SIDNEY A. DIAMOND, COMMISSIONER OF PATENTS AND TRADEMARKS, Petitioner
v. JAMES R. DIEHR, II and THEODORE A. LUTTON
1979 U.S. Briefs 1112
October Term, 1979
July 28, 1980
On Writ of Certiorari to the U.S. Court of Customs and Patent Appeals
BRIEF AMICUS CURIAE FOR THE AMERICAN PATENT LAW ASSOCIATION, INC. IN SUPPORT OF
AFFIRMANCE AND/OR REMAND
I. AUTHORITY TO FILE
This amicus brief is presented under Rule 36. The letters of consent are on file
with the clerk.
AMERICAN PATENT LAW ASSOCIATIONS, INC., 2001 Jefferson Davis Highway, Arlington,
Virginia 22202, DONALD R. DUNNER, President
KENNETH E. KUFFNER, ARNOLD, WHITE & DURKEE, 2100 Transco Tower, Houston, Texas
Of Counsel: TRAVIS GORDON WHITE, JOHN D. NORRIS, ARNOLD, WHITE & DURKEE,
2100 Transco Tower, Houston, Texas 77056
View Table of Authorities
II. THE APLA AS A FRIEND OF THE COURT IN THE PUBLIC INTEREST
A. The Nature of the Amicus Organization
The American Patent Law Association, Inc. ("APLA") is a non-profit membership
organization of over 4,000 lawyers interested in intellectual property law, that
is, patents, trademarks, copyrights, trade secrets and related areas of law.
Members of APLa not only practice before the Patent and Trademark Office
("PTO"), but also are concerned with patent litigation, with counseling on
infrigement and validity matters, and with licensing or other transfer of
patented and non-patented technology.
APLA membership is not restricted to any segment of the profession. Attorneys in
private practice and those employed by corporations, universities and government
are included. Members of the association and their clients represent widely
divergent interests and views. They represent individuals, organized research
and development (both academic and commercial), and large and small industrial
and business enterprises.
B. The Interest of Amicus is the Public Interest in Preservation of the Patent
The APLA has expertise in the day-to-day workings of, and the public benefits
derived from, the American patent system. Since the broadly based association
membership is not divided into plaintiffs' and defendants' bars, APLA is
uniquely qualified to speak fairly on the general issues which affect the public
interest in preserving the patent system.
C. APLA Takes No Position on the Patentable Merits of the Invention Involved in
The jurisdiction of the Court of Customs and Patent Appeals ("CCPA"), in its
revie of the decisions of the PTO tribunals, is limited. n1 This means that the
CCPA decision in the case presently under review must NOT be considered
as a conclusion that a patent should issue. n2 The CCPA decided ONLY that
the PTO was wrong in rejecting all claims in the applications for being
outside the categories of subject matter eligible for patent protection n3 as
set forth in 35 U.S.C. § 101 (1976). No other issues were before the CCPA. In
each case the agency chose not to pursue any other ground for rejection, and
that court thus could not consider questions related to the novelty or
nonobviousness of the claimed subject matter.
n1. While 28 U.S.C. § 1542 states broadly that the CCPA "shall have jurisdiction
of appeals from decisions of" the Patent and Trademark Office, the patent
statute requires that the court "shall hear and determine such appeal on the
evidence produced before the Patent and Trademark Office, and the decision
shall be confined to the points set forth in the reasons of appeal." 35
U.S.C. § 144 (1976) (emphasis added). The policy of the CCPA in this regard is
well summarized in the following passage from In re Alul, 468 F.2d 939,
941 (CCPA 1972):
We note that a substantial part of the solicitor's brief is devoted to arguments
which were not raised below and which are tantamount to new grounds of
rejection. The practice of raising such matters at this stage of the prosecution
is unfair to the other party, adds to the burden of the court, and serves to
obscure the raising party's position on the issues that actually were raised
below. We will not consider these new arguments. We realize the position this
leaves appellants in, but we are confident that if any merit were found in the
new arguments in cases like this, the Patent Office would reopen prosecution to
assert them and give appellants a chance to respond to them.
n2. "It is the Patent Office which grants patents, not this Court." In re
Arkley, 455 F.2d 586, 589 (CCPA 1972).
n3. It is critical that the Court understand the distinction we make in this
brief between the issue of whether claimed subject matter is eligible for
patent protection, on the one hand, and the issue of whether claimed subject
matter satisfies the conditions for patentability, i.e., is new, useful
and nonobvious, and thereby merits the grant of a patent, on the other hand. It
is the former issue only which is before the Court because that is the only
ground on which the PTO chose to finally reject the application here involved
and the application in the companion case, Diamond v. Bradley (No.
79-855). The APLA agrees that inquiry as to either issue must consider the
claimed subject matter in its entirety, but emphasizes that each inquiry
must be made separately and independently of the other. Cf. In re bergy,
596 F.2d 952, 959 (CCPA 1979), wherein the CCPA expressed its concern regarding
commingling of distinct statutory provisions which are conceptually unrelated,
namely, those pertaining to the categories of inventions in § 101 which
may be patentable and to the conditions for patentability demanded
by the statute for inventions within the statutory categories, particularly the
nonobviousness condition of § 103.
