejecting patent claims on

this technology. Mobil asked the Court of Customs and

Patent Appeals to decide whether the Patent Office had

changed its past practice and was correct in denying patent

protection to new and different operations of computers.

If the answer were to be affirmative, a company policy of

seeking trade secret protection would be indicated; if

negative, it would continue to publish the results of its

research under the protection provided by the patent

system.

Brief Amicus Curiae for Mobil Oil Corporation 3

III.

THE PURPOSE OF THIS BRIEF.

As a result of Mobil’s appeals and the appeals of others

to the court below, a body of law consistent with prior

decisions of this Court has been developed. The court

below has imposed safeguards to avoid overclaiming by

applicants. It has insisted on full and complete disclosures

of automatic systems, with claims properly drafted to

define subject matter within 35 U. S. C. §§ 100 and 101 and

meeting the requirements of 35 U. S. C. § 112.

Mobil’s primary purpose here is to show that the recent

decisions of the Court of Customs and Patent Appeals on

ing technology do conform to prior decisions of

this Court and statutory authority. Over the years this

Court has developed case law in fulfillment of the Consti-

tutional mandate by granting for limited times the exclu-

sive right to discoveries in new fields of technology. As

these new and previously unknown fields of technology

came into being, this Court was faced with the problem of

whether the lew subject matter was patentable and with

the question of the breadth of the claims to be granted in

each new field.

This brief presents the development by this Court of

the law with respect to new processes now defined in 35

U. S. C. 5 100:

(b) “The term ‘process’ means process, art or

method, and includes a new use of a known process,

machine, manufacture, composition of matter, or

material.” :

The accepted patentability of programming technology

and the leading cases of the C. C. P. A. involving new opera-

tions of computers is then presented. Because this appeal

4 Brief Amicus Curiae for Mobil Ou Corporation

is from an ex porte proceeding in the Patent Office, the

record is unduly limited. Therefore, an analysi« of other

C. C. F. A. decisions involving new and uncbvicus uses of

computers is necessary to provide « somewhat broader baw

for a review of the instant decision. These other decision:

aleo demonstrate the care with which the C. C. F. A. bas

considered the subject matter.

A discussion of the Benson and Tabbot case itself ip.

cludes « description of their method of code conversion is

Appendiz V of this brief. One of the key points of this

appeal is the limited scope of the rejection. The Benes

and Tabbot application is rejected only under 35 U. &. C

§ 101, to the exclusion of other sections of the patent statutes

Finally, thie brief deals with the practice in other

Methods and processes have been recognized as patent

able eubject matter cines the inception of our patent system.

An early text by Willard Phillips, The Law of Patents

for Inventions, 1887, at pages @2 et seq, provides a most

page 100 Di the principles of the machine,’ says the

same jodge, in another case, ‘is meant the modus operonds,

—

Brief Amicus Curiae for Mobil Ol Corporation 5

the peculiar device or manner of producing any given ef.

fect.’ "', citing Whittemore v. Cutter, 1 Gallison, 478. Phil-

lips cites many cases to the effect that the epplication of «

principle represents patentable subjects matter. More

specifically, at page 102:

It by opplication be meant the mode of operating,

or the mechanical combinations, means, or instruments,

by which « principle or theory is carried into opera-

tion, in this sense, the new application of « theory or

principle, may be the subject of « patent.

Again, at page 103:

Thus, Mr. Justice Johnson says, ‘the legal title to

„ patent consists not in « principle merely, but in an

spplication of « principle, whether previously in exist.

ence or not, to some new and useful purpose’ (Whitacy

v. Carter, Pessenden’s Pat. 10. (All empbasis in

original )

Mr. Phillips’ understanding of the law of patentable

subject matter is substantiated by the following decisions

of this Court.

L The Art of Telegraphy.

O'Reilly v. Morse

6 U. B. G2 (1883)

This case brought before the Court the inventions of

Samuel Morse having to do with the new art of

which created a new industry in a new field of technology.

All claims before the Court except claim d were held valid

and infringed. Of these claims, claims 6 and g are bere

relevant.

„Hint. I ae claim as my invention the system of

signs, consisting of dots and spaces, and of dots, spaces,

6 Brief Amicus Curiae for Mobil Ol Corporation

and illustrated, in combination with machisery for re

cording them, as signals for telegraphic purposes

“Eighth I do not propose to limit myself to the

specific machinery, or parts of machinery, described a

the foregoing specifications and claims; the exsence of

my invention being the use of the motive power of the

electric or galvanic current, which | call electro magne

tiem, however developed, for making or printing intel

ligible characters, letters, or signa, at any distances,

being a new application of that power, of which I claim

to be the Gret inventor or discoverer.” (56 U. 8. %)

Claim 6 is of interest bere since this Court in 183

recognized that in this new art the use of « code or system

of signs in combination with machinery for recording then

represented patentable subject matter.

The eighth claim was, as stated by the Court, too broad

and not warranted by law (56 U. 8. 113). Thus overclaim-

ing was the basis of the ruling of invalidity.

The Court contrasted the overclaiming by Morse with

the proper claim by one Neilson (56 U. 8. 114-116). The

latter had limited bis process to the heating of the air by «

device intermediate the blower and the furnace. Neilecs

had not claimed merely the discovery that bot sir would

promote ignition better than cold. He properly claimed «

receptacle in whatever form arranged to beat the air on its

way from the blower to the furnace. Thus thie Court illus

trated the difference between proper scope of claims and

overclaiming.

2. The Art of Producing Ficur.

In this case the defendant had not used the same appa

ratus as disclosed in the plaintiff's Cochrane patents

Brief Amicus Curiae for Mobil Od Corporation 7

fore, the question was squarely presented as to whether the

defendant had employed the process specified by the claim

and, in particular, the extent that a process must be limited

to the particular apparatus disclosed. In answering this

question, the Court first stated a premise :

That a process may be patentable, irrespective

of the particular form of the instrumentalities used,

cannot be disputed. If one of the steps of a process be

that « certain substance is to be reduced to a powder,

it may not be at all material what instrument or

machinery is used to effect that object, whether a

hammer, a pestle and mortar, or a mill. Either may

be pointed out; but if the patent is not confined to

that particular tool or machine, the use of the others

would be an infringement, the general process being

the same.”’ (94 U. 8. 787, 788)

This was followed by an oft-quoted definition of « process

in terms of the fact situation before the Court:

“A process is a mode of treatment of certain

materials to produce a given result. It is an act, or

a series of acts, performed upon the subject-matter to

be transformed and reduced to a different state or

thing. If new and useful, it is just as patentable as is

& plece of machinery. In the language of the patent

lew, it le an art. The machinery pointed out as suitable

to perform the process may or may not be new or

patentable ; whilst the process itself may be altogether

new, and produce an entirely new result. The process

requires that certain things should be done with certain

substances, and in « certain order; but the tools to be

ee ee OS ey ean”

(94 U. 8. 788)

N Brief Amicus Curiae for Mobil Oil Corporation

The foregoing quotations, though they seem clear

enough, gave rise to questions raised in later cases as to

whether the Court was setting up limits applicable to the

facts of the case without foreclosing the applicability of a

broader definition in the context of a different fact situation.

3. The Art of Manufacturing Fat Acids in Glycerine.

Tilghman v. Proctor

102 U. 8. 707 (1880)

In this decision the Court clarified its views on process

claims.

Mr. Justice Bradley described the patented invention

as follows:

**Tilghman’s discovery was made in 1853, and was,

in brief, this: ‘That the fat acids can be separated from

glycerine, without injury to the latter, by the single

and simple process of subjecting the neutral fat, whilst

in intimate mixture with water, to a high degree of

heat under sufficient pressure to prevent the water

from being converted into steam without the employ-

ment of any alkali or sulphuric acid, or other saponify-

ing agent: (102 U. 8. 712-13)

Whether process claims were applicable to this new tech-

nological development was answered as follows:

„What did Tilghman discover? And what did he, in

terms, claim by his patent? He discovered that fat

ean be dissolved into its constituent elements by the

use of water alone under a high degree of heat and

pressure; and he patented the process of ‘manufactur-

ing fat acids and glycerine from fatty bodies by the

Irn

}

’

Brief Amicus Curiae for Mobil Oil Corporation 9

Had the process been known and used before, and not

been Tilghman’s invention, he could not then have

claimed anything more than the particular apparatus

described in his patent; but being the inventor of the

process, as we are satisfied was the fact, he was entitled

to claim it in the manner he did.

