III. Consistency and Predictability of Software-Patent Court Decisions
Nonstatutory: In re Application of Walter (1980, Cust & Pat App) 618 F2d 758, 205 USPQ 397 (criticized in AT&T Corp. v Excel Communs., Inc. (1999, CA FC) 172 F3d 1352, 50 USPQ2d 1447)
Improvements are specifically included within statutory subject matter, but as applied to mathematical algorithms, require that the algorithm be implemented in a specific manner to define structural relationships between physical elements or refined steps and processes to be statutory; a mathematical algorithm or scientific truth implemented in a specific manner to define structural relationships between physical elements or to refine steps in process is statutory, but if mathematical algorithm or scientific truth is merely presented and solved by the claimed invention, no amount of post-solution activity or recitation of field of use can render the claim statutory; the claim considered as a whole presents an improved mathematical algorithm for cross-correlation of seismic signals and does not implement the algorithm in a specific manner to define structural relationships between physical elements or limit steps in process and thus is nonstatutory.
Statutory: In re Prater (1969) 56 CCPA 1381, 415 F2d 1393, 162 USPQ 541, 6 ALR Fed 134
No reason is apparent why, based on the Constitution, statutes, or case law, apparatus and process claims broad enough to encompass operation of a programmed general-purpose digital computer are necessarily unpatentable; once the program has been introduced, a general-purpose digital computer becomes a special-purpose digital computer, a specific electrical circuit with or without electromechanical components, which, along with the process by which it operates, might be patented, subject to requirements of novelty, utility, and non-obviousness.
Statutory: Paine, Webber, Jackson & Curtis, Inc. v Merrill Lynch, Pierce, Fenner & Smith, Inc. (1983, DC Del) 564 F Supp 1358, 218 USPQ 212, 36 FR Serv 2d 1558
Patent on the way of operating a computer to effectuate business activity falls within technological arts of automating business needs and does not involve a mere algorithm or mathematical problem so that the patent is not invalid for improper subject matter.
Statutory: In re Iwahashi (1989, CA) 888 F2d 1370, 12 USPQ2d 1908
Although applicant’s claim on an auto-correlation unit operates by means of a recited algorithm, it also includes machine elements such as ROM and RAM and machine elements defined in means-plus-function form so that it is improperly rejected as nonstatutory.
Statutory: In re Pardo (1982, Cust & Pat App) 684 F2d 912, 214 USPQ 673
The subject matter claimed involving sequencing of operations in a general-purpose computer does not involve a mathematical algorithm and is not made nonstatutory merely because the computer might deal with mathematical formulae as well as other subjects. Use of word "algorithm" in the patent application filed in 1970 is not an admission that the subject matter claimed is nonstatutory under the special sense of "algorithm" later defined by courts.
Nonstatutory: In re Grams (1989, CA) 888 F2d 835, 12 USPQ2d 1824
A claim reciting an algorithm for evaluating the abnormality of a complex system and requiring that data be gathered and used in implementing the algorithm is properly rejected as an unpatentable process not involving a physical step.
Nonstatutory: In re Application of Richman (1977, Cust & Pat App) 563 F2d 1026, 195 USPQ 340
Considering claimed subject matter as a whole, and regardless of the order of steps or the form of expression chosen, the method of calculating an airborne radar boresight correction angle or velocity component using mathematical formulae is not a statutory subject matter under 35 USCS § 101, even though the method includes new and unobvious steps for acquiring data for use in formulae.
Nonstatutory: In re Sarkar (1978, Cust & Pat App) 588 F2d 1330, 200 USPQ 132, reh den (1979, Cust & Pat App) 1979 CCPA LEXIS 315
The claimed process for mathematically modeling a waterway allowing channel dimensions to be measured at arbitrary intervals, rather than at predetermined intervals as required by prior art, is not a patentable process because the invention as a whole is based on an algorithm that is disembodied thought, and the gathering of values and use of calculations do not make the process patentable.
Statutory: In re Application of Sherwood (1980, Cust & Pat App) 613 F2d 809, 204 USPQ 537, cert den (1981) 450 US 994, 68 L Ed 2d 193, 101 S Ct 1694, 210 USPQ 776
Although claims on the method of processing seismic data to form a subterranean cross-sectional map involve mathematical algorithms and calculations as process steps, the claims are statutory where they do not merely pre-empt algorithms and the overall effect is to convert physical data in one form into a physical output in another form.
