Application of Toma

• Decision Date: 18 May 1978
• Docket Number: Appeal No. 77-554.
• Citation: 575 F.2d 872
• Parties: Application of Peter P. TOMA.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

575 F.2d 872

Application of Peter P. TOMA.

Appeal No. 77-554.

United States Court of Customs and Patent Appeals.

May 18, 1978.

D. Bruce Prout, Christie, Parker & Hale, Pasadena, Cal., attorneys of record, for appellant; Peter G. Mack, Bacon & Thomas, Arlington, Va., of counsel.

Joseph F. Nakamura, Washington, D. C., for the Commissioner of Patents; Thomas E. Lynch, Washington, D. C., of counsel.

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

BALDWIN, Judge.

This appeal is from the decision of the Patent and Trademark Office (PTO) Board of Appeals (board), modified on reconsideration, sustaining the rejection of claims 1-13, 15-24, 26, 28-36, 40, 41 and 43-56¹ under 35 U.S.C. § 101 as being directed to nonstatutory subject matter. We reverse the rejection of all claims.

The Invention

The invention involves a method of operating a digital computer to translate from a source natural language, e. g., Russian, to a target natural language, e. g., English. The method involves three phases. The dictionary look-up phase establishes the target language meaning of each word in the source text. The syntactical analysis phase identifies syntactical information from the inflection of the word and the position of the word in the source text. The synthesis phase takes the meaning and syntactical information of all of the words of a sentence in the source text and forms a sentence in the target language.

More specifically, the method begins by loading the source text into the memory of a computer. Each source text word is then transformed into a converted source text word. The converted source text word consists of the source text word and coded information. The coded information may include a memory offset address linkage which provides access to a memory location that contains syntactical information and translation for the source text word. The converted source text words which derive from a source text sentence are then synthesized into a target language translation of that sentence. The synthesis correctly establishes both word meaning and word position in the target language sentence.

An important aspect of the invention is the separate treatment given high frequency versus low frequency words. In order to maximize the effective capacity of the core memory of the computer, the low frequency words carry their translation information along with them, while each of the high frequency words carries a memory offset address linkage which allows easy access to its translation information which is stored in the core memory. Thus, the translation information for frequently used words is held in an easily accessible place in the computer rather than along with every occurrence of the word as is done for low frequency words.

While the above description portrays a human analogy of how the claimed invention functions, it must be understood that, in fact, the actual operation of the process by the computer is quite different. From the time that the source text is converted to machine-readable input data until the time that the machine-readable output data is converted to human-readable translation text, the claimed process proceeds under the control of a computer program. While it is convenient to describe the steps of the program as if they were being performed by a human translator, in fact, nothing of the kind is happening. Rather, the computer is carrying out a series of unthinking, abstract mathematical operations on the abstract values stored in the memory of the computer. The program functions independently of the meaning or significance of the data on which it is acting. The fact that the program is formed in a high level programming language, which makes the program appear to give significance to the machine operation, does not change the fact that the machine is actually carrying out a series of abstract steps which have nothing to do with translating between natural languages. If a different kind of information were fed into the computer, the program used in this invention could conceivably perform a function totally different from translating.

Various claims of appellant recite activity by which information is extracted from the computer. Claims 32 and 36 include "printing out the translation." Claim 51 recites the step "converting the target language sequence from computer intelligible binary coded signals back to visual indicia." Claims 52 and 53 limit the "converting" step of claim 51 to "printing." Claim 54 recites the step of "converting the proper target language sequence from computer intelligible binary coded signals back to visual indicia." Claims 55 and 56 limit the "converting" step in claim 54 to "printing."

The following claims are representative:

1. A method for translation between source and target natural languages using a programmable digital computer system, the steps comprising:

(a) storing in a main memory of the computer system a source text to be translated;

(b) scanning and comparing such stored source text words with dictionaries of source language words stored in a memory and for each such source text word for which a match is found, storing in a file in main memory each word and in association with each such word, coded information derived from such dictionary for use in translation of such word, the coded information including memory offset address linkages to a memory in the computer system where grammar and target language translations for the word are stored;

(c) analyzing the source text words in its file of words, a complete sentence at a time, and converting the same into a sentence in the target language utilizing the coded information and including the steps of

(1) utilizing the memory offset address linkages for obtaining the target sic language translations of words from a memory; and

(2) reordering the target language translation into the proper target language sequence.

32. A method, according to claim 1, including the steps of analyzing a sequence of words in the source language within phrases and clauses in relation to the target language word sequence, the target language word sequence being expressed symbolically by assigned numbers and printing out the translation taking into consideration each source word.

51. A method for translation between source and target natural languages using a programmable digital computer system, the steps comprising:

(a) converting a source text to be translated from visual indicia to computer intelligible binary coded signals;

(b) storing in a main memory of the computer system the converted source text to be translated;

(c) scanning and comparing such converted source text words with dictionaries of source language words stored in a memory and for each source text word for which a match is found, storing in a file in main memory each word and sic in association with each such word, coded information derived from such dictionary for use in translation of such word, the coded information including memory offset address linkages to a memory in the computer system where grammar and target language translations for the word are stored;

(d) analyzing the converted source text words in the file of words, a complete sentence at a time, and converting the same into a sentence in the target language utilizing the coded information and including the steps of

(1) utilizing the memory offset address linkages for obtaining the target language translations of words from a memory; and

(2) reordering the target language translation into the proper target language sequence;

(e) converting the target language sequence from computer intelligible binary coded signals back to visual indicia.

52. The method of claim 51 wherein the last step of converting comprises the step of printing.

The Board

The opinion of the board states that the claimed method is not statutory subject matter under 35 U.S.C. § 101.² The board's position is based on its reading of Gottschalk v. Benson, 409 U.S. 63, 93 S.Ct. 253, 34 L.Ed.2d 273, 175 USPQ 673 (1972), and its reading of our early interpretation of Benson in In re Christensen, 478 F.2d 1392, 178 USPQ 35 (Cust. & Pat.App.1973). Appellant's claimed invention is, according to the board, an algorithm or rule having no substantial practical application except in connection with a digital computer. The board quoted Benson for the proposition that such inventions are not patentable subject matter.³ Though the board did recognize that appellant's algorithm is far more complex than which was examined in Benson, the board found that Benson expressed no limitations on the nature, extent, or complexity of unpatentable algorithms.

On reconsideration, the board considered a very broad, dictionary definition of "algorithm"⁴ and concluded that the term is not limited to expressions in mathematical terms but rather includes expressions in natural language. The board argued that the apparent absence of any mathematical notation or activity in appellant's claims did not distinguish appellant's claims from the subject matter in Benson.

The board also cited Christensen in support of its application of Benson to this case.⁵ The only difference the board found between the prior art computer translation method, Oettinger,⁶ and the claimed invention was a novel algorithm. The board read Christensen for the proposition that such a difference is not sufficient to render a process statutory.

OPINION

We must begin by resolving the question whether appellant's Notice of Appeal was sufficient to give us jurisdiction over all of the claims which appellant is trying to bring before us. Appellant's Notice of Appeal contained sixteen reasons. Six of the reasons expressly refer to fewer than all of the appealed claims. The remainder of the reasons contain no express reference to particular claims and focus on board positions that relate to all of the claims. The PTO does not allege that it was misled by the Notice. There...