Gottschalk v. Benson 485

• Decision Date: 20 November 1972
• Docket Number: No. 71,71
• Parties: Robert GOTTSCHALK, Acting Commissioner of Patents, Petitioner, v. Gary R. BENSON and Arthur C. Tabbot. - 485
• Court: U.S. Supreme Court

409 U.S. 63

93 S.Ct. 253

34 L.Ed.2d 273

Robert GOTTSCHALK, Acting Commissioner of Patents, Petitioner,

v Gary R. BENSON and Arthur C. Tabbot.

No. 71 - 485.

Argued Oct. 16, 1972.

Decided Nov. 20, 1972.

Richard B. Stone, Washington, D.C., for petitioner.

Hugh B. Cox, Washington, D.C., for respondents.

Mr. Justice DOUGLAS delivered the opinion of the Court.

Respondents filed in the Patent Office an application for an invention which was described as being related 'to the processing of data by program and more particularly to the programmed conversion of numerical information' in general-purpose digital computers. They claimed a method for converting binary-coded decimal (BCD) numerals into pure binary numerals. The claims were not limited to any particular art or technology, to any particular apparatus or machinery, or to any particular end use. They purported to cover any use of the claimed method in a general-purpose digital computer of any type. Claims 8 and 31¹ were rejected by the Patent Office but sustained by the Court of Customs and Patent Appeals, 441 F.2d 682. The case is here on a petition for a writ of certiorari. Gottschalk v. Benson, 405 U.S. 915, 92 S.Ct. 934, 30 L.Ed.2d 784.

The question is whether the method described and claimed is a 'process' within the meaning of the Patent Act.² A digital computer, as distinguished from an analog computer, operates on data expressed in digits, solving a problem by doing arithmetic as a person would do it by head and hand.³ Some of the digits are stored as components of the computer. Others are introduced into the computer in a form which it is designed to recognize. The computer operates then upon both new and previously stored data. The general-purpose computer is designed to perform operations under many different programs.

The representation of numbers may be in the form of a time series of electrical impulses, magnetized spots on the surface of tapes, drums, or discs, charged spots on cathode-ray tube screens, the presence or absence of punched holes on paper cards, or other devices. The method or program is a sequence of coded instructions for a digital computer.

The patent sought is on a method of programming a general-purpose digital computer to convert signals from binary-coded decimal form into pure binary form. A procedure for solving a given type of mathematical problem is known as an 'algorithm.' The procedures set forth in the present claims are of that kind; that is to say, they are a generalized formulation for programs to solve mathematical problems of converting one form of numerical representation to another. From the generic formulation, programs may be developed as specific applications.

The decimal system uses as digits the 10 symbols 0, 1, 2, 3, 4, 5, 6, 7, 8, and 9. The value represented by any digit depends, as it does in any positional system of notation, both on its individual value and on its relative position in the numeral. Decimal numerals are written by placing digits in the appropriate positions or columns of the numerical sequence, i.e., 'unit' (100), 'tens' (101), 'hundreds' (102), 'thousands' (103), etc. Accordingly, the numeral 1492 signifies (1 103) (4 102) (9 101) (2 100).

The pure binary system of positional notation uses two symbols as digits—0 and 1, placed in a numerical sequence with values based on consecutively ascending powers of 2. In pure binary notation, what would be the tens position is the twos position; what would be hundreds position is the fours position; what would be the thousands position is the eights. Any decimal number from 0 to 10 can be represented in the binary system with four digits or positions as indicated in the following table.

Shown as the sum of powers of 2

                 
                   2 3     2 2      2 1            2 0
                 
                  Decimal   (8)  (4)     (2)      (1)  Pure Binary
                 
                   0  =   0    +   0  +           0   +     0  =  0000
                 
                   1  =   0    +   0  +           0   +       2 0  =  0001
                 
                   2  =   0    +   0  +           2 1 +       0  =  0010
                 
                   3  =   0    +   0  +           2 1 +       2 0  =  0011
                 
                   4  =   0    +   2 2  +          0  +       0  =  0100
                 
                   5  =   0    +   2 2  +          0  +       2 0  =  0101
                 
                   6  =   0    +   2 2  +          2 1     +    0  =  0110
                 
                   7  =   0    +   2 2 +          2 1 +       2 0  =  0111
                 
                   8  =   2 3  +   0  +           0   +       0  =  1000
                 
                   9  =   2 3  +   0  +           0   +       2 0  =  1001
                 
                   10  =   2 3  +   0  +          2 1 +       0  =  1010
                 
                