The APLA believes that value judgments as to whether these respondents should or
should not ultimately be entitled to a patent n4 have no proper place in
deciding whether the subject matter which respondents seek to have patented is
within the statutory categories which are eligible for the patent grant.
While taking no position on whether the application now before the Court
satisfies the various statutory requirements and conditions for patentability,
n5 the APLA fully supports the holding of the CCPA that the claims of this
application define subject matter which is eligible for patent protection under
§ 101 of the statute.
n4. We are concerned that the apparent relative simplicity of the Diehr and
Lutton invention, coupled with the manner in which the government has developed
its argument, may persuade some justices that the CCPA ruling should be reversed
simply on the ground that a patent ought not to issue on this particular
application. Alternatively, some might conclude that to affirm the ruling of the
CCPA will result in the issuance of many patents where the only novelty of the
invention involved lies in the use of a programmed computer. We urge the Court
to be clear that an affirmance of a CCPA decision does not mandate that even the
application which is before the Court issue as a patent.
n5. 35 U.S.C. §§ 102, 103 and 112 (1976), in particular.
III. PURPOSE OF THIS BRIEF
The public interest in an effective patent system demands a broader view of the
issues than that provided by the petitioner, which appears to be largely
reflective only of administrative problems in the PTO.
The governmenths briefs urge an approach to claim analysis -- having potential
application beyond the specific area of computer program-related inventions --
which could severely undermine the patent system itself.
The government seeks in this case, as it did in Gottschalk v. Benson, 409
U.S. 63 (1972), and Parker v. Flook, 437 U.S. 584 (1978), and as it does
in Diamond v. Bradley (No. 79-855), to have the Court foreclose the
granting of patents for all inventions involving computer programming. This
attempt is at odds with the constitutional purpose behind our patent system,
i.e., "to promote the Progress of. . . the useful Arts." n6 In this
technology, as in all others, it is a socially desirable goal, effectively
implemented by our patent system, to induce and to encourage by patent grant the
disclosure of new and useful information and the commitment of capital to
research and development.
n6. U.S. Const. art. 1, § 8, cl. 8.
In its brief to this Court, the government accuses the CCPA of "summarily
dismissing" (Pet. Br. at 10) the majority opinion in Flook, and following
the approach of the dissenting opinion in refusing "to identify and set aside,
as had the Board, those steps in the claim that were old in the art" (id.
at 5), and to "identify respondents' computer program as the only novel feature
of their invention" (id. at 11). The CCPA's decision that respondents'
claims recited statutory subject matter comports, says the government, with that
court's persistent criticism of Flook" (id., citing a single
It is a major purpose of this brief to persuade the Court that the decision of
the CCPA in this case is not inconsistent with the holdings in Benson
and in Flook. Rather, it is based upon a reasoned approach, consistent
with those cases and with the aims of the patent system, whereby claimed subject
matter involving computer- related or mathematics-related concepts may be tested
to determine whether it is eligible for patent protection.
IV. COMMENT ON THE GOVERNMENT'S STATEMENT OF THE ISSUES BEFORE THE COURT
The Petition in this case presents the question as:
Whether a computer program that regulates the curing time of rubber products in
a mold is patentable subject matter under 35 U.S.C. 101.
This question suggests that the application before the Court is seeking to
patent a computer program, which could not be further from the truth. We ask the
Court to compare "the question" presented with the actual language of the
application claims. Respondents here are not claiming a "computer program." In
fact, respondents have pointed out not only that they are not claiming
computer programs, but also that they have never intended to do so. n7 Nor did
the CCPA, in reversing the decision of the PTO, determine the subject matter of
this application to be a computer program. n8
n7. For more than 100 years the patent statutes have required each patent
applicant to "particularly point out and distinctly claim the subject matter he
regards as his invention." This requirement continues in the present statute in
the second paragraph of 35 U.S.C. § 112 (1976).
n8. The CCPA characterized the claimed invention as "a method for operating
molding presses used in the manufacture of rubber articles." In re Diehr,
602 F.2d 982, 983 (CCPA 1979).
It is a fact, however, that the invention of these claims does require,
in its practical application, the use of a programmed computer, and the
claims now before the Court make reference to this fact. The question presented
by the government, however, focuses on this point alone, through an exercise
which ignores what the patent applicants are seeking to patent and what the
court below found to be defined by the application claims. The "how" and "why"
of this exercise, its basic impropriety, as well as its insidious danger to the
constitutional underpinnings of our patent system, is the principal focus of
APLA's brief in Diamond v. Bradley, No. 79-855, filed concurrently
A. The Decision Below is Consistent with the Underlying Philosophy in Benson and
Flook that only Practical Applications of Principles of Nature to Produce a
Beneficial Result or Effect Should be Eligible for Patent Protection
In our brief in Diamond v. Bradley, No. 79-855, filed concurrently
herewith, we set forth the Association's position that a rational philosophy can
be found, underlying the decisions in Benson and in Flook, which
is consistent with past decisions of this Court and which supports the
constitutional goals of our patent system. We further point out that the
artificial "two-step" approach to claim analysis proposed by the government is
not supported by this philosophy. Many predicates underlying the position we
take in this brief are set forth in our Bradley brief and not repeated
here. We urge the Court to read these two briefs together and consider the
position we take in each as applicable to both cases.