That a patent can be granted for a process,

there can be no doubt. The patent law is not confined

to new machines and new compositions of matter, but

extends to any new and useful art or manufacture.

(Emphasis by the Court.) (102 U. 8. 721-22)

Mr. Justice Bradley continued to present his own broad

discussion of the nature of an invention in an art or process:

It seems to us that this clear and exact summary of

the law affords the key to almost every case that can

arise. ‘Whoever discovers that a certain useful result

will be produced in any art by the use of certain means

is entitled to a patent for it, provided he specifies the

means.’ But everything turns on the force and mean-

ing of the word ‘means.’ It is very certain that the

means need not be a machine, or an apparatus; it may,

as the court says, be a process. A machine is a thing.

A process is an act, or a mode of acting. The one is

visible to the eye,—an object of perpetual observation.

The other is a conception of the mind, seen only by its

effects when being executed or performed. Either may

be the means of producing a useful result. (Empha-

sis by the Court.) (102 U. S. 728)

10 Brief Amicus Curiae for Mobil Oil Corporation

4 The Art of Telephony.

The Telephone Oases

126 U. 8. 1 (1887)

Famous claim 5 of the Bell patent reads as follows:

„8. The method of, and apparatus for, transmit-

ting vocal or other sounds telegraphically, as herein

described, by causing electrical undulations, similar in

form to the vibrations of the air accompanying the said

vocal or other sounds, substantially as set forth.“

(126 U. 8. 531)

The opinion by Mr. Justice Waite states:

In this art—or, what is the same thing under the

patent law, this process, this way of transmitting

speech—electricity, one of the forces of nature, is

employed; but electricity, left to itself, will not do

what is wanted. The art consists in so controlling the

force as to make it accomplish the purpose. It had long

been believed that if the vibrations of air caused by

the voice in speaking could be reproduced at a distance

by means of electricity, the speech itself would be re-

produced and understood. How to do it was the ques-

tion.

Bell discovered that it could be done by gradually

changing the intensity of a continuous electric current,

so as to make it correspond exactly to the changes in

the density of the air caused by the sound of the voice.

This was his art. (126 U. S. 532)

That a patentable method need not necessarily involve

a change in state of matter, as in the process involved in

Cochrane v. Deener, is made abundantly clear by this

Court in the statement: |

Brief Amicus Curiae for Mobil Oil Corporation 11

What Bell claims is the art of creating changes of

intensity in a continuous current of electricity, exactly

corresponding to the changes of density in the air

caused by the vibrations which accompany vocal or

other sounds, and of using that electrical condition

thus created for sending and receiving articulate speech

telegraphically. For that, among other things, his

patent of 1876 was in our opinion issued ; and the point

to be decided is, whether as such a patent it can be

sustained. (126 U. S. 533-4)

The Supreme Court sustained the patent. They did

60 after a consideration of Cochrane v. Deener and other

authorities on this point as summarized in the statement:

Thus, an art—a process—which is useful, is as much

the subject of a patent, as a machine, manufacture, or

composition of matter. Of this there can be no doubt,

and it is abundantly supported by authority. Corning

v. Burden, 15 How. 252,267; Cochrane v. Deener, 94

U. S. 780,787,788; Tilghman v. Proctor, 102 U. 8. 707,

722, 724, 725; Fermentation Co. v. Maus, 122 U. 8. 413,

427, 428. (126 U. S. 533)

5. The Art of Making Pulleys.

Risdon Iron and Locomotive Works v. Medart

158 U. 8. 68 (1895)

Philip and William Medart sued the Risdon Company

for infringement of three of their patents . >ulleys. In

accordance with Medart’s alleged invention, the pulley

center was precisely cefitered, the ends of the spokes were

ground concentrically with the axis, the face of the rim

was ground concentric with the axis, and the edges of the

rim were ground to square them. As a result, the pulley

was more balanced, faultless in shape, stro! and more

12 Brief Amicus Curiae for Mobil Oil Corporation

durable. While recognizing these desirable characteristics,

the opinion of Mr. Justice Brown clearly states that they

did not result from a new discovery of the patentee but

rather were the result of superior workmanship (158 U. 8.

79). Accordingly, the Court found all three Medart patents

to be invalid.

In reaching this conclusion, the opinion discusses in

length the unpatentability of processes which are ‘‘the

mere function of a machine. The question of the patenta-

bility of processes which are ‘‘the inherent function of a

machine has been repeatedly argued ever since.’ At that

time, the opinion in Risdon cast doubt on the patentability

of all processes performed by machines. This doubt was

resolved in favor of patentability by later decisions of this

Court.

This is thoroughly discussed in Whitney, Patentable

Processes, 19 Harv. L. Rev. 30 (1906). Mr. Whitney’s

interpretation of Cochrane v. Deener, 94 U. S. 780 (1876)

concludes that a process is not to be limited to a series of

acts upon a material to be transformed and reduced to a

different state or thing.

Then Mr. Whitney discusses the period of time fol-

lowing Risdon Locomotive Works v. Medart, during which

early mechanical processes were considered unpatentable.

He observed, pages 34, 35:

„More concretely, the function of every machine

is to perform some definite process—some act, or series

of acte—upon a material object, by which it is trans-

formed into a different state or thing. It follows that

this process is not simply the function of the machine.

Brief Amicus Curiae for Mobil Oil Corporation 13

The two are entirely distinct entities. The one, as

stated by Mr. Justice Bradley in the Tilghman Case,

‘is a conception of the mind, seen only by its effects

when being executed or performed.’ The other is the

production of those physical effects upon a material

object.

Mr. Whitney was well grounded in the process by

which inventions come into being. He observed, pages 35,

In the natural course of development, many pro-

cesses of manufacture are first performed by hand,

then partly by machinery d partly by hand, and,

finally, automatically, by a machine. For others,

machines have not yet been devised; and such processes

must be performed wholly or in part by hand. Still

other processes are beyond the power or skill of the

hand, and must be performed, if at all, by a machine.

But, however carried into effect, the process is still a

process; and it matters not whether it was first prac-

ticed by hand, or was discovered and reduced to prac-

tice only in connection with the development of a

machine. It does not cease to be such because it is, or

must be, performed by mechanical means.

The paper concludes with a penetrating analysis as

applicable today as it was in 1906:

The patentability of a new process should, under

our laws, be determined solely by ascertaining whether

such process, as distinguished from the means by which

it is to be performed, is new and useful, and amounts

to an invention or discovery. If it meets this test suc-

cessfully, the process fulfills every requirement, and is

the proper subject of a patent.

14 Brief Amicus Curiae for Mobil Oil Corporation

This Court’s decision in Expanded Metal Company v.

Bradford, 214 U. S. 366 (1909) seems thoroughly to have

adopted Mr. Whitney’s analysis,

In this case the Supreme Court had again under con-

sideration the nature and character of method and process

claims. Expanded sheet metal was old, but the patentee,

Golding, had come up with a new way of making expanded

metal. He devised a method by means of which the metal

could be simultaneously cut and expanded.

This Court laid to rest any doubt as to the patentability

of mechanical processes by its conclusion:

We therefore reach the conclusion that an inven-

tion or discovery of a process or method involving

mechanical operations, and producing a new and useful

result, may be within the protection of the Federal

statute, and entitle the inventor to a patent for his dis-

covery.’’ (214 U. S. 385, 386)

The quotation from the opinion of Mr. Justice Waite

is particularly relevant here:

„It is lastly contended, and this is perhaps the

most important question in the case, that in view of the

former declarations and opinions of this court, what is

termed a process patent relates only to such as are

produced by chemical action, or by the operation or

application of some similar elemental action, and that

such processes do not include methods or means which

are affected by mere mechanical combinations, and a

part of the language used in Corning v. phe ws 15

Brief Amicus Curiae for Mobil Oil Corporation 15

How. 252, and Risdon Locomotive Works v. Medart,

158 U. S. 68, is seized upon in support of this contention.

We have no disposition to question the decision in those

cases. (214 U. S. 381, 382)

After discussing Tilghman v. Proctor noted above, Mr.

Justice Waite, said:

That this court did not intend to limit process

patents to those showing chemical action or similar

elemental changes is shown by subsequent cases in this

court.“ (214 U. S. 384)

5 Mr. Justice Waite then quoted from the opinion in

Westinghouse v. Boyden Power Brake Company, 170 U. 8.

