Application of Diehr
Decision Date | 18 October 1979 |
Docket Number | Appeal No. 79-527. |
Citation | 602 F.2d 982 |
Parties | Application of James R. DIEHR, II, and Theodore A. Lutton. |
Court | U.S. Court of Customs and Patent Appeals (CCPA) |
Robert E. Wickersham, San Francisco, Cal. (Owen, Wickersham & Erickson, San Francisco, Cal.), attys. of record, for appellants.
Joseph F. Nakamura, Washington, D. C., for the Commissioner of Patents; Thomas E. Lynch, Washington, D. C., of counsel.
Before MARKEY, Chief Judge, RICH, BALDWIN, and MILLER, Judges, and COWEN,* Senior Judge.
This appeal is from the decision of the Patent and Trademark Office (PTO) Board of Appeals (board) affirming the rejection of claims 1-11, all claims in appellants' application serial No. 602,463, filed August 6, 1975, entitled "Direct Digital Control of Rubber Molding Presses."1 The claims have been rejected under 35 U.S.C. § 101 as being drawn to nonstatutory subject matter. We reverse.
Appellants claim a method for operating molding presses used in the manufacture of rubber articles. More specifically, appellants' method produces molded articles which are properly cured, in that their method insures that the articles remain in the press for a period of time sufficient to insure that they are not overprocessed or underprocessed.
According to appellants' specification, achieving a perfect cure depends upon several factors, including the thickness of the article to be molded, the temperature of the molding press, and the amount of time that the article is allowed to remain in the press. These factors are related by the Arrhenius equation,2 which appellants acknowledge has always been used to calculate the cure time in rubber molding processes.
From a reading of appellants' specification and their brief before this court, it appears that they characterize their contribution to the art as residing in the step of repeatedly or constantly measuring the actual temperature in the mold. These temperature measurements are then used to calculate the cure time by repeatedly using the Arrhenius equation to arrive at the actual cure time, rather than by the conventional method which uses a single calculation using that equation based upon the temperature nominally set by a thermostat which controls the heater in the molding press. The conventional method is inherently inaccurate because the temperature value used in the equation is rarely, if ever, the true temperature in the mold environment.
Claim 1 is representative and reads:
The other claims are similar. Claim 11 does not recite the use of a computer to do the calculating, but, as we shall explain, we find this fact to be of no moment.
The examiner rejected the claims because he believed that the only non-conventional claim steps "define a computer program for taking repeated temperature measurements from the mold and calculating cure time in response to said measurement data." On this basis, he decided that appellants were claiming a computer program, "subject matter to which the Supreme Court has declined to extend patent protection absent a considered action by Congress."
The board agreed with the examiner. It dismissed appellants' argument that no computer program was disclosed in the specification, citing an admission to the contrary made by appellants during prosecution.3 The board was aware of the then newly announced Supreme Court decision in Parker v. Flook, 437 U.S. 584, 98 S.Ct. 2522, 57 L.Ed.2d 451, 198 USPQ 193 (1978) (hereinafter Flook), and made use of it in support of its decision to affirm the rejection.
The board, in its examination of claim 1, perceived the only "non-programming" step to be "constantly determining the temperature (Z) of the mold," and stated that according to appellants' specification, in "Background of the Invention," it was old in the art. The board analyzed the other steps recited in claim 1 as being directed to gathering data for use in the recited formula or as "post solution activity," which, according to Flook, would not render the claims statutory. The board concluded that appellants' system involves an algorithm solving a mathematical problem in the sense involved in Flook.
After similarly analyzing the remainder of the appealed claims, the board concluded as follows:
Appellants argue that they have claimed a process which is basically chemical and physical in nature, not a computer program or the type of mathematical algorithm involved in Flook. They do, however, as they must, acknowledge that calculations according to a recited formula are explicitly involved in the claimed process.
They strenuously take issue with the factual conclusion made by both the examiner and the board that their step of continuously measuring the temperature in the mold cavity is old in the art. They attribute this error to a misreading of their specification and assert that they are the first to employ this step in the molding process.
Appellants also say that the PTO has erred by dissecting their claims into what the PTO considers to be novel and non-novel elements in order to wrongfully conclude that they are claiming a computer program. They assert that the Supreme Court has never placed a blanket prohibition on the patenting of computer programs and, consequently, that the labeling of an invention as a computer program is not a proper method by which to reject a claim under § 101.
Finally, they argue that there is no prohibition on the patenting of all inventions which involve the use of a computer and that their invention, while it does involve the use of a mathematical formula, does not claim the mathematical formula in a non-statutory manner. They say that their claims, as entireties, do not define methods of solving a mathematical problem and are statutory under this court's test applied in In re Johnson, 589 F.2d 1070, 200 USPQ 199 (CCPA 1978).
OPINIONA claim drawn to a process or method does not depend for its validity under 35 U.S.C. § 101 on whether a computer is involved. If the claim is drawn to subject matter, which is otherwise statutory, it does not become nonstatutory merely because a computer is involved in its execution. Thus, the fact that it may be said that an invention is drawn to a computer program or involves a computer is an observation which does nothing to aid in the determination of compliance with § 101. In re Gelnovatch, 595 F.2d 32, 36-37, 201 USPQ 136, 141 (Cust. & Pat.App.1979); In re Johnson, 589 F.2d 1070, 1081, 200 USPQ 199, 210-11 (Cust. & Pat.App.1978); In re Chatfield, 545 F.2d 152, 155, 191 USPQ 730, 733 (Cust. & Pat.App.1976). Therefore, any rejection which is based solely on the determination that a computer or computer program is involved is insupportable because it is overly broad and must be reversed as being without basis in the law.
The Supreme Court, in the two instances in which it has addressed itself to the § 101 issue in cases where computer-related inventions are involved, has not said anything to the contrary. Our view is not in any way inconsistent with these precedents.
In Gottschalk v. Benson, supra n. 4 (hereinafter Benson), the Court addressed a claimed method for converting binary coded decimal (BCD) numbers to equivalent pure binary numbers. The Court observed that the claims were 409 U.S. at 64, 93 S.Ct. at 254, 175 USPQ at 674. The Court determined that the claimed method was a mathematical algorithm, i. e., a "procedure for solving a given type of mathematical problem," and further, that Id. at 65, 67, 93 S.Ct. at 255, 175 USPQ at 674, 675.
The Court reviewed long-standing precedent to the effect that while an abstract principle or idea, or a scientific truth, or its equivalent mathematical expression is...
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