The CCPA decision in the present case was based upon that court's focusing on
the entirety of the claimed subject matter and concluding that, when so viewed,
respondents' claims "were not essentially for a method of calculation or
formula. . . but for an improved process. . . ." Pet. Br. at 11. As such, the
decision below was entirely consistent with the philosophy we set forth in our
In the remainder of this brief, we will outline the CCPA's eight-year,
twenty-case "struggle" to develop an approach to claim analysis which is
consistent with both the decisions in Benson and Flook and with
the philosophy underlying those decisions.
B. The CCPA has Recognized and Applied this Philosophy Consistent with the
Holdings in Benson and Flook
The CCPA quickly recognized the implications of Benson, and regularly
applied them to affirm PTO decisions holding claimed subject matter
non-statutory. The first of these post-Benson cases was In re
Christensen, 478 F.2d 1392 (CCPA 1973), wherein the claimed invention was
for a method of determining the porosity of an underground formation. The
recited method involved a computation step using a newly-developed mathematical
equation which was to be solved to compute the porosity of the formation after
values for the parameters to be used were established according to antecedent
steps admittedly old in the art. The CCPA affirmed the PTO's decision rejecting
these claims as non-statutory subject matter. That court concluded that the
addition of old and necessary antecedent steps of establishing values for the
variables in a newly discovered mathematical relationship would not convert an
otherwise non-statutory mathematical algorithm into statutory subject matter.
Subsequently, in In re Waldbaum, 559 F.2d 611 (CCPA 1977), In re de
Castelet, 562 F.2d 1236 (CCPA 1977), the court continued to apply and to
extend the holding in Benson, affirming the rejection, as non- statutory
subject matter, of claims which clearly recited and preempted mathematical
algorithms in the abstract. In Waldbaum, the court made clear that it
would not consider the mere recitation, in the preamble of the claim, of an
intended end use or environment of application for the algorithm to affect the
basic non-statutory nature of the claim. In de Castelet, the claimed
method was expressly stated to be machine-implemented, but was held to be
nothing more than the calculation of a mathematical algorithm. In analyzing the
rationale of Benson, the court stated as follows:
The type of problem facing the Supreme Court in Morse, The Telephone Cases,
and Benson, was described by one commentator over a hundred years ago, as
"how far a discovery or invention which may first disclose and practically
embody some truth in physics or some law in the operation of the forces of
nature, for a useful purpose, is capable of being carried in the exclusive
privileges secured by the grant of letters patent," Curtis, A Treatise on the
Law of Patents for Useful Inventions § 124 (4th ed. 1873). Recent authority is
in accord. See 1 Deller's Walker on Patents § 23 (1964).
It is thus clear that the "nutshell" language of Benson expressed the
ancient rule that practical application remains the key. Because it did
not consider the performance of an algorithm by a computer as constituting a
practical application of that algorithm under the rule, the Court must have
viewed Benson's claims as effectively claiming the "effect," principle, or law
or force of nature (the algorithm) itself.
562 F.2d at 1243 (emphasis added). In an earlier footnote, the court had pointed
it is important to distinguish between situations in which (1) the scientific
truth per se constitutes the sum of the subject matter sought to be patented,
and (2) the scientific truth is merely used in an overall process or to describe
a physical relationship.
562 F.2d at 1241n.3.
In Richman, the court again found a preamble recitation of an intended
end use application, limiting the mathematical algorithm recited in the claims
to a particular environment, insufficient to change the fact that the claim in
its entirety was drawn to a mathematical expression of scientific truth. "The
decisive factor is whether a claimed method is essentially a mathematical
calculation." 563 F.2d at 1030. This case is particularly noteworthy because the
claims in question were held non- statutory even though they included
apparently new and nonobvious procedures for acquiring data for use in the
mathematical formulae recited.
The CCPA has continued to apply Benson in the same manner, affirming
rejections under § 101 in In re Sarkar, 588 F.2d 1330 (CCPA 1979), In
re Gelnovatch, 595 F.2d 32 (CCPA 1979), In re Maucorps, 609 F.2d 481
(CCPA 1979) (wherein the court stated that Benson applies equally whether
an invention is claimed as an apparatus or as a process), and, most recently, in
In re Walter, 618 F.2d 758 (CCPA 1980).