537 (1898), as follows:

„These cases [158 U. S. 68, and 103 U. S. 461] as-

sume, although they do not expressly decide, that a

process to be patentable must involve a chemical or

other similar elemental action, and it may be still re-

garded as an open question whether the- ‘patentability

of processes extends beyond this class of inventions.“

(214 U. S. 384)

He added these significant words:

Where the process is simply the function or opera-

tive effect of a machine, the above cases are conclusive

against its patentability; but where it is one which,

though ordinarily and most successfully performed by

machinery, may also be performed by simple manipula-

tion, such, for instance, as the folding of rina

peculiar way for the manufacture of paper bags, or a

new method of weaving a hammock, there are cases to

the effect that such a process is patentable, though none

bol the powers of nature be invoked to aid in producing

Brief Amicus Curiae for Mobil Oil Corporation

the result. Eastern Paper Bag Co. v. Standard Paper

Bag Co., 30 Fed. Rep. 63; Union Paper Bag Machine

Co. v. Waterbury, 39 Fed. Rep. 389; Travers v. Am.

Cordage Co., 64 Fed. Rep. 771.“ (214 U. S. 384, 385)

It is not the hammock or paper bag that is patented, it

is the process producing them.

7. The Art of Hatching Eggs.

Waxham v. Smith

294 U. B. 20 (1935)

The Supreme Court, speaking through Mr. Justice

Stone, referred with approval to the Expanded Metal case

and said:

„By the use of materials in a particular manner he

secured the performance of the function by a means

which had never occurred in nature, and had not been

anticipated by the prior art; this is a patentable method

or process. Corning v. Burden, 15 How. 252, 267, 268;

Risdon Iron d Locomotive Works v. Medart, supra, 77;

Cochrane v. Deener, 94 U. S. 780, 788. A method, which

may be patented irrespective of the particular form of

the mechanism which may be availed of for carrying it

into operation, is not to be rejected as ‘functional,’

merely because the specifications show a machine capa-

ble of using it. Expanded Metal Co. v. Bradford, 214

U. S. 366, 382-386; Cochrane v. Deener, supra, 787, 788;

et. Holland Furniture Co. v. Perkins Glue Co., 277 U. 8.

245, 255, 256. (294 U. S. 22)

Brief Amicus Curiae for Mobil Oil Corporation 17

v. N

PROGRAM CONTROL OF MACHINES 18 A TECHNOL.-

OGY WHICH IS PATENTABLE UNDER THE LAW

DEVELOPED BY THIS COURT.

1. The Analog System.

of generated physical quantities such as shaft rotations,

electrical voltages, and cam-operated switches. Systems

of the foregoing type have from the beginning of the patent

system been patentable. Multiplication, division, subtrac-

tion and integration are common operations in systems of

the foregoing kind.“

18 Brief Amicus Curiae for Mobil Oil Corporation

represented by the On state of an electronic device and

the other by the “Off” state. Tne numbers or words

in digital systems can extend to any desired eig

missioner said

2. (Cont'd)

vention is to mechanically the occurrence of this error.”

(145 Fed. 345)

The Court then to examine the patent and the prior art

and found that claims were to a new and unobvious

invention and held them valid and 2 ph Co.

Brief Amicus Curiae for Mobil Oil Corporation 19

A programable machine, such as a general pur-

pose computer, with its various parts not intercon-

nected to perform any useful combined operation is

merely a ‘warehouse’ of unrelated parts. It may well

be that the same machine, with a program device cor-

rectly related thereto, may yield a novel and useful

machine combination due to the new interrelation of

parts. In other words, the fact that such a prior art

machine can have its parts interrelated by a program

device in a new way to carry out machine functions of

a specialized character may well result in a new patent-

able combination, unless there is a prior art teaching

that would make the interrelations and results thereof

obvious.

Similarly, new methods of operation performed by the

machine with the new program may be patentable. The

amici curiae in support of the Petitioner seem to argue

that this case involves the patentability of computer pro-

grams per se. It does not. Benson and Tabbot claim the

new method performed by a general purpose computer with

their program.

The general purpose computer plus its program is the

most versatile machine yet invented. With each different

program it is converted into a new and different machine

in terms of the operations performed and the results

achieved. Whether a new operation of the machine is

patentable depends upon whether the new operation, alone

or as part of an overall system, is unobvious and repre-

sents an advance in the useful arts in which it is utilized.‘

20 Brief Amicus Curiae for Mobil Oil Corporation

The question of the patentability of a program per se

Stil ddan te the alatlats ot Peter ane Wet

and in many of the subsequent cases, the court below con-

sidered Patent Office rejections based upon 35 U. 8. C.

§§ 100, 101, 102, 103 and 112. Thus there were rejections

based upon anticipation, obviousness, and statutory sub-

ject matter, as well as whether or not the claims met the

requirements of section 112 in particularly pointing out

and distinctly claiming the invention. In the case now

before this Court a rejection based solely on 35 U. 8. C.

§ 101 is under consideration.

1. The Art of Spectrographic Analysis.

Prater and Wei discovered how to achieve a spectro-

graphic analysis of a mixture of gases to determine with

increased accuracy of measurement the concentration of

2 The First Prater and Wei Decision of November 20,

de preferred over the analog computer.)

" presented to the court for decision was whether claims

Brief Amicus Curiae for Mobil Oil Corporation 21

each gas in a mixture. Their discovery was the relation-

ship between error magnification and the size of the deter-

minant of each subset of a plurality of sets of simultaneous

equations. Their invention resided in an analog system or a

properly programmed digital computer which would not

only make the search for the set of equations to be utilized,

but also determine the concentration of each of the con-

stituents in the gaseous mixture. Their claims were di-

rected to the manner of making use of the discovery by a

new and different operation of a computer, whether analog

or digital.

1968, 415 F. 2d 1378.

The arguments in this case were heard by Chief

Judge Worley, Associate Judges Rich, Smith and Almond

and Senior District Judge Kirkpatrick from the Eastern

District of Pennsylvania.

Recognizing the importance of the issues involved, the

court, Opinion by Judge Smith, not only considered the

reasoning of the Board of Appeals but reviewed in depth

the several arguments on which the Examiner based his

rejection of all of the Prater and Wei claims. The Exam-

iner recognized that Prater and Wei were entitled to patent

coverage on their Analog embodiment of their system. How-

ever, the Examiner argued that if the claims would embrace

a properly programmed general purpose digital computer,

then Prater and Wei would not be entitled to such claims

notwithstanding the fact that they had disclosed that for

certain applications the use of the ditigtal computer would

be indicated. (For complicated problems, Prater and Wei

disclosed that the general purpose digital computer would

The Patent Office argued that the principal question

22 Brief Amicus Curiae for Mobil Oil Corporation

could be interpreted to read on a mental process. If so,

they would be unpatentable as falling outside the statutory

classes of Sections 100 and 101. To support this position

there was reliance upon the case of In re Abrams, 188 F. 2d

165 (C. C. P. A. 1951). The court thoroughly studied the

Abrams case as well as the case of In re Shao Wen Yuan,

188 F. 2d 377 (C. C. P. A. 1951). The decision presents

reproductions of the drawings from the Abrams case to-

gether with a discussion of the issues involved. The court

properly concluded that in Abrams the disclosure was

mental in character. No automatic system was disclosed.

It was necessary for the operator to utilize the procedures

disclosed by Abrams and to think about the various steps

and to interpret the results of each step in order to pro-

ceed with the next one. The same conclusions were drawn

in respect of the decisions in Halliburton Oil Well Cement-

ing Co. v. Walker, 146 F. 2d 817 (9th Cir. 1944) and Don

Lee Inc. v. Walker, 61 F. 2d 58 (9th Cir. 1932).

As part of the thorough consideration of the questions

involved, Judge Smith in his Opinion beginning page 1387

reviewed the development of the patent law from its consti-

tutional origin and in particular the import of the decision

of this Court in Cochrane v. Deener, 94 U. S. 780 (1876).

The conclusion was properly reached that this Court in

Cochrane v. Deener did not set up limits in respect of

process patentability but intended and explicitly said:

„That a process may be patentable irrespective of the

particular form of the instrumentalities used,’’. (94

U. S. 787)

The intended breadth of 35 U. S. C. 6 101 was made evi-

dent by Judge Smith's reference to two cases, Smith v.

Snow, 294 U. S. 1 (1934) and Wazham v. Smith, 294 U. 8.

20 (1935). In these cases, this court indicated that the

Brief Amicus Curiae for Mobil Oil Corporation 23

‘process met the requirements of patentability because the

performance of a function which had never occurred in

nature, which had not been anticipated by the prior art,

was attained.

