Patents for Software-Related
Jeffrey R. Kuester
Thomas, Kayden, Horstemeyer & Risley, L.L.P.
Ann K. Moceyunas
Kennesaw State University
Date published: 4 April 2003
[Note: This article was first published in
Multimedia and Technology Licensing Reporter, vol. 3,
no. 11 (April 1997). Use is by permission of copyright owner
Abstract: The topic of patents for software-related
inventions is a very technical and complicated area. There
is an extensive recent history of discussions and heated debates
regarding the wisdom of using the patent system to protect
software. This is especially true in light of recent developments
in copyright law, which suggests that computer software will
not find very much protection under the copyright law.
Keywords: algorithms, patents, copyrights,
United States Patent and Trademark Office, Gottschalk v.
Benson, Court of Customs and Patent Appeals, Diamond
v. Diehr, Parker v. Flook, Federal Circuit Court of Appeals,
Arrhythmia Research Technology, Inc. v. Corazonix Corporation,
In re Schrader, In re Alappat, In re Warmerdam, In re Lowry,
In re Trovato, Freeman-Walter-Abele test, computer software
II. Basic Patent Information
III. Patentability of Computer Software:
to the Computer Software Developer
topic of patents for software-related inventions is a very
technical and complicated area. Furthermore, there have recently
been many discussions and heated debates regarding the wisdom
of using the patent system to protect software. This is especially
true in light of recent developments in copyright law, which
suggests that computer software will not find very much protection
under the copyright law.
However, before examining the peculiarities and issues involved
with patents for particular areas of technology, certain basic
information regarding patent protection should be understood.
[end of page 1]
Basic Patent Information
The founders of the United States provided in the Constitution
that Congress shall have the power . . . to promote
the progress of science and useful arts, by securing for limited
times to authors and inventors the exclusive right to their
respective writings and discoveries.
A patent is the grant from the United States government to
the owner of an invention to exclude all others from making,
using or selling the invention for a limited time. In exchange
for the patent rights, the inventor is required to disclose
the invention in enough detail to allow other people to use
the invention after the monopoly expires and to learn from
the invention to build on its ideas.
Thus, the patent system was founded to promote technological
development by providing incentive to developers of new products
through enabling them to prevent others from stealing
their ideas through profiting without spending the necessary
research time and money.
The Patent Act is broad and general in its language describing
the proper subject matter for a patent:
Whoever invents or discovers any new and
useful process, machine, manufacture, or composition of
matter, or any new and useful improvement thereof, may obtain
a patent therefor, subject to the conditions and requirements
of this title.
However, not all inventions are patentable; excluded
from such patent protection are laws of nature, natural phenomena,
and abstract ideas.
An idea in and of itself is not patentable.
There are different types of patents. A utility patent is
granted for the functional aspect of a machine, an article
of manufacture, a composition of matter or a process. A utility
patent currently lasts for 17 years from the date of the grant
(provided that maintenance fees are paid at certain intervals
after the patent issue date: 3 and 1/2 years, 7 and 1/2 years,
and 11 and 1/2 years).
A design patent is granted for the ornamental appearance
of an article, but protects only the non-functional aspects
of the design. A plant patent is granted for the discovery
and asexual reproduction of a new variety of plant.
Someone who infringes the patent by making, selling, or using
the invention without a license may be liable to the patent
owner for damages (no less than a reasonable royalty), pre-judgment
interest, treble damages (for willful infringement), and attorneys
fees and costs in egregious cases.
The infringers infringing actions can also be stopped
by court order.
The Criteria for Granting a Patent
In the United States, a person is entitled to a patent if:
[end of page 2]
1. the person is the inventor;
2. the invention is the proper subject matter for a patent:
machines, articles of manufacture, compositions of matter,
3. the invention is useful, new
, and unobvious.
For most types of inventions, the first two requirements
for patentability normally present very little difficulty.
Generally speaking, an invention is useful if
the invention has a utilitarian or commercial value; an invention
is new if the invention is the first
embodiment of the idea in a useful thing or process; and an
invention is unobvious if the invention would
not have been obvious to a person reasonably skilled in the
pertinent art, given what already existed in the particular
area of the invention (the prior art).