Since this Court's decision in Benson, the CCPA has decided some twenty
cases in which it addressed the issue of whether claims involving mathematical
equations or computer programs were within the categories of patentable subject
matter set forth in § 101. Each case presented an entirely different set of
facts, some inventions involving complex subject matter (such as that involved
in the Bradley and Franklin application) while others were more easily
understood (such as in the Diehr and Lutton application). Chief Judge Markey in
his dissenting opinion in Gelnovatch succinctly pointed out the problem
that the CCPA has had in dealing with these cases:
Efforts to follow precedent in "computer program" type cases require repeated
wrestling with the interpretation and effect of such terms as "program,"
"mathematical formula," "algorithm," "solution," "equation," and "calculation.".
. . In Benson, some of those terms were used interchangeably.
595 F.2d at 45.
While this Court was considering the Flook case, the CCPA came down with
an opinion in which it suggested a reasoned approach, consistent with this
Court's decisions in Benson and in prior cases, to determine whether a
claim to computer program-related subject matter is eligible for patent
protection under 35 U.S.C. § 101. In In re Freeman, 573 F.2d 1237, 1245
(CCPA 1978), that court stated the following two-step inquiry (not to be
confused with the government's two-step approach):
(1) Does the claim directly or indirectly recite n9 an algorithm in the
Benson sense of the term?
(2) Does the claim in its entirety wholly preempt that algorithm?
n9. The CCPa discussed its meaning of the word "recite" in Freeman, 573
F.2d at 1246:
In some claims, a formula or equation may be expressed in traditional
mathematical symbols. . . . Other claims may use prose to express a mathematical
computation or to indirectly recite a mathematical equation or formula by means
of a prose equivalent therefor.
A negative response to either of the two questions would necessarily take the
claim outside the Benson holding. Rejection of the claim on the ground
that it defined non-statutory subject matter would thus be improper.
Step (1) of the Freeman test (Does the claim recite an algorithm?)
recognizes that a claim cannot preempt a mathematical algorithm or law of nature
unless it recites it. A claim which recites nothing more than a mathematical
algorithm, as was said to be the case in Benson, or which clearly
contains mathematical terms, is of course the easy case. However, the Freeman
test also recognizes that a mathematical relationship or method of calculation
may be implicit in the language of the claims even though the formula or
mathematical relationship is not expressly recited in mathematical symbols. If
the step (1) inquiry does not yield a "yes" answer, there is no need to proceed
to step (2). The claim could never be an attempt to preempt a mathematical
relationship if none is present. On that basis, the claim would be statutory.
Step (2) of the Freeman test was formulated in response to the mandate by
this Court in Benson. A claim which "would wholly preempt the
mathematical formula and in practical effect would be a patent on the algorithm
itself" is not patentable subject matter within the meaning of § 101. 409 U.S.
at 71. Thus, the inquiry of step (2) of the test it to determine if the claim in
practical effect wholly preempts the mathematical algorithm or relationship
found in step (1).
The CCPA continued to approach the issue of whether a computer-related claim
defined statutory subject matter by means of this so-called Freeman
analysis, even after this Court handed down its decision in Flook.
In its first considerations of Flook, the CCPA apparently viewed the
holding in that case as coming under step (2) of the Freeman analysis.
That is, the CCPa considered the holding in Flook to be an affirmation of
the correctness of its pre-Freeman decision in In re Richman, supra,
wherein the court held that a method of calculating values for parameters to be
used in a mathematical relationship was non-statutory despite the recitation in
the claim preamble that the relationship was to be applied in an airborne
doppler radar system. n10 Application of step (2) of the analysis consistent
with the Flook opinion became impossible in all situations, however, so
the CCPA refined its Freeman analysis to bring it more in line with the
holding in Flook, while at the same time keeping the analysis consistent
with its own past decisions and especially with prior holdings of the Supreme
Court. In In re Walter, the CCPA held:
Once a mathematical algorithm has been found, the claim as a whole must
be further analyzed. If it appears that the mathematical algorithm is
implemented in a specific manner to define structural relationships between the
physical elements of the claim (in apparatus claims) or to refine or limit claim
steps (in process claims), the claim being otherwise statutory, the claim passes
muster under § 101. If, however, the mathematical algorithm is merely presented
and solved by the claimed invention, as was the case in Benson and
Flook, and is not applied in any manner to physical elements or process
steps, no amount of post-solution activity will render the claim statutory; nor
is it saved by a preamble merely reciting the field of use of the mathematical
n10. In Richman the CCPA stated that "if a claim is directed essentially
to a method of calculating, using a mathematical formula, even if the solution
is for a specific purpose, the claimed method is non-statutory." 563 F.2d at
1030. Compare this with Flook, 437 U.S. at 595n.18 and accompanying text.
618 F.2d 758, 767 (CCPA 1980) (footnotes omitted). This analysis comes from a
recognition that the issues under § 101 in the area of computer-arts inventions
"have arisen because the function of the computer has been to perform
mathematical operations." Id. at 764. As the CCPA now n11 sees it:
In the computer arts, § 101 problems tend to center around the use of
mathematics in the claims, which define the invention for which patent
protection is sought. This is a natural consequence of the nature of computers.
