Amicus Brief — Dann v. Johnston

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Suprerte Court. vS&

FILED

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i | MICHAEL ROOAK. IF cuerk |

Supreme Court of the United States

October Term, 1974.

No. 74-1033.

C. MARSHALL DANN, Commissioner of Patents & Trademarks,

Petitioner,

THOMAS R. JOHNSTON,

Respondent.

On Writ of Certiorari to the United States Court of

Customs and Patent Appeals.

BRIEF AMICUS CURIAE FOR THE

AMERICAN PATENT LAW ASSOCIATION.

Arntuur R. Wua ce, President, Ricuarp E. Kurtz,

American Patent Law Association, 1831 The Fidelity Building,

2001 Jefferson Davis Highway, Philadelphia, Pennsylvania. 19109

Arlington, Virginia. 22202

JaMes W. FALk,

Howarp Popper,

600 Mountain Avenue,

Murray Hill, New Jersey. 07974

Barry E. SAMMONS,

780 North Water Street,

Milwaukee, Wisconsin. 53202

Jack C, GOLDSTEIN,

2100 Transco Tower,

Houston, Texas. 77027

Attorneys for Amicus Curiae,

The American Patent Law

‘ or

internetcna! Printing Co., 711 So. SOth St, Phils., Pa. 191943 — Tel. (215) 727-8711

TABLE OF CONTENTS.

Page

I. Tae NATURE AND THE INTEREST OF THE AMICUS ..... l

II. SUMMARY OF THE ARGUMENT ...............0. 000000. 3

Pe GED «cakcecenesbenesddedcdecronsousnesecéucen< | 5

A. The Inclusion of a Programmed General Purpose

Digital Computer as Part of the Enabling Disclosure

of a Patent Application Claiming an Innovation

Neither Confers Upon Nor Removes From That In-

novation the Quality of Being a Patentable Invention 5

B. Where the Inventor's Idea for an Invention Is Novel,

Unobvious, and in the Technological Arts, That Idea

Is Part of the Invention as a Whole and Must Be

Considered in Determining the Unobviousness of the

DEED - ccracecasdenasdeddtkeedesaseuesenecouves 7

C. When a Patent on a Specific Apparatus, Such as a

Computer, Has Expired, Only That Apparatus and

Not Patentable Improvements Thereon Will “Fall

Into the Public Domain” ............cccccccsceee ll

D. An Innovation in Digital Computer Programming

May Be Patentable if the Program Co-Acts With an

Ordinary Computer in an Unobvious Way, if the Pro-

gram Is Carried Out With Newly Invented Apparatus

or if the Program Produces a New Use for an Old

Machine Sufficiently Inventive to Be Patentable as a

POU ec cevesdscctsecencceccsokedéusnsdececess 13

E. The Government Has Misused Established Principles

of Patent Law in Failing to Focus on the Claims and

Has Failed to Define Properly the Terms Used .... 15

i a a ee heal be ee ae 20

TABLE OF CASES.

Page

Armour Pharmaceutical Co. v. Richardson-Merrill, Inc., 396

wm bE Ls S| Pree 10

Aro Mfg. Co., Inc. v. Convertible Top Replacement Co., Inc.,

Be Ok he ee CED Snccacdcccncssacanedcoeseseres 15

In re Aufhauser, 399 F. 2d 275 (C. C. P. A. 1968) ........ 9

Brulotte v. Thys Co., 379 U. S. 29 (1964) ................. 12

In re Conover, 304 F. 2d 680 (C. C. P. A. 1962) ......... 3)

Eibel Process Co. v. Minnesota & Ontario Paper Co., 261

es Gh GP ED SWiebeckcdccasdcnsecnstesécacesacecs 8, 10

Funk Bros. v. Kalo Inoculant Co., 333 U. S. 127 (1948) .... 9,10

Graham et al. v. John Deere Co. of Kansas City et al., 383

Be Bae CE Oib vc nccvenvendsnsncacdeasess 10, 13, 14

Graver Tank Mfg. Co., Inc. v. Linde Air Products Co., 336

ey Ob Ce MED <cacceudadecdsctectusévendesecesees 15

Gottschalk, Acting Commissioner of Patents v. Benson et al.,

GT, Be Ge GC Hobs ake cécnvcccecésanedest 6, 7, 9, 15, 20

Mackay Radio & Telegraph Co. v. Radio Corporation of

ee, Te ie es EP CD bbs 6 csceeveccccscccssec i)

O'Reilly v. Morse, 56 U. S. (15 How.) 62 (1853) ......... 6,7

In re Roberts and Burch, 470 F. 2d 1399 (C. C. P. A. 1973) 9

Trio Process Corporation v. L. Goldstein’s Sons, Inc., 461

De, BPG A HE pcawusccccccvecectersceccsacs 9

U. S. v. Adams, 383 U. S. 39 (1966) ................00ee 10

STATUTES CITED.

