In Re Bernhart (1969) 57 CCPA 737

Posted by Anton Hughes on Tuesday, January 03, 2006 with No comments
Citation: In Re Walter D. Bernhart and William A. Fetter (1969) 57 CCPA 737

Jurisdiction: US Court of Customs and Patent Appeals

Facts: This appeal related to a rejection of a patent application for a method of and apparatus for making a 2 dimensional portrayal of a 3 dimensional object using a general purpose computer, a computer program, and a plotting device. The claims were rejected by the examiner on the grounds that "for patentability they were predicated on mental steps" as the claimed invention lay in the particular equations to be solved.

Outcome: The court upheld the rejection of the apparatus claim as obvious, but reversed the rejection of the method claim because they were not obvious and not an old combination. Both apparatus and method claims were held to be patentable subject matter.

Ratio: Although Congress intended principles and laws of nature to be unpatentable subject matter, all machines function according to laws of nature, and hence describing the operation of a machine by reference to an equation is not sufficient to make it unpatentable subject matter.

The mental steps doctrine was not relevant because mere use of the equations would not amount to infringement - use of a computer and plotting device in conjunction with the equation would be required.

A computer when programmed is a new machine to an unprogrammed computer, or at least a 'new and useful improvement'. The inability to physically see the difference is irrelevant.

Relevance: This early software patent case came down strongly on the side of the patentability of software. It touches on a couple of the recurring themes of the patentability of software debate, and is quite explicit in its standpoint. It could be used to better explain the pro-patent standpoint, and hence the basis of a useful critical analysis.

The part about a programmed computer being a new machine is particularly thought provoking.


Lane J

At 739: "The disclosure provides equations definitive of the geometric relationships between the three-dimensional coordinates of each point of interest and the corresponding two-dimensional coordinates which determine the location of that point on a planar drawing to be made... The disclosure then teaches that the original data can be written in a form acceptable as input into a general purpose computer; that ... the equation can be programmed into the computer; that an operator can select particular values for certain terms in the programmed equations, thereby determining the kind of portrayal to be produced; that the computer output will be a sequence of signals [740] representative of the locations of points on the desired portrayal; and that those signals can be used to control the operation of a plotting machine which will produce the desired view of the object on paper."

At 741: "The apparatus claims were further rejected by the examiner as failing to define a machine within the statutory class (35 USC 101)... The examiner indicated that the novelty in applicants' claims ... lay in the equations with which the computer was programmed, and that this is not a structural difference over the prior art. The examiner concluded that since programming was not structural, the claims were "predicated for patentability on mental steps. As to the method claim, the examiner similarly argued that since the novelty of the applicants' [742] claimed invention lay in the particular equations to be solved, the invention is non-statutory, citing Ex Parte Meinhardt 1907 CD 238; In Re Abrams, 33 CCPA 945, 188 F.2d 165, 89 USPQ 266 (1951); In re Yuan, 38 CCPA 967, 188 F.2d 377, 89 USPQ 324 (1951); and In re Middleton, 35 CCPA 1166, 167 F.2d 1012, 77 USPQ 615 (1948)."

At 742: "The board affirmed these rejections, but it reasoned with respect to the apparatus claims that the issues were analogous to the "printed matter" cases such as Ex parte Gwinn, 112 USPQ 439 (PO Bd. App. 1955). Regarding these cases the board said: 'The rationale of these cases appears to be that the law does not favor the granting of a patent for non-statutory subject matter by indirection, and this should be applicable to a mathematical formula or an algorithm as well as to printed text, when the real substance of the contribution by its originator clearly is unpatentable in its own right.

Turning to the apparatus claims ... we note that the only apparatus recited is the admittedly old computer and plotting machine and the sole distinction presented therein upon which patentability could be predicated is the identification in the claims of meaning which certain signals represent to the human mind, or the algorithm which the computer is to solve. We find that these claims are founded on non-statutory subject matter.'"

At 742: "Looking first at the apparatus claims, we see no recitation therein of mental steps, nor of any element requiring or even permitting the incorporation of human faculties in the apparatus. These claims recite and can be infringed only by,  a digital computer in a certain physical condition, i.e. electromagnetically set or programmed to carry out the recited routine... [743] We know of no authority for holding that a human being, suc as a draftsman, could ever be the equivalent of a machine disclosed in a patent application, and we are not prepared to so hold in this case."

At 743: "Nor are the 'printed matter' cases, cited by the board, supra, controlling as to these apparatus claims either on the facts or in principle. On their facts, those cases dealt with claims defining as the invention certain novel arrangements of printed lines or characters, useful and intelligible only to the human mind. Here the invention as defined by the claims requires that the information be processed not by the mind but by a machine, the computer, and that the drawing be done not by a draftsman but by a plotting machine here. Those 'printed matter' cases therefore have no factual relevance here.

A much closer question arises, however, when we consider the principle extracted by the examiner from the mental step cases and by the board from the printed matter cases. The principle may, we think, be fairly stated as follows: If, in an invention defined by a claim, the novelty is indicated by an expression which does not itself fit in a statutory class, ... then the whole invention is non-statutory since all else in the claim is old. We do not believe this view is correct under the Patent Act and the case law thus far developed."

At 743: "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 a patent. Accordingly, no rule of law should be announced which would impress a monopoly upon all uses of the equations disclosed by appellants here in their patent application. To allow the claims in issue here would not prohibit all uses of the equations disclosed... [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."

At 743: "[A]ll machines function according to the laws of physics which can be mathematically set forth if known. We cannot deny patents on machines merely because their novelty may be explained in terms of such laws ... We should not penalize the inventor who makes his invention by discovering new and unobvious mathematical relationships which he then utilizes in a machine, as against the inventor who makes the same machine by trial and error and does [744] not disclose the laws by which it operates."

At 744: "There is one further rationale used by both the board and the examiner, namely, that the provision of new signals to be stored by the computer does not make it a new machine, i.e. it is structurally the same, no matter how new, useful and unobvious the result... To this question we say that if a machine is programmed in a certain new and unobvious way, it is physically different from the machine without the 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 yet 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 USC 101 that such improvements are statutory subject matter for a patent."

At 744: "It may well be that the vast majority of newly programmed machines are obvious to those skilled in the art and hence unpatentable under 35 USC 103."