A computer is nothing more than an electronic machine. It is characterized by
its ability to process data, usually by executing mathematical operations on the
data at high speeds. By virtue of the speed with which computers operate, they
are capable of executing complex or otherwise time-consuming calculations in
fractions of a second. Their use in technology is analogous to the use of
mechanical devices, such as levers, which provide mechanical advantage in
inventions of a mechanical nature; they make possible, or practicable, the
solution of mathematical problems which are impractical to solve manually due to
the inordinate amount of time manual solution would consume.
The CCPA's recognition that most of the problems with regard to computer-related
inventions stem from the mathematical nature of the subject matter makes it even
more apparent how that court sees Benson and Flook as consistent
with prior Supreme Court precedents speaking on the application of the patent
laws to newly discovered natural principles. Benson, Flook, and the
CCPA's Freeman-Walter analysis thus hold that pure mathematical
relationships are nothing more than natural phenomena, which they say should not
be the subject of patent protection -- even if those relationships have never
been discovered or appreciated before and despite their having to be implemented
by an incredibly rapid machine. Claims which attempt to wholly preempt such a
newly-discovered mathematical relationship, either directly or indirectly, are
thus seen to take from the public a right which it would otherwise be entitled
to enjoy. Even when the claim recites a specific technological environment of
use, the Freeman-Walter analysis would require it to do more than simply
present the mathematical relationship and solve it (or otherwise perform some
mathematical exercise with it) in order to satisfy § 101. Computer
implementation of the mathematical calculations, without more, is not seen as
that implementation or application of the scientific principle to a readily
ascertainable and specific practical end use for which the patent system was
On the other hand, the mere fact that a mathematical relationship is recited,
even if it is the only point of novelty in the claim, and even if it can only be
practically implemented by computer, should not remove a claim from eligibility
for patent protection if that claim otherwise is drawn to a practical
application or implementation of the mathematical relationship to produce a
specific beneficial result or effect in one of the technological arts.
C. Where the Claimed Subject Matter as a Whole is Drawn to a Practical
Application of a Principle of Nature in a Specific Manner to Produce a
Beneficial Result or Effect in One of the Technological Arts, that Subject
Matter Should be Eligible for Patent Protection Under § 101
Computer program-related cases decided by this Court and by the CCPA can be
categorized according to the nature of their claims as follows:
(1) Claims directed at preempting mathematical algorithms which are to be
implemented on a programmed computer or for which computer implementation is the
only practical application; and
(2) Claims which recite the use of a programmed computer in carrying out
one or more steps in a process claim, or performing the function of one or more
of the elements of an apparatus claim.
As a result of those prior decisions of this Court and of the CCPA, the subject
matter of inventions found to be in class (1) above will always be
non-statutory. But for inventions in class (2) above, the matter will never be
so clear-cut. In this category, there is no clear dividing line separating
subject matter which is eligible for patent protection from that which is not.
The Court previously acknowledged this fact when it said, "The line between a
patenable 'process' and an unpatenttble 'principle' does not always shimmer with
clarity," Flook, 437 U.S. at 589.
What then, in terms of 35 U.S.C. § 101, is a permissible use of a
principle of nature -- the recitation of which in a patent claim will "transform
an unpatentable principle into a patentable invention?" It is only when that
inquiry is on the entirely of what is protected by the claim that that
question can be answered. Focusing on exactly what is protected by the
claim will permit further inquiry into how each element (step) interacts with
the other elements in the claim to define the function performed by the
invention. Understanding this interaction will better enable the determination
of whether or not the claim is seeking to protect the principle itself.
The court in Benson and Flook dealt only with computer-implemented
mathematical algorithms. in Benson, directed to all uses of the
BCD-to-Binary conversion method, was held to be an attempt to preempt in its
entirety the algorithm itself. The claim in Flook was held to cover
essentially nothing but a mathematical exercise, the end product of which was a
pure number. Neither of those cases holds or requires that a claim be rendered
non-statutory simply because a mathematical algorithm is involved. n12 We submit
that this is because the Court, in those two cases, implicitly recognized that
claims which are not merely directed to a principle of nature (of which
mathematical expressions or algorithms are but one kind), but rather are
directed to a specific, beneficial end use of the principles, n13 must be
considered as proper subject matter for patent protection. Thus, any inquiry
into statutory subject matter within the meaning of § 101 must consider the
claimed subject matter in its entirety in order to determine if a principle of
nature is being applied in a specific manner to achieve a beneficial result in
the technological arts.
n12. "Yet it is equally clear that a process is not unpatentable simply because
it contains a law of nature or a mathematical algorithm." Flook, 437 U.S.
n13. Such as, for example, the computer-controlled improved automobile
carburetor which is referred to in our Bradley brief.
