PARKER v. FLOOK

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Argument of Lawrence G. Wallace

Chief Justice Warren E. Burger: We will hear arguments next in Parker against Flook.

Mr. Wallace, you may proceed whenever you are ready.

Mr. Wallace: Mr. Chief Justice and may it please the Court.

In this case, the Court of Customs and Patent Appeals reversed a decision by the Board of Appeals of The Patent Trademark Office which had sustained the patent examiners rejection of respondent’s patent claims as not constituting statutory subject matter within the meaning of Section 101 of the Patent Code.

That was the sole ground for rejection of the claim for sole statutory issue before the Court of Customs and Patent Appeals and the only statutory section that is before the Court now.

At bottom, the Board of Appeals and the Court differed in their view of the scope and meaning of this Court’s decision in Gottschalk against Benson 409 US 63 which also involved reversal of the decision of the Court below.

The legal principles at issue in the case are fairly straightforward and can be addressed I believe without detailed discussion of the technology to which the patent claims relate in this case.

We have set forth some description of that in an Appendix to our brief.

Now, I should remind you of that the Benson case before I got to the facts of this case, involved a process, a patent claim just as this case involved a process patent claim and that in Benson, the claim was on a method of programming, a general purpose digital computer to convert signals from binary coded decimal form into pure binary form, another form of mathematical representation.

The Court there pointed out a definition of the word 'algorithm' which crops up in these cases and which I seldom use in between these cases and have a tendency to forget what it means in between these cases.

The Court there defined an algorithm as a procedure for solving a given type of mathematical problem.

There are other possible definitions of algorithm but we are talking about mathematical algorithms.

They are rather similar to formulas but they are not necessarily formulas.

They can be expressed in other forms but they are procedures for solving a mathematical problem for calculating a number in effect.

The Court held that the procedures set forth in the claims in Benson are of that kind, a generalized formulation for programs to solve mathematical problems of converting one form of numerical representation into another in that particular case.

Now, the present case similarly involves claim of novelty in a mathematical procedure.

Here, it was a procedure to be applied to familiar technology in adjusting what are called the alarm limits that are imposed so that corrected action can be taken.

Alarm limits on process variables which are changeable conditions in the process of catalytic conversion of hydrocarbons, a commercial process involved in hydro cracking and the like.

The claims are set forth and I think we can turn to the claims on page 63a of the Appendix.

There are 10 claims altogether, all of which were rejected as not being statutory subject matter.

I should add that in one of the amicus presentations, some question is raised about whether the formula set forth in claim on the series of mathematical solutions is itself novel.

No such question was decided below.

We do not believe it is before this Court.

In its present posture in this Court, we have to assume that the mathematical representations in claim one are novel.

That question would be open to the examiner on remand, should the decision below be sustained but nobody has decided it yet in this case.

Justice Thurgood Marshall: Mr. Wallace you told me turn to 63a, where I find B1=B0?

You do not want me to get involved in that, do you?

Mr. Wallace: It is not necessary to get involved in the details of these equations.

I am just trying to point out what it is that the claims involve.

Claim one is the only independent claim.

Claims two through 10 are all dependent upon claim one and state claim one with certain end use limitations.

However, none of those limitations involve any novelty that was the holding of the patent examiner and of both Courts below and as a matter of fact, this is admitted in the abstract that the respondents submitted along with his claim and perhaps the most telling point about this is that four of the additional claims two through 10 had originally been rejected, not only on Section 101 grounds by the examiner but also on Section 112 grounds as insufficient specifications to disclose to people familiar with the art, how to practice the invention.

In a petition for rehearing, the respondent said, no, these are sufficiently disclosed because they are all conventional technology that are well known to practitioners of the art.

There is no reason to have to spell them out and he cited previous patents and other technical material to indicate this.

On page 44a of the appendix at the bottom, he sums it all up in saying that the means are conventional and well known in the art and therefore these specifications are adequate to meet the requirements of Section 112 and the examiner in response to this withdrew his objections under Section 11, so we have also collected on page 7 of our brief, various citations to the record which show that these claims do not add anything inventive or new in stating their end use limitations.

They are in their function in this case, little different as we suggested in our brief from an attempt to patent the Pythagorean theorem about the relationship…

Justice Potter Stewart: That is only one ingredient of a combination.

It is one element of a combination, isn't it?

Can't you have a combination patent on a process as well as on a product?

Mr. Wallace: So far as I am aware, there never has been a --

Justice Potter Stewart: That is what this is clearly, it is a combination and this is one element of a combination.

