II. Trying To Draw the Line

II.A. After Diehr

Shortly after Diehr, the CCPA decided In re Abele and Marshall {FN35: 684 F.2d 902, 214 USPQ 682 (1982)} .It used the two-step test first proposed in Freeman and modified in Walter,discussed above. As described in a later decision:

It is first determined whether a mathematical algorithm is recited directly or indirectly in the claim. If so, it is next determined whether the claimed invention as a whole is no more than the algorithm itself; that is, whether the claim is directed to a mathematical algorithm that is not applied to or limited by physical elements or process steps. Such claims are nonstatutory. However, when the mathematical algorithm is applied in one or more steps of an otherwise statutory process claim, or one or more elements of an otherwise statutory apparatus claim, the requirements of Section 101 are met. {FN36: Arrhythmia Research v. Corazonix, 958 F.2d 1053, 1058, 22 USPQ2d 1033, 1037 (Fed. Cir. 1992)}

Abele had invented a technique for enhancing images such as would be produced using a CAT scanner. Of particular interest are claims 5 and 6.

Claim 5. A method of displaying data in a field comprising the steps of calculating the difference between the local value of the data at a data point in the field and the average value of the data in a region of the field which surrounds said point for each point in said field, and displaying the value of said difference as a signed gray scale at a point in a picture which corresponds to said data point.

Claim 6. The method of claim 5 wherein said data is X-ray attenuation data produced in a two dimensional field by a computed tomography scanner.

The CCPA ruled that claim 5 did not recite statutory subject matter because it was “directed solely to the mathematical algorithm portion of appellants’ invention” but found that claim 6 did. That is because it requires “X-ray attenuation data.”

Were we to view the claim absent the algorithm, the production, detection and display steps would still be present and would result in a conventional CAT-scan process. Accordingly, production and detection cannot be considered mere antecedent steps to obtain values for solving the algorithm. . . .

We are faced simply with an improved CAT-scan process comparable to the improved process for curing synthetic rubber in Diehr.The improvement in either case resides in the application of a mathematical formula within the context of a process which encompasses significantly more than the algorithm alone. {FN37: 684 F.2d at 908-909, 214 USPQ at 687-688 (citations omitted)}

II.B. A New Clarity: The Alappat Decision

On July 29, 1994, the Court of Appeals for the Federal Circuit (the successor to the CCPA) decided en banc (all the judges of the court hearing the matter, rather than the more-common three-judge panel) on whether a rasterizer for graphical images was statutory subject matter. In re Alappat {FN38: 33 F.3d 1526, 31 USPQ2d 1545 (1994)} was complicated by a question of the court’s jurisdiction because the Commissioner of Patents had stacked the panel of the Board of Patent Appeals and Interferences after the original panel had produced a decision he thought went against the policies of the Patent Office. It also involved how means-plus-function claim elements should be interpreted during a patent examination.

After disposing of these two matters, the Federal Circuit noted that what was being claimed was a machine, albeit one that implemented an algorithm. There was no question that the machine was otherwise statutory subject matter.

However, because of the “mathematical algorithm” exception to statutory subject matter created by the Supreme Court, simply classifying the claimed invention as a machine did not end the analysis. A past court decision, In re Johnson, {FN39: 589 F.2d 1070, 200 USPQ 199 (1978)} stated that the exception “applies equally whether an invention is claimed as an apparatus or process, because the form of the claim is often an exercise in drafting.” {FN40: 589 F.2d at 1077, 200 USPQ at 206}

To determine the scope of the “mathematical algorithm” exception, Judge Rich examined the three Supreme Court cases on the patentability of software-related inventions:

A close analysis of Diehr, Flook, and Benson reveals that the Supreme Court never intended to create an overly broad, fourth category of subject matter excluded from Section 101. Rather, at the core of the Court’s analysis in each of these cases lies an attempt by the Court to explain a rather straightforward concept, namely, that certain types of mathematical subject matter, standing alone, represent nothing more than abstract ideas until reduced to some type of practical application, and thus that subject matter is not, in and of itself, entitled to patent protection. . . .