In Walter, supra, the CCPA addressed the difference in the preemption
requirement between the Benson and the Flook holdings by restating
the second step of the Freeman test in terms other than preemption. As
restated in Walter, 618 F.2d at 767, the CCPA's test now asks:
(1) Does the claim directly or indirectly recite an algorithm in the Benson
sense of the term?
(2) If the answer to step (1) is yes:
(a) Does the mathematical algorithm, which is implemented in the specific
manner, define a structural relationship between the physical elements of the
claim (in apparatus claims) or refine or limit claim steps (in process claims),
(b) Is the mathematical algorithm found in step (1) merely presented and solved
by the claimed invention and not applied in any manner to physical elements or
The CCPA's Freeman-Walter approach appears to be a workable one. Under
this analysis, claims which define nothing but the mathematical algorithm, as in
Benson, even those which define a specific technological environment of
intended application, such as those in Waldbaum, de Castelet, and
Walter, will be immediately rejectable. Those which include preliminary
determinations of values (Christensen and Richman) and which
essentially do nothing more than calculate, solve, compare or correlate
according to the mathematical relationships set forth (such as in
Christensen, Flook, Richman, Sarkar and Gelnovatch) will similarly
fail to define subject matter eligible for patent protection.
On the other hand, claims which include the required application of a
principle to obtain a beneficial result should clearly meet the test to define
statutory subject matter. Such claims might, for example:
Employ a mathematical principle or algorithm to define a structural
relationship between one or more physical elements of the claimed subject
matter (as the mathematical expression for the angular separation of the antenna
elements in Mackay Radio); n14 or
Employ a mathematical relationship to define and limit the function of
one or more elements of a mechanical combination (such as the algorithm embodied
in the firmware of the fourth means in Bradley) or one or more steps of a
method (such as the Arrhenius equation for calculating the curing time for
rubber products in Diehr); n15 or
Apply the information or data obtained from the solution of the
mathematical relationships involved, in specific, defined subsequent steps,
to produce the required practical beneficial result or effect.
n14. Mackay Radio & Telegraph Co. v. Radio Corp. of America, 306 U.S. 86
n15. As we more fully demonstrate in attached Appendix A, both the Bradley et
al. and the Diehr et al. inventions, as claimed, satisfy this inquiry
and, therefore, should be considered as within the statutory categories of
inventions eligible for patent protection.
The Freeman-Walter analysis is in harmony with present statutory
provisions and judicial decisions and is adequate to permit an analysis of all
computer program- related inventions. We submit that it is a proper threshold
approach to the § 101 inquiry. Most importantly, it requires a consideration of
the invention as a whole, and does not artificially ignore claim language. As
such, it is a most effective means to determine whether a claim which recites a
mathematical algorithm or other phenomenon or principle of nature does so in a
manner which would preempt only the use of the algorithm, phenomenon or
principle in a specific manner to achieve a beneficial result or effect in one
of the technological arts.
We have asked the Court to compare the "question" on which the government sought
certiorari with the actual language used in the claims of the application before
the Court. If this question is presented by this case, it can only be through a
process of analysis which ignores the clear language of the claims,
ignores decades of customary procedure, and ignores a long legal
history of repeated insistence by the CCPA on specific application of the
statutory language of the patent code in making rejections of an applicant's
claims for patent protection. If this question is presented, it can only be by a
claim dissection process which uses the meat axe, not the probing scalpel -- a
process which destroys the basic framework of the claims and changes them beyond
The applicants here are not claiming a "computer program." Nor does this case
involve any attempt to "word" a claim through use of the draftsman's skills to
make it appear as if it is drawn to something else when it in fact covers
nothing but a computer program. If these claims are considered in their
entirety, it is clear that no "principle," or abstract proposition, will be
preempted by any patent which may issue. Rather, what will be patented will be a
very practical, very beneficial application of programmed data processors
to produce a desirable, beneficial result in one of the technological arts. The
disclosure of these types of inventions is precisely what our patent system was
intended to encourage.
As we have shown in our brief in Bradley, the logic of the position being
asserted by the government will result in a rule which could strike down many
meritorious inventions and which could lead to the non-disclosure of previously
unknown or unappreciated principles and phenomena of nature. This cannot be the
intent of the Court.
The APLA urges the Court to recognize that the CCPA's reasoned approach to
analyzing computer-related and mathematics-related claims is consistent with
this Court's holdings in Benson and Flook and should be upheld.
Patent claims involving computer programs can be analyzed according to the
principles expressed in the existing case law from the CCPA and from this Court
without having to rely on Congress to act.
The judgment below, in its holding that § 101 is not a proper basis for
rejecting this application, should be affirmed. Additionally, or in the
alternative, if the Court deems it appropriate, this case should be remanded to
the PTO for further consideration, consistent with the Court's opinion, of any
remaining questions under §§ 102, 103 and 112 of the patent statute.