This last requirement is often the most difficult hurdle for
a new invention since it is normally a very subjective process
to determine whether the differences between the new invention
and the prior art are obvious solutions to known
The Patent Application Process
The process for obtaining a patent on an invention typically
starts with a patent attorney preparing and filing a patent
application for the inventor and owner of the invention with
the United States Patent and Trademark Office (PTO).
The first inventor is entitled to the patent over
any subsequent inventors, even if the subsequent inventor
files first, provided the first inventor can prove the earlier
date of invention. The application must be filed no later
than one year after:
1. public use of the invention;
2. the placing on the market of the invention for sale in
the United States; or
3. the publication of a description of the invention anywhere
in the world.
In exchange for the patent, the inventor is required to disclose
the material aspects of the invention, many times including
trade secrets. Thus, there is a tension between the inventors
desire to disclose as little as possible and the patent laws
requirement of disclosure. The application itself must meet
very technical requirements for describing the invention.
The United States Code provides in part:
The specification shall contain a written
description of the invention, and of the manner and process
of making and using it, in such full, clear, concise, and
exact terms as to enable any person skilled in the art to
which it pertains, or with which it is most nearly connected,
to make and use the same, and shall set forth the best mode
contemplated by the inventor of carrying out his invention.
Because of the specialized nature of a patent
application, the applicant should seek the advice of a patent
attorney or patent agent having knowledge and/or education
in the discipline of the invention. Only those persons admitted
to the U.S. Patent Bar are allowed to file and prosecute patent
applications for others before the PTO. [end of page 3]
What happens when the PTO says no?
A patent application can travel up two levels in the PTO
and then two more levels in the federal court system before
reaching the final word on whether the claimed
invention is patentable. In addition, once a patent has been
issued, it can be challenged in a lawsuit filed in a United
States District Court; a decision from those courts may be
appealed to the United States Court of Appeals for the Federal
Circuit (its equivalent prior to 1982 was the Court of Customs
and Patent Appeals) and then to the United States Supreme
Court under certain circumstances.
United States Supreme Court
United States Court of Appeals, Federal Circuit
PTO Board of Patent Appeals and Interferences
The courts decide the validity of a patent with regard to
both the language of the Patent Act and to interpretations
of the Patent Act in other cases. Those other interpretations
form the body of case law which, in the U.S. judicial process,
is respected as precedence.
Patentability of Computer Software:
The courts, particularly the appellate courts (Federal Circuit
and Supreme Court), have not seen many cases involving issues
about the patentability of computer programs. Before even
getting to the traditionally most difficult area of obviousness,
the courts have been struggling with the subject matter requirement
for patentability. Specifically, the courts have had trouble
deciding whether various types of software can accurately
be characterized as falling under any of the areas of patentable
subject matter, such as processes or machines.
Further, the advances in computer technology have
made the early cases (of only twenty years ago) seem archaic
with respect to inventions and common knowledge within the
As of today, inventions that include computer programs as
all or part of the invention may be patentable under certain
circumstances. However, before discussing recommendations
for software owners or the current state of the patent law
as applied to software-related inventions, an examination
of the history and development of this area of law is in order.
The struggle with the definition of algorithm:
Gottschalk v. Benson
Amazingly enough, although computer programs have been developed
for many decades, the United States Supreme Court did not
see a case that raised the issue of whether a computer program
is patentable until 1972.
[end of page 4] In that case, the Court reviewed a
patent application describing an invention as a method for
converting binary-coded decimal numerals into pure binary
numerals in a general-purpose digital computer. Although the
Court found that the invention was not patentable, it stated
that this decision did not preclude ever finding a computer
In the 1972 United States Supreme Court case, Gottschalk
the Court framed the issue as: The question is whether
the method described and claimed is a process
within the meaning of the Patent Act.
The Court went on to describe the claimed invention:
The patent sought is on a method of programming
a general-purpose digital computer to convert signals
from binary-coded decimal form into pure binary form.
A procedure for solving a given type of mathematical problem
is known as an algorithm. The procedures set
forth in the present claims are of that kind; that is to
say, they are a generalized formulation for programs to
solve mathematical problems of converting one form of numerical
representation to another. From the generic formulation,
programs may be developed as specific applications.
