In Re Yuan (1951) 38 CCPA 967

Posted by Anton Hughes on Tuesday, January 10, 2006 with No comments
Citation: In Re Yuan (1951) 38 CCPA 967; 188 F.2d 377

Jurisdiction: US Court of Customs and Patent Appeals

Facts: The appellant applied for a patent on a high speed airfoil having low drag characteristics. The process of determining the profile was a mathematical formula, and as a result the application was rejected on the grounds that as metal processes, the claims were not patentable. The Board upheld the rejection.

Outcome: The CCPA affirmed the decision of the examiner and board, holding that the claims were not patentable subject matter.

Ratio: Purely mental acts are not proper subject matter for protection under the patent statutes. The appellant's contribution was held to reside in the method of mathematical computation by which the profile of the airfoil was determined. This contribution involved purely mental steps dependant on the fomula, and as such was not patentable.


Garrett CJ
At 6: " Appealed claim 9 relates to a method of determining an airfoil profile having certain desired aerodynamic characteristics by mathematical procedures. Claim 8 purports to be a claim to the airfoil as an article of manufacture, and the airfoil is defined in terms of the mathematical computations involved in determining the profile which will meet the specified requirements."

At 6: "Appellant points out that it has previously been the custom in designing airfoil profiles to select a known one having characteristics approaching those desired and to modify it in the light of experience to produce a trial profile. A model employing this trial profile is built and tested in a wind tunnel and further modified as indicated by the results of the test... [7] This procedure is expensive and time-consuming.

Appellant's contribution as stated in his brief lies in a mathematical procedure by which the aircraft designer can start with a pressure distribution curve of the required characteristics and convert it into a velocity distribution curve... [8] Appellant states that by using his mathematical approach the final or near final form can be calculated in one operation so that much of the 'cut and try' procedure is eliminated. That appellant's mathematical approach can produce a practical embodiment is indicated by an affidavit..."

At 8: "None of the references cited states that an airfoil of specified performance characteristics can be achieved exactly, nor that any method is available other than the 'cut and try' method, well known and practiced in the prior art. None of the methods suggests anything that would eliminate the laborious 'cut and try' method...
In considering the foregoing statement [10] it must be borne in mind that all the so-called steps ... are purely mental steps dependent upon the mathematical formula which is recited in, and constitutes the heart of, the claims.
This court has deemed it to have been thoroughly established by decisions of various courts that purely mental steps do not form a process which falls within the scope of patentability as defined by statute."

At 13: "In the case of Cochrane v Deneer 94 US 780, 788, the Supreme Court of the United States said: 'A process is a mode of treatment of certain materials to produce a given result. It is an act, or series of acts, performed on the subject matter to be transformed and reduced to a different state or thing. If new and useful, it is just as patentable as is a piece of machinery...'

[14] Robinson on Patents, 1890 Edition, Vol 1, page 230, citing the Cochrane v Deneer case, supra, states: 'An art or operation is an act or a series of acts performed by some physical agent upon some physical object, and producing in such object some change either of character or of condition. It is also called a 'process,' or a 'mode of treatment;' and is said to require that 'certain things should be done with certain substances in a certain order'. It is so far abstract that it is capable of contemplation by the mind apart from any one of the specific instruments by which it is performed. It is so far concrete that it consists in the application of physical force through physical agents to physical objects, and can thus become apparent to the senses only in connection with some tangible instrument and object."

At 15: "Though an art embraces so wide a field of inventive skill, it includes only such operations as are capable of producing physical effects. Every invention, when applied according to the design of its inventor, must accomplish some change in the character or condition of material objects. This is as essential in a patentable art as in an instrument." (citing Robinson on Patents, supra).
At 15: "In Patentability and Validity by Rivise and Caesar, 1936 edition, at page 35 et seq... there is a discusiion of mental processes which have been held unpatentable in which it is said inter alia: 'There are a number of decisions which hold that [16] a process to be patentable must produce a change in the condition of matter, and that processes whose results can be apprehended only through the intellect are not patentable. As a result of these decisions it is considered to be well settled that processes involving mental operations and processes that merely produce a desired state of mind are not patentable. In this category are included methods and systems for transacting business, methods of training animals, methods of solving problems, and rules for playing games.'
Several cases are cited as illustrative of the text, and the authors then cite decisions of the Supreme Court which they say 'have sustained the validity of patents covering methods whose results can be apprehended only through the intellect." They state that the most important of these are The Telephone Cases, 126 US 1 (1887), and say "It is to be noted that the Supreme Court did not in these cases directly pass upon the patentability of mental processes, for the question was not raised by the parties to the litigation.'"
At 17: "The question of mental processes has not as yet been presented to the Supreme Court in such a manner as to call for a direct decision, and it is very doubtful whether even our highest tribunal would go so far at this late date to overturn the long line of adverse decisions." (citing Rivise and Caesar, supra)
At 22: "In affirming the examiner's rejection of the article claim, 8, the board said inter alia: 'The sole novelty in the claim, ... resides in the method of mathematical computation by which the profile of the airfoil is determined.'