AMERICAN PATENT LAW ASSOCIATION, INC., 2001 Jefferson Davis Highway, Arlington,
Virginia 22202, DONALD R. DUNNER, President
KENNETH E. KUFFNER, ARNOLD, WHITE & DURKEE, 2100 Transco Tower, Houston, Texas
TRAVIS GORDON WHITE, JOHN D. NORRIS, ARNOLD, WHITE & DURKEE, 2100 Transco Tower,
Houston, Texas 77056, Arlington, Virginia July, 1980
Both the Bradley et al. and Diehr et al. Inventions Should be Eligible for
Claim 1 of the Bradley and Franklin application reads as follows:
1. In a multiprogramming computer system having a main memory, a central
processing unit (CPU) coupled to said main memory, said CPU controlling the
state of a plurality of groups of processes being in a running, ready, wait or
suspended state, said computer system also having scratchpad registers being
accessible to an operating system for controlling said multiprogramming computer
system, a data structure for storing coded signals for communicating between
said processes and said operating system, and said scratchpad registers, said
data structure comprising:
(a) first means in said data structure and communicating with said operating
system for storing coded signal indicative of an address for a selected one of
said processes; [the "RPW" word location in the system base]
(b) second means in said first means for storing coded signals indicating
priority of said selected one of said processes in relation to others of said
processes for obtaining control of said CPU when ready; [the "PRI" field of the
RPW word location of the system base]
(c) third means in said data structure and communicating with said operating
system, for storing coded signals indicative of an address for a selected one of
said plurality of groups of processes, and, [the "J and G" table words of the
(d) fourth means coupled to said data structure and said scratchpad registers,
for generating signals causing the changing of information in said data
structure and said scratchpad registers. [the microcode for implementing the
function of the switch system base instruction, stored as firmware in the
control store of the CPU]
The combination claimed by Bradley comprises a first means (the RPW word)
for providing the address of a selected process within a group of processes; a
second means within the first means for specifying the priority of that selected
process; a third means for providing the address of a selected group of
processes that contains as one of its processes the selected process of the
first means; and a fourth means -- the firmware -- for changing the data in the
data structure (including the first, second and third means) and the scratchpad
registers. The third means provides an address for the selected group of
processes that contains the selected process that will be in the running state.
The first means provides an address which will be used with the address of the
third means to locate the starting address within the selected group of
processes of the instructions that will be fed to the CPU execution circuits.
The function performed by the fourth means is shown in the functional flow
diagrams of Figures 15b and 15c.
To consider the subject matter patentability of this claim, the operations
contained in the firmware of the fourth means must be considered as though they
were positively recited in the fourth means of the claims. This does not
constitute "reading in" a limitation to the claim that otherwise was not already
contained therein, for this procedure is expressly permitted by § 112 P6 of the
Step (1) of the Freeman-Walter analysis requires, considering the claim
as a whole, a determination whether a mathematical algorithm is directly or
indirectly recited in the claim.
It is clear that the first, second and third means of claim 1 do not recite or
constitute a prose equivalent of a mathematical algorithm. The government has
argued before the CCPA and in its Petition to this Court that the first three
means of claim 1 in Bradley are hardware elements for storing coded
digital information, and that these elements are old and well-known in the art.
Thus, if a mathematical algorithm is to be found recited in claim 1, it must be
embodied in the function performed in the microcode firmware of the fourth
We have previously pointed out that it is the government's position, and on this
point we agree, that where a computer program is involved, "the proper
inquiry is whether the program. . . expresses a phenomenon of nature,
mental process or an abstract intellectual concept" (emphasis added). However,
the government contends with the same breath that Bradley's program is
nothing more than the expression of an "abstract intellectual concept" because
it constitutes "a set of directions. . . for the switching of data. . .
united to any practical end use." Bradley Pet. at 12. We do not agree.
At most, the government could argue that the claim fails to particularly point
out and distinctly recite the "practical end use" for the changing of data in
the data structure. It is absurd to contend that the switching of data between
the image system base and the system base to change the data in the data
structure is an "abstract intellectual concept." Any person of ordinary skill in
the multi-programming computer art will appreciate that changing the data in the
system base and the scratchpad registers can affect the control of the execution
of the processes. There is therefore a very "practical end use" implicit in the
claim, although the beneficial end use could be better recited.
Looking to the function performed by the fourth means of claim 1 illustrated in
Figures 15b and 15c of the application, it is evident that a transfer of the
data in each image memory location to its corresponding system base memory
location, including the updating of the contents of the scratchpad registers
with the new G table word, J table word and the IPQW (internal process queue
word; see Figure 6) from the image system base, is all that is performed. The
government contended before the CCPA that multiplying by 16 the address in the G
and J table word locations of the system base, prior to loading these addresses
into the scratchpad registers, converted the functions performed by the firmware
of the fourth means, and therefore, claim 1, into a mathematical algorithm in
the Benson sense. With this, we cannot agree.
Multiplying the base data of the G and J table words by 16 is equivalent to
shifting each bit of the base data of those word locations four bit locations in
the direction to increase the magnitude of the absolute address obtained
thereby. The function of this address shift is dictated by the architecture of
the machine, and is only incidental to the function intended by the
microprogram. Bradley is not attempting to preempt base address changing
by shifting the data four places to obtain a new address.