Given the foregoing, the proper inquiry in dealing with the so called mathematical subject matter exception to Section 101 alleged herein is to see whether the claimed subject matter as a whole is a disembodied mathematical concept, whether categorized as a mathematical formula, mathematical equation, mathematical algorithm, or the like, which in essence represents nothing more than a “law of nature,” “natural phenomenon,” or “abstract idea.” If so, Diehr precludes the patenting of that subject matter. {FN41: 33 F.3d at 1543, 31 USPQ2d at 1556-1557}

The court concluded that this was not the case in Alappat’s claimed invention, and so the “mathematical algorithm” exception for statutory subject matter did not apply.

The decision of the Board had also stated that one of Alappat’s claims was unpatentable merely because it “reads on a general purpose digital computer ‘means’ to perform the various steps under program control.” The Board decided that because the claim read on a programmed digital computer, it could be treated as a method claim rather than an apparatus claim.

The court found no basis for software-based inventions running on programmed general purpose computers to be per se unpatentable.

We have held that such programming creates a new machine, because a general purpose computer in effect becomes a special purpose computer once it is programmed to perform particular functions pursuant to instructions from program software.

Under the Board majority’s reasoning, a programmed general purpose computer could never be viewed as patentable subject matter under Section 101. This reasoning is without basis in the law. The Supreme Court has never held that a programmed computer may never be entitled to patent protection. Indeed, the Benson court specifically stated that its decision therein did not preclude “a patent for any program servicing a computer.” Consequently, a computer operating pursuant to software may represent patentable subject matter, provided, of course, that the claimed subject matter meets all of the other requirements of Title 35. In any case, a computer, like a rasterizer, is apparatus not mathematics. {FN42: 33 F.3d at 1545, 31 USPQ2d at 1558 (citations omitted)}

Alappat allowed the Federal Circuit to restate and clarify its past decisions on whether software-related inventions are patentable. In particular, it is clear that a programmed general purpose computer must be regarded as a specialized piece of hardware both for determining whether a claim is drawn to statutory subject matter and when determining whether the invention is novel and nonobvious. It is also clear that the “mathematical algorithm” exception to statutory subject matter first discussed by the Supreme Court in Benson is limited to abstract mathematical concepts, not mathematics applied to a practical application. Machines, even though they carry out mathematical operations, are patentable.

This really did not differ substantially from the Patent Office’s practice. The time was long past when the Office rejected an application just because it was a software-related invention. There were over 10,000 patents that could be considered software-related at the time of Alappat.But the Office position had swung back and forth on the patentability of software-related inventions. Alappat restricts the Patent Office from treating software-related inventions more strictly under Section 101 than other inventions.

It is interesting to compare the Federal Circuit decision inAlappat with the CCPA decision in Benson, decided in 1971 and the first of the cases we’ve discussed here. Although the Supreme Court eventually held that Benson did not claim statutory subject matter, the CCPA thought differently.

Realistically, the process of claim 13 has no practical use other than the more effective operation and utilization of a machine known as a digital computer. It seems beyond question that the machines – the computers – are in the technological field, are a part of one of our best-known technologies, and are in the “useful arts” rather than the “liberal arts,” as are all other types of “business machines,” regardless of the uses to which their users may put them. How can it be said that a process having no practical value other than enhancing the internal operation of those machines is not likewise in the technological or useful arts? {FN43: 441 F.2d 682, 688, 169 USPQ 548, 553 (1971)}

Both decisions were written by Judge Giles Rich, who, after serving on a federal court longer than any other judge, saw his position in Benson become the accepted law regarding the patentability of software-based inventions and other methods used with computers. Whether something has a particular use in the technological arts (has “utility”) is what now separates patentable methods from abstract and unpatentable mathematical algorithms.

II.C. After Alappat

In In re Warmerdam, {FN44: 33 F.3d 1354, 31 USPQ2d 1754 (1994)} the invention was a method and apparatus for controlling the motion of objects and machines, such as robotic machines, to avoid collision with other moving or fixed objects. The technique required determining the shape and position of the edges of the objects to be avoided. The prior art taught that collision avoidance can be simplified by assuming that the objects are larger and more regularly shaped than they actually are. This can be done by treating the object as if it were a circle or sphere (called a bubble) of sufficient size to enclose the object, and by assuming that any motion that impinges upon the bubble would produce a collision. The invention was a refinement of prior art bubble systems. The positions of objects were determined by measuring the locations of artificial circular boundaries, but the measurement process did not end if the technique determined that the circular boundary would be violated in a potential collision. Instead, if a potential collision was detected, the determination of the boundary position was further refined by replacing the bubbles with smaller bubbles.

