## In re Freeman (1978) F.2d 1237

Posted by Anton Hughes on Tuesday, June 28, 2005 with No comments

At 1244: That computer programs are not patentable was neither the holding nor the "thrust" of Benson.

At 1245: As a bare minimum, application of Benson in a particular case requires a careful analysis of the claims, to determine whether, as in Benson, they recite a "procedure for solving a given type of mathematical problem".

At 1245: Determination of whether a claim pre-empts nonstatutory subject matter as a whole, in the light of Benson, requires a two-step analysis. First, it must be determined whether the claim directly or indirectly recites an "algorithm" in the Benson sense of that term, for a claim which fails even to recite an algorithm clearly cannot wholly preempt an algorithm. Second, the claim must be further analyzed to ascertain whether in its entirety it wholly preempts the algorithm.

At 1245: We are mindful of the need for clear understanding of the term "algorithm". As we stated in

At 1245: As a bare minimum, application of Benson in a particular case requires a careful analysis of the claims, to determine whether, as in Benson, they recite a "procedure for solving a given type of mathematical problem".

At 1245: Determination of whether a claim pre-empts nonstatutory subject matter as a whole, in the light of Benson, requires a two-step analysis. First, it must be determined whether the claim directly or indirectly recites an "algorithm" in the Benson sense of that term, for a claim which fails even to recite an algorithm clearly cannot wholly preempt an algorithm. Second, the claim must be further analyzed to ascertain whether in its entirety it wholly preempts the algorithm.

At 1245: We are mindful of the need for clear understanding of the term "algorithm". As we stated in

*In re Chatfield*, supra at 156 n.5, 191 USPQ at 734:Over-concentration on the word "algorithm" alone, for example, may mislead. The Supreme Court carefully supplied a definition of the particular algorithm before it, ie, '[a] procedure for solving a given type of mathematical problem." The broader definition of algorithm is 'a step-by-step procedure for solving a problem or accomplishing some end." Webster's New Collegiate Dictionary (1976). It is axiomatic that inventive minds seek and develop solutions to problems and step-by-step solutions often attain the status of patentable invention. It would be uneccessarily detrimental to our patent system to deny inventors patent protection on the sole ground that their contribution could be broadly termed an 'algorithm'At 1246, fn 8: The preferred definition of 'algorithm' in the computer art is: "A fixed step by step procedure for accomplishing a given result; usually a simplified procedure for solving a complex problem, also a full statement of a finite number of steps." C Sipl & C. Sipl, Computer Dictionary and Handbook (1972)

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