Application of de Castelet

• Decision Date: 06 October 1977
• Docket Number: Patent Appeal No. 76-699.
• Citation: 562 F.2d 1236
• Court: U.S. Court of Customs and Patent Appeals (CCPA)
• Parties: Application of Gaetan De Coye de CASTELET.

562 F.2d 1236

Application of Gaetan De Coye de CASTELET.

Patent Appeal No. 76-699.

United States Court of Customs and Patent Appeals.

October 6, 1977.

Robert J. Frank, Stevens, Davis, Miller & Mosher, Arlington, Va. attorneys of record, for appellant.

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

Before MARKEY, Chief Judge, and RICH, BALDWIN, LANE and MILLER, Judges.

MARKEY, Chief Judge.

Appeal from the decision of the Patent and Trademark Office Board of Appeals (board), affirming the rejection of claims 5-7, all the claims in application serial No. 68,507, filed August 31, 1970, entitled "Method of Generating a Curve, Applicable to Tracing Machines or Machine Tools." We affirm.

The Invention

De Castelet's invention relates to a method of generating a curve or family of curves, employing a computer in conjunction with drafting and milling machines. The invention employs these principles: (1) a curve may be represented by four points defining two straight line tangents to the ends of the curve, and (2) a curve can be represented by a transformed base-of-reference curve, by transforming coordinates of points representing a unit or base curve into a coordinate system of a curve to be generated.

In de Castelet's overall system:

data are inputed to computer 10 through control boards 19 and 20. Calculations, using the inputed data and pursuant to stored programs, are performed by computer 10. Computer 10 also receives milling machine 11 position information from encoder 13 and drafting machine 12 position information from encoder 14. Based upon the results of its calculations and information received from encoders 13 and 14, computer 10 generates speed-change signals for controlling position motor driving shafts 21-25. The net result of the operation is a machined surface (milling machine 11) or a drawing (drafting machine 12) which corresponds to a desired curve formation.

According to de Castelet's method, curves to be generated are first broken down into a series of successive arcs. Those arcs can be defined by two straight line tangents, for example, AM and BN in the following illustrations:

The data inputed to the computer constitutes the X, Y, and Z Cartesian coordinates of points A, M, N, and B. The computer, pursuant to a stored program, treats each arc so defined as though it were the transformed curve of a base curve inscribed within and between two opposite vertices of a unit cube. The coordinates of that base curve are transformed by computer calculations, according to the following transformation equations, into coordinates of the curve to be generated:

De Castelet claims:

7. A machine method of generating a curve from data supplied to a computer in the form of coordinates of points defining two given segments of tangents to the curve to be generated extending from the end of and subtended by said curve for controlling numerical control system type model forming means, wherein data, in the form of electrical signals representing a table of coordinates of points, of characteristics of a base curve inscribed on a unit-cube between two opposite vertices of said unit-cube is stored in a memory bank of said computer and said computer is programmed (1) to treat electrical signals representing a given arc, defined by the coordinates of the ends of two segments of tangents extending from and subtended by the ends of said given arc, as the transformed curve of said base curve, wherein said ends are considered as the transformed points of vertices of said unit-cube and (2) to calculate and transmit to the control system of said model forming means electrical signals representing the coordinates of a sequence of points of successive ones of said given arc defining said curve to be generated, said computer thereafter automatically performing the steps of:

(a) transforming the electrical signals representing said coordinates of points defining two given segments of tangents to said curve to be generated by program (1) to define a corresponding change in reference coordinates with respect to the characteristics of the stored base curve;

(b) calculating the sequence of coordinates of the current points of the transformed base curve of program (1) through the change in reference coordinates obtained from step (a); and

(c) transmitting electrical signals representing said sequence of coordinates calculated in step (b) from said computer to said model forming means by program (2).

5. The method according to claim 7, wherein step (b) further comprises calculating said sequence of coordinates of the current points according to the following equations:

wherein

Xw, Yw and Zw are the coordinates of a current point of each arc of the curve to be generated;

Xa, Ya and Za are the coordinates of the point of origin of the arc of the curve to be generated; and

x, y and z are the coordinates of a current point of the base curve, and

are the respective projections on the X, Y and Z axes of the two segments of tangents to the arc of the curve to be generated and of the segment joining the ends of said two segments opposing the point of tangency.