Prior United States Supreme Court cases had interpreted the
word process in Section 101 of the Patent Act
to preclude patents on scientific truth or the mathematical
expression of it. Accordingly, the Court in Benson
decided the claimed invention was just a mathematical algorithm,
and thus not within the subject matter of patentable inventions
as a process.
The wake of the Benson decision caused all sorts of
difficulties with the word algorithm. These difficulties
arose out of decisions of Patent Examiners who rejected patent
applications because an application contained the word algorithm
or the examiner used an overly expansive definition of mathematical
In 1976, the Court of Customs and Patent Appeals (the CCPA)
reviewed a patent application that claimed an invention for
dynamically rearranging priorities in a multi-program
operating system. The PTO Board of Appeals had taken the position
that Benson precluded patentability of computer programs.
The CCPA decided differently, limiting the Benson decision
to precluding patentability of mathematical algorithms, but
not computer programs generally. The CCPA was careful to explain
the difference under Patent Law (as it understood it in 1976)
between a mathematical algorithm and general algorithms:
Over-concentration on the word algorithm
alone, for example, may mislead. The Supreme Court carefully
supplied a definition of the particular algorithm before
it, i.e., [a] procedure for solving a given type of
mathematical problem. The broader definition of algorithm
is a step-by-step procedure for solving
a problem or accomplishing some end. Websters
New Collegiate Dictionary (1976). It is axiomatic that inventive
minds seek and develop solutions to problems and step-by-step
solutions often attain the status of patentable invention.
It would be unnecessarily detrimental to our patent system
to deny inventors patent protection on the sole ground that
their contribution could be broadly termed an algorithm.
[end of page 5]
In 1978, the CCPA reviewed a patent application that claimed
a new method for typesetting alphanumeric information (such
as a mathematical expression) using a computer-based control
system (employing a hierarchical tree data structure) in conjunction
with a phototypesetter. The PTO had rejected the application
on the basis that Benson precluded patentability of
an invention where the only novel part was the
computer program. Once again the CCPA stated that Benson
only precluded patentability of mathematical algorithms, but
in this case, the claims were broader algorithms:
The local positioning algorithm
described in appellants specification is the order
of steps in processing the hierarchical tree structure and
spatially relating the various characters to be displayed.
Appellant has thus used the term algorithm as
a term of art in its broad sense, i.e., to identify a step-by-step
procedure for accomplishing a given result. 
Only a few months later, the CCPA again had
to reverse a decision of the PTO Board of Appeals that rejected
a patent application for a computer program. The PTO Board
of Appeals had used the broad definition of algorithm
instead of the narrower definition of mathematical algorithm
in its interpretation of Benson.
The invention in this case claimed a method of translating
from one natural language (e.g. Russian) to another natural
language (e.g. English). The CCPA held that the process described
did not solve a mathematical problem, directly or indirectly,
and thus was not precluded from patentability.
1981 The Supreme Court speaks again:
Diamond v. Diehr
Even by 1980, the PTO was still trying to argue that an invention
that claimed a stored program in a computer was not patentable.
The United States Supreme Court, in a case called Diamond
v. Diehr, reviewed a patent application for molding raw,
uncured synthetic rubber into cured precision products including
constant measurement of actual temperature inside the mold
during the curing process to recalculate the cure time (by
a computer program).
The PTO examiner had rejected the claims (in 1976) on the
basis that Benson precluded patentability of the steps
of the process that used a computer program, and the remainder
of the steps were already known in the industry.
The appellate Court (CCPA) reversed the finding, but the PTO
Commissioner requested the United Supreme Court to review
the decision in 1980. The United States Supreme Court addressed
only the issue of whether a process employing a mathematical
algorithm is patentable. The Court found that the invention
used a mathematical algorithm, but as a whole, the invention
directed itself to the process of molding rubber and was thus
Because the invention in the patent application in Diehr
did not encompass a general non-mathematical algorithm (or
so says the Court), the Court stated that this decision was
confined to mathematical algorithms:
[end of page 6]
The term algorithm is subject
to a variety of definitions. The petitioner defines the
term to mean:
1. A fixed step-by-step
procedure for accomplishing a given result; usually a simplified
procedure for solving a complex problem, also a full statement
of a finite number of steps.