Nonstatutory: SmartGene, Inc. v Advanced Biological Labs., SA (2012, DC Dist Col) 852 F Supp 2d 42
Patents for an interactive, computerized program to guide the selection of therapeutic treatment regimens for a patient based on input provided by a physician were facially invalid under 35 USCS § 101 because they did no more than describe the abstract mental processes of the doctor treating the patient; thus, the patents did not constitute patentable subject matter. They did not meet the machine or transformation test in order to be valid under 35 USCS § 101 because the patents did not involve transformation; the alleged transformation performed in the patents was more akin to manual reorganization of treatment options.
Statutory: Imagexpo, L.L.C. v Microsoft Corp. (2003, ED Va) 299 F Supp 2d 550
A patent claim containing a mathematical formula, equation, algorithm, or like satisfies the requirement of 35 USCS § 101 if implemented or applied in a structure process that, when considered as whole, is performing a function which patent laws were designed to protect.
Nonstatutory: In re Bilski (2008, CA FC) 545 F3d 943, 2008-2 USTC P 50621
Whether the claimed process was novel or non-obvious is irrelevant to the 35 USCS § 101 analysis; the applicants' claim for a method of hedging risk in the field of commodities trading is not patentable because it relies on a non-transformative process encompassing a “purely mental process of performing requisite mathematical calculations without the aid of a computer or any other device, mentally identifying those transactions that calculations have revealed would hedge each other’s risks, and performing a post-solution step of consummating those transactions.”
Nonstatutory: Arshal v United States (1979, Ct Cl) 202 USPQ 749, mod on other grounds (1980) 223 Ct Cl 179, 621 F2d 421, 208 USPQ 397, cert den (1981) 449 US 1077, 66 L Ed 2d 800, 101 S Ct 857, reh den (1981) 450 US 1050, 68 L Ed 2d 247, 101 S Ct 1771
A directional computer not limited to any particular apparatus or use and claimed as a means-plus-function for receiving input signals and calculating vectors broadly pre-empts a mathematical algorithm and is thus invalid as nonstatutory. Patent claims on a directional computer involving vectors and not limited to any technology are invalid as pre-empting algorithms claimed relative to vector processing and thus encompassing subject matter that is not statutory.
Statutory: In re Waldbaum (1972) 59 CCPA 940, 457 F2d 997, 173 USPQ 430
A method of analyzing data words to determine the number of ones they contained, using the examine capability in an address-memory device available in some prior art computers, is patentable.
IV. Software-Patent Notice and Discoverability
Improvements are specifically included within statutory subject matter, but as applied to mathematical algorithms, require that the algorithm be implemented in a specific manner to define structural relationships between physical elements or refined steps and processes to be statutory; a mathematical algorithm or scientific truth implemented in a specific manner to define structural relationships between physical elements or to refine steps in process is statutory, but if mathematical algorithm or scientific truth is merely presented and solved by the claimed invention, no amount of post-solution activity or recitation of field of use can render the claim statutory; the claim considered as a whole presents an improved mathematical algorithm for cross-correlation of seismic signals and does not implement the algorithm in a specific manner to define structural relationships between physical elements or limit steps in process and thus is nonstatutory.
Statutory: In re Prater (1969) 56 CCPA 1381, 415 F2d 1393, 162 USPQ 541, 6 ALR Fed 134
No reason is apparent why, based on the Constitution, statutes, or case law, apparatus and process claims broad enough to encompass operation of a programmed general-purpose digital computer are necessarily unpatentable; once the program has been introduced, a general-purpose digital computer becomes a special-purpose digital computer, a specific electrical circuit with or without electromechanical components, which, along with the process by which it operates, might be patented, subject to requirements of novelty, utility, and non-obviousness.
Statutory: Paine, Webber, Jackson & Curtis, Inc. v Merrill Lynch, Pierce, Fenner & Smith, Inc. (1983, DC Del) 564 F Supp 1358, 218 USPQ 212, 36 FR Serv 2d 1558
Patent on the way of operating a computer to effectuate business activity falls within technological arts of automating business needs and does not involve a mere algorithm or mathematical problem so that the patent is not invalid for improper subject matter.
Statutory: In re Iwahashi (1989, CA) 888 F2d 1370, 12 USPQ2d 1908
Although applicant’s claim on an auto-correlation unit operates by means of a recited algorithm, it also includes machine elements such as ROM and RAM and machine elements defined in means-plus-function form so that it is improperly rejected as nonstatutory.
