User:Charles R Talley/Reading CRT/reading0207

Gottschalk v. Benson

Background

• 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 were rejected by the Patent Office but sustained by the Court of Customs and Patent Appeals
• The question is whether the method described and claimed is a "process" within the meaning of the Patent Act.
• 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 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.

Precedent

• 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.
• "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.
• 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.

Conclusions

• The "process" claim in this case is too generalized and sweeping
• 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 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.
• Reversed.