2. A defined process or set of rules that leads [sic] and
assures development of a desired output from a given input.
A sequence of formulas and/or algebraic/logical steps to calculate
or determine a given task; processing rule.[citation
This definition is significantly broader than the definition
this Court employed in Benson and Flook. Our
previous decisions regarding the patentability of algorithms
are necessarily limited to the more narrow definition employed
by the Court, and we do not pass judgment on whether processes
falling outside the definition previously used by this Court,
but within the definition offered by the petitioner, would
be patentable subject matter.
A history of the lower courts trying to
So where did the Supreme Court decisions leave us regarding
the patentability of software-related inventions? In
August 1982, the CCPA reviewed a patent application for a
method of controlling the internal operations of a programmed
computer that allow for the execution of several formulas
independent of the order in which the steps are presented.
This particular patent application apparently had a long and
tortured treatment: it was originally filed with the PTO in
1970 (two years before the Benson decision). The applicants
had used the word algorithm to describe the invention.
The PTO examiner rejected the application in 1972 on the basis
that Benson precluded algorithms. The PTO
Board of Appeals affirmed the rejection on the basis that
the invention was obvious. The CCPA reversed, finding that
the invention claimed no mathematical algorithm (even if it
manipulated mathematical algorithms) and that Benson
and Diehr did not preclude patentability of computer
In September 1982, the CCPA reviewed a patent application
for a process and apparatus for testing a complex system and
analyzing the results according to a factor of function or
malfunction (illustrated as a process for diagnosing neurological
disorders in patients).
The CCPA held the claims were not patentable because they
really distilled down to a mathematical algorithm representing
a mental process that is not applied to physical elements
or process steps. [end of page 7]
In 1989 the Federal Circuit Court of Appeals (the successor
court to the CCPA) again held that claims for a method of
testing a complex system to determine whether the system condition
is normal or abnormal and to determine the cause of any abnormality
was non-patentable as a mathematical algorithm.
The only physical step in the invention was the
gathering of data for input, a step which was not significant
enough to take the invention out of the category of unpatentable
mathematical algorithms. Three days later, the Federal Circuit
Court of Appeals held that an auto-correlation circuit
for use in voice pattern recognition was patentable despite
the use of computer algorithms.
In this second case, the Court emphasized that the overall
invention was the apparatus (the interrelation of the various
hardware components which operate according to an algorithm)
and not the algorithm itself.
The next case from the Federal Circuit was issued in March
of 1992, Arrhythmia Research Technology, Inc. v. Corazonix
That case originated in the District court after the patent
had already issued. The invention was for a method of analyzing
electrocardiograph signals using a computer to diagnose heart
attack patients who are at high risk for heart arrhythmia.
The lower court had held the patent was invalid because the
mathematical algorithm used to detect certain heart signals
predominated. The Federal Circuit disagreed, holding that
the overall result (not the process) controlled: in this case,
the conversion of one physical electrical signal to another
This distinction between the method and its result appears
to indicate a more liberal view from the Federal Circuit on
the issue of patentability of computer programs. However,
the PTO continues to err on the side of conservatism. Presently,
one of the policies of the PTO has been articulated as:
Claims that deal with computer programs,
equations or mathematical calculations, or methods which
might be suspect under the Supreme Courts exclusions
. . . need to be carefully analyzed. . . . If the claim
is the least bit suspect regarding the 101 questionmake
the rejection. . . . The whole software question
is very sensitive. . . . If too many patents are issued
that are borderline or that are perceived as being borderline,
the unfriendly publicity could adversely affect us.
Recent Federal Circuit Decisions
More recently, the Federal Circuit has issued several cases
dealing with the question of whether various software-related
inventions fall outside the areas of proper subject matter
as unpatentable mathematical algorithms. In the decision of
In re Schrader
the court found a competitive bidding method to include a
mathematical algorithm, which rendered the claims unpatentable.
