Application of Tarczy-Hornoch

• Decision Date: 27 June 1968
• Docket Number: Patent Appeal No. 7910.
• Citation: 397 F.2d 856
• Parties: Application of Zoltan TARCZY-HORNOCH.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

397 F.2d 856 (1968)

Application of Zoltan TARCZY-HORNOCH.

Patent Appeal No. 7910.

United States Court of Customs and Patent Appeals.

June 27, 1968.

Flehr, Hohbach, Test, Albritton & Herbert, San Francisco, Cal. (John P. Sutton, San Francisco, Cal., of counsel), for appellant.

Joseph Schimmel, Washington, D. C. (Fred W. Sherling, Washington, D. C., of counsel), for the Commissioner of Patents.

Before WORLEY, Chief Judge, and RICH, SMITH, ALMOND, and KIRKPATRICK,^* Judges.

RICH, Judge.

This appeal is from a decision of the Patent Office Board of Appeals¹ affirming the examiner's rejection of claims 31-35 and 40 in appellant's application serial No. 23,739, filed April 21, 1960, entitled "Pulse Sorting Apparatus and Method." Claims 16-28, 29, 30, and 36-39 have been allowed.

The invention of the claims on appeal is a method for sorting or counting electrical pulses, effective in counting of such pulses of varying amplitudes even at extremely high repetition rates, i. e., at rates greater than 50,000,000 (50 megacycles) per second. Appellant's method envisions the use of a multistage apparatus. The first stage counts every pulse within its capacity. Cancelling orders in the form of "inhibit" pulses are then sent to each of the succeeding stages to prevent another counting of those same pulses. Should the initial stage be unable to handle a pulse, no cancellation order is given the second stage. The pulse, then, is counted by the second stage. Thereupon, cancellation orders are sent to succeeding stages.

Claim 31 is illustrative:

31. In a method for sorting a plurality of input pulses by utilizing a plurality of serially connected stages adapted to accept pulses, causing each input pulse to be applied to each stage sequentially in time, generating an inhibit pulse in each stage which accepts an input pulse and applying the inhibit pulse to each succeeding stage in substantial coincidence with the input pulse so that the input pulse is canceled to thereby prevent registration of the same input pulse in a succeeding stage.

The examiner allowed appellant's apparatus claims. However, he rejected all the method claims on the ground that they merely defined the function of appellant's apparatus. In appeal to the board, appellant argued mainly against the propriety of the "function of the apparatus" rejection. However, this point, in the board's opinion, was foreclosed: "The previous decisions by the Court of Customs and Patent Appeals are binding on us until overruled." The board did reverse the rejection of two of the method claims on a showing that the defined methods were capable of performance by apparatus other than that disclosed. The rejection of the other claims was affirmed.

The issue, therefore, is whether a process claim, otherwise patentable, should be rejected because the application, of which it is a part, discloses apparatus which will inherently carry out the recited steps. There is no contention that the claims on appeal can be saved by the "exceptions" to the doctrine, exempting claims for those processes capable of performance either manually or by another, dissimilar apparatus. See In re Parker, 79 F.2d 908, 23 CCPA 721 (1935).

We have determined that our decisions requiring the rejection of such claims are justified neither by history nor policy. Today we overrule those decisions.

The expression "function of an apparatus"² is our legacy of 19th century controversy over the patentability of processes. Early cases proscribed a kind of overweening claim in which the desirable result first effected by an invention was itself appropriated by the inventor. Two notorious examples will suffice.

Wyeth had obtained a patent for a machine for cutting ice into blocks of uniform size. His specification read: "It is claimed as new, to cut ice of a uniform size, by means of an apparatus worked by any other power than human. The invention of this art, as well as the particular method of the application of the principle, are claimed by * * * Wyeth." In an infringement suit, in 1840, Justice Story, sitting on circuit, held the claimed matter "unmaintainable" in point of law and a patent, granted for such, void as for an abstract principle and broader than the invention. "A claim broader than the actual invention of the patentee is, for that very reason, upon the principles of the common law, utterly void, and the patent is a nullity." Wyeth v. Stone, Fed.Cas. No. 18,107, 1 Story 273, 285-286 (C.C.Mass.1840).