Page

SB UW. &. CG. Ge BI ccccccccccccccccccccccsccccccceses ll

SB UW. B. GC. OOD ccc cvecccccccccccccccvvcccccces 8, 10, 11, 13, 14

SS GD. B. GB. BERD ccccccccccvccsccccccccccccccsccsccccces 5

EE EERE SD ee Sone eer er ae rer 1

MISCELLANEOUS.

Page

“Computers: First the Maxi, Then the Mini, Now It’s the

Micro,” Science, Vol. 186, December 20, 1974 ........ 17

“DEH: The computer takes over turbine control,” Power,

ee ees I sak dawegese 5

“Digital Control and Automation Systems—A look at Com-

puter Control and Automation in Automotive Manufac-

turing,” Computer Design, October, 1973 ............ 5

“Digital Control and Automation Systems—System Measures

and Sorts Green Lumber at 38 Boards/Min. with 99.5%

Accuracy,” Computer Design, July, 1974 .............. 5

“Hard-wired numerical controllers yield to efficient minicom-

puters,” Electronics, April 12, 1973 .................. 16

“How real-time computers work in today’s automatic ware-

housing,” Material Handling Engineering, January, 1975 5

IEEE Transactions on Industrial Electronics and Control In-

strumentation, Vol. IECI-22, No. 3, August, 1975, pp.

DE Scdk sR ahMEanbednnddasehUeesCbSddeeeeneces 17

“Microcomputers—Evolutionary successor of the minicom-

puter, the microcomputer is a set of microelectronic

‘chips’ serving the various computer functions. It has

opened up new realms of computer applications,” Scien-

ee Ee occ cnn ueteedbdosenavenece 17

“Microprocessors & microcomputers: What will the future

bring?” EDN, November 20, 1974 ..............ceeeeeees 17

“Microprocessor Sparks a Quiet Revolution in Instrumenta-

tion,” Electronic News, Vol. 20, No. 1039, August 4, 1975 17

“Minicomputers that run the factory,” Business Week, De-

Ey. RS RE tea pe en ee 16

“News Scope—$15 microprocessor coming for simpler applica-

tons,” Electronic Design, August 16, 1975 ............ 17

“Now minicomputers run machine tools,” Business Week,

RD Ti GEE cen ecccvcccesescccvvedescescssouss 16

MISCELLANEOUS (Continued).

Page

“Programmable devices—Your best buy in control?” Modern

Materials Handling, February, 1975 ................++. 18

“Refinery operations controlled by double computer,” Petrol-

eum Review 27, 471-6 (1973) ........-ccceeeeeeeeees . 5

Robinson, The Law of Patents, §§ 173 and 175 ............ 17, 19

IN THE

Supreme Court of the United States

Ocroser TERM, 1974.

No. 74-1033.

C. MARSHALL DANN, COMMISSIONER OF

PATENTS & TRADEMARKS,

Petitioner,

THOMAS R. JOHNSTON,

Respondent.

On Writ or CERTIORARI TO THE UNITED States Court

or Customs AND PATENT APPEALS.

BRIEF AMICUS CURIAE FOR THE

AMERICAN PATENT LAW ASSOCIATION.

THE NATURE AND THE INTEREST OF

THE AMICUS.

A. The American Patent Law Association.

This brief amicus curiae is submitted by the American

Patent Law Association (“APLA”)' under Rule 42(2) of

1. APLA’s rs Tomember -large elects the officers and other

who form APLA’s 19-mem r go verning body, the Board of Man-

agers. The filing of this brief on behalf of. APLA has been au-

thorized by the of Managers and approved by its Executive

2 Brief Amicus Curiae

this Court. Letters from the parties’ counsel, consenting

to the filing of this brief, are on file with the Clerk of this

Court.

APLA is a nationwide association of approximately

4,000 members including judges, law teachers, copyright

and trademark lawyers, and over half the patent lawyers

in the country from private, corporate, and government

practice.