Statutory: In re Pardo (1982, Cust & Pat App) 684 F2d 912, 214 USPQ 673
The subject matter claimed involving sequencing of operations in a general-purpose computer does not involve a mathematical algorithm and is not made nonstatutory merely because the computer might deal with mathematical formulae as well as other subjects. Use of word "algorithm" in the patent application filed in 1970 is not an admission that the subject matter claimed is nonstatutory under the special sense of "algorithm" later defined by courts.
Nonstatutory: In re Grams (1989, CA) 888 F2d 835, 12 USPQ2d 1824
A claim reciting an algorithm for evaluating the abnormality of a complex system and requiring that data be gathered and used in implementing the algorithm is properly rejected as an unpatentable process not involving a physical step.
Nonstatutory: In re Application of Richman (1977, Cust & Pat App) 563 F2d 1026, 195 USPQ 340
Considering claimed subject matter as a whole, and regardless of the order of steps or the form of expression chosen, the method of calculating an airborne radar boresight correction angle or velocity component using mathematical formulae is not a statutory subject matter under 35 USCS § 101, even though the method includes new and unobvious steps for acquiring data for use in formulae.
Nonstatutory: In re Sarkar (1978, Cust & Pat App) 588 F2d 1330, 200 USPQ 132, reh den (1979, Cust & Pat App) 1979 CCPA LEXIS 315
The claimed process for mathematically modeling a waterway allowing channel dimensions to be measured at arbitrary intervals, rather than at predetermined intervals as required by prior art, is not a patentable process because the invention as a whole is based on an algorithm that is disembodied thought, and the gathering of values and use of calculations do not make the process patentable.
Statutory: In re Application of Sherwood (1980, Cust & Pat App) 613 F2d 809, 204 USPQ 537, cert den (1981) 450 US 994, 68 L Ed 2d 193, 101 S Ct 1694, 210 USPQ 776
Although claims on the method of processing seismic data to form a subterranean cross-sectional map involve mathematical algorithms and calculations as process steps, the claims are statutory where they do not merely pre-empt algorithms and the overall effect is to convert physical data in one form into a physical output in another form.
Nonstatutory: SmartGene, Inc. v Advanced Biological Labs., SA (2012, DC Dist Col) 852 F Supp 2d 42
Patents for an interactive, computerized program to guide the selection of therapeutic treatment regimens for a patient based on input provided by a physician were facially invalid under 35 USCS § 101 because they did no more than describe the abstract mental processes of the doctor treating the patient; thus, the patents did not constitute patentable subject matter. They did not meet the machine or transformation test in order to be valid under 35 USCS § 101 because the patents did not involve transformation; the alleged transformation performed in the patents was more akin to manual reorganization of treatment options.
Statutory: Imagexpo, L.L.C. v Microsoft Corp. (2003, ED Va) 299 F Supp 2d 550
A patent claim containing a mathematical formula, equation, algorithm, or like satisfies the requirement of 35 USCS § 101 if implemented or applied in a structure process that, when considered as whole, is performing a function which patent laws were designed to protect.
Nonstatutory: In re Bilski (2008, CA FC) 545 F3d 943, 2008-2 USTC P 50621
Whether the claimed process was novel or non-obvious is irrelevant to the 35 USCS § 101 analysis; the applicants' claim for a method of hedging risk in the field of commodities trading is not patentable because it relies on a non-transformative process encompassing a “purely mental process of performing requisite mathematical calculations without the aid of a computer or any other device, mentally identifying those transactions that calculations have revealed would hedge each other’s risks, and performing a post-solution step of consummating those transactions.”
Nonstatutory: Arshal v United States (1979, Ct Cl) 202 USPQ 749, mod on other grounds (1980) 223 Ct Cl 179, 621 F2d 421, 208 USPQ 397, cert den (1981) 449 US 1077, 66 L Ed 2d 800, 101 S Ct 857, reh den (1981) 450 US 1050, 68 L Ed 2d 247, 101 S Ct 1771
A directional computer not limited to any particular apparatus or use and claimed as a means-plus-function for receiving input signals and calculating vectors broadly pre-empts a mathematical algorithm and is thus invalid as nonstatutory. Patent claims on a directional computer involving vectors and not limited to any technology are invalid as pre-empting algorithms claimed relative to vector processing and thus encompassing subject matter that is not statutory.
Statutory: In re Waldbaum (1972) 59 CCPA 940, 457 F2d 997, 173 USPQ 430
A method of analyzing data words to determine the number of ones they contained, using the examine capability in an address-memory device available in some prior art computers, is patentable.
IV. Software-Patent Notice and Discoverability
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