It is therefore clear that claim 1 does not recite, directly or indirectly, a
mathematical algorithm. Step (1) of the Freeman-Walter two-step test is
not satisfied. There is no need to proceed to step (2). So long as the claim is
otherwise statutory, the claim cannot be "drawn to" a mathematical algorithm,
since none is recited.
If non-mathematical, but otherwise abstract, algorithms are also to be included
within this analysis, the Bradley subject matter would still be found
statutory. Proceeding with the next portion of the inquiry, it becomes readily
apparent that when considered as a whole each Bradley claim defines a
specific, practical implementation of the abstract principle involved to define
and limit both the structure and the function of the claimed subject matter so
that it performs a very useful, valuable operation within the digital computer.
Step (2) of the inquiry asks the question -- is the abstract principle, such as
the mathematical algorithm found in step (1), merely presented and solved by the
claimed invention and not applied in any manner to physical elements or process
steps? The answer to this question is clearly no. Any algorithm, mathematical or
otherwise, contained in the firmware of the fourth means of claim 1, so
interrelates with the other physical elements of the claim that it clearly
defines a limited, specific and practical application of the algorithm to
produce a beneficial result or effect in one of the technological arts. Enabling
the user programmer to transfer control of program execution in a
multi-programming computer system by transferring an image base, altered by the
user's computer program, to the system base and scratchpad registers is a very
beneficial and practical application. Step (2) of the inquiry would be satisfied
whether or not there is a mathematical algorithm in the fourth means of claim 1.
Claim 1 of the Diehr and Lutton application is representative of the Diehr
1. A method of operating a rubber-molding press for precision molded compounds
with the aid of a digital computer, comprising:
providing said computer with a data base for said press including at least,
natural logarithm conversion data (1n),
the activation energy constant (C) unique to each batch of said compound being
a constant (x) dependent upon the geometry of the particular mold of the press,
initiating an interval timer in said computer upon the closure of the press for
monitoring the elapsed time of said closure, [elapsed time]
constantly determining the temperature (Z) of the mold at a location closely
adjacent to the mold cavity in the press during molding, [measuring the
constantly providing the computer with the temperature (Z),
repetitively calculating in the computer, at frequent intervals during each
cure, the Arrhenius equation for reaction time during the cure, which is 1n v
where v is the total required cure time,
[Calculating the ideal cure time using the Arrhenius equation]
repetitively comparing in the computer at said frequent intervals during the
cure each said calculation of the total required cure time calculated with the
Arrhenius equation and said elapsed time, and [comparing for equivalence between
elapsed time and ideal time]
opening the press automatically when a said comparison indicates equivalence.
[opening mold when equivalence found]
The function performed in each step of the claimed method is clearly presented
and there is no need here to elaborate.
Mathematical formulae and equations have long been recognized as expressions for
principles of nature. There is no other answer to our inquiry under step (1) of
the Freeman-Walter analysis but that claim 1 of Diehr recites a principle
of nature in the form of a mathematical algorithm -- the Arrhenius equation.
Step (1) is therefore satisfied, and we proceed to the second step of the test.
The inquiry under step (2) of the test seeks to determine if the mathematical
algorithm found in step (1) is merely presented and solved by the claimed
invention and is not applied in any manner to physical elements or process
steps, or is the claim drawn to a limited, specific, and practical application
of the mathematical algorithm to produce a beneficial result or effect in one of
the technological arts. The Arrhenius equation is admittedly old and well known
in the rubber molding art, and has long been used for calculating the ideal cure
time for rubber compounds.
The Arrhenius equation is presented, solved and the solution used in claim 1 to
achieve the intended result of the claimed process -- opening the mold at the
proper time to avoid under-curing or over-curing the rubber. Although each time
the computer solves the Arrhenius equation a number is obtained, unlike
Flook, that number is not the end product of the claim. Rather, this number
is then compared to a time factor -- the amount of elapsed time since the mold
was closed -- to determine if they are the same. If not, the process continues
to monitor the temperature and to calculate the solution to the Arrhenius
equation at each temperature reading. There can be no question but that the
mathematical algorithm embodied in the Arrhenius equation is used within
the claim such that the claim, in its entirety, is drawn to a specific, limited
and practical application of the principle to achieve a beneficial result in one
of the technological arts. The claim is not drawn to the mathematical algorithm
itself, but applies the mathematical algorithm in a specific manner to process
steps to achieve a beneficial result.
Step (2) of the test is thus satisfied, i.e., although a mathematical
algorithm is recited in the claim, the claim as a whole is not drawn to the
algorithm, but constitutes a specific use of the algorithm to a
practical, beneficial end. Therefore, under the Freeman-Walter two-step
test, so long as the claim is not otherwise non-statutory, claim 1 of Diehr
defines patentable subject matter within the meaning of § 101.