Unlike some specialties of law practice where the

plaintiffs and defendants are often represented by pre-

dominantly separate legal fraternities, in patent law the

same individual attorneys may appear as often on the

plaintiff's side as on the defendant's side of patent, trade-

mark and copyright litigation, and on either the licensor

or licensee side of negotiations for licenses. By such ex-

perience and membership composition, this association is

well balanced in the realities of the patent law in action.

B. Interest of the Amicus.

APLA has no interest in and takes no position with

respect to the patentability of the particular invention of

respondent's pending patent application. More par-

ticularly, no position is taken with respect to the issue of

unobviousness of the claimed subject matter.

Amicus submits that this case should be decided in

accordance with established principles of patent law.

Amicus is concerned that the Government's brief tends to

confuse some of these established principles.

Brief Amicus Curiae 3

Il.

SUMMARY OF THE ARGUMENT.

A. The inclusion of a programmed digital computer

in the enabling disclosure of a patent application claiming

an innovation neither confers upon nor removes from that

innovation the quality of being a patentable invention.

Programmed digital computers are used to implement

many different innovations. Patentability of these in-

novations should be determined in accordance with well

established principles of patent law and not by sweeping

pronouncements of special law developed from considera-

tion of one or two particular cases.

B. Where the inventor's idea for an invention is

novel, unobvious and in the technological arts, the idea is

part of the invention as a whole and must be considered

in determining the unobviousness of the invention.

C. When a patent has expired on a specific apparatus,

such as a computer, only that apparatus and not patentable

improvements therevn will “fall into the public domain.”

D. Amicus agrees with the three-part view expressed

in the Government's Reply Brief for Certiorari that recog-

nizes “the possibility of patentability if a program co-acts

with an ordinary computer in a ‘synergistic’ way, if the

program is carried out with newly-inventive apparatus, or

if a program produces a new use for an old machine suff-

ciently inventive to be patentable as a process.” (G. Rep.

2). Amicus is concerned however, that the Government's

subsequently filed main brief has qualified that view so

as to render it meaningless.

2. G. Rep. refers to the Government's Reply Brief for Cer-

tiorari. G. Br. refers to the Government's main Brief.

4 Brief Amicus Curiae

E. The claims of a patent application are the true

measure of a patent grant. The Government ignores re-

spondent’s claims and instead focuses on the alleged un-

derlying programming idea. “Program” is not well defined

in this case and the patentability of “programs” per se is

not an issue. Computer technology has already advanced

so far that the Government's oversimplifying “program-

ming” analogies are meaningless.

Brief Amicus Curiae 5

Il.

ARGUMENT.

A. The Inclusion of a Programmed General Purpose

Digital Computer as Part of the Enabling Disclosure

of a Patent Application Claiming an Innovation

Neither Confers Upon Nor Removes From That In-

novation the Quality of Being a Patentable Invention.

The first paragraph of 35 U. S. C. § 112 requires that

the applicant disclose his innovation in terms which enable

a skilled person to practice the invention. That is, the

applicant must submit an “enabling disclosure.”

The inclusion of a properly programmed digital com-

puter as part of the enabling disclosure of a patent ap-

plication cannot be determinative of patentability because

computers are used to implement patentable innovations

in the useful arts, and they are used to implement un-

patentable innovations in the liberal arts. Digital com-

puters are used to perform mathematical calculations,

compose music, make fine arts drawings, operate factories

and warehouses, refine oil, generate electric’ power and

perform numerous other tasks.’ No general rule can justly

describe the patentability of all of the foregoing.

Nevertheless, Petitioner's first question on page 2 of

its brief is based on the premise that this Court in

3. “Digital Control and Automation Systems—A look at Com-

puter Control and Automation in Automative Manufacturing,”

Computer Design, October, 1973; “How real-time computers work

in today’s automatic warehousing,” Material ae aaeneer-

by com-

anuary, 1975; Ra ay controlled

puter,” Petroleum Review 27, 471-6 (1973); “DEH: The computer

takes over turbine control,” Power, August, 1973; “Digital Control

6 Brief Amicus Curiae

Gottschalk, Acting Commissioner of Patents v. Benson et

al., 409 U. S. 63 (1972), held that a new idea implemented

by programming an existing computer is unpatentable.

Petitioner seeks extension of a decision that the method

claims in that case were unpatentable to a holding that

the apparatus claimed in the present case is unpatentable.

However, the only similarity between the present case

and Benson is the presence of a general purpose digital

computer in the enabling disclosure of the involved patent

application.

To adopt the Government's interpretation of Benson

and the extension thereof to apparatus claims would pre-

clude patenting innovative machines in the arts which

have hitherto prospered under the patent system.