The court in Prater and Wei then concluded:

This distinction from Abrams (that his process could

only be performed in the mind as far as the dis-

closure was concerned) leads us to our present holding

which is that patent protection for a process disclosed

as being a sequence or combination of steps, capable of

performance without human intervention and directed

to an industrial technology—‘useful art’ within the in-

tendment of the constitution—is not precluded by the

mere fact that the process could alternatively be car-

ried out by mental steps. (415 F. 2d 1389)

Thus the rejection of the process claims was reversed. Fol-

lowing a brief discussion.of the apparatus claim, its rejec-

tion was also reversed.

3. The Decision in Prater and Wei of August 14, 1969, 415

F. 2d 1393, After Rehearing.

After grant of the petition by the Patent Office for re-

hearing, the court granted permission for amici curiae to

file briefs and to participate in the oral argument. Briefs

were presented by Bell Telephone Laboratories, Inter-

national Business Machines Corporation (IBM), Honey-

well,, Inc., Applied Data Research Inc., and the Association

of Independent Software Companies (Software Associa-

tion). .

The court comprised Chief Judge Worley, Judge

Maguire, Senior District Judge, District of Columbia and

Associate Judges Rich, Almond and Baldwin. The Opinion

was by Judge Baldwin.

24 Brief Amicus Curiae for Mobil Oil Corporation

The court again found that the fact situation presented

was not controlled by Abrams, Yuan, or Cochrane v. Deener.

Besides adopting Judge Smith’s more detailed analysis of

the Abrams case, the Opinion again reviewed that case to-

gether with Yuan and Cochrane v. Deener.

The key to the decision on Rehearing lies in the finding

of the court, page 1403:

that there is no-dispute, as between the principal

parties, that appellants have disclosed a patentable

statutory process. (Emphasis by Court.)

The opinion by Judge Baldwin then points out that there

remains a question of whether Prater and Wei were en-

titled to a claim broad enough to cover a mental process

coupled only with pencil and paper markings as well as the

operation of a properly programmed general purpose digi-

tal computer and the operation of an analog device.

The Court held to be fatal the attorney’s admission

that claim 9 could, absent the specification, be read on a

„pencil and paper execution“. Since claim 9 was thus

found to read on subject matter for which Prater and Wei

did not seek coverage, this admission was held to run afoul

of Section 112. Accordingly there was affirmance by the

court of the Patent Office rejection of all of the method

claims as not meeting the requirements of Section 112.

Apparatus claim 10 however fell into an entirely dif-

ferent category. For an apparatus claim, any ‘‘mental

steps’’ issue is absent. Claim 10 was a typical means-plus-

function claim expressly permitted by the third paragraph

of 35 U. S. C.§112. The C. C. P. A. reversed the Patent

Office rejection of this claim.

Brief Amicus Curiae for Mobil Oil Corporation 25

VII.

THE LATER DECISIONS OF THE COURT OF OUB.-

‘TOMS AND PATENT APPEALS FOLLOWED THE LAW

DEVELOPED BY THIS COURT TO ACCOMMODATE

OTHER NEW TECHNOLOGIES.

1. The Art of Producing Isometric Drawings.

Application of Bernhart

417 T. ad 1395 (O. O. P. A. 1969)

This case related to the applicability of a general pur-

pose computer in producing isometric drawings by a plotter

under the control of a general purpose computer. The

ability of the Patent Office to search such subject matter

is evident from its citation of the relevant prior art. The

recognition by the court of that prior art as anticipatory

is evidenced by its affirmance of the rejection of claims 13

and 18. The court reversed the Patent Office in respect of

claims 19-21 because the prior art was not anticipatory and

the claims met the test of statutory subject matter.

The reasoning of the court as set forth in the opinion

by Judge Lane includes the adoption of the Commissioner’s

position of 1966, supra, by pointing out that if the machine:

‘tis programmed in a certain new and unobvious way,

it is physically different from the machine without

that program; its memory elements are differently

arranged. The fact that these physical changes are

invisible to the eye should not tempt us to conclude

that the machine has not been changed. If a new

machine has not been invented, certainly a ‘new and

useful improvement’ of the unprogrammed machine

has been, and Congress has said in 35 U. S. C. 6 101

that such improvements are statutory subject matter

for a patent.“ (417 F. 2d 1400)

2% Brief Amicus Curiae for Mobil Oil Corporation

The Court then observed that the vast majority of

newly programmed machines might well be held to be

obvious to those skilled in the art and hence unpatentable

under 35 U. S. C. $103. With this statement we agree

since in each case involving the new operation of a com-

puter, the statutory requirements must be met in respect

of novelty and unobviousness.

That the C. C. P. A. rigidly followed not only earlier

decisions of this Court, but the intent of Congress is clear

from the following statement :

„We think it is clear that in enacting section 101

Congress meant to exclude principles or laws of nature

and mathematics, of which equations are an example,

from even temporary monopolization by patent. Ac-

cordingly, no rule of law should be announced which

would impress a monopoly upon all uses of the equa-

tions disclosed by appellants here in their patent

application. To allow the claims in issue here would

not prohibit all uses of those equations. As we have

pointed out above, a member of the public would have

to do much more than use the equations to infringe

any of these claims. He would have to use them in

the physical equipment recited in the claim. Moreover,

all machines function according to laws of physics

which can be mathematically set forth if known.’’ (417

F. 2d 1399)

The Court concluded that the claimed apparatus was

statutory subject matter and some of the claims were

ee. over the = art.

Brief Amicus Curiae for Mobil Oil Corporation 27

2. The Art of Digital Data Communications.

~ Application of Mahony |

1 r. 24 742 (0. O. P. A. 1970)

In the transmission of a sequence of electrical signals

representing a stream of data bits, it is necessary to have

synchronization between the sending and receiving termi-

nals. This synchronization, or framing, allows proper

identification of the individual words in the stream. This

is done by inserting so-called framing bits into the data

stream. The identification of these framing bits repre-

sented the subject matter on appeal. The decision and

Opinion by Judge Lane represents an important clarifica-

tion in the development of the law.

The principal question deeided by the court was

whether the appealed claims covered a machine imple-

mentation of the process and not mental steps. The court

5. (Cont’d.)

rons t and Fetter appeal. A portion of a selected method claim

follows :

18. A method of ng rae developing a textile weave

design from an outline design displayed upon an assumed

coordinate grid by operating a data processing system having

data storage means and graphic data display means to display

arbitrary weave patterns within arbitrarily bounded areas of

said outline design, said method comprising the steps of:

operati a portion of said storage means as a weave memory

( ) for assembling’ stored bits in coordinate arrays

representing a plurality of available weave patterns,

each having a distinctive arrangement of warp and weft

thread crossing

operating said display means in accordance with the data

stored rely in said and said area

28 Brief Amicus Ouriae for Mobil Oil Corporation

was concerned with the breadth of the claims and used the

claims themselves as the yardstick in determining com-

pliance with the Patent Act by asking what they mean to

one skilled in the art to which the invention pertains. If

ee Seen Sentra wh a meatal

process, they are statutory.

r eourt pointed out that the invention could be

illustrated by pencil and paper representation, as a method

can sometimes be better understood by using an equation

interrelating various factors to be utilized in reaching a

solution.“ Nevertheless when the claims call for a bit

stream’’, recognized dictionaries, such as the Computer

Dictionary and Handbook (1966) by Charles J. Sippl, make

clear that those skilled in the art use the term bit stream

4. . . in conjunction with transmission methods in

which character separation is accomplished by the

terminal equipment, and the bits are transmitted over

the circuit in a consecutive line of bits.“ (421 F. 2d

(746)

The Court concluded that in acting on the bits in a

bit stream, physical phenomena has been set forth the

same as in electrical circuitry where sinusoidal electrical

signals are involved.

While one may draw a sine wave soprestntative of

such electrical signals, when signals of sine wave form

are called for they are again physical in character. Thus

it is customary in the electrical arts with reference to elec-

trical signals to talk about chopping, rectifying, filtering

6. The Court so held in MacKay Radio and Telegraph Company

v. Radio Corporation of America, 306 U. S. 86, 100 (1939) in

this Court found no problem in the use of a formula in defining

Carter’s radio antenna. The basis for invalidity was Carter’s effort

during prosecution of the application to modify and broaden the

formula to a point where it involved new matter.

Brief Amicus Curiae for Mobil Oil Corporation 29

‘and soon. So it is in the computer art. Bit streams and

bits, and the manner in which they are operated upon, are

just as physical in nature as sinusoidal electrical current

which operates electrical motors for the well-being of so-

The court distinguished the Mahony case from Prater

and Wei in that Prater and Wei were seeking to cover

only machine executed methods but their method claims

were broader than their invention—hence overclaiming.

