Court Backs Patent in Computer Process

By Linda Greenhouse
The New York Times

Washington -- March 3, 1981 -- The Supreme Court ruled today, by 5 to 4, that an industrial process could be eligible for a patent even if it incorporated a mathematical formula or computer program that would not in itself be patentable.

The decision affirmed a ruling by the United States Court of Customs and Patent Appeals that a computerized process for curing rubber was ''patent-able subject matter.'' The process will now receive a patent if in further proceedings it meets the additional requirements of ''novelty'' and ''nonobviousness.''

The decision was a blow to the United States Patent and Trademark Office, which has been fighting a losing battle with the Court of Customs and Patent Appeals over the extent to which computer technology is eligible for patent protection.

Assigned to Federal-Mogul

The Patent Office had denied a patent for the invention in today's case, which is assigned to the Federal-Mogul Corporation of Detroit, a maker of vehicle and machinery components.

A patent examiner turned down the application in 1975, ruling that the process depended on a computer program that was not patentable by itself and that could not be made patentable simply by linking it to the various physical steps in curing rubber. The computer determines the length of time a particular batch of rubber must remain in a molding press in order to be perfectly cured.

The Patent Office's board of appeals agreed, but the Court of Customs and Patent Appeals reversed the finding. The appeals court said that, because a molding press ''operates as the heart of the process,'' Supreme Court rulings that had denied patents for mathematical formulas and computer programs did not apply.

Misunderstanding or Refusal

The Justice Department appealed to the Supreme Court on behalf of the Patent Office. The department argued that the Court of Customs and Patent Appeals had either misunderstood or was deliberately refusing to abide by the Supreme Court's recent rulings in similar cases.

In today's decision, Diamond v. Diehr, No. 79-1112, the five Justices in the majority appeared to narrow the scope of the earlier opinions without directly overruling them.

Three years ago, in a case called Parker v. Flook, the Supreme Court ruled that an invention that was based on an improved method of mathematical calculation could not be patented. Today's majority said that the rubber-curing process, while it ''admittedly employs a well-known mathematical equation,'' nonetheless differed from the invention at issue in the Parker case because the inventors ''do not seek to pre-empt the use of that equation.''

Associate Justice William H. Rehnquist, writing for the majority, said that, ''when a claim containing a mathematical formula implements or applies that formula in a structure or process, which, when considered as a whole, is performing a function which the patent laws were designed to protect (e.g., transforming or reducing an article to a different state or thing), then the claim satisfies the requirements of Section 101'' of the patent law.

Trivialization Seen

Associate Justice John Paul Stevens, who wrote the 6-to-3 majority opinion in the Parker v. Flook case, disagreed vigorously, writing in dissent today that the majority opinion ''trivializes the holding in Flook'' by failing to acknowledge that the rubber-curing process is ''strikingly reminiscent'' of the invention that was rejected in the earlier case.

Justice Stevens said the majority incorrectly characterized the question in the case as ''whether a process for curing synthetic rubber is patentable.'' That question, he added, ''was effectively answered many years ago when Charles Goodyear obtained his patent on the vulcanization process.'' All that was really new in today's invention, he said, was ''a new method of programming a digital computer.''

The Patent Office has fought the idea of patent protection for computer programs because of the difficulty of analyzing supposedly new programs to see which are really novel.

Greater Burden Expected

While today's opinion stops far short of bringing ordinary computer programs within the patent laws, one Government lawyer said that it would increase to at least some extent the administrative burden on the Patent Office.

The majority opinion today was joined by Chief Justice Warren E. Burger and Associate Justices Potter Stewart, Byron R. White and Lewis F. Powell. Joining in the dissenting opinion were Associate Justices William J. Brennan Jr., Thurgood Marshall and Harry A. Blackmun.

The Court took no action today in a companion case involving the patentability of an invention that directs the transfer of data within a computer. Chief Justice Burger is not participating in that case, Diamond v. Bradley, No. 79-855, so the Court is almost certainly locked in a 4-to-4 split.

Copyright 1981 The New York Times Company