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In re Prater I (415 F.2d 1378, 1968 Nov 20)

Decision Parameters

Decisions It Cites

    Cochrane v. Deener [94 U.S. 780, 1877]
    Tilghman v. Proctor [102 U.S. 707, 1880]
    Don Lee v. Walker [61 F.2d 58, 1932]
    Haliburton Oil Well v. Walker [146 F.2d 817, 1944]
    In re Abrams [188 F.2d 165, 1951]
    In re Yuan [188 F.2d 377, 1951]

Decisions That Cite It

Rules & Quotes

{1} The precedents which here have been principally relied on as supporting the rejection of claims of this type are Abrams, supra, and Yuan, supra. As Yuan does little more than follow and adopt Abrams, it is to the latter case that we choose to turn as a starting point for our consideration in some detail of the problem presently before us.

[MENTAL] {2} Certainly no analog computer for carrying out these calculations is disclosed in the Abrams' specification and at the time Abrams filed (April 28, 1944), programmable general purpose digital computers for calculations of this nature were still in the future. Thus, Abrams disclosed a claimed process including steps which could only be performed in the mind insofar as the teachings of the application were concerned. Abrams therefore presents a significant difference (to which we shall refer again) from the factual situation in the present case in which the teachings of the specification provide a full disclosure of apparatus for carrying out the steps in the claim without requiring any steps to be performed in the human mind. Additional teaching is also provided in the present application *1386 that the steps can alternatively be performed on other apparatus, i.e., a properly programmed digital computer, which would equally permit the process to be performed without involving steps performed in the mind by those skilled in the art informed of appellants' novel discoveries.

[PROCESS] {3} We also find the rejection of apparatus claim 10 to be untenable. Having reversed the rejection of the process claims, it would certainly be an anomaly to decide that the apparatus for carrying out the method, which the board found to be a substantial apparatus counterpart of process claim 17, was not patentable when no reference has been relied upon. To do otherwise would also, in our opinion, be contrary to the liberalized intention expressed by the third paragraph of 35 U.S.C. 112.

{4} It will be seen that this statement [in Don Lee], which appears to be the genesis of the doctrine of the unpatentability of so-called "mental step" claims, is not only unsupported by any citation of precedent but in its inception was directed to subject matter that was not even novel.

[PHYSICAL] {5} It is also appropriate, while pursuing this path of reasoning, to observe that the law does not require that a machine, to be patentable, must act on physical substances, for example, an electric meter. It does not seem consistent to impose such a requirement on the other category of 35 U.S.C. § 101 — a "process" — without clearly evident and distinguishing reasons which are not thus far apparent.

[MENTAL] {6} Reviewing the foregoing development of the law relating to process claims, we find nothing to indicate an intent of Congress or the courts to deny patent protection to process claims merely because they could alternatively be read on a process performed through the mind by the use of aids such as pencil and paper. It is therefore an appropriate point to correlate the development thus far traced with our decision in Abrams discussed earlier. ... This distinction from Abrams leads us to our present holding which is that patent protection for a process disclosed as being a sequence or combination of steps, capable of performance without human intervention and directed to an industrial technology — a "useful art" within the intendment of the Constitution — is not precluded by the mere fact that the process could alternatively be carried out by mental steps.

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