In re Walter

Posted by Anton Hughes on Thursday, June 30, 2005 with No comments
At 764: The problem here, as we see it, is not one of computer-related inventions per se; it is one of mathematics-related inventions.

In the computer arts, §  101 problems tend to center around the use of mathematics in the claims, which define the invention for which patent protection is sought.  This is a natural consequence of the nature of computers.  A computer is nothing more than an electronic machine. It is characterized by its ability to process data, usually by executing mathematical operations on the data at high speeds.  By virtue of the speed with which computers operate, they are capable of executing complex or otherwise time-consuming calculations in fractions of a second.  Their use [**15]  in technology is analogous to the use of mechanical devices, such as levers, which provide mechanical advantage in inventions of a mechanical nature; they make possible, or practicable, the solution of mathematical problems which are impractical to solve manually due to the inordinate amount of time manual solution would consume.
A computer is not mysterious to one skilled in the art; it is merely a distinct type of machine. It will facilitate understanding the applicability of patent law to computer-arts inventions if it is kept in mind that the issues under §  101 in this area have arisen because the function of the computer has been to perform mathematical operations.  The problems revolve about the role of mathematics in the claimed inventions.
fn 4: For the purposes of this opinion, we use the word algorithm in the above-defined sense to refer to methods of calculation, mathematical formulas, and mathematical procedures generally.  We strongly disagree with the position taken by the PTO, see Petition of Commissioner of Patents and Trademarks for Certiorari, Diamond v. Bradley, No. 79-855 at 10-11, that the word algorithm as applied by the Supreme Court in §  101 cases is not limited to mathematical algorithms, but extends to the general meaning of the word which connotes a step-by-step procedure to arrive at a given result.  In re Chatfield, 545 F.2d 152, 156 n. 5, 191 USPQ 730, 734 n. 5 (CCPA 1976), cert. denied, 434 U.S. 875 (1977). Such a proposition, if accepted, would have the effect of totally reading the word "process" out of §  101, since any process is a step-by-step procedure to arrive at a given result.
At 765: Since a statutory invention may employ a scientific truth, a decision as to whether the invention utilizing such truth is statutory must necessarily rest on the relationship which the truth or principle bears to the remainder of the invention as claimed.
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The solicitor has suggested ... a "point of novelty" approach to s101. Under such an approach, an invention would be non-statutory if the mathematical algorithm in the claim, as an embodiment of scientific truth, is at the "point of novelty" of the claim.
If this approach were to be adopted it would immeasurably debilitate the patent system. ... As an illustration ... we offer the example of certain improvement inventions, wherein the improvement resides in the application of scientific truth... [A] strict "point of novelty" approach to [such inventions] would place them, as a class, outside the coverage of s101 – and to no purpose.
At 767: In order to determine whether a mathematical algorithm is "preempted" by a claim under Freeman, the claim is analyzed to establish the relationship between the algorithm and the physical steps or elements of the claim.  In Benson and Flook, no such relationship could be found; the entire claim was, in each case, drawn to the algorithm itself.
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Once a mathematical algorithm has been found, the claim as a whole n9/ must be further analyzed.  If it appears that [**24]  the mathematical algorithm is implemented in a specific manner to define structural relationships between the physical elements of the claim (in apparatus claims) or to refine or limit claim steps (in process claims), the claim being otherwise statutory, the claim passes muster under §  101. If, however, the mathematical algorithm is merely presented and solved by the claimed invention, as was the case in Benson and Flook, and is not applied in any manner to physical elements or process steps, no amount of post-solution activity will render the claim statutory; nor is it saved by a preamble merely reciting the field of use of the mathematical algorithm.
At 768: Both the examiner and the board refused to separately consider applent's apparatus claims because the method and apparatus claims were deemed indistinguishable. This problem arises in computer-arts inventions when the structure in apparatus claims is defined only as "means for" performing specified functions... If the functionally-defined disclosed means and their equivalents are so broad that they encompass any and every means for performing the recited functions, the apparatus claim is an attemt to exalt form over substance since the claim is really to the method or series of functions itself.