The decision refers to the two-part Freeman-Walter-Abele test discussed above but points out a difficulty with the test:

The difficulty is that there is no clear agreement as to what is a “mathematical algorithm”, which makes rather dicey the determination of whether the claim as a whole is no more than that. An alternative to creating these arbitrary definitional terms which deviate from those used in the statute may lie simply in returning to the language of the statute and the Supreme Court’s basic principles as enunciated in Diehr, and eschewing efforts to describe nonstatutory subject matter in other terms. {FN45: 33 F.3d at 1359, 31 USPQ2d at 1758 (citations omitted)}

The court then determined that Warmerdam’s claimed method merely “involves no more than the manipulation of abstract ideas.” Any physical steps, such as measuring positions, were simply data gathering for the algorithm, and that had been held in a prior case insufficient to make a claim patentable. One of Warmderdam’s claims was for a machine implementing the method, and the court found that claim recited statutory subject matter. In other words, the claim for an applied concept was patentable, but a claim for an abstract concept wasn’t.

II.D. The Patent Office’s Guidelines

On June 2, 1995, following hearings on whether, and how, software-based inventions should be protected by patents, the Patent Office issued proposed guidelines {FN46: 60 Fed. Reg. 28778 (1995)} for its examiners on how to determine whether a claimed software-based invention was statutory subject matter. Following public comments, final guidelines {FN47: 61 Fed. Reg. 7478 (1996)} became effective on February 28, 1996. The Guidelines are the Patent Office’s understanding of the various court decisions discussed previously and established procedures to be followed by patent examiners in the handling of patent applications for software-based inventions.

These Guidelines do not have the force of a Patent Office regulation, because Congress has given the Patent Office regulatory authority limited to the way proceedings are conducted in the Patent Office.

The theme of the Guidelines is that statutory subject matter for software-based inventions is based on the utility of the claimed invention.

The subject matter sought to be patented must be a “useful” process, machine, manufacture or composition of matter, i.e., it must have a practical application. The purpose of this requirement is to limit patent protection to inventions that possess a certain level of “real world” value, as opposed to subject matter that represents nothing more than an idea or concept, or is simply a starting point for future investigation or research. Accordingly, a complete disclosure should contain some indication of the practical application for the claimed invention, i.e., why the applicant believes the claimed invention is useful.

The utility of an invention must be within the “technological” arts. A computer-related invention is within the technological arts. A practical application of a computer-related invention is statutory subject matter. This requirement can be discerned from the variously phrased prohibitions against the patenting of abstract ideas, laws of nature or natural phenomena. An invention that has a practical application in the technological arts satisfies the utility requirement. {FN48: 61 Fed. Reg. at 7480} . . .

The subject matter courts have found to be outside the four statutory categories of invention is limited to abstract ideas, laws of nature and natural phenomena. While this is easily stated, determining whether an applicant is seeking to patent an abstract idea, a law of nature or a natural phenomenon has proven to be challenging. These three exclusions recognize that subject matter that is not a practical application or use of an idea, a law of nature or a natural phenomenon is not patentable.

Courts have expressed a concern over “preemption” of ideas, laws of nature or natural phenomena. The concern over preemption serves to bolster and justify the prohibition against the patenting of such subject matter. In fact, such concerns are only relevant to claiming a scientific truth or principle. Thus, a claim to an “abstract idea” is non-statutory because it does not represent a practical application of the idea, not because it would preempt the idea. {FN49: 61 Fed. Reg. at 7481}

The Guidelines give examples showing how the test of utility arguably reconciles all the past court decisions on when a software-based invention is statutory subject matter. They also make a procedural change that may substantially lower the number of statutory subject matter rejections – they require the examiner to address the novelty and nonobviousness of a claim even if it has been rejected as nonstatutory subject matter. A statutory subject matter rejection now results in additional work for the examiner and is not a quick way to dispose of the application.

Next section: Business Methods

[On June 19, 2014, the Supreme Court decided Alice v. CLS Bank, which substantially changed, and continues to change, the discussion below.]

II. Trying To Draw the Line

II.A. After Diehr

II.B. A New Clarity: The Alappat Decision

II.C. After Alappat

II.D. The Patent Office’s Guidelines

[On June 19, 2014, the Supreme Court
decided Alice v. CLS Bank,
which substantially changed, and continues to
change, the discussion below.]