The force of gravity is not patentable but if some inventor came in or some applicant for a patent came in and showed a combination process and using gravity as one element that always before had been used by manpower or electric power or gasoline power, he could patent that combination, even though all the other elements were old.

Mr. Wallace: There could be a combination patent on a series of steps, processes putting together processes that formerly had not been put together.

If you had the proper kind of an inventive contribution…

Justice Potter Stewart: That depends upon Sections 102 and 103, not 101.

Mr. Wallace: Well, that would.

Justice Potter Stewart: Which was never reached by the examiner in this case?

Mr. Wallace: No, it may be that -- the decision in this case is not based on any contention of combination patent.

Justice Potter Stewart: He never got there.

Mr. Wallace: It never got there.

It was never even claimed as a combination patent.

Justice Potter Stewart: well, that is what it clearly is, isn't it?

It is a series of steps.

Maybe combination is not the right word.

I am not an expert patent lawyer but it is a series of steps in a process is it not?

Mr. Wallace: It is a process claim.

Justice Potter Stewart: Exactly, it is a method or process claim.

Mr. Wallace: The claim is on the process set forth in part one, the parts -- claims two through 10 are all dependent on that.

They are not set up as if the overall claim is on a combination of processes.

They are just variation, various application …

Justice Potter Stewart: A process consisting of several steps, only one of which is this…

Mr. Wallace: Well, in a sense, claim one itself is a combination of steps.

Any process is a combination of steps.

You can think of it as a combination…

Justice Potter Stewart: Certainly it is.

Most products are combination of elements.

Mr. Wallace: That is correct.

All I was trying to set the stage for here, is that respondent has never claimed that claims two through 10 introduce anything novel, any more than it would be novel to say application of the Pythagorean theorem to surveying or to architecture would somehow limit the claim or if you limited, if you wanted to say application of it to surveying East of the Mississippi river, they are limitations in that sense but they are not limitations that go to the essence of the claim.

The essence of the claim and what all the litigation has been about is contained in claim one and the four steps that are set forth in claim one and that is what I want to turn the Court’s attention to.

Justice Potter Stewart: What do you think about my hypothetical case about an applicant for a patent?

Process patents, using the force of gravity where always before manpower or electric power had been used to produce what he says is a superior effect to the prior art because this gravity in combination with the known and old element has synergistic effect, would that be a valid process application for a process patent?

Mr. Wallace: There is an old case in this Court that is very similar to that hypothetical.

Eibel Process Company which is cited in Footnote 7 on page 5 of our reply brief and the Court there upheld the claim because they found that the application was an inventive one even though it was using the force of gravity in a paper manufacturing process and I do not think the present case really presents the question whether that case was correctly decided.

Obviously…

Justice Potter Stewart: Obviously gravity itself is not patentable.

Mr. Wallace: That is correct and every process claim is a claim about a series of steps to achieve a result.

Justice William H. Rehnquist: Mr. Wallace, you say you cannot patent the Pythagorean Theorem but do you say a transit used in surveying is not patentable just because it employs the Pythagorean Theorem to accomplish its result?

Mr. Wallace: Not at all.

There may be product claims that are quite valid that utilize the theorem but if the claim is to the theorem itself, to the process of using the theorem or using any mathematical formula or method of calculating a number, if that is the claim, then the fact that you want to claim it only in claim Two using it for surveying and in claim Three using it for architecture and in claim four using it for some other conventional method of use, I do not present material limitations on the claim.

They do not show any inventive use of the claim.

It is just a matter of draftsmanship of spelling out various end uses and you can spell out as many as you can think of in order to claim the mathematical process related to various end uses so as to get a process patent on the mathematical process.

Justice William H. Rehnquist: You say this claim here did not address itself to any of the equipment involved?

Mr. Wallace: It did not.

It was not tied in with any specifically designed apparatus.

The whole thrust of the application was that you use the conventional methods that are now used in setting the alarm limits.

But by putting this mathematical formula into the computer, you can calculate the numbers more easily and then imply them in the ordinary way that the numbers are applied in the existing technology.

That is the essence of what the claim was and if we look at the setting forth of the claim on page 63a, there are four steps in claim one which is the only claim that is material to the argument as I see it.

The first is determining the present value and the description says you do that the way you do it now.

The claim does not try to fill in what the values would be of the process variables.

It depends on the process that you are operating.

You just go about it in your regular way.

