In re Abrams 38 CCPA 945 (1951)

Posted by Anton Hughes on Wednesday, January 18, 2006 with No comments
Citation: In re Abrams (1951) 1951 CCPA LEXIS 309; 38 CCPA 945; 188 F.2d 165
Jurisdiction: US Court of Customs and Patent Appeals
Facts: The appellant's application for a patent for 'a method of prospecting for the presence of petroliferous deposits' was rejected on the basis that the heart of the invention was purely mental in nature and hence unpatentable.
Outcome: The court affirmed the rejection.
Ratio: Purely mental terms such as 'determining', 'registering', 'counting', 'observing', 'measuring', 'comparing', 'recording', and 'computing', are processes found to be non-statutory.
Relevance: This case pulls together prior case law on the mental steps doctrine, and contains a useful set of rules by which one may determine whether the claimed invention is patentable or not. Note that this is really a 'point of novelty' approach as set out in Flook.
Quotes:
Garrett CJ
At 5: "Counsel for appellant state in the brief on his behalf that a need exists 'for a rule of guidance in so-called `mental step cases,` asserting that much confusion exists grounding out of decisions which have been rendered... [T]he brief sets forth ... three suggested 'rules of law' reading:
  1. If [6] all the steps of a method claim are purely mental in character, the subject matter thereof is not patentable within the meaning of the patent statutes.
  2. If a method claim embodies both positive and physical steps as well as so-called mental steps, yet the alleged novelty or advance over the art resides in one or more of the so-called mental steps, then the claim is considered unpatentable for the same reason that it would be if all the steps were purely mental in character.
  3. If a method claim embodies both positive and physical steps and the so-called mental step or steps are incidental parts of the process which are essential to define, qualify or limit its scope, then the claim is patentable and not subject to the objection contained in 1 and 2 above.
...
[7] From such examination of the decisions as we have been able to make, the suggested rules appear to accord with them, but it is unnecessary for us arbitrarily to go beyond the requirements of the instant case."
At 8: "The total effect of these expressions and steps in the claims is convincing that the nature of the invention is like that found in such decisions as Ex parte Toth 63 USPQ 131 (correcting and determining); [9] In re Heritage, 66 USPQ 217, 32 CCPA [Patents] 1170, and Haliburton Oil Well Cementing Co. v Walker, 64 USPQ 278, involving therein such purely mental terms as 'determining', 'registering', 'counting', 'observing', 'measuring', 'comparing', 'recording', and 'computing', in which the processes claimed were found to be non-statutory."
At 11: "In truth, the question of whether a step in a process is mental or physical seems to us to be one of fact rather than one of law and so should not be difficult of determination, but opinions sometimes differ even as to facts."
At 19: "When the steps of the claims are considered in the light of the explanation of their character so given, it seems to us that they are eliminated from the applicability of appellant's proposed rule 3, and fall within No. 2."