In re Chatfield (545 F.2d 152, 1976 Nov 18)

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{1} ... the fundamental rationale we glean from Benson is that a patent containing Benson's claims would have preempted all practical use of both the underlying mathematical formula and the involved algorithm.

{2} The solicitor suggests that the Supreme Court, in its reference in Benson to the question of whether the patent laws should be extended to cover "these programs" [ 409 U.S. at 72, 93 S.Ct. 253, 175 USPQ at 676] and to the President's Commission on the Patent System, intended to include all computer programs within the phrase "these programs."4 We do not agree. "It is a maxim, not to be disregarded, that general expressions, in every opinion, are to be taken in connection with the case in which these expressions are used." Cohens v. Virginia, 19 U.S. (6 Wheat.) 264, 398, 5 L.Ed. 257 (1821).5 If, however, doubt should remain with respect to the solicitor's suggestion, we think it fully removed by the Supreme Court's unanimous characterization of its holding in Benson as "limited" in Dann v. Johnston, 425 U.S. 219, 224, 96 S.Ct. 1393, 47 L.Ed.2d 692, 189 USPQ 257, 259 (1976).

{3} As above indicated, Chatfield's independent claims contain neither a mathematical formula nor a mathematical algorithm. Mathematical algorithms appear only in the dependent claims and do not themselves constitute the method per se. The dependent claims are drawn to several different mathematical formulae and algorithms and, conceivably, numerous other algorithms could be developed and used in the novel method. The dependent claims are not, of course, claims to the mathematical algorithms appearing therein but are claims to the method of the independent claims in which the analysis steps are carried out by use of the specified algorithm. A patent issuing on Chatfield's claimed method would thus preempt neither the mathematical formulae nor the algorithms specified in such a patent, unless used in the performance of the entire claimed method. Such a patent would thus not be "in practical effect * * * a patent on the algorithm itself."

[ALGORITHM, USEFUL] {4} The appealed claims, analyzed as a whole, simply define a novel method for operating a particular machine system in a particular mode. The method is claimed in a series of discrete method steps of the type one might expect to find governing the operation of a system of non-computing machines, e. g., a milling machine system. The claimed process does not end with solution of a particular equation, as in Christensen. Nor are the appealed claims so "abstract and sweeping" as those in Benson, being limited to the particular operation of a computing machine system as specified in the claims. Thus, the claimed method differs materially and significantly from the invention in either Christensen or Benson. We therefore are not persuaded to discount Chatfield's novel contribution to the useful arts as outside the field of endeavor intended to be encouraged by our patent laws.


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