The Government's First Question Is Based On A Fallacy

Because Benson Did Not Rule Out Process Claims For All

Inventions Wherein Programming Is Part Of The Enabling

Disclosure.

The Benson patent application disclosed a mathe-

matical technique that could best be performed by using

an appropriately programmed digital computer. This

Court found the claims of the Benson application so

broadly written and so unlimited in scope as to pre-empt

the underlying mathemaiical discovery itself. The Benson

claims were the same type of “overweening claim” that

had been struck down in O'Reilly v. Morse, 56 U. S. (15

How.) 62 (1853). The Benson claims were “not limited

to any particular art or technology, to any particular ap-

paratus or machinery, or to any particular end use” and

pre-empted the “algorithm itself.” 409 U. S. 63, 72.

However, the presence of a “computer” or a “pro-

gram is not determinative of whether a claim should be

struck down for over-breadth as by pre-empting an algo-

Brief Amicus Curiae 7

rithm. The proper test, as indicated by this Court’s de-

cisions in Morse as well as in Benson, is whether a non-

statutory “idea” such as a mathematical algorithm is being

claimed so broadly that the claim is, in effect, attempting

to pre-empt the nonstatutory idea itself.

The claims to the algorithm of Benson would have

been no more or no less patentable if the process set forth

in those claims had been based on a disclosure of a known

wired machine or analog computer. Similarly, apparatus

claims supported only by a disclosure of known apparatus

acting in a known way to perform a mathematical algo-

rithm and of such breadth as to preempt the algorithm

itself are not statutory regardless of whether a “program”

or “general purpose computer” is or is not included in the

enabling disclosure.‘

APLA therefore suggests to this Court that the ques-

tion of the patentability of programs or of inventions based

upon an enabling disclosure including a programmed com-

puter is irrelevant to the resolution of this appeal.

B. Where the Inventor’s Idea for an Invention Is Novel,

Unobvious, and in the Technological Arts, That Idea

Is Part of the Invention as a Whole and Must Be Con-

sidered in Determining the Unobviousness of the

Invention.

Whatever the decision of this Court on the immediate

issue of patentability of the invention claimed here, it is

4. One cannot look at the hypothetical Benson claim prepared

by the Government and set out in Appendix D of its Petition, by

itself, to determine whether in scope it is overclaiming so as to

cover the algorithm itself. With a sufficient supporting disclosure

ore» | the specific apparatus elements involved, the claim pre-

sented the Government is a proper claim. How broadly the

claim will be interpreted in an infringement situation on someone

else's structure is 4 question of equivalency that may or may not

be established in the particular facts of the case.

8 Brief Amicus Curiae

imperative that the rationale on page 22 of the Govern-

ment'’s brief be discarded. The Government argues that:

“Even when an idea is unobvious its implementa-

tion must be unobvious, as well, to justify the grant

of a patent monopoly, whether the implementation

involves a process or a product.” (G. Br. 22)

The brief further states that the “means or mode of imple-

menting the idea must extend beyond the routine, con-

ventional or obvious applications of the idea that follow

once the idea is known.” The argument is completely

contrary to the established principle, codified in 35 U. S. C.

§ 103, that the invention as a whole must be considered in

determining patentability. |

Does the Government contend that the inventor’s idea

is prior art to the apparatus or process for carrying it out?

That this contention is antithetical to the law of patents

is to be noted from the thousands upon thousands of

patents granted on electrical, mechanical and chemical in-

ventions in which the way of implementing the idea is

perfectly clear from the idea itself.

This Court, in Eibel Process Co. v. Minnesota &

Ontario Paper Co., 261 U. S. 45 (1923), treats one facet

of the question. There the patentee discovered that

wrinkling and malformation of paper in a paper making

machine occurred because the stock did not flow fast

enough at a critical point in the process. Eibel simply in-

creased the pitch of the path of the stock to take advantage

of the force of gravity to increase the flow rate. This Court

held the patent valid, deciding that the patentee had made

a patentable contribution in discovering the problem even

though the solution was deemed to be routine. Certainly

in the Eibel case the “invention as a whole” was consid-

ered in determining patentability.

Brief Amicus Curiae 9

Since at least as early as the Eibel case, the “invention

as a whole” has been referred to in determining patent-

ability.*

The Government's brief obscures the isswe in its faulty

analysis at page 22 of its brief. There are at least three

distinct situations involving an idea and its implementa-

tion, and the Government has chosen to see only two of

them. Basic to an understanding of the misconception

that can result is the distinction between “obviousness”

and the constitutional consideration requiring that the in-

vention relate to the “useful arts.”

