Washington, D.C. Location
Washington, DC 20015
Princeton, NJ Location
Princeton, NJ 08540
U.S. Supreme Court
GOTTSCHALK v. BENSON, 409 U.S. 63 (1972)
409 U.S. 63GOTTSCHALK, ACTING COMMISSIONER OF PATENTS v. BENSON ET AL.
CERTIORARI TO THE UNITED STATES COURT OF CUSTOMS AND PATENT APPEALS
Argued October 16, 1972
Decided November 20, 1972
Respondents’ method for converting numerical information from binary-coded decimal numbers into pure binary numbers, for use in programming conventional general-purpose digital computers is merely a series of mathematical calculations or mental steps and does not constitute a patentable “process” within the meaning of the Patent Act, 35 U.S.C. 100 (b). Pp. 64-73.
___ C. C. P. A. (Pat.) ___, 441 F.2d 682, reversed.
DOUGLAS, J., delivered the opinion of the Court, in which all Members joined except STEWART, BLACKMUN, and POWELL, JJ., who took no part in the consideration or decision of the case.
Richard B. Stone argued the cause for petitioner. With him on the briefs were Solicitor General Griswold, Assistant Attorney General Kauper, Acting Assistant Attorney General Comegys, Howard E. Shapiro, Richard H. Stern, and S. William Cochran.
Hugh B. Cox argued the cause for respondents. With him on the brief were Henry P. Sailer, Michael Boudin, William L. Keefauver, and Robert O. Nimtz.
Briefs of amici curiae urging reversal were filed by James M. Clabault and Edward G. Fiorito for Burroughs Corp.; by Henry L. Hanson and D. D. Allegretti for Honeywell, Inc.; by Lloyd N. Cutler, Ezekiel G. Stoddard, Deanne C. Siemer, Nicholas DeB. Katzenbach, and Elmer W. Galbi for International Business Machines Corp.; and by Donald J. Gavin for the Business Equipment Manufacturers Assn.
Briefs of amici curiae urging affirmance were filed by Sidney Neuman, Tom Arnold, and Jack C. Goldstein for the American Patent Law Assn.; by Claron N. White [409 U.S. 63, 64] and Louis Robertson for the Chicago Bar Assn.; by James J. Hill and William E. Dominick for the Patent Law Association of Chicago; by Timothy L. Tilton for Iowa State University Research Foundation, Inc.; by Michael I. Rackman for Institutional Networks Corp.; by David J. Toomey for Whitlow Computer Systems, Inc.; by Virgil E. Woodcock, Richard E. Kurtz, and Oswald G. Hayes for Mobil Oil Corp.; by Morton C. Jacobs for the Association of Data Processing Service Organizations et al.; by Mr. Jacobs for Applied Data Research, Inc.; and by Howard J. Marsh for Computer Software Analysts, Inc., et al.
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 13 1were rejected by the Patent Office but sustained by the Court of Customs and Patent Appeals, ___ C. C. P. A. (Pat.) ___, 441 F.2d 682. The case is here on a petition for a writ of certiorari. 405 U.S. 915.
The question is whether the method described and claimed is a “process” within the meaning of the Patent Act. 2 [409 U.S. 63, 65]
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. [409 U.S. 63, 66]
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 (1X103.) + (4X102.) + (9X101.) + (2X100.).
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.
Decimal (8) (4) (2) (1) Pure Binary
0 = 0 + 0 + 0 + 0 = 0000 1 = 0 + 0 + 0 + 20. = 0001 2 = 0 + 0 + 21. + 0 = 0010 3 = 0 + 0 + 21. + 20. = 0011 4 = 0 + 22. + 0 + 0 = 0100 5 = 0 + 22. + 0 + 20. = 0101 6 = 0 + 22. + 21. + 0 = 0110 7 = 0 + 22. + 21. + 20. = 0111 8 = 23. + 0 + 0 + 0 = 1000 9 = 23. + 0 + 0 + 20. = 1001 10 = 23. + 0 + 21. + 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 [409 U.S. 63, 67] 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, that “[w]hile a scientific truth, or the mathematical expression of it, is not a 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. 498, 507. “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. 156, 175. 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, “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 [409 U.S. 63, 68] 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. 62, Morse was allowed a patent for a process of using electromagnetism to produce distinguishable signs for telegraphy. Id., at 111. But the Court denied the eighth claim in which Morse claimed the use of “electro magnetism, 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.