From the foregoing it will be seen that the court did

not open widely the door to the granting of patents. When

the court below has been presented with a rejection under

Section 112 of the Patent Act, it insisted that each applicant.

fully comply with the requirements of this section. 1

3. The Art of Tracking Vehicles.

Application of Hammack, 427 F. 2d 1378 and Applica-

tion of Hammack, 427 F. 2d 1384 (C. C. P. A. 1970)

The two Hammack applications described the deter-

mination of the position and velocity of moving objects,

such as aircraft, space vehicles, ballistic missiles, and sub-

marines.

The decisions of July 2, 1970 affirmed the rejection by

the Patent Office of all claims on appeal because of in-

definiteness and failing to meet the statutory .

of Section 112.

4 The Art of Seismic Exploration.

Application of Musgrave

481 F. 2d 882 (C. OC. P. A. 1970)

The Musgrave case may be considered to be a com-

panion ease of Prater and Wei (both assigned to Mobil

pie Oil Corporation) in that both disclose analog systems for

—

30) Brief Amicus Curiac for Mobil Oil Corporation

the practice of the method and for support of broad ap.

paratus claims. The Musgrave case dealt with seiemic

operations and in particular how to obtain better and more

useful information about the nature and character of sub-

surface formations in locating oil fields.

An earlier case, Application of Naquwin, 398 F. 2d 863

(C. C. P. A. 1968), dealt with the same subject matter.

In the Naqwin case, the Patent Office rejected the claims

only on the basis of lack of a complete disclosure meeting

the requirements of the first paragraph of Section 112. The

computer program had not been disclosed. The court re-

versed the Patent Office on the basis that the Examiner

himeelf had agreed that the principles of how to program

a computer to perform the steps were well known to those

skilled in the computer art. It was only necessary to have

a flow diagram explaining the particular advance in the

art made by Naquin. A complete computer program was

not necessary to complete the disclosure since such pro-

gramming would be well within the skill of the art to

produce.

In contrast with Naquin, Musgrave disclosed a fully

operative analog system but like Prater and Wei mentioned

Brief Amicus Curiae for Mobil Oil Corporation 31

5. More Seizmic Prospecting Art.

Application of Foster

r. 2d 1011 (0. 0. P. A. 1971)

This application (also assigned to Mobil Oil Corpora-

tion) described methods of processing geophysical data to

eliminate distottion present in seismograms.

Judge Almond in his Opinion cautioned that one must

draft claims which meet the requirements of 35 U. 8. C.

$112 in that they must set forth only the machine imple-

' mented processes which applicant regards as his invention.

When they go beyond this point, the Patent Office correctly

rejects them (438 F. 2d 1015). Because of this, the court

afirmed the Patent Office as to claims 4, 7-13, and 15-18 but

reversed as to claims 1-3, 19, 20, 26 and 27. These latter

claims met the requirements both of 35 U. 8. C. 4 101 and of

U. 8. C. 4112 Specifically, the court found that the use

merely of the word signals does not limit the claim to

machine implemented processes. A statement that they are

“electrical signals, or other language of the art as in

Mahony, must be present to make the claims commensurate

with the applicants’ own definition of what they were seck-

ing to cover. When the claims go beyond that, Ie, over-

daiming, the Patent Office position will be affirmed.

6. The Art of Operating Computers.

Application of Ghiron

. 24 085 (0. C. P. A. 1971)

Ghiron and Ulrich were seeking claims on a method of

facilitating transfers dictated by programs for processing

data in a computer operating in overlap mode.

| The court, Opinion by Judge Baldwin, followed the

earlier decisions in respect of insufficiency of disclosure

_ (42 F. 24 991). Again, the court makes self-evident the

32 Brief Amicus Curiae for Mobil Oil Corporation

care with which it approaches the problem of patentability

in this new and exciting field of endeavor. Apart from the

prior art rejection which was reversed, the court found

great merit to the position of the Patent Office on the in-

adequacy of the disclosure as to how one would use a special

purpose computer to practice the invention.

7. More Computer Operating Art.

Application of McIIroy

442 . 24 1397 (0. d. P. A. 1971)

In the Mellroy case, the Patent Office rejection of the

claims as drawn to non-statatory subject matter under 25

U. g. C. 4101 was reversed.

The court found that where a process has practical

value in enhancing the internal operation of digital com-

useful arts and hence statutory.

8. The Art of Analyzing Data In Computer- Comtrolled

Bystems.

Application of Waldbaum

173 U. s F. Q 430

(Mo. 8619, C. C. P. A. April 20, 1972)

This is the last C. C. P. A. decision on programming

technology decided at the time of writing this brief.

The C. C. P. A. reversed the Patent Office rejection

under 35 U. 8. C. 4101.

The opinion is significant for ite further clarification

of the phrase technological arts as used in Benson and

Tabbot here on appeal and as originally used by the

C. C. P. A. in Musgrave. The Waldbawm opinion makes

clear that ‘‘technological arte as used by the C. C. P. A. is

synonomous with the phrase useful arte as it appears in

Brief Amicus Curiae for Mobil Oil Corporation 33

the patent clause of the Constitution. This considerably

clarifies the issue on appeal here. Is the Benson and Tabbot

BCD to binary conversion technique a ‘‘technological’’ or

„nul art’’? If it is, it meets the constitutional require-

ment which is all that the statutory language of 35 U. S. C.

101 is intended to convey.

9. Summary of Section VII of This Brief.

The above decisions are to be contrasted with the posi-

tions urged by Petitioner and amicus L. B. M. that the Court

of Customs and Patent Appeals, in the aforesaid decisions,

has in effect directed the Patent Office to grant patents on

scientific principles, mental procesdes and abstract intel-

lectual concepts. That court has not taken such a position

but rather has closely adhered to the standards set forth by

this Court.

As shedding further light on the performance of the

court below, reference may be had to Appendix II, a com-

parative table of claims rejected and claims allowed in the

several cases before the court involving broadly the tech-

nology of program control. The care with which the

C. C. P. A. has scrutinized the rejections of the claims pre-

sented to it on appeal is well demonstrated by the table.’

„

7. The Table shows that the Patent Office had allowed the vari-

mas s thirty-nine claims before the cases were to the

CC. PF. A. on other claims. In these appeals the C. C. P. A. af-

firmed the Patent Office on the rejection of one hundred nine claims,

1 ee NN

r F. 2d 1384 (C. C. P., A. 1970). The

C. P. A. reversed the — —— —

3er , fifty, were

one Application of Musgrave, 431 F (CC. P-A_ i970).

34 Brief Amicus Curiae for Mobil Oil Corporation

VIII.

THE ART OF OONVERTING SIGNALS IN BINARY

CODED DECIMAL NOTATION INTO ORDINARY

BINARY NOTATION.

Application of Benson

441 T. 2d 682 (0. O. P. A. 1971)

The opinion by Judge Rich gives considerable attention

to the ground of rejection before the court. The conclusion

was that the only ground of rejection relied upon up to the

time of the appeal was 35 U. S. C. 6 101 (441 F. 2d 684).

Our comments here are limited to a few points which

may aid the Court in a better understanding of the subject

matter and the limited nature of the decision by the court

below.

The conversion of binary coded decimal signals into

signals of binary notation is a simple operation. Neverthe-

less an understanding of what these terms mean and how

the conversion is accomplished requires a bit of study. To

make this task easier, we include in Appendix V a step-by-

step explanation which we hope will prove useful to the

Court. The most pertinent prior art referred to in Ap-

pendix V was found by the Patent Office. It formed the

basis of the rejection of many claims and resulted in can-

cellation of some claims from the application. Only two

claims remain before the Court.

The Commissioner of Patents argues that claim 8

applies to a series of mathematical calculations or mental

steps. However, as we read the claim, it is strictly limited

to the control of a reentrant shift register in a computer

in a manner undisclosed by the prior art to solve a particu-

lar problem. There is no possibility of interpreting claim

8 to cover a new mathematical procedure absent the as-

sumed novel operation of a shift register.

Brief Amicus Curiae for Mobil Oil Corporation 35

There was no rejection by the Patent Office under

35 U. S. C. 5112. The court below found that the rejec-

tion of both claims was based solely upon 35 U. S. C.

4% 100,101. The court found that claim 8 met the require-

ments of these sections since the claim calls for a method

or process performed on the machine disclosed in the patent

application, namely a reentrant shift register.