The first situation is where the idea does not directly

relate to the useful arts and the implementation is claimed

so broadly as to cover all uses of the idea or is claimed so

as to cover the obvious uses of the idea. Ideas not directly

related to the useful arts include recognition of a law of

nature or a mathematical algorithm. For this situation,

patent coverage is not permitted. Examples of this are

Benson, supra, and Funk Bros. v. Kalo Inoculant Co., 333

U. S. 127 (1948).

The second situation is where the idea is not directly

related to the useful arts but the implementation of that

idea is claimed to cover unobvious mechanisms or

processes in a useful field. Then patent coverage is pos-

sible, Mackay Radio & Telegraph Co. v. Radio Corpora-

tion of America, 306 U. S. 86, 94 (1939). In this situation

the “patent monopoly may be granted, not on the idea,

but on the inventive process or product.” (G. Br. 24).

The third situation, totally ignored in the Covern-

ment's brief, is where the idea relates to the useful arts

5. See also, Trio Process 7" v. L. Goldstein's Sons,

Inc., 461 F. 2d 66, n. 18a (3 Cir. 1972); In re Aufhauser, 399 F. 2d

275, 277 (CCPA 1968); In re Conover, 304 F. 2d 680, 683 (CCPA

= ; and In re Roberts and Burch, 470 F. 2d 1399, 1401 (CCPA

10 Brief Amicus Curiae

and is unobvious. It must then be considered as part of

the “subject matter as a whole,” 35 U. S. C. § 103. In this

situation it is erroneous to give weight to the obviousness

or unobviousness of the implementation. The Eibel case,

supra, is in point. There, having analyzed the problem in

terms of an unobvious idea or discovery, the implementa-

tion was obvious, but the patent was upheld in view of

the unobviousness conferred through the discovery.

The Government in its brief has created the possi-

bility for considerable mischief in the patent law by im-

properly expanding the limited holding of Funk Bros.,

supra, to produce a rule of law that encompass all inven-

tions, not only those directed to natural phenomena.°

The fallacy of the broad pronouncement that in all

instances the means of implementing an idea must be un-

obvious can be seen from this Court’s decision upholding

the patent in U. S. v. Adams, 383 U. S. 39 (1966). Here,

again, the implementation required only ordinary skill, but

it was the idea that imparted patentability to the claims in

the Adams patent. As this Court stated in Graham et all.

v. John Deere Co. of Kansas City et al., 383 U. S. 1, 32

(1965), it is the invention as a whole that must be viewed

in determining patentability and the whole encompasses

both conception and implementation.

It may not be clear whether the Government intended

this sharp redirection in the law of patents, but it is certain

that destructive violence would be worked on the statute

and on the patent system itself should the Government's

“rationale” be adopted by this Court.

6. The Court of Appeals in Armour Pharmaceutical Co. v.

Richardson-Merrill, Inc., 396 F. 2d 70, 74, read the opinion in

Funk to lead to “the test of patentability of a natural phenomenon”

and not to a test of patentability for all inventions, as stated by

the Government in its brief.

Brief Amicus Curiae ll

C. When a Patent on a Specific Apparatus, Such as a

Computer, Has Expired, Only That Apparatus and

Not Patentable Improvements Thereon Will “Fall

Into the Public Domain”.

The Government has noted two truisms in patent law

but it has to come to a conclusion not supported by either

truism, by any logic or citation of authority. First, the

Government has noted (G. Br. 35) that when a patent ex-

pires its subject matter falls into the public domain. Sec-

ond, the Government has noted (G. Br. n. 27) that an

inventor of a machine is entitled to the benefit of all uses

of that machine. However, it is a complete non-sequitur

to go from these two basic statements to the Government's

contention that all inventive improvements utilizing a

previously patented computer must fall into the public

domain with the demise of the first patent on that

computer.

The obtaining of a patent on a machine does not

prevent others from obtaining patents on unobvious im-

provements on the machine, on an unobvious combination

incorporating the machine as one element of the novel

combination, or on new and unobvious uses of the ma-

chine. Such later patents are permitted under 35 U. S. C.

§§ 100-103 whether that machine is the subject of an ex-

pired or unexpired patent or had never been patented.

