Application of Benson
| Decision Date | 06 May 1971 |
| Docket Number | Patent Appeal No. 8376. |
| Citation | 441 F.2d 682 |
| Parties | Application of Gary R. BENSON and Arthur C. Tabbot. |
| Court | U.S. Court of Customs and Patent Appeals (CCPA) |
Robert O. Nimtz, attorney of record, for appellant.
S. Wm. Cochran, Washington, D. C., for the Commissioner of Patents. Jere W. Sears, Washington, D. C., of counsel.
Before RICH, ALMOND, BALDWIN and LANE, Judges, and RE, Judge, United States Customs Court, sitting by designation.
This appeal is from the January 31, 1968 decision of the Patent Office Board of Appeals1 affirming the rejection of claims 8 and 13, the only claims remaining in appellants' application serial No. 315,050, filed October 9, 1963, and assigned to Bell Telephone Laboratories Incorporated, entitled "Conversion of Numerical Information." We reverse.
The invention of the appealed claims is in the field of computer technology and relates to data processing systems. The claims are both directed to methods. The opening sentence of the specification states that the invention relates to the processing of data by program and more particularly to the programmed conversion of numerical information. The particular conversion to which both of the claims on appeal are directed is the conversion of "binary coded decimal" (BCD) numerical information in the form of "signals" (claim 8) or "representations" (claim 13) into binary number signals or representations, respectively. Though we presume this statement would be an adequate explanation to those skilled in the computer art, for the benefit of those not so skilled we will elucidate further.
Most digital computers perform their computing operations on information in binary form, a system of representation having only two elementary constituents, called "bits," indicated by "1" and "0". Men, on the other hand, are accustomed to quantitative information in decimal form and, for computer to work on or utilize it, it must be converted into binary form. It has become a general practice to make this conversion in two stages: from decimal to BCD; from BCD to binary. The following table shows the ten familiar decimal digits and their binary equivalents expressed in groups of four bits:
decimal binary decimal binary
0 0000 5 0101
1 0001 6 0110
2 0010 7 0111
3 0011 8 1000
4 0100 9 1001
In BCD notation the decimal number 53 would be represented as 0101 0011, the binary form of 5 followed by the binary form of 3, each group of four bits being a BCD "digit." Although the BCD notation is in terms of "1" and "0" only and can be represented in a binary machine, it is not in a form in which the machine can utilize it to perform its computing operations. In true binary the decimal number 53 is represented by 110101. The problem is to convert the intermediate BCD representation into the true binary. Various ways of doing this were known prior to appellants' invention. They claim to have discovered a better and simpler way of doing it having various advantages recited in the specification such as reducing the number of steps required to be taken, dispensing with the repetitive storing and retrieval of partially converted information, eliminating the need for interchanging signals among various equipment components and the need for auxiliary equipment, and decreasing the chance of error.
The digital computer which is to receive the information in BCD form can itself be programmed to convert it into binary form. The specification gives as an illustrative example an actual program for converting a binary-coded decimal number to ordinary binary and apparatus is described in conventional block diagram form in which the program can be carried out.
The two claims on appeal read as follows:
As to these claims, no prior art is cited and no question is raised as to utility, novelty, or unobviousness. The asserted advantages and the implicit advance resulting therefrom in the data-processing art, have not been questioned.
The first problem it is necessary to settle is what the ground or grounds of rejection is or are. Appellants' brief correctly states, "the only explicit rejection outstanding against claims 8 and 13 is the rejection on the grounds sic that these claims are directed to subject matter not embraced by Section 101." Study of the two Examiner's Answers makes it clear that that was the only ground he relied on. In his first Answer the examiner specified that "all grounds of rejection are withdrawn except the art rejections and nonstatutory subject matter rejections." We no longer have any art rejections. In his second Answer, on remand, he said:
In summary, the remaining ground or rejection of claims 8 and 13 now in the case is that these claims are directed to non-statutory subject matter.
In reciting what the rejection was, the board opinion says:
Claims 8 and 13 stand rejected as for subject matter not embraced by 35 U.S.C. 101 in that they set forth "mental processes" and "mathematical steps," neither being an "art" as construed by a long line of decisions * * *.
Nowhere does the board opinion indicate that any new ground of rejection is being made.