The BCD system using decimal numerals replaces the character for each component decimal digit in the decimal numeral with the corresponding four-digit binary numeral, shown in the righthand column of the table. Thus decimal 53 is represented as 0101 0011 in BCD, because decimal 5 is equal to binary 0101 and decimal 3 is equivalent to binary 0011. In pure binary notation, however, decimal 53 equals binary 110101. The conversion of BCD numerals to pure binary numerals can be done mentally through use of the foregoing table. The method sought to be patented varies the ordinary arithmetic steps a human would use by changing the order of the steps, changing the symbolism for writing the multiplier used in some steps, and by taking subtotals after each successive operation. The mathematical procedures can be carried out in existing computers long in use, no new machinery being necessary. And, as noted, they can also be performed without a computer.

The Court stated in Mackay Co. v. Radio Corp., 306 U.S. 86, 94, 59 S.Ct. 427, 431, 83 L.Ed. 506 that '(w)hile a scientific truth, or the mathematical expression of it, is not patentable invention, a novel and useful structure created with the aid of knowledge of scientific truth may be.' That statement followed the longstanding rule that '(a)n idea of itself is not patentable.' Rubber-Tip Pencil Co. v. Howard, 20 Wall. (87 U.S.) 498, 507, 22 L.Ed. 410. 'A principle, in the abstract, is a fundamental truth; an original cause; a motive; these cannot be patented, as no one can claim in either of them an exclusive right.' Le Roy v. Tatham, 14 How. (55 U.S.) 156, 175, 14 L.Ed. 367. Phenomena of nature, though just discovered, mental processes, and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work. As we stated in Funk Bros. Seed Co. v. Kalo Co., 333 U.S. 127, 130, 68 S.Ct. 440, 441, 92 L.Ed. 588, 'He who discovers a hitherto unknown phenomenon of nature has no claim to a monopoly of it which the law recognizes. If there is to be invention from such a discovery, it must come from the application of the law of nature to a new and useful end.' We dealt there with a 'product' claim, while the present case deals with a 'process' claim. But we think the same principle applies.

Here the 'process' claim is so abstract and sweeping as to cover both known and unknown uses of the BCD to pure binary conversion. The end use may (1) vary from the operation of a train to verification of drivers' licenses to researching the law books for precedents and (2) be performed through any existing machinery or future-devised machinery or without any apparatus.

In O'Reilly v. Morse, 15 How. (56 U.S.) 62, 14 L.Ed. 601, Morse was allowed a patent for a process of using electromagnetism to produce distinguishable signs for telegraphy. Id., at 111, 14 L.Ed. 601. But the Court denied the eighth claim in which Morse claimed the use of 'electromagnetism, however developed for marking or printing intelligible characters, signs, or letters, at any distances.' Id., at 112. The Court in disallowing that claim said, '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.' Id., at 113, 14 L.Ed. 601.

In The Telephone Cases, 126 U.S. 1, 534, 8 S.Ct. 778, 782, 31 L.Ed. 863, the Court explained the Morse case as follows: 'The effect of that decision was, therefore, that the use of magnetism as a motive power, without regard to the particular process with which it was connected in the patent, could not be claimed, but that its use in that connection could.' Bell's invention was the use of electric current to trans- mit vocal or other sounds. The claim was not 'for the use of a current of electricity in its natural state as it comes from the battery, but for putting a continuous current, in a closed circuit, into a certain specified condition, suited to the transmission of vocal and other sounds, and using it in that condition for that purpose.' Ibid. The claim, in other words, was not 'one for the use of electricity distinct from the particular process with which it is connected in his patent.' Id., at 535, 8 S.Ct., at 782. The patent was for that use of electricity 'both for the magneto and variable resistance methods'. Id., at 538, 8 S.Ct., at 784. Bell's claim, in other words, was not one for all telephonic use of electricity.

In Corning v. Burden, 15 How. (56 U.S.) 252, 267—268, 14 L.Ed. 683, the Court said, 'One may discover a new and useful improvement in the process of tanning, dyeing, etc., irrespective of any particular form of machinery or mechanical device.' The examples, given were the 'arts of tanning, dyeing, making waterproof cloth, vulcanizing India rubber, smelting ores.' Id., at 267, 14 L.Ed. 683. Those are instances, however, where the use of chemical substances or physical acts, such as...