In re Bernhart (417 F.2d 1395, 1969 Nov 20)

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{1} The specification here mentions only mechanical drafting machines. The claims therefore cover, under section 112, only such mechanical drafting machines and their equivalents. We know of no authority for holding that a human being, such as a draftsman, could ever be the equivalent of a machine disclosed in a patent application, and we are not prepared to so hold in this case. Accordingly, we think it clear that applicants have not defined as their invention anything in which the human mind could be used as a component. ... To find that the claimed process could be done mentally would require us to hold that a human mind is a digital computer or its equivalent, and that a draftsman is a planar plotting apparatus or its equivalent. On the facts of this case we are unwilling so to hold.

{2} Accordingly, we think it clear that applicants have not defined as their invention anything in which the human mind could be used as a component. Nor are the "printed matter" cases, cited by the board, supra, controlling as to these apparatus claims either on the facts or in principle. On their facts, those cases dealt with claims defining as the invention certain novel arrangements of printed lines or characters, useful and intelligible only to the human mind. Here the invention as defined by the claims requires that the information be processed not by the mind but by a machine, the computer, and that the drawing be done not by a draftsman but by a plotting machine. Those "printed matter" cases therefore have no factual relevance here.

{3} Moreover, all machines function according to laws of physics which can be mathematically set forth if known. We cannot deny patents on machines merely because their novelty may be explained in terms of such laws if we are to obey the mandate of Congress that a machine is subject matter for a patent. We should not penalize the inventor who makes his invention by discovering new and unobvious mathematical relationships which he then utilizes in a machine, as against the inventor who makes the same machine by trial and error and does not disclose the laws by which it operates. The mandate of Congress in 35 U.S.C. ยง 103 is that "patentability shall not be negatived by the manner in which the invention was made." For the foregoing reasons, we conclude that under the statute the apparatus herein claimed constitutes statutory subject matter.

{4} To this question we say that if a machine is programmed in a certain new and unobvious way, it is physically different from the machine without that program; its memory elements are differently arranged. The fact that these physical changes are invisible to the eye should not tempt us to conclude that the machine has not been changed.


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