Two and Three which have the formulas are the mathematical algorithm as it is defined in Benson and then number four is adjusting the alarm limit to the number that you calculated by means of steps two and three.

So four was added on and it is described as just doing what you would ordinarily do once you have the number and to use a very homely analogy.

It says, if two and three were a claim for a process of a new way to put together cake ingredients and then another step was added after you have put the ingredients together that way, you put the cake in the oven and bake it.

That would be number four.

It is what you would ordinarily do with the number, the process of calculation and what is being done now with the numbers is they are calculated in the way that they have been calculated right along.

There is no element of novelty in number four.

But the question to use the cake analogy is whether if the new method of putting together the ingredients was not a patentable process, the fact that you added a fourth step saying and then after you have put them together, you put the cake in the oven and bake it, would transform that into something that would not be covered by the limitations of the Benson decision.

That is really the way the question was put in the Board of Appeals and before the Court of Customs and Patent Appeals in adjudicating the case and the decision in the Board of Appeals and by the examiner noted, I am lumping these two together for brevity, that once the number was calculated, no unexpected results were achieved by simply using the number in the way you would ordinarily use the number and for that reason granting the patent would in practical effect be a patent on the formula or the mathematics itself.

That was the holding because as the Board of Appeals said, the respondent proposes to use just the conventional automatic alarm adjusting equipment to implement the invention in the ordinary way so that the only element of novelty is the way of calculating the numbers according to these formulas.

Justice William H. Rehnquist: What if he saw a patent with the algorithm and the conventional alarm adjusting equipment, he could not have been turned down solely on the basis that the whole thing was non-patentable subject matter?

Mr. Wallace: Excuse me, if he sought a patent on…

Justice William H. Rehnquist: Supposing if a claim included not only the algorithm but the machinery for putting the algorithm to use?

Mr. Wallace: Well, if it is tied in to an apparatus which is itself an inventive contribution, an element of novelty then the process can be claimed.

That is the teaching of the Telephone & Telegraph cases.

Justice William H. Rehnquist: Supposing I went tomorrow to the patent office and applied for a patent on the telephone, I assume I would be turned down but not on the grounds that it was non-patentable subject matter but on the grounds it was not novel.

Mr. Wallace: Of course if that was….

Justice Potter Stewart: That would not be under 101 would it?

Mr. Wallace: That would not be under 101.

But there your claim would be not on a method of calculating a number, not on a mathematical formula.

But it would be a claim on a process for achieving a result in apparatus.

Justice Byron R. White: Mr. Wallace, do you think this patent would foreclose use of this algorithm for any other possible imaginable purposes?

Mr. Wallace: The Court of Customs Patent Appeals concluded that present claims do not preempt the formula or algorithm contained there in.

I think that is exactly right.

I think that that is the basis of their distinction of events and say because this fourth step was added adjusting the alarm limit to update the alarm limit value it ties the preemption of the formula into a particular use in the either cracking process.

Particular manufacturing process and, therefore because solution of the algorithm itself would not infringe the patent, the Court distinguished this Court’s decision in Benson and that is the essence of what is involved here.

It is the way the question was put in both Courts below.

As a matter a fact it was all put in the context of a --

Justice Byron R. White: Well then is the argument is just how to construe the claims?

Is that all it is?

Mr. Wallace: I do not think it is an argument about how to construe the claims.

Justice Byron R. White: Do you mean the Court is legally wrong even if it is true what they said here?

What I just read to you? Let assume that is correct.

Mr. Wallace: We say that it is legal error that the Board of Appeals resolved the question correctly.

Justice Byron R. White: Mr. Wallace, let us assume, that it is correct what the Court of Appeals said.

The present claims do not preempt the formula or algorithm contained there in because the solutions of the algorithm per se would not infringe the claim.

Mr. Wallace: That is correct.

It may not be any other use for it at the present time that we know of, but somebody could solve the algorithm without infringing this.

Justice Byron R. White: Let us just say they solved it and found another use for it, would it infringe these claims and the Court of Appeals says it would not and if you agree with that, that it would not --

Mr. Wallace: That is correct.

That is exactly the issue whether if in Benson had added to his claim that it would then be used in conventional telephone switch board devices.

Justice Byron R. White: I remember the argument.

Mr. Wallace: But that would make Benson a valid patent claim and in other words if the Court of Customs and Patent Appeals is correct here then this Court’s decision in Benson is really reduced to just a drafting obstacle and the drafting of patent claims.