In discussing appellants' arguments traversing the contention that the claims are directed to non-statutory subject matter, the board, answering the argument that "The only way applicants' claims can be construed to include mental steps is to construe them contrary to the disclosure rather than in accord therewith," made the following somewhat off-the-point observations:
We are not convinced by appellants\' arguments to the effect that the disclosure in an application, not the claims thereof, should be the proper basis for judging whether the claims are drawn to subject matter outside the statute. Certainly a claim which embraces that which was already in the prior art or was obvious therefrom could not be sustained under 35 U.S.C. 102 or 103 merely because there may have been something patentable disclosed in the specification. 35 U.S.C. 112 2d par., 1st sentence requires the claim to point out the subject matter which the applicant regards as his invention so that a claim which is so broad and indistinct as to embrace within its terms subject matter that can not be patented under section 101 of the statute, similarly must be unpatentable. Emphasis ours.
While from that point on in its opinion the board discussed the breadth of the claims and what in its opinion they cover, it never so much as suggested that the claims are "indistinct" or do not point out "the subject matter which the applicant regards as his invention." The board did not again refer to section 112 nor in any way suggest failure of the claims to comply with the second paragraph of that section and merely affirmed the rejection on the ground that the claims, as it read them, were directed to methods which are non-statutory under section 101. It is our opinion that up until the time of the appeal to this court there was only one ground of rejection relied on and that was noncompliance with section 101.
However, apparently out of an abundance of caution and noting the board's reference to section 112 in the above-quoted passage, as well as a similar passage in the Examiner's Answer on Remand,2 appellants' main brief, toward its end, says of the italicized passage in the above quotation from the board's opinion that it could be construed as another example similar to the sections 102 and 103 example preceding, or it could also be construed as an entirely new ground of rejection under section 112, simultaneously deploring the "vagaries of prosecution which leave some of the basic issues in doubt." Appellants thereupon spent a page of their brief stating their reasons why a rejection under the second paragraph of section 112, if such had been made, would be in error. That would seem a cautious thing to do but it does not bring such a rejection into the case unless it...
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Alappat, In re, 92-1381
...operates" and the claim term "reentrant shift register" was construed to mean a "particular apparatus." See In re Benson, 441 F.2d 682, 687, 169 USPQ 548, 552 (CCPA1971) (emphasis in original), rev'd sub nom. Gottschalk v. Benson, 409 U.S. 63, 93 S.Ct. 253, 34 L.Ed.2d 273, 175 USPQ 673 (197......
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...253. The CCPA, however, had interpreted both claims as requiring a computer and had upheld them on that basis, see In re Benson, 58 CCPA 1134, 441 F.2d 682, 687–88 (1971), and the Supreme Court appeared to adopt that assumption. 3. The method claims of the '510 patent state that the supervi......
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Diamond v. Diehr, Ii, 79-1112
...supra , and Parker v. Flook, supra , both of which are computer-related, stand for no more than these long-established principles. In Benson, we held unpatentable claims for an algorithm used to convert binary code decimal numbers to equivalent pure binary numbers. The sole practical appli......
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CLS Bank Int'l v. Alice Corp. Pty.
...at 73-74. The CCPA, however, had interpreted both claims as requiring a computer and had upheld them on that basis, see In re Benson, 441 F.2d 682, 687-88 (CCPA 1971), and the Supreme Court appeared to adopt that assumption. 3. The method claims of the '510 patent state that the supervisory......
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A Field Guide to Intellectual Property
...7. The Telephone Cases, 126 U.S. 1 (1888). 8. Gottschalk v. Benson, 409 U.S. 63, 175 U.S.P.Q. 673, 675 (1972), rev'g. In re Benson, 441 F.2d 682, 169 U.S.P.Q. 548 (CCPA 1971). 9. Id. 10. In re Zierdin, 411 F.2d 1325, 162 U.S.P.Q. 102 (CCPA 1969). 11. In re Hruby, 373 F.2d 997, 153 U.S.P.Q. ......
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Software patent applications directed to business and mathematical processing applications highlight the tension between State Street and Benson.
...at 1544. (41.) See id. at 1543 n.21. Judge Rich was a member of the C.C.P.A. Interestingly, Judge Rich's C.C.P.A. opinion, In re Benson, 441 F.2d 682 (C.C.P.A. 1971), was reversed by the Supreme Court in Gottschalk v. Benson, 409 U.S. 63 (42.) See Alappat, 33 F.3d at 1543. (43.) Id. at 1542......
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