In re Prater and Wei (1969)

Posted by Anton Hughes on Sunday, February 05, 2006 with No comments
Citation: In re Charles D. Prater and James Wei (1969) 56 CCPA 1376; 415 F.2d 1378
Jurisdiction: US Court of Customs and Patent Appeals
Facts: This was an application for a patent rehearing in relation to an invention concerned with spectrographic analysis. The application contained a machine for carrying out the invention in the form of an analog computer, but it was was envisaged that this invention could also be carried out by a digital computer.
The examiner rejected the appellant's method claims on the basis that the invention as claimed must be considered to be a process, and as such were readable as a mental process which was unpatentable. The examiner cited In re Abrams in support. The apparatus claims were also rejected on the basis that although the applications would have been entitled to claim the analog embodiment of the invention, the claim embraced an obvious modification of a general purpose computer, and hence strayed beyond the bounds of patentable subject matter. Hence the claims did not properly describe the invention as required by ß112. The board affirmed the positon of the examiner.
Outcome: The majority allowed a rehearing.
Ratio: Rich J in dissent said that none of the reasons advances for granting a rehearing was in compliance with the court's rule on rehearings.
Relevance: The majority opinion by Smith J is interesting for the way it deals with Abrams
There are a few juicy quotes by Rich J about software patents.
Smith J

At 1382: "The precedents which have been principally relied on as supporting the rejection of claims of this type are Abrams, supra, and Yuan, supra. As Yuan does little more than follow and adopt Abrams, it is to the latter case that we choose to turn as a starting point for our consideration in some detail of the problem presently before us."
At 1385: "It is important to note that Abrams disclosed no means whatever for performing the claimed steps ... of calculation and comparison. Certainly no analog computer for carrying out these calculations is disclosed in the Abrams' specification and at the time Abrams filed, ... programmable general purpose computers for calculations of this nature were still in the future. Thus, Abrams disclosed a claimed process including steps which could only be performed in the mind insofar as the teachings of the application were concerned. Abrams therefore represents a significant difference ... from the facture situation in the present case in which the teachings of the specification provide a full disclosure of apparatus for carrying out the steps in the claim without requiring any steps to be performed in the human mind. Additional teaching is also provided in the presenta pplication [1386] that the steps can alternatively be performed on other apparatus, i.e., a properly programmed digital computer, which would equally permit the process to be performed without involving steps performed in the mind by those skilled in the art informed of appellants' novel discoveries."
At 1386: "[M]uch confusion in subsequent interpretation of the Abrams decision has been caused by people misreading the decision as conferring judicial sanction upon the 'rules' formulated and proposed by Abrams' attorney. The confusion has arisen because the court, after initially declaring there was no necessity to embrace the rules, apparently adopted Rule 2 towards the later part of the opinion. We believe this later statement was advanced not to show adoption of the rules by the court but merely to point out that even if, arguendo, the court had adopted his rules, Abrams would still not have prevailed in his particular fact situation... The court thus hoist Abrams with his own petard."
At 1386: "It is also important to consider the two cases, Don Lee and Halliburton, supra, considered to validate the proposed 'Rule 2' [in Abrams' case]. [In Halliburton], the court decided the claims were invalid, saying: 'We think these mental steps, even if novel, are not patentable. Cf Don Lee...' When we trace back to Don Lee, ... the court said 'We conclude that appellee's patent claim No. 1 for a method of computation ... is not patentable. We agree with appellant's contention that such a computation is not `a new and useful art, machine, manufacture or composition of matter` within the meaning of [legislation antecedent to ß101]. Neither is it novel ...' It will be seen that this statement, which appears to be the genesis of the doctrine of the unpatentability of so-called 'mental step' claims, is not only unsupported by any citation of precedent but in its inception was directed to subject matter that was not even novel."
Discussing Cochrance v Deneer quote "A process is a mode of treatment..." at 1387: "This passage has sometimes been misconstrued as a 'rule' or 'definition' requiring that all processes, to be patentable, must operate physically upon substances. Such a result misapprehends the nature [1387] of the passage quoed as dictum, in its context, and the question being discussed by the author of the opinion. To deduce such a rule from the statement would be contrary to its intendment which was not to limit process patentability but to point out that a process is not limited to the means used in performing it."
At 1388: "We find it interesting in Tilghman and directly applicable to our analysis here is the reference... to a process as being 'an act, or mode of acting' and the further recognition that it is 'a conception of the mind, seen only by its effects when being executed or performed.' As such, it seems to us that Tilghman adds a recognizable dimension to Cochrane v Deneer which focuses attention on the mental aspect of process inventions whose patentability we presently determine under the express provisions of the Patent Act of 1952."

At 1388: "[T]he law does not require that a machine, to be patentable, must act on physical substances, for example, an electric meter. It does not seem consistent to impose such a requirement on the other category of 35 USC ß101 -- 'a process' -- without clearly evident and distinguishing reasons which are not thus far apparent."
At 1388: "In the Waxham case the [Supreme Court] said: 'By the use of materials in a particular manner he secured the performance of the function by a means which had never occurred in nature, and had not been anticipated by the prior art; this is a patentable method or process." It is noteworthy in the present appeal that although the appellants' novel calculations [1389] to be performed in the mind of a man might possibly to considered to be in nature, performance of the process of these novel calculations on a computer is by 'a means which had never occurred in nature'."
At 1389: "[W]e find nothing to indicate an intent of Congress or the courts to deny patent protection to process claims merely because they could alternatively be read on a process performed through the mind by the use of aids such as pencil and paper... We do not feel our reasoning need be encumbered by the so-called 'Rules' of Abrams for the reasons we have indicated. However, it is noted that in Abrams, unlike the present situation the claimed process could only be performed in the mind, so far as was apparent from the specification. The Abrams situation may thus be distinguished from that presently before us, in which there is adequate disclosure how the process can be performed ithout mental calculation. This distinction from Abrams leads us to our present holding which is that patent protection for a process disclosed as being a sequence or combination of steps, capable of performance without human intervention and directed to an industrial technology-- a 'useful art' within the intendment of the Constitution-- is not precluded by the mere fact that the process could alternatively be carried out by mental steps."
Rich J (dissenting)

At 1390: "[The Patent Office's] petition, which is most disrespectful in tone, charges us generally with ignoring and overlooking 'important issues' and 'prior adjudications of this court and others, including the Supreme Court.' More particularly, we [1391] are charged with 'Completely [disregarding]' the holdings in certain of our own prior cases. In the guise of demanding by way of a rehearing, 'the right to know why these pronouncements are ignored,' the solicitor is merely asking for further explanation of why we have refused to adopt his desired interpretation of our own utterances. The simple answer is that we did not agree with his desired interpretation. The reasons were fully developed in our opinion."
At 1391: "[T]he solicitor makes an argument to the effect that we have authorized the granting of a patent which would 'confer upon a patentee the right to exclude others from thingking in a certain manner.' This, we are told, would make the patent statutes, as we have construed them, unconstitutional as in violation of the First Amendment... We did not sanction claims which would preclude people from thinking, Prater did not ask for such claims, and surey no court would ever place such a construction on the claims which were before us... Prater's statement, in objecting to the petition, is that "There is no such thing as mental infringement" and that "thought is still unpatentable." This is unquestionably true.