If the claims are drafted so that one or more end uses are tacked on and you can tack on a list of them in separate claims as long you can anticipate.

Then you could get exactly the patent that this Court denied in Benson.

Justice Byron R. White: But the Court of Appeals construed this patent as though it were just a application for a patent for a peace of machinery?

Mr. Wallace: No, it was a process application.

Justice Byron R. White: Alright, just an ordinary process application.

Mr. Wallace: But using this algorithm.

Justice Byron R. White: Yes, using the algorithm that is right.

Mr. Wallace: If I can focus exactly the way the controversy was put below on page 12a of the Appendix to our petition the controversy concerned this quotation in the middle of page 12a which was from a prior opinion of the Court of Customs and Patent Appeals applying this Court’s decision in Benson.

That was the Christensen case in which the Court struck down a patent claim on a method of determining mathematically the porosity of subsurface formations under the ground without having to dig in to them.

As we happen to be in the opinion of the Board of Appeals now and looking at this quotation from the Christensen case and they focused on the formulation, the words, the point of novelty, as the Court of Customs and Patent Appeals had said it is a method claim which the point of novelty is a mathematical equation to be solved as the final step of the method, a statutory method and the holding was no, under Benson it cannot be, but the contention was then made that point of novelty is not the controlling language there.

The controlling language is the final step and it is only if the mathematics is the final step as well as the point of novelty.

That Benson would be controlling.

The Court of Customs and Patent Appeals agreed with that so that by adding a final step to any of these claims Benson in effect becomes a dead letter and in a concurring opinion which I had hope to be able to read excerpts from, but I do not have time.

Concurring opinion in Christensen Judge Rich very candidly said that he really as he said.

He did not understand the basis of the holding in Benson.

It seemed to him that all of these processes were equally useful and that they really should confine Benson just to the situation where the mathematical step would itself be an infringement.

Justice William H. Rehnquist: But he is not the only one that feels that way about Benson isn't it?

Mr. Wallace: Well, apparently his colleagues feel the same way and they have construed Benson as I say they are reducing Benson to be nothing but a drafting obstacle.

Unknown Speaker: Benson in which I did not participate but I have read, stands for the proposition for the old well settled proposition that you had a force of nature or the Einstein Theory is not subject to being dissident.

That is what it stands for is it not?

Mr. Wallace: The significance of it does stand for that proposition.

The significance of it as we see it is that it applies the Funk Bros test which had been applied therefore only to product claims about the test of invention under Section 101 and that was the basis of the holding and Funk Bros.

The mixture of bacteria was a composition of matter in a colloquial sense, but it was not an invention of a composition of matter within the meaning of Section 101 because the only element of novelty was the law of nature that was...

Unknown Speaker: Was a natural phenomenon.

Mr. Wallace: That a natural phenomenon if they would not inhibit each other and Benson said that the same rule applies to process claims and it applies to mathematical formulae and if that is the only the novelty the mathematical formula you cannot preempt this basic currency of exchange of scientific and technical knowledge.

Unknown Speaker: If anybody else who used the formula would have infringed the patent.

Mr. Wallace: That is the way the Court of Customs and Patent is now construed this.

Unknown Speaker: Is not that what Gottschalk said?

Mr. Wallace: It is not what Gottschalk said, I mean it happened that there was no end use at all specified for it, but you can achieve the same result by specifying every end use that you could now think of as a conceivable end use and if that is all Benson means, it means nothing.

I would like to reserve the balance of my time.

Chief Justice Warren E. Burger: Mr. Allegretti.

Argument of D. Dennis Allegretti

Mr. D. Dennis Allegretti: Mr. Chief Justice and May it please the Court.

I would like to attempt in the time given to me to perform a dual role if I may.

My primary and principal role is of course as an advocate on behalf of my client to seek a basis for the granting of a patent to Mr. Flook, but my second role and I think of equal and if not surpassing importance is to attempt to clarify the true significance of what appears to be according to a petitioner a dispute on whether a given patent is patentable.

I think it goes far beyond that.

The applicant Flook find himself in the awkward circumstance of being in the middle of a crossfire between the Court of Customs and Patent Appeals and the United States Patent Office.

If the applicant adheres to and abides by the clear decisions which have evolved over a period of successive cases since Benson.

He finds himself rejected by the patent office.

If he seeks regress from the Court of Customs and Patent Appeals, he finds that the patent office still disagrees and what we have here is a dispute as to the proper test to be applied to Section 101.