The court found that even though no mathematical formula was
explicitly stated in the claims, the method implied the use
of a simple summing method without physical elements or process
steps. [end of page 8]
However, after a very divided court issued the case of In
the future appeared brighter for the viability of broad computer
software patents. The claims of that upheld patent were directed
toward a machine for smoothing waveforms for an
oscilloscope. Since the claims were directed toward a machine,
including elements described in a means-plus-function
format, it appeared that claim drafting techniques would be
the answer to making software-related inventions patentable
subject matter. The case pointed out that although specific
hardware structures had been disclosed in the specification,
(ALU, ROM, shift registers) the claim at issue would also
read on a general-purpose computer programmed to carry
out the invention.
The case of In re Warmerdam
seemed to support this view since the court found the robotic
collision avoidance system method and data
structure claims of that patent to be unpatentable subject
matter, yet upheld the claim directed toward a machine including
memory generated according to the unpatentable method. Another
interesting note regarding that case is that the court avoided
the issue of determining a definition for a mathematical
algorithm, instead finding the issue to be whether the
method for generating a data structure representing the shape
of a physical object was a process that goes beyond
simply manipulating abstract
ideas or natural phenomena.
Later in the year, the Federal Circuit decided the case of
In re Lowry
to reverse a decision by the Board of Patent Appeals
and Interferences to find a claim to a memory
with a particular data structure for organizing
memory to be patentable subject matter. However, rather than
presenting a direct argument under 35 U.S.C. § 101, the
Board argued that the data structure was analogous to printed
matter, and thus obvious under 35 U.S.C. §§ 102
and 103. The court disagreed and found the memory
claims to be patentable.
Finally, the most recent and troubling case addressing the
patentability of software-related inventions is the case
of In re Trovato.
In this case, the court found both method and machine claims
directed toward planning a path for an object to follow in
a physical task space to be unpatentable subject matter. The
court upheld application of the Freeman-Walter-Abele
test and found that although the claims did not express the
mathematical algorithm in terms of a mathematical formula,
the court re-stated that words in a claim operating on
data can serve the same purpose as a formula.
Of particular importance to the court was the lack of disclosed
structure in the specification, prompting the court to find
the machine claims to be drafted in illusory apparatus
Finally, the court noted that Trovato does not claim
to have invented a new kind of computer which the recited
mathematical algorithm controls.
Nor do they claim that the recited mathematical algorithm
has been combined with a new memory controlling a computer
known to the art.
[end of page 9]
In conclusion, In re Trovato seems to erase the perception
created by the court in In re Warmerdam that claim
drafting techniques will provide the entire answer for the
persistent subject matter problems for software-related inventions.
Instead, future specifications will apparently be scrutinized
much more closely for detailed structural disclosure, and
mathematical algorithms will apparently be found to exist
in more unlikely locations.
The Patentability Spectrum
The case law to date indicates that the patentability of
software-related inventions can be described by examining
the spectrum of those inventions; the ends of the spectrum
are clear, but the lines in the middle are very fuzzy:
Mathematical algorithms found not to be patentable by themselves.
· a computer software algorithm for converting from
binary-coded decimal numerals to pure binary numerals
· formula for computing an updated alarm limit during
a catalytic conversion process (Flook)
· an improved mathematical equation for interpreting
seismic waves (In re Walter)
· a competitive bidding method where simply summing
was found to be a mathematical algorithm (In re Schrader)
· a method and a data structure for collision avoidance
(In re Warmerdam)
· a method and a machine for planning object movement
(In re Trovato)
Algorithms that are expressed as mathematical formulas found
not to be patentable by themselves, and those algorithms which
appear to replicate human decision-making skills found
not to be patentable:
· a process and apparatus for testing a complex
system and analyzing the results (for use in medical diagnosis),
using functions of K elements (any arbitrary subdivision
of the system such as neuropathways in the human nervous
system) (In re Meyer)
· a process for determining abnormalities
in a complex system (In re Grams)
Computer algorithms unrelated to mathematics found to be
· computer program for the translation of natural
languages (In re Toma)
· computer program for executing several equations
regardless of the order of their input (In re Pardo)
Computer algorithms that pertain to the operations of the
hardware found to be patentable:
[end of page 10]
· system software (Chatfield)
· firmware (Bradley)
· algorithm for typesetting alphanumeric equations
· waveform smoothing algorithm for oscilloscope (In
· a machine with a collision avoidance memory (In
· a memory with data structure for organizing data
(In re Lowry)
Processes or apparatus that use computer programs as a component
of the overall invention found to be patentable:
· rubber curing process (Diehr)
· improved CAT scan procedure (Abele)
· apparatus for voice pattern recognition (Iwahashi)
· method for analyzing electrocardiograph signals
Despite the various analyses by the Courts that result in
this categorization of the cases, it is also clear that some
of these cases have differences without real distinctions.