Claim 13 falls within a different category. It was

found to be broad enough to cover the machine implemen-

tation disclosed in the application, still another machine

implementation disclosed during prosecution, and a third

manual execution. Because the manual practice would be

. improbable and lacking in any utility, the court decided

that it should realistically be interpreted to cover only the

operation and utilization of a machine such as a digital

computer, a machine clearly in the technological field and

within the definition of useful arts rather than the

“liberal arts

The Court, in finding claim 13 directed to statutory

subject matter applied a standard of reasonableness in

Court in United States v. Adams, 383 U. 8. 39 ). In

the Adams case, as here, the Government in its analysis

of the claims attempted to ignore the technology and the

teaching of the specification. This Court stated:

There are several basic errors in the Govern-

ment’s position. First, the fact that the Adams bat-

tery is water-activated sets his device apart from the

prior art. It is true that Claims 1 and 10, supra, do

not mention a water electrolyte, but, as we have noted,

a stated object of the invention was to provide a bat-

tery rendered serviceable by the mere addition of

water. While the claims of a patent limit the inven-

tion, and specifications cannot be utilized to expand the

patent monopoly, Burns v. Meyer, 100 U. S. 671, 672, 25

36 Brief Amicus Curiae for Mobil Oil Corporation

L. Ed. 733 (1880); McCarty v, Lehigh Valley R. Co.,

160 U. 8. 110, 116, 16 S. Ct. 240, 242, 40 L. Ed. 358

(1895), it is fundamental that claims are to be con-

strued in the light of the specifications and both are to

be read with a view to ascertaining the invention,

Seymour v. Osborne, 11 Wall. 516, 547, 20 L. Ed. 33

(1871); Schriber-Schroth Co. v. Cleveland Trust Co.,

311 U. S. 211, 312 U. S. 654, 61 S. Ct. 235, 85 L. Ed.

132 (1940); Schering Corp. v. Gilbert, 2 Cir., 153 F. 2

428 (1946). (383 U. S. 48, 49)

In interpreting claim 13, the C. C. P. A. properly con-

cluded that it is not directed to mental activity, abstract

concepts, scientific principles, or to an equation per se

either new or old.

We do not suggest to this Court that an equation

per ze, a program per se, a schematic diagram per se, or

pencil and paper computations are patentable. Where

new and unobvious operations are performed on a machine

and where the operation of the machine itself is vastly im-

proved by reason of a new and unobvious program, the

court below has found patentable subject matter. Accord-

ingly, we submit that the court below has properly accom-

miodated the patent law to the field of computer technology.

Its holding of patentability should be sustained.

IX.

THE TACIT APPROVAL BY THE PATENT OFFICE

OF THE ZARLIER DECISIONS, DISCUSSED ABOVE.

Following the decision of Prater and Wei upon Re-

hearing, the Commissioner of Patents announced that

the Patent Office would follow that decision on a case-by-

case basis. Though arguments continued to be presented

8. The “Notice of Recission of Guidelines” appeared in 34 F. R.

15724 October 10, 1969.

Brief Amicus Curiae for Mobil Oil Corporation 37

to the court below in cases where issue had been joined,

no petition for certiorari was filed. On the contrary, the

Patent Office followed the law of Prater and Wei. The

Prater and Wei patent was duly issued, Appendix III, as

was the patent in the Application of Wheeling, 413 F. 2d

1187 (C. C. P. A. 1969). (Mobil also owns the Wheeling

patent and a representative claim is reproduced in Ap-

pendix IV.)

Those active in this field continued to believe the

Patent Office had adopted the Prater and Wei decision. It

was not until the decision in the Application of Benson

that a petition for certiorari was filed. Amicus strenuously

urges that the carefully reasoned decisions of the C. C. P. A.

preceding the instant case be left undisturbed. These deci-

sions provide a workable body of law which can be used

to determine patentability in this new technology. If this

line of decisions is now renounced, the resulting uncer-

tainty will deter, rather than promote, the progress of

this useful art.

THIS TECHNOLOGY IS ACCORDED PATENT

PROTECTION IN FOREIGN JURISDICTIONS.

Though the patent laws of other countries may differ

from our own, and hence decisions of foreign courts on the

questions of law presented by the instant case may not be

directly relevant, this section of the brief is included be-

cause the Brief for Amicus Curiae International Business

Machines Corporation asserts that the practice in other

countries is to deny patent protection for this subject

matter.“ That this is not so is demonstrated by decisions

in the following countries.

9. Brief ~~ Curiae International Business Machines

p. 26.

38 Brief Amicus Curiae for Mobil Oil Corporation

Great Britain.

In the technological field of computer operations, sev-

eral cases have been decided in favor of patentability. In

two cases the question was carefully considered by the

Patent Appeal Tribunal which is presided over by a Judge

of the High Court of England.“ In Gevers’ Application

the invention was a data processing apparatus constructed

and arranged with appropriate mechanographic supports

so that three steps could be carried out by the machine.

The three steps recited in the claims were:

1, Entering a succession of words into a computer

or other data processing apparatus programmed to

translate the words into other words in accordance

with a specific rule and to record the translated words

on cards or tape;

2. To sort the cards or words on the tape into

lists in one of three enumerated ways;

3. To print out the list with the words in the

original form.

The question presented for review by the Patent Ap-

peal Tribunal was whether there was an invention which

fell within Section 101 of the British Patents Act of 1949.

Concerning the subject matter defined by the claim, Gra-

ham, J. stated:

In other words . . it is fair to say that the claim

calls for apparatus which is programmed in a certain

way so as to produce the desired result. (page 95)

The Examiner in the Patent Office had rejected

Gevers’ Application on the basis that ‘‘this alleged inven-

10. , Incorporated’s Applicati 1970] Pat.

Cas, 36 and Servers’ n 0 Pat. Cas. 91.

Brief Amicus Curiae for Mobil Oil Corporation 39

tion would seem to be a scheme or a plan which, although

it may be ingenious and useful is not a patentable inven-

tion. On this point Mr. Justice Graham stated that

what was claimed was a piece of machinery constrained to

function a certain way and produce a certain desired re-

sult by reason of the program. This was deemed an inven-

tion within the meaning of the patent act.

Prior to Gevers’ Application Mr. Justice Lloyd-Jacob

in Badger Company Incorporated’s Application considered

whether an invention involving the use of a computer of

known type conditioned to produce a drawing of a piping

layout was within Section 101 of the British Patent Act.

The finding was affirmative. The Badger case, involving

as it did a program controlled plotting device, bears

strong resemblence to the technology involved in the

United States Court of Customs and Patent Appeals deci-

sion, Application of Bernhart, 417 F. 2d 1395 (C. C. P. A.

1969).

An earlier decision of the Superintending Examiner of

the Patent Office in Slee and Harris’s Application, [1966]

Pat. Cas. 194 is in accord with the Gevers’ and Badger

cases. In this case, claims to linear programming means

for use in controlling data processing apparatus were al-

lowed on appeal.

Canada.

The most recent decision in any of the foreign patent

tribunals is that of the decision of the Commissioner of

the Canadian Patent Office on December 8, 1971: Ix tHe

Martres or a patent application serial numbet 961,392." In

this decision, the Chairman of the Patent Appeal Board,

11. The official report is not yet published, but the entire text

dl the decision appears in 58 Patents, Trademark & Copyright Jour-

nal, D-1, ome ge 23, 1971. The rejection of the

8. was recently reversed in Application of

5. G. 430 (No, 8619. C. C. PA A. April 20,

40 Brief Amicus Curiae for Mobil Oil Corporation

commenting on the status of the British Patent Office and

Patent Appeals Tribunal decisions, said:

4. . . it is clear to me that both bodies recognize that

inventions involving the use of programmed com-

puters are proper subject matter for patent protection.

It is also clear to me that although some formalities

may have to be observed in drafting claims, there is

nothing in the Appeal Tribunal decisions to suggest

that inventions involving programmed computers

should not satisfy the usual tests of novelty, utility

and inventive ingenuity.’’ (page D-2)

The rejections of claims drawn to methods for controlling

the operation of a computer, claims to a programmed

machine, and claims to the new use of a stored program

data processing apparatus were reversed. This decision

superseded the previous administrative guidelines of the

Canadian Patent Office. See the Canadian Patent Office

Records, December 28, 1971, p. 8, which contains new

guidelines consistent with the Canadian Waldbaum deci-

sion.

Federal Republic of Germany.