6. The method according to claim 7, wherein step (c) comprises the further step of interpolating between adjacent points of said sequence of points obtained by program (2) according to a calculation of the director cosines of the tangents of each one of said sequence of points.

The Board

The board, citing Gottschalk v. Benson, 409 U.S. 63, 93 S.Ct. 253, 34 L.Ed.2d 273, 175 USPQ 673 (1972), stated that "where the claimed novelty involves a formula, equation or algorithmic process and has no substantial practical application except in connection with a digital computer, a patent to such would in practical effect be a patent on the algorithm itself, and should not be granted."

Acknowledging that independent claim 7 does not recite a specific algorithm, equation, or mathematical formula, the board nevertheless found an algorithmic process contained therein, and concluded that, because the apparatus was known, any novelty in the claims resulted from that algorithmic process. That novelty, the board said: "is of the same nature as that which is condemned in Benson."

The board was of the opinion that patenting the present claims would, in effect, preempt the algorithmic process despite the fact that "they recite a machine environment, a particular art or a particular end use."

The Issue

As in In re Chatfield, 545 F.2d 152, 191 USPQ 730 (Cust. & Pat.App.1976), cert. denied, 46 U.S.L.W. 3203 (Oct. 4, 1977), the sole issue before us is whether the particular claims on appeal define statutory subject matter under 35 U.S.C. § 101.¹

OPINION

The Board's Interpretation of Benson

Though we agree with the board's ultimate conclusion, and with its reference to Benson as precluding patentability of claims to a mathematical equation, we disagree with several of the board's expressions of the applicable law. Initially, the board found:

The thrust of the decision in Benson to be that computer programs or program implemented algorithms are not patentable subject matter at least until such time as the Congress acts otherwise.

That "computer programs" are not patentable is not the "thrust" of Benson. As the Court cautioned:

It is said that the decision precludes a patent for any program servicing a computer. We do not so hold. 409 U.S. at 71, 93 S.Ct. at 257, 175 USPQ at 676.

and as the Court's characterization of Benson in Dann v. Johnston, 425 U.S. 219, 224, 96 S.Ct. 1393, 1396, 47 L.Ed.2d 692, 189 USPQ 257, 259 (1976) confirmed:

Our limited holding * * * was that respondent's method was not a patentable "process" as that term is defined in 35 U.S.C. § 100(b). Citations omitted.

Absent contrary directions, no basis exists for a moratorium on protection of inventions embodying or using computer programs. Such broad prohibition could subject meritorious statutory inventions to unabatable piracy, and could forestall invention disclosure, the hallmark of the patent system, until Congress chooses to act.

We disagree, also, with the breadth of the board's succeeding comment:

Stated another way, where the claimed novelty involves a formula, equation or algorithmic process and has no substantial practical application except in connection with a digital computer, a patent to such would in practical effect be a patent on the algorithm itself, and should not be granted.

That second comment is not a restatement of the board's preceding comment, insofar as it envisions the question of statutory subject matter as residing in a "claimed novelty" and its practical application. As a majority indicated in Chatfield, supra, claim dissection and comparison against prior art to determine a limited "claimed novelty" is not proper. What an applicant chooses to encompass by the whole of his claims comprises his "claimed novelty." There is no 35 U.S.C. § 103 rejection before us, based on the view that it would have been obvious to employ de Castelet's equations in apparatus described by the examiner as old.²

The board's focus on practical applications for the "claimed novelty" springs from the "nutshell" holding in Benson:

It is conceded that one may not patent an idea. But in practical effect that would be the result if the formula for converting BCD numerals to pure binary numerals were patented in this case. The mathematical formula involved here has no substantial practical application except in connection with a digital computer, which means that if the judgment below is affirmed, the patent would wholly pre-empt the mathematical formula and in practical effect would be a patent on the algorithm itself. 409 U.S. at 71-72, 93 S.Ct. at 257, 175 USPQ at 676.

That language is interpreted by the solicitor and the board as foreclosing patentability of the appealed claims because, as de Castelet admitted at oral argument, the...