The Arrhythmia case (1992) appears to be not different
in real principle from the Walter case (1980) (the
process of analyzing electrocardiograph signals is patentable
although the process of analyzing seismic wave signals is
not patentable). Further, it is difficult to really say that
the mathematical algorithms in the two systems
analysis cases reflect a natural truth (like the law
of gravity), as the patent application claims read more
on a methodology of estimating probabilities. Accordingly,
it appears the analysis of algorithms and data
structures needs further refinement as the Courts better
understand the function and result of computer programs.
Recommendations to the
Computer Software Developer
Regardless of your opinion on the issue of whether software-related
patents are good or bad for society, the fact remains that
a rapidly increasing number of software companies are filing
software-related patent applications every day. Furthermore,
the number of software-related patents issued by the
PTO continues to increase. These facts create a need for software
companies to begin developing programs and procedures to also
protect their intellectual property through the patent system.
One of the reasons for building a patent portfolio is the
common practice of patent cross-licensing. Among companies
with patent portfolios, it is a very common practice for one
company to offer to cross-license one or more patents of its
own when accused of infringing a patent belonging to another
company. Through this practice, the patent assets of both
companies are increased. Another related reason for utilizing
the patent system is to create a more effective defense to
patent infringement suits. In other words, if another company
is aware of your patents and fears retaliatory patent infringement
actions, this knowledge can often provide a fairly effective
[end of page 11]
Thus, software companies should begin evaluating the best
internal procedures for identifying potentially patentable
ideas and pursuing patent protection for such ideas. Since
software-related patent applications are often relatively
expensive and time-consuming, appropriate business decisions
should also be made to support such an endeavor. [end of page
Jeffrey R. Kuester and Ann K. Moceyunas,
Patents for Software-Related Inventions, Iterations:
An Interdisciplinary Journal of Software History 2 (April
4, 2003): 1-14.
Computer Associates v. Altai, 982 F.2d 693, 23
U.S.P.Q.2d 1241 (2d Cir. 1992), Lotus v. Borland, 1995
U.S. App. LEXIS 4618 (1st Cir., March 9, 1995).
U.S. Const. Art. 1, § 8, cl. 8.
For additional discussion, see, Note, Patent
Policy = Protection of Inventors Rights = The patentability
of Mathematical Algorithms, 17 University of Dayton Law
Review 181 at 182 (Fall 1992).
35 U.S.C. § 101.
Diamond v. Diehr, 450 U.S. 175 at 185 (1981).
Pencil Co. v. Howard, 20 Wall. 498 at 507 (1874).
U.S.C. § 154. The law regarding the 17-year-from-grant
term for utility patents will soon change to provide for 20-year-from-filing
terms for utility patents. In other words, all utility patents
issuing on applications filed after June 8, 1995, will have
terms of twenty (20) years from the earliest effective filing
date for the invention.
June 8, 1995, there will also be a new type of patent application
available: the provisional patent application. This application
will be good for only one year and will not be examined, but
the application will establish a prior date for filing a subsequent
continuation without starting the twenty-year term, as
well as provide the inventor an opportunity to use the label
to the new laws, the types of infringing activities will also
specifically include offering to sell and importing.
U.S.C. § 284-285.
U.S.C. § 283.
U.S.C. § 102(f).
U.S.C. § 101.
U.S.C. § 102.