In The Telephone Cases, 126 U.S. 1, 534, 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 transmit [409 U.S. 63, 69] 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. The patent was for that use of electricity “both for the magneto and variable resistance methods.” Id., at 538. Bell’s claim, in other words, was not one for all telephonic use of electricity.
In Corning v. Burden, 15 How. 252, 267-268, 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. Those are instances, however, where the use of chemical substances or physical acts, such as temperature control, changes articles or materials. The chemical process or the physical acts which transform the raw material are, however, sufficiently definite to confine the patent monopoly within rather definite bounds.
Cochrane v. Deener, 94 U.S. 780, involved a process for manufacturing flour so as to improve its quality. The process first separated the superfine flour and then removed impurities from the middlings by blasts of air, reground the middlings, and then combined the product with the superfine. Id., at 785. The claim was not limited to any special arrangement of machinery. Ibid. The Court said,
Transformation and reduction of an article “to a different state or thing” is the clue to the patentability of a process claim that does not include particular machines. So it is that a patent in the process of “manufacturing fat acids and glycerine from fatty bodies by the action of water at a high temperature and pressure” was sustained in Tilghman v. Proctor, 102 U.S. 707, 721. The Court said, “The chemical principle or scientific fact upon which it is founded is, that the elements of neutral fat require to be severally united with an atomic equivalent of water in order to separate from each other and become free. This chemical fact was not discovered by Tilghman. He only claims to have invented a particular mode of bringing about the desired chemical union between the fatty elements and water.” Id., at 729.
Expanded Metal Co. v. Bradford, 214 U.S. 366, sustained a patent on a “process” for expanding metal. A process “involving mechanical operations, and producing a new and useful result,” id., at 385-386, was held to be a patentable process, process patents not being limited to chemical action.
Smith v. Snow, 294 U.S. 1, and Waxham v. Smith, 294 U.S. 20, involved a process for setting eggs in staged incubation [409 U.S. 63, 71] and applying mechanically circulated currents of air to the eggs. The Court, in sustaining the function performed (the hatching of eggs) and the means or process by which that is done, said:
It is argued that a process patent must either be tied to a particular machine or apparatus or must operate to change articles or materials to a “different state or thing.” We do not hold that no process patent could ever qualify if it did not meet the requirements of our prior precedents. It is said that the decision precludes a patent for any program servicing a computer. We do not so hold. It is said that we have before us a program for a digital computer but extend our holding to programs for analog computers. We have, however, made clear from the start that we deal with a program only for digital computers. It is said we freeze process patents to old technologies, leaving no room for the revelations of the new, onrushing technology. Such is not our purpose. What we come down to in a nutshell is the following.
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 [409 U.S. 63, 72] 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.
It may be that the patent laws should be extended to cover these programs, a policy matter to which we are not competent to speak. The President’s Commission on the Patent System 4 rejected the proposal that these programs be patentable: 5
If these programs are to be patentable, 6 considerable problems are raised which only committees of Congress can manage, for broad powers of investigation are needed, including hearings which canvass the wide variety of views which those operating in this field entertain. The technological problems tendered in the many briefs before us 7 indicate to us that considered action by the Congress is needed.
MR. JUSTICE STEWART, MR. JUSTICE BLACKMUN, and MR. JUSTICE POWELL took no part in the consideration or decision of this case.
Claim 8 reads:
Claim 13 reads:
[ Footnote 1 ] They are set forth in the Appendix to this opinion.
[ Footnote 2 ] Title 35 U.S.C. 100 (b) provides:
Title 35 U.S.C. 101 provides:
[ Footnote 3 ] See R. Benrey, Understanding Digital Computers 4 (1964).
[ Footnote 4 ] “To Promote the Progress of . . . Useful Arts,” Report of the President’s Commission on the Patent System (1966).
[ Footnote 5 ] Id., at 13.
[ Footnote 6 ] See Wild, Computer Program Protection: The Need to Legislate a Solution, 54 Corn. L. Rev. 586, 604-609 (1969); Bender, Computer Programs: Should They Be Patentable?, 68 Col. L. Rev. 241 (1968); Buckman, Protection of Proprietory Interest in Computer Programs, 51 J. Pat. Off. Soc. 135 (1969).
[ Footnote 7 ] Amicus briefs of 14 interested groups have been filed on the merits in this case. [409 U.S. 63, 75]