Application of Bernhart

• Decision Date: 20 November 1969
• Docket Number: Patent Appeal No. 8187.
• Parties: Application of Walter D. BERNHART and William A. Fetter.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

163 USPQ 611, 417 F.2d 1395 (1969)

Application of Walter D. BERNHART and William A. Fetter.

Patent Appeal No. 8187.

United States Court of Customs and Patent Appeals.

November 20, 1969.

Christensen, Sanborn & Matthews, Seattle, Wash., attorneys of record, for appellants. Gordon R. Sanborn, Orland M. Christensen, Seattle, Wash., of counsel.

Joseph Schimmel, Washington, D. C., for the Commissioner of Patents. Jere W. Sears, Washington, D. C., of counsel.

Before RICH, Acting Chief Judge, McGUIRE, Judge, sitting by designation, and ALMOND, BALDWIN and LANE, Judges.

LANE, Judge.

This appeal is from the decision of the Patent Office Board of Appeals¹ affirming the examiner's rejection of claims 8, 13 and 18-21 in patent application serial No. 151,909, filed November 13, 1961, entitled "Planar Illustration Method and Apparatus" and disclosing a method of and apparatus for automatically making a two-dimensional portrayal of a three-dimensional object from any desired angle and distance and on any desired plane of projection.

THE DISCLOSURE

The starting point for the method and the input for the apparatus is a set of data defining the three-dimensional positions of various points on or in the object relative to some convenient fixed point, plus information as to which of the various points should be connected by lines. The disclosure provides equations definitive of the geometric relationships between the three-dimensional coordinates of each point of interest and the corresponding two-dimensional coordinates which determine the location of that point on a planar portrayal or drawing to be made. The equations are sufficiently general to allow the resulting drawing to represent a view of the object as projected on any selected plane and as viewed from any point in space. The disclosure then teaches that the original data on point positions and connecting lines can be written in a form acceptable as input to a general purpose digital computer; that the equations disclosed in the application can be used to control the operation of the computer on the input data, i. e. the equations can be programmed into the computer; that an operator can select particular values for certain terms in the programmed equations, thereby determining the kind of portrayal to be produced; that the computer output will be a sequence of signals representative of the locations of points on the desired portrayal; and that those signals can be used to control the operation of a plotting machine which will produce the desired view of the object on paper.

Applicants concede that they did not invent the computer or the plotting machine. Nor do they claim any special method of feeding input data on point positions into the computer. Most importantly, they do not claim as their invention merely a set of equations even though, as we shall later see, those equations were not known in the prior art.

In order to know what the invention is we must, of course, look to the claims which point it out. We find that claims 8 and 18-21 define apparatus and claim 13 defines a method. Apparatus claims 8 and 18 are substantially the same in scope and subject matter; apparatus claims 19-21 are substantially similar. To simplify and clarify the issues here, we consider claim 18 as representative of the first group and claim 19 as representative of the second group. Method claim 13 has a lengthy and somewhat confusing preamble providing antecedents for various terms in the body of the claim. We omit most of the preamble for clarity. The representative claims are therefore as follows:

13. A plotting method * * * comprising:

(a) a first step of programming the computer to compute the position of planar Cartesian coordinate axes in the given plane relative to the given set of object points,

(b) a second step of programming the computer to compute and produce an output defining in sequence the coordinates of the projection of each given point on the plane with reference to the Cartesian coordinate axes, and

(c) the step of applying the computer output to the input of a planar plotting apparatus adapted to provide on a plane a succession of straightline segments that connect between sequential points having positions corresponding to the coordinates computed by the second step.

18. A system for providing a planar illustration of a three dimensional object as seen by an observer from a selected observation point in space comprising: signal means providing a first group of signals representing the three dimensional co-ordinates of the location of the observation point and a series of second groups of signals representing the three dimensional co-ordinates of a series of points of the object, each of said group of signals being referenced to a first-co-ordinate system; electronic digital signal processing means coupled with said signal means and programmed to provide a series of third groups of signals corresponding to the two dimensional coordinates of the intersection of each line of sight from the observation point to each point of the object with a selected plane in said first co-ordinate system; and planar illustration means coupled with said signal processing means and responsive to said series of third groups of signals to provide a planar illustration of the object.