U.S.C. § 103.
the second requirement, that of whether the invention is the
proper subject matter for consideration of patentability,
is currently the primary issue of concern for software-related
compared to all other devices within the field of prior
art to the invention.
v. Johnston, 425 U.S. 219 (1976).
some cases, the first step of the process involves performing
a patentability search in an effort to gauge the likelihood
of actually receiving an issued patent for a particular invention.
patent law differs significantly however in two important
areas: 1) the first to file wins; and 2) there can be no public
disclosure of the invention prior to filing the application.
U.S.C. § 112
U.S.C. § 101.
v. Benson, 409 U.S. 63 (1972).
v. Benson, 409 U.S. at 65.
U.S. at 64.
In re Pardo, 684 F. 2d 912 (C.C.P.A., 1982).
In re Freeman, 573 F.2d 1237 (C.C.P.A., 1978).
of Chatfield, 545 F.2d 152 at note 5 (C.C.P.A., 1976).
re Freeman, 573 F.2d 1237 at 1246 (C.C.P.A., 1978).
board took the following definition from C. Sippl and C. Sippl,
Computer Dictionary and Handbook 23 (2d ed. 1972):
algorithm 1. a fixed step-by-step
procedure for accomplishing a given result; usually a simplified
procedure for solving a complex problem, also a full statement
of a finite number of steps; 2. a defined process or set of
rules that leads and assures development of a desired output
from a given input. A sequence of formulas and/or algebraic/logical
steps to calculate or determine a given task; processing rules.
In re Toma, 575 F.2d 872 at note 4 (C.C.P.A., 1978)
v. Diehr, 450 U.S. 175 (1981).
U.S. at 180-181.
U.S. at 180-181. The case referred to here is Parker
v. Flook 437 U.S. 584 (1978). For further reading on Flook
see Computer Program Patentability: The CCPA Refuses
to Follow the Lead of the Supreme Court in Parker v. Flook,
North Carolina Law Review 58 (January 1980): 319-58; and
Patent Law-Patentable Subject Matter: Computer Software-Parker
v. Flook, New York School Law Review 24 (1979):
re Pardo, 684 F.2d 912 (C.C.P.A., August 1982).
F. 2d at 916.
re Meyer, 688 F. 2d 789 (C.C.P.A., 1982).
re Grams, 888 F. 2d 835 (Fed. Cir., 1982).
re Iwahashi, 888 F. 2d 1370 (Fed. Cir., 1989).
F. 2d at 1375.
Research Technology, Inc., v. Corazonix Corporation, 958
F. 2d 1053 (Fed. Cir. 1992).
Quality Management, Position Paper Group 230, Claim Analysis
& Review (undated) at 4-5; as quoted in D.C. Toedt
III, Software Patent Controversies Lead to Different Outcomes
in the Federal Circuit, PTO, 9 The Computer Lawyer 7 (July
re Schrader, 22 F.3d 290, 30 U.S.P.Q.2d 1455 (Fed. Cir.
re Alappat, 33 F.3d 1526, 31 U.S.P.Q.2d 1545 (Fed. Cir.
U.S.P.Q.2d at 1558. Consequently, a computer operating
pursuant to software may represent patentable subject
matter, provided, of course, that the claimed subject matter
meets all of the other requirements of Title 35. In any case,
a computer, like a rasterizer, is apparatus not mathematics.
re Warmerdam, 33 F.3d 1354, 31 U.S.P.Q.2d 1754 (Fed. Cir.
U.S.P.Q.2d at 1759.
re Lowry, 32 U.S.P.Q.2d 1031 (Fed. Cir. 1994).
re Trovato, 33 U.S.P.Q.2d 1194 (Fed. Cir. 1994).
is first determined whether a mathematical algorithm is recited
directly or indirectly in the claim. If so, it is next determined
whether the claimed invention as a whole is no more than the
algorithm itself; that is, whether the claim is directed to
a mathematical algorithm that is not applied to or limited
by physical elements or process steps. Arrhythmia,
958 F.2d at 1058, 22 U.S.P.Q.2d at 1037.
U.S.P.Q.2d at 1199.
is an interesting comment in light of the courts previous
statement in In re Alappat that a general purpose
computer in effect becomes a special purpose computer once
it is programmed to perform particular functions pursuant
to instructions from program software. Id. at
final comment is apparently a reference to the courts
earlier decision in In re Lowry.
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