The use of program-controlled digital computers was

considered by the German Federal Patent Court in review-

ing an opposition proceeding involving an application of

Philips Electrologica GmbH, Docket 17 W(pat) 6/68.”

The opposition was brought by International Business

Machines (IBM-Germany)—a subsidiary of Amicus Inter-

national Business Machines—and a wholly German com-

pany—AEd, Telefunken. The invention was for a method

of operating a program controlled computer. The intro-

ductory portion of claim 1 translates as:

12. The opinion has not yet been published.

Brief Amicus Curiae for Mobil Oil Corporation 41

„Method for automatically converting one unit of

value into another, for example, a nondecimal unit of

measurement into decimal within a specified range of

tolerance for data processing machines characterized

in that the unit of value introduced into a multiplying

program controlled computer is, after multiplication

by the specified conversion factor, advanced to a first

memory store

The opponents argued that Philips’ patent applica-

tion was not proper subject matter for patent because

the invention was a directive for the intellectual powers

and involved ‘‘primarily a question of fixing a calculation

method. They argued that the method of claim 1 cannot

be classified into one of the known method categories. The

German Federal Patent Court distinguished between an

invention which may be unpatentable because it is obvious

(lacking inventive height) and an invention which could

not in the first instance be patentable because it is not

proper subject matter for patent. The Court found lack

of inventive height’’. However, the Court rejected the

opponents’ contention that the invention was not a tech-

nology within the meaning of the patent law. A portion

of the opinion translates as follows:

„Thus the subject of the invention satisfies the condi-

tions set before, the subject of the invention is there-

fore in the field of technology in the sense of the patent

system. The technical character of the specified solu-

tion is not refuted by the fact that the specified se-

quence of operations can be carried out without the

use of machine parts (with ‘pencil and paper’).’’

Other Countries.

g The decisions discussed above in Germany, Canada

and Great Britain are the most authoritative thus far on

42 Brief Amicus Curiae for Mobil Oil Corporation

The three Australian decisions referred to in the

brief of Amicus IBM are decisions of the Patent Office

Superintending Examiner. These decisions were before

the decisions in Gevers and Badger of the Appeal Tribunal

of England. In view of the propensity of the Australian

Patent Office to follow British precedents these Australian

cases would seem to have questionable vitality. Also, the

decisions of the Superintending Examiner appear to de-

part from the principle laid down by the High Court of

Australia in National Research Development Corporation’s

Application [1961] Pat. Cas. 135. The following statement

of the court is pertinent here:

„The point is that a process, to fall within the limits

of patentability which the context of the Statute of

Monopolies has supplied, must be one that offers some

advantage which is material, in the sense that the

process belongs to a useful art as distinct from a fine

art (see Virginia-Carolina Chemical Corporation’s Ap-

plication [1958] R. P. C. 35 at p. 36)—that its value

to the country is in the field of economic endeavour.”’

(page 145)

In its brief on Petition for Writ of Certiorari, Amicus

IBM pleads that ‘‘great weight should be given to the

practice in other countries’’. If this plea is to be honored,

the foregoing decisions in favor of the patentability of

this new technology should be the standard, and the holding

of the court below should be affirmed.

Brief Amicus Curiae for Mobil Oil Corporation 43

XI.

OONCLUSION.

The legal conclusions of the court below are soundly

reasoned and consistent. with the Constitutional purpose

to promote the progress of useful arts. The decision below

should in all respects be affirmed.

Respectfully submitted,

Viner. E. Woopcock,

RIc HARD E. Kurz,

Woopcock, Was RHBUnx, Kurtz &

Mackmwroz,

1831 The Fidelity Building,

Philadelphia, Pennsylvania. 19109,

Attorneys for Amicus Curiae,

Mobil Oil Corporation.

Of Counsel:

_Awyprew L. Gasortaur,

General Patent Counsel,

Oswatp G. Hayes,

Associate Patent Counsel,

Mobil Oil Corporation,

150 East 42nd Street,

New York, New York. 10017.

ore ARE TOO LARGE TO BE FILMED

Appendia II

APPENDIX I.

Tama or C C. P. A. Computer Proczamminc Cases Com-

amn Numeze or Caine Urow Wauice Rezecrios Was

BReveeseo Wire Nun on Wien Rezecrioxn Was

Arnd.

No. of Re- No. of Re-

jected Claims jected Claims

No. of Upon Which Upon Which

Claims Allowed the Rejection the Rejection

Before Appeal Was Affrmed Was Reversed

toCC PA. byCCPA. byCCPA.

0 12

Prater & Wei (2) 11 1

Wheeling (Case remanded for determina-

tion of statutory basis of fejec-

tion of five rejected claims.)

100

(45 other than (50 other than

Hammack (2)) Musgrave)

44 Appendiæ III

APPENDIX III.

Usrrep Srares Parewr 3,551,658.

Paar & Wai.

6. The method of determining with minimum error

from the spectra of spectral analysis the concentration of

the components of a mixture where the components are

known and the concentration-determining peaks of the

spectral analysis are present in number exceeding the

number of said components, which comprises in an auto-

matic processing system the steps of

generating physical representations in said system of

the magnitudes of the coefficients of simultaneous

linear equations defining the concentrations of

said components as functions of the heights of

said peaks of said spectral analysis,

generating in said system from said physical repre-

sentations of the magnitudes of said coefficients

the magnitude of the determinant of a plurality

of sets of said simultaneous equations, the num-

ber of equations of each of said sets being equal

in number to the number of said components,

in said system comparing said physical representations

of the magnitudes of said determinants of said

sets of equations for identification of the set of

said equations whose determinant has the largest

magnitude, and

generating physical representations of the concentra-

tion of each said component of said mixture from

said physical representations of the magnitudes

of said coefficients of said set of simultaneous equa-

tions having said determinant of largest magni-

tude and from said heights of said peaks included

in said last-named set of equations.

Appendia IV

APPENDIX IV.

Unsrrep Srares Parent 3,564,221.

W aee.ixo.

4. In optimizing a scalar output function of a system

where a set of input values to said system some of which

are independently variable, are interrelated, and coact to

produce said scalar output function, the method which com-

prises the following steps:

generating in the system input signals representative

of said input values, some of which are independ-

ently variable corresponding with said independ-

ently variable input values;

generating from said input signals an output signal

representative of said scalar output function;

storing in said system an intermediate function repre-

sentative of said output signals;

changing said variable input signals by amounts of

random character to produce output signals of

differing magnitude some of which may produce

output signals representative of improved scalar

output functions;

thereafter repetitively changing said variable input

signals by amounts dependent upon, random selec-

tions; and

weighting the random selections by amounts related

to the magnitude of the earlier changes which

produced output signals representing improved

scalar output functions.

Appendia IV

APPENDIX V.

Tue Bewsow Aub Tassor Invention.

Before considering the Benson and Tabbot method

of converting binary coded decimal (BCD) signals to

binary signals, the following background of the binary

and BCD number notations will be helpful.

The Binary Notation.

In the binary notation, the digits ‘‘1’’ and 0 are

placed in positions having values based on sequentially

ascending powers of 2 which increase from right to left.

The values assigned to these positions are:

18 „„ 3 6 8 4 2 1

In the binary notation, the number one“ is repre-

sented by placing a 1 in the first position and a ‘‘0”’ in

all other positions as follows:

13’ 64 2 16 8 4 2 1

0 6000 0001 “One”

For convenience, the values of the positions are given

above each of the binary and BCD numbers.

The number two“ is represented by placing a ‘‘1”’ in

the second position and ‘‘0’s’’ in all other positions as

follows:

The number ‘‘three’’ is written by adding the binary

number one to the binary number two as follows:

2 GH 2 16 8 421

660600 0011 “Three”

Appendiæ IV A7

The binary number nineteen is written by adding to

the binary three a 1 in the position having a value of

sixteen :

1m % 32 i 8 4 2 1 —

0 0 1 0011 Nineteen

The binary number forty-eight is written as the sum

of thirty-two and sixteen as follows:

12 CA 32 16 8 42 1 1

0 9 1 1 0000 Forty-Eight”

The binary number fifty-three is written by adding

a binary four and a binary one to forty-eight as follows:

1B 4 3 6 8 4 2 1 1 .

0 011 I 60 1 re.

The Binary Coded Decimal (BCD) Notation.