19. A system for providing a drawing of an object comprising in combination: electronic digital computer means programmed to respond to applied signals (xe,ye,ze) and a series of groups of signals (xi,yi,zi) to provide a corresponding series of pairs of output signals (vi,wi) with the relationship between signals (xi,yi,zi) and xe,ye,ze) to the signals (vi,wi) being defined as follows:

where k is a selectable variable;

signal means coupled with said computer means and providing said signals (xi,yi,zi) and (xe,ye,ze) thereto with said signals (Xi,yi,zi) representing the three dimensional co-ordinates of selected points on the object and with said signals (xe,ye,ze) representing the three dimensional co-ordinates of the location of the observation point from which the object is seen; and planar plotting means coupled with said computer means and responsive to said signals (vi,wi) to make a drawing of the object.

THE REJECTIONS

The examiner's first ground of rejection, applied to all the claims here in issue, was insufficient disclosure under the first paragraph of 35 U.S.C. § 112 and Patent Office Rule 71(b). The examiner contended that since applicants had merely set forth equations and asserted that the equations could be readily programmed by programmers of ordinary skill, they had not set forth how the automatic equipment of their invention was to be made, but merely invited programmers to solve applicants' problems. The board reversed this rejection, noting that the statute required only enough information in the disclosure to enable persons of ordinary skill to practice the invention. The board recognized that applicants' equations could be readily programmed into the computer by those skilled in programming, and held that the disclosure was therefore sufficient. See In re Naquin, 398 F.2d 863, 55 CCPA 1428 (1968). Since the board reversed this ground of rejection, it is not in issue here, but we mention it because of its relationship to obviousness, which we shall later discuss.

The apparatus claims were further rejected by the examiner as failing to define a machine within the statutory class (35 U.S.C. § 101) "since for patentability they were predicated on mental steps," citing a patent to Tripp² which, said the examiner, showed that it was old to combine a programmed digital computer with a plotting device. The examiner indicated that the novelty in applicants' claims therefore lay in the equations with which the computer was programmed, and that this is not a structural difference over the prior art. The examiner concluded that since the programming was not structural, the claims were "predicated for patentability on mental steps." As to the method claim, the examiner similarly argued that since the novelty of applicants' claimed invention lay in the particular equations to be solved, the invention is non-statutory, citing Ex parte Meinhardt, 1907 C.D. 238; In re Abrams, 188 F.2d 165, 38 CCPA 945 (1951); In re Yuan, 188 F.2d 377, 38 CCPA 967 (1951); and In re Middleton, 167 F.2d 1012, 35 CCPA 1166 (1948). The board affirmed these rejections, but it reasoned with respect to the apparatus claims that the issues were analogous to the "printed matter" cases such as Ex parte Gwinn, 112 USPQ 439 (PO Bd. App.1955). Regarding these cases, the board said:

The rationale of these cases appears to be that the law does not favor the granting of a patent for non-statutory subject matter by indirection, and this should be applicable to a mathematical formula or an algorithm as well as to printed text, when the real substance of the contribution by its originator clearly is unpatentable in its own right.

Turning to apparatus claims 8 and 18 to 21, we note that the only apparatus recited is the admittedly old computer and plotting machine and the sole distinction presented therein upon which patentability could be predicated is the identification in the claims of the meaning which certain signals represent to the human mind, or the algorithm which the computer is to solve. We find that these claims are founded on non-statutory subject matter.

As to method claim 13, the board rejected applicants' contention that the claim defines a new use of an old machine within the meaning of 35 U.S.C. § 100(b), and ruled that only a new result was defined by the claim, the use being the old use of solving equations and plotting the results.

The board nowhere mentioned "mental steps" in its affirmance of the examiner's rejections based on non-statutory subject matter, but it expressly adopted "the reasons set forth in the Examiner's Answer * * * and not inconsistent herewith." While such a statement tends to...