In Re Middleton (1948) 35 CCPA 1166

Posted by Anton Hughes on Monday, January 16, 2006 with No comments
Citation: In Re Middleton (1948) 77 USPQ (BNA) 615; 35 CCPA 1166; 167 F.2d 1012

Jurisdiction: US Court of Customs and Patent Appeals

Facts: The appellant applied for a patent on a method of introducing reactants to a chemical process. The examiner rejected the application on the basis that the claims involved nothing more than the function of the apparatus disclosed in the application. The board upheld this ground of rejection.

Outcome: The court affirmed the rejection.

Ratio: A process which is the mere function of an apparatus is not patentable, and a process which cannot be carried out apart from a particular apparatus is the mere function of that apparatus.

Quotes:

Hatfield J
At  616: "It is well settled that a process which is the mere function of an apparatus is not patentable, and that a process which cannot be carried out apart from a particular apparatus is the mere functino of that apparatus. See In re Weston, 17 App. D.C. 431; In re Ernst et al, 21 CCPA (Patents) 1235, 71 F.2d 169, 22 USPQ 28; In re Wadman, 25 CCPA (Patents) 936, 94 F.2d 993, 36 USPQ 542, and authorities therein cited."


At 616: "It is clear that it would be impracticable to carry out the processes of the appealed claims by hand, and, although we have carefully considered the modifications suggested by counsel for appellant, we are of opinion that it has not been disclosed that the claimed processes could be satisfactorily carried out by any apparatus differing substantially from that disclosed in appellant's application. It follows that the appealed claims are drawn to the mere function of the apparatus disclosed in appellant's application and were properly rejected for the reason stated."

At 616: "Although the reaction involved may be a chemical one, the reaction is not distinguishable from the function of the machine disclosed in appellant's application, even though that machine, if used in some other manner, might function [617] differently."