In the BCD notation, the values assigned to the posi-

tions are different but the notation is similar to binary

in that the numbers are written by placing a 1 or a

„0 in the positions having these values. For example,

the BCD number three is:

0000 0011 “Three”

Note that the first four positions from the right are as-

signed the same value as in the binary notation, but that

the next four positions have different values. Any num-

ber less than ten is the same in both the binary and the

BCD notation. For example, the number three is the

same in both notations. However, in BCD the number

nineteen is different from the binary notation. It is repre-

Plus a ‘ten’:

o 2 2

0 0 0

to give:

o «0 2 421 .

00 0 00 1 Nineteen”

The BCD number ‘‘fifty’’ is written as:

0 101 0000 a,

and the BCD number ‘‘fifty-three’’ is written by adding

three to fifty to give:

842 1

0011

Converting BCD to Binary.

For many reasons, a change, or conversion, from a

BCD number to a binary number is necessary. Consider

the pencil and paper technique for converting from BCD

to binary.

First, consider the conversion of the BCD number

three:

0000 0011 “Theres”

into binary form. The reader knows that all numbers less

than ten are the same in BCD and binary form so he can

merely write the binary number three as follows:

128 64 216 8 42 1

0000 0011 “Three”

Appendia IV A9

Now consider the conversion of the BCD number ten

into binary. The BCD number ten is:

The reader knows that the binary number ten is written

by a binary eight plus a binary two. The first step in

converting the BCD number into binary is to erase, or

mask the ‘‘1’’ in the ten’s column of the BCD number.

This gives:

8 4 2 1 1

0 0 0 0 0000 rs

The second step is to add a binary eight to give:

8 #0 20 10 8 42 1

0 0 0 0 0000

zero plus eight

+ 0 0 0 0 1000 equals “eight”

0 0 0 0 100 0

The third and final step is to add the binary number

two to produce:

80 4 20 10 8 42 1

0 0 0 0 100 0 Binary cight plus

+0 000 001 0 dag tye equals

0 0 0 0 1010

As a final example of converting BCD to binary num-

bers by pencil and paper, consider the conversion of the

BCD number fifty-three:

0 i101 9 ⁰ 9 1 1 Fifty-Three

First, the reader knows that three is the same in BCD

. and in binary so he will leave unchanged the ‘‘1’s’’ in the

A10 Appendia IV

first two positions. The next 1 is in the ‘‘tens’’ posi-

tion. The reader will erase, or mask, this ‘‘1’’ to give:

The reader will replace this BCD ten with a binary

ten by first adding a binary eight and then adding a binary

two as follows. Adding the binary eight gives:

610 —6— 0 ö . mumber being

con-

+0000 1000 Ae bee be

0 10 0 1 0 1 1

Next, the reader will add binary two as follows:

80 40 20 10 8 42 1

Number i i

0100 1 9 1 1 BCD and binary plus

+ 0 0 0 0 o o 1 0 __ Pinaty two equal new

0 100 1 1 00 1 BCD and binary

Proceeding to the left, the reader will next convert the

„1“ in the position having a value of forty from BCD to

binary. First, he will erase, or mask, the ‘‘1’’ from this

column to give

80 % 2 10 8 4 2 1

0 0 0 0 1101 BCD and binary

He will replace this BCD forty with a binary 32 plus a

binary eight. First, adding binary thirty-two gives:

128 64 32 16 8 4 2 1

Number i i

0-0 0 ο O I I 0 1 8e 7 binary pies

＋ o o 1 „ 00.0 0 deer dane ela

0 0 10 1 1 0 1 Sc binary

Appendia IV All

Finally, the reader will add a binary eight to give:

128 64 32 16 8 42 1

—

0010 1101 N

+0000 1000 binary eight equals binary

0 0 1 1 ioO101

A digital computer programmer can easily program a

digital computer to automatically perform the conversion

in exactly the same sequence of steps as that described

above. There are other known techniques for converting

BCD to binary numbers.* Benson and Tabbot recognized

that the known techniques of conversion were wasteful of

computer operating time and required a relatively large

amount of computer storage capability. They invented a

* The Handbook of Automation, Computation and C ontrol, John

Wiley and Sons, Inc., 1959, pages 2-17, suggests a conversion tech-

nique essentially similar to that described above. The handbook

suggests . the successive powers of the number expressed

in notation of the system into which the number is being con-

verted. The handbook would convert BCD number 53 into inary

by the following steps.

Nocp=0101 0011 BCD fifty-three

Nip 0.1012. + 1101.2 ＋ 0,101.21 + 1-101-20 + 0:10°-28 4

0:10°:2? +4 110% 4 1-10°-20

* 1.0000 (0100) + 1-(1010) (0001) +

1:(0001) (0010) + 1-(0001) (0001)

N,=101000 + 1010 + 0010 + 0001=110101 Binary fifty-three

Another technique for converting from BCD to binary is dis-

closed in U. S. Patent No. 3,026,035 Couleur. In accordance with

this t the BCD number is placed in a shift register. The BCD

number is shifted out of the register one digit at a time. A binary

three is subtracted from any decade having a binary count which is

equal to or greater than eight after any shifting step. After the

shifting is completed, the register contains a binary representation of

the BCD number originally read into the register. The Couleur

Patent was relied upon by the Patent Office in rejecting some of

the Benson and Tabbot claims. These claims were cancelled from

the application. N

A12 Appendia IV

computer process which performs the conversion | more

quickly and with less storage capacity. 3

The Benson and Tabbot Invention.

Benson and Tabbot perform the same masking and

addition steps that were performed in describing the

preceeding BCD to binary conversion. The difference is

that Benson and Tabbot shift the number to be converted

in such a manner that the masking is always performed

on the same position (the second) and the addition is al-

ways performed on the same position (the first).

The Benson and Tabbot invention can be described

by working the conversion with pencil and paper as was

done by the reader in the previous section. However,

doing the Benson and Tabbot conversion with pencil and

paper is somewhat cumbersome; the advantage of their

technique is gained only when it is performed on a machine.

Therefore, the reader is respectfully cautioned that the fol-

lowing pencil and paper description of the Benson and

Tabbot invention will be quite difficult to understand if

the basic principles of the examples in the preceding sec-

tions are not thoroughly understood.

Benson and Tabbot perform their conversion in a

reentrant shift register. A reentrant shift register is a

device which shifts the positions of a BCD or binary num-

ber. Positions shifted out of one end of the register are

inserted into the other end of the register. For example,

consider the BCD number fifty-three:

80 40 20 10 8 42 1

0 101 0011 Fifty-Three

If this number is shifted one position to the right in a

reentrant shift register, the number can be represented as:

1010 1001

Appendia IV A3

If the BCD number fifty-three is shifted one position to

the left it becomes:

8 1 0 0 1 1 0

If the BCD number fifty-three is shifted three positions

to the right it becomes:

eS. 1.4.6 101 0

Benson and Tabbot convert by masking out each 1

and by replacing the masked out ‘‘1’’ with its binary

equivalent. This much is the same as the pencil and paper

- technique previously described. The difference is that

Benson and Tabbot shift the number in their reentrant

shift register so that the masking is always performed on

the same position and the binary additions are always

made tothe same position. Consider the example in which

the BCD number fifty-three is converted to binary by the

Benson and Tabbot method.

The example will be described with reference to the

steps of the Benson and Tabbot claim 8. The first step

is to store the binary coded decimal number fifty-three

in a reentrant shift register so that the positions of this

shift register are:

0 1 0 1 0 0 1 1

(2) The positions are shifted to the right by three

places to produce:

0 1 1 0 101 0

(3) The binary ‘‘1’’ in the second position is masked

out to produce:

100 0

Al“ Appendia IV

(4) A binary 1 is added to the first position of the

shift register to produce:

9 110 1001

(5) The positions are shifted two places to the left

(6) A %“ is added to the first position:

0 10 0110

Thus far, Benson and Tabbot have performed the

of masking out a 1 and replacing it with a binary

(7) The number is shifted to the right by three places

to produce:

1 101 0100

At this point there is a 0% not a 1 in the second post

tion of the reentrant shift register. Therefore, the num-

ber is shifted to the right one position at « time until

there is a 1 in the second position. Shifting to the right

by one position gives:

o 110 1010

Since there is « 1 present in the second position,

this I is masked out to produce:

Appendia IV Als

A 1 is added to the first position to produce:

9 1190 1001

(5) The number is shifted two places to the left to

10 0101

(6) 4% is added to the first position to produce:

9 0110

point, the Benson and Tabbot technique has

of the 1 in the forty BCD

replacement with « binary ‘‘thirty-two"’

This is a copy of a public record, reproduced as it was published. It is not legal advice, and it may not be the version a court would rely on. Check the official source before you cite it.