The first comprehensive review of process patents by the Supreme Court was occasioned some thirteen years later by Morse's attempt to enforce his telegraph patent. Chief Justice Taney wrote the opinion for the Court, which held several apparatus claims valid and infringed. O'Reilly v. Morse, 56 U.S. (15 How.) 62, 14 L.Ed. 601 (1853). The only process claim in the Morse patent was the subject of separate discussion. The claim read:

Eighth. I do not propose to limit myself to the specific machinery or parts of machinery described in the foregoing specification and claims; the essence of my invention being the use of the motive power of the electric or galvanic current, which I call electro-magnetism, however developed for marking or printing intelligible characters, signs, or letters, at any distances, being a new application of that power of which I claim to be the first inventor or discoverer.

The Chief Justice commented:

If this claim can be maintained, it matters not by what process or machinery the result is accomplished. For aught that we now know some future inventor, in the onward march of science, may discover a mode of writing or printing at a distance by means of the electric or galvanic current, without using any part of the process or combination set forth in the plaintiff\'s specification. His invention may be less complicated — less liable to get out of order — less expensive in construction, and in its operation. But yet if it is covered by this patent the inventor could not use it, nor the public have the benefit of it without the permission of this patentee.

* * * * * *

No one we suppose will maintain that Fulton could have taken out a patent for his invention of propelling vessels by steam, describing the process and machinery he used, and claimed under it the exclusive right to use the motive power of steam, however developed, for the purpose of propelling vessels.³

The claim was, of course, held invalid because it did not correspond in scope to Morse's invention. "Professor Morse * * * has not discovered that the electro-magnetic current, used as motive power, in any other method and with any other combination, will do as well."⁴ The Chief Justice also summarized the law in this area:

Whoever discovers that a certain useful result will be produced, in any art, machine, manufacture, or composition of matter, by the use of certain means, is entitled to a patent for it; provided he specifies the means he uses in a manner so full and exact, that any one skilled in the science to which it appertains, can, by using the means he specifies, without any addition to, or subtraction from them, produce precisely the result he describes. And if this cannot be done by the means he describes, the patent is void. And if it can be done, then the patent confers on him the exclusive right to use the means he specifies to produce the result or effect he describes, and nothing more. And it makes no difference, in this respect, whether the effect is produced by chemical agency or combination; or by the application of discoveries or principles in natural philosophy known or unknown before his invention; or by machinery acting altogether upon mechanical principles. In either case he must describe the manner and process as above mentioned, and the end it accomplishes. And any one may lawfully accomplish the same end without infringing the patent, if he uses means substantially different from those described.

The latter exposition apparently cast some doubt on the validity of claims for processes generally, whether mechanical or not. See Risdon Locomotive Works v. Medart, 158 U.S. 68, 75, 15 S.Ct. 745, 39 L.Ed. 899 (1894); Tilghman v. Proctor, 102 U.S. 707, 726, 26 L.Ed. 279 (1880); O'Reilly v. Morse, 56 U.S. (15 How.) 62 (1853) (Grier, J., dissenting). It shortly became clear, however, that the patentability of chemical processes at least had been unaffected. In Corning v. Burden, 56 U.S. (15 How.) 252, 14 L.Ed. 683 (1853), a case decided after Morse but during the same term, the issue was whether Burden's ambiguous claim was properly interpreted as for a process. The patent was ostensibly directed toward a machine for rolling puddle balls in the manufacture of iron. But the lower court had instructed the jury that the patent was for a new method of converting puddle balls to blooms "by continuous pressure and rotation * * * between converging surfaces." The Supreme Court held the claim limited to the machine, since, in the Court's mind, a contrary decision would call into question the validity of the claim.⁵ In an influential aside on the way to this conclusion, Justice Grier, for a unanimous Court, discussed the patentability of processes:

A process, eo nomine, is not made the subject of a patent in our act of Congress. It is included under the general term "useful art." An art may require one or more processes or machines in order to produce a certain result or manufacture. The term machine includes every mechanical device or combination of mechanical powers and devices to perform some function and produce a certain effect or result. But where the result or effect is produced by chemical action, by the operation or application of some element or power of nature, or of one substance to another, such modes, methods, or operations, are called processes. A new process is usually the result of a discovery; a machine, of invention. The arts of tanning, dyeing, making water-proof cloth, vulcanizing

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