Gottschalk v. Benson (901422128)

Read for 2/7/11

Reading Notes

• Benson filed a patent for a method for converting numerical information from binary-coded decimal numbers into pure binary numbers
  • Ruled as merely a series of mathematical calculations or mental steps
• Claims were not limited to any specific machine, technology, use, etc.
• Need to determine if the method described is a "process"
  • The procedure in the present claim is an algorithm
• The conversion from BCD to pure binary can be done mentally using a table
  • This method varies the ordinary human steps by changing the order and symbolism and by taking subtotals after each operation
• Cite previous examples of including a law into a process
  • Claims need to be limited to a specific arrangement of machinery or something similar

Laws of patentability

• Phenomena of nature, mental processes, and abstract intellectual concepts cannot be patented
  • A novel and useful structure created with the air of one of these may be patentable
• The key to the patentability of a process which does not involve a specific machine is

A process is a mode of treatment of certain materials to produce a given result. It is an act, or a series of acts, performed upon the subject-matter to be transformed and reduced to a different state or thing.

• • Process patent must either use a particular machine or apparatus or must change the articles or materials to a different state or thing
• Creation of programs has grown substantially without patent protection

Class Notes

• Benson had patent for computer program, Gottschalk was the Patent Commissioner who denied him a patent
  • Can appeal applications during the process and take it to the appeals within the PTO
• Claims 8 and 13 are in question
  • Converted BCD to pure binary
• Won at the appellate level but the patent was then rejected by the USSC
  • Cannot patent an algorithm
• Decided in 1972
• Decided that the claim was just too broad and fundamental
  • A process without a specific application is usually not good
• Talk about the President’s Commission
  • Basically they don’t have the ability to examine computer programs, so they are unpatentable

Patentable Subject Matter

• Section 101 lays out what is patentable – process, machine, manufacture, or composition of matter
  • More recently standards have said everything is more or less patentable under 101
• Things that cannot be patented for risk that they impede the promotion of useful arts
  • Ideas (reduction to practice)
  • Natural phenomena
    • Even if newly discovered
  • Scientific truth
  • Mathematical expression
• Things that can be patented under 101
  • ’’’Structure’’’ created with knowledge of above
  • ’’’Application’’’ of the laws
  • A process resulting in physical changes
• Science has a natural set of building blocks but the promotion should occur at the next level
• Dividing line between a process that is or is not patentable is the application
• The existence of first principles (basic laws) provides starting points for further invention
  • Taking these away reduces the ability of others to build upon
• Talk about the President’s Commission
  • Basically they don’t have the ability to examine computer programs, so they are unpatentable