When a patent expires the invention which is claimed

in that patent falls into the public domain. By refusing

throughout its argument in this case to consider patent

claims, the Government has failed to distinguish between

the claimed invention of a patent and the commercial

equipment which incorporates that invention and brings

the invention to the market place. That which is claimed

in the patent falls into the public domain on the expiration

of the patent. Whether or not the commercial equipment

12 Brief Amicus Curiae

also falls into the public domain is dependent upon

whether other valid and unexpired patents are applicable

to that specific equipment.’

A patent on an improvement invention does not with-

draw from the public its right of free access to materials

already available (G. Br. 36). The public's access to the

unimproved apparatus, here the computer, is in no way

impaired by patents that may issue on novel improvements

to that computer. Only the public’s access to the improve-

ment invention is temporarily subject to the patent, but

that improvement invention is perforce not already avail-

able within the public domain.

An improvement which is truly unobvious may merit

the praise accorded by this Court to Eibel’s paper-making

invention:

“His was not a pioneer patent, creating a new art;

but a patent which is only an improvement on an old

machine may be very meritorious and entitled to

liberal treatment. Indeed, when one notes the crude

working of machines of famous pioneer inventions and

discoveries, and compares them with the modern ma-

chines and processes exemplifying the principle of

pioneer discovery, one hesitates in the division of

credit between the original inventor and the im-

provers; and certainly finds no reason to withhold

from the really meritorious improver, the application

7. There are proper aspects of the problem of the “second

and further seni monopoly” (G. Br. 35) where a second patent

is obtained on a product already the subject of a prior = In

Brulotte v. Thys Co., 379 U. S. 29 (1964), this Court before

it a situation where seven patents were incorporated into the li-

censed machines. The Court held that it was improper to collect

royalties “which accrued after the last of the patents incorporated

into the machine has expired,” 379 U. S. 30 (emphasis added).

According to the argument presented by the Government in this

case, the collection of royalties after the Pst of the patents incorpo-

rated into the machine had expired should have been illegal.

Brief Amicus Curiae 13

of the rule ‘ut res magis valeat quam pereat’ which

has been sustained in so many cases in this Court.”

(261 U. S. at 63)

The Government's brief suggests that a patent on a

novel and unobvious improvement of apparatus previously

patented by someone else should be invalid, per se, as an

extension of the first patent. The proper question has

always been whether the improvement is obvious or un-

obvious under 35 U. S. C. § 103 in view of the prior patent

and all other pertinent prior art. It is interesting to note

that under the Government’s view one would never reach

the § 103 issue if there is a prior patent, expired or un-

expired, which discloses the apparatus on which the

present invention is an improvement.

When the patents covering the computer used to

implement respondent’s invention herein expire, the

claimed subject matter of those patents will fall into the

public domain. But there is neither reason nor authority

to support the Government's ill-founded contention that

all patentable improvements of such computers, whether

machine or process inventions, and whether or not in-

volving programming as part of their enabling disclosure,

must also fall into the public domain.

D. An Innovation in Digital Computer Programming May

Be Patentable if the Program Co-Acts With an Ordi-

nary Computer in an Unobvious Way, if the Program

Is Carried Out With Newly Invented Apparatus or

if the Program Produces a New Use for an Old Ma-

chine Sufficiently Inventive to Be Patentable as a

Process.

APLA submits that the foregoing statement requires

nothing more and nothing less than an analysis of the

type set forth in Graham v. Deere, supra. Though it is a

14 Brief Amicus Curiae

difficult analysis, it has, nevertheless, been carried out with

only minor variations since the time of Thomas Jefferson,

as set forth in Graham v. Deere.

The Court has been asked to make such an analysis

under 35 U. S. C. § 103 in the present case. Amicus ex-

presses no opinion on the issue of obviousness except to

point out that all inventions, including those in which a

programmed computer is included in the enabling dis-

closure of the invention, must be measured by the same

statutory standards including 35 U. S. C. § 103.

Amicus disagrees with the Government’s view (G. Br.

14) that the questions of statutory subject matter and

obviousness are “interrelated.” These are separate ques-

tions and should be decided in the sequence which would

best serve public policy and judicial economy. Whether

an invention is obvious or not can have no bearing on

whether the subject matter of that invention is or is not

statutory. If this were not true, an invention might be

“statutory” at its creation, but rendered “non-statutory”

rather than merely “unpatentable” after it had passed into

the public domain. But “statutoryness” has never before

been thought to be a simple function of the passage of

time. Accordingly, “obviousness” and “statutory subject

matter” are quite separate, independent and not inter-