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
October 3, 1980
ON WRIT OF CERTIORARI TO THE UNITED STATES COURT OF CUSTOMS AND PATENT
REPLY MEMORANDUM FOR THE PETITIONER
WADE H. MCCREE, JR., Solicitor General, Department of Justice, Washington,
D.C. 20530, (202) 633-2217
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1. Respondents contend (Resp. Br. 42-43, 18, 46) that their rubber molding
process has three novel features: (1) the repetitive determination of the exact
temperature in the mold; (2) the recalculation of the cure time at very short
intervals; and (3) the use of a temperature probe that will not damage the
precision molded product. The Patent and Trademark Office Board of Appeals
found, however, that the "only difference between the conventional methods of
operating a molding press and that claimed * * * rests in those steps * * *
which relate to the calculation incident to the solution of the mathematical
problem or formula" (Pet. App. 24a). The Court of Customs and Patent Appeals did
not disturb the Board's determination (id. at 13a). In this Court
respondents are thus obliged to show that on the Patent Office record the
Board's finding is clearly erroneous. They have failed to do so.
Respondents do not dispute that like their claims the Gould and Davis patents
cited by the examiner (Pet. App. 30a) describe a repetitive determination of the
exact temperature in the mold (Resp. Br. 13 n.11, 42; see Pet. App. 63a, 67a,
71a, 75a, 78a). Nonetheless, they assert that their process involves two
improvements over those of Gould and Davis: first, that unlike Gould and Davis
they do not use temperature probes that could damage precision products; and
second, that the Gould and Davis calculation is performed only once per minute
while theirs is done much more often (Resp. Br. 42). Although the later Gould
and Davis patent involved inserting the probe into the molded article (Pet. App.
63a), their earlier patent claimed the very method of measuring temperature
respondents describe in their specification -- sensing the temperature at the
surface of the article (compare Pet. App. 73a, 78a with Pet. App. 45a).
Moreover, claim 7 of their later patent refers to computing the state of cure at
"regular intervals or continuously" (id. at 72a), in other words, "at
every instant" (id. at 68a; cf. respondents' specification, Pet. App.
41a). The prior disclosure by Gould and Davis of the very procedures here
claimed by respondents to be novel undoubtedly explains why respondents, when
summarizing their invention before the Patent Office, did not even mention the
advances over prior art upon which they rely in this Court (compare Resp. Br.
42-43 with Pet. App. 41a-42a). Instead, they stressed their use of a computer to
improve the cure (Pet. App. 41a-42a). n1
n1 Respondents complain (Resp. Br. 24-26) that clerks in the Patent Office's
Application Division arbitrarily assigned their application to a computer
examining group while the Gould and Davis applications were assigned to a
chemical examining group. This assignment, say respondents, resulted in
rejection of their application and approval of those of Gould and Davis. But
while the Application Division is initially responsible for assigning each
application to an art group, the supervisory primary examiner in each art group
must then review each application to determine if it has been properly assigned
to his group. Patent and Trademark Office, Manual of Patent Examining
Procedure §§ 903.08(a) and (d) (1980)). If it does not belong in his group,
the supervisory primary examiner must transfer the application to the proper
group (id. at § 903.08(d)). As we have shown, the decision to assign
respondents' application to the computer examining group was correct, for the
linchpin of respondents' claimed invention is a programmed computer (see Pet.
App. 5a n.3, 21a-22a)
2. Respondents further argue (Resp. Br. 40-41) that the Patent Office must have
resolved in their favor the factual issue just discussed because during the
prosecution of their original application n2 they overcame an obviousness
rejection under 35 U.S.C. 103 based on prior art. n3 But the examiner was
required under 35 U.S.C. 103 to consider not only respondents' method of surface
sensing and repeated temperature measuring but also their claimed use of a
programmed computer to recompute the cure time. He undoubtedly believed that the
programming of the computer made the process sufficiently different (cf. Gould
and Davis' suggestion for using a "digital computer" (Pet. App. 67a)) for
respondents' invention to pass muster under Section 103. n4 This forcefully
serves to highlight the importance of following the Section 101 analysis
prescribed in Parker v. Flook, 437 U.S. 584 (1978), of first
assuming the computer "algorithm * * * to be within the prior art" ( id.
at 594) and only then considering what remains "as a whole" (ibid.) to
determine if it is "well known" (ibid.). That indeed is what the Board of
Appeals did in this case (Pet. App. 21a-24a), and what the Court of Customs and
Patent Appeals refused to do (Pet. App. 13a-14a & n.6). n5
n2 The instant application is a continuation of an earlier one.
n3 Section 103 requires the Patent Office to reject an application "if the
differences between the subject matter sought to be patented and the prior art
are such that the subject matter as a whole would have been obvious at the time
the invention was made to a person having ordinary skill in the art * * *."
n4 Contrary to the suggestion in the American Patent Law Association Amicus
Brief (at 3, 4 & n.4), a decision that the application discloses patentable
subject matter will thus probably mean that the patent will issue.
n5 Respondents (Resp. Br. 29-31) and the American Patent Law Association (APLA
Amicus Br. 8-11) contend that the CCPA has been evenhanded in its interpretation
of Flook and Gottschalk v. Benson, 409 U.S. 63 (1972),
because the court has reversed the Patent Office's rejections in some computer
program cases and affirmed them in others. But counting cases is hardly a
substitute for a careful analysis to determine whether the CCPA is properly
interpreting Benson and Flook. Had such an analysis been made it
would have revealed that the court is applying a different, pre-Flook
test (see In re Freeman, 573 F.2d 1237, 1245 (C.C.P.A. 1978)) that
requires approval of the patent under Section 101 unless all that is claimed is
a mathematical formula and the claim wholly preempts the formula (see, e.g.,
In re Johnson, 589 F.2d 1070, 1075-1076 (C.C.P.A. 1978); In re Phillips,
608 F.2d 879, 882-883 (C.C.P.A. 1979)).
For the reasons stated herein and in our main brief, the judgment of the Court
of Customs and Patent Appeals should be reversed.
WADE H. MCCREE, JR., Solicitor General