The Court of Customs and Patent Appeals has evolved through a series of well reasoned decisions of proper application of the test of Benson and that test is the practical effect test.

Examining the invention as claimed and examining the claim in its entirety.

Do we have simply an exercise in manipulating the English language by ingenious patent draftsman?

Is the effect of the claim cruelly to attempt to appropriate a category of subject matter that is not qualified by the Congress under Section 101?

If that is the case, if the impractical effect, all that is being claimed is a non-statutory category of subject matter, it must be rejected.

What the patent office would do here is to substitute an entirely new theory, a new test, an inventiveness of implementation test.

I find it very difficult to interpret what an inventiveness of implementation test is if it is not…

Unknown Speaker: That is not new in this case.

Mr. D. Dennis Allegretti: They have argued for that type of test in previous cases before the Court of Customs and Patent Appeals.

It is new before this Court.

Unknown Speaker: It is not new to their patent office.

Mr. D. Dennis Allegretti: No, but they have been repeatedly overruled by the Court of Customs and Patent Appeals when they have attempted to apply such a test.

The recent decisions of the Court of Customs and Patent Appeals show how that contest has evolved and if I may Your Honors, there is a very current decision of the Court of Customs and Patent Appeals as yet unpublished which was unavailable for us to sight in our briefs, but which I think the Court might make reference to if for no other purposes than to ascertain what is the position of the Court of Customs and Patent Appeals with respect to the application of the Benson doctrine and that is the decision of the Court in the matter of the application of Richard Don Freeman Appeal number 75-531.

The Court of Customs and Patents Appeal--

Unknown Speaker: When was that decided?

Mr. D. Dennis Allegretti: That was decided on March 30, 1978.

Justice Potter Stewart: May I have the number again?

Mr. D. Dennis Allegretti: The number 75-531.

Justice Potter Stewart: Thank you.

Freeman?

Mr. D. Dennis Allegretti: Yes, Your Honor, in the matter of the application of Richard Don Freeman.

In a series of decisions by the Court of Customs and Patent Appeals, there was specific consideration of the individual claim and an attempt in the light of Benson to ascertain whether as a matter of practical effect there was a cleaning, an attempt to appropriate and preempt that category of subject matter, a mathematical algorithm as such which cannot be patented.

There is no dispute as to the basic concept of the law enunciated in Funk.

The Congress simply did not intend that discoverers those who learn for the first time of an existing phenomenon of nature and expressed it in the form of a mathematical expression we are entitled to a patent.

Justice Potter Stewart: Although the Constitution uses the word discovery.

Mr. D. Dennis Allegretti: Yes, Your Honor.

Justice Potter Stewart: It does not mean that in our popular understanding of that word.

Mr. D. Dennis Allegretti: That Congress could have awarded patent grants for such discoveries had it chosen to do so within the constitutional power.

They chose not.

Justice Potter Stewart: There is a theory that the meaning of that word is different in the 20th Century from what it was in 18th.

Mr. D. Dennis Allegretti: Certainly the way it has evolved it is different, Your Honor.

Enacting the patent statute the Congress made it clear in its first several sections of the statute, what its plan and pattern was.

First in Section 100, the definitions.

An invention is described there.

It is defined with a circular definition.

Invention means discovery, but I think that Congress was attempting to say, invention means what we all know it to me.

It has just got its common English language meaning.

That is different from patentable invention.

Now we must determine whether it qualifies for patenting.

In section 101, they said whoever invents or discovers may qualify for patenting if the nature of this subject matter falls within the certain defying categories and the Congress said a process, a machine, a manufacture, composition of matter, or improvements in them.

Now, the discoverer of a previously unrevealed natural principle simply does not qualify under those categories and no matter how he may attempt to express it if what he is seeking to patent is simply the discovery of this existing phenomenon.

However, important that may be he cannot patent it.

The example that we like to use, because it has a little bit of drama to it is Einstein’s E=mc2.

An extraordinary discovery of the human mind, certainly it contributed immensely to science and its evolvement, but it simply would not be patentable under the patent statute.

Now, let us suppose you attempt to patent E=mc2 by converting it into the sequence of steps of a process, but if the sum and substance of the process you have defined has no practical application except the solving of that equation to determine how much energy there is in a given quantity of mass, it is not patentable.

What this Court said in Benson was to reestablish clearly and unmistakably that vital principle.

“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 result."

If the commissioner suggests that there must be an inventiveness of implementation test, he applies a terribly discriminatory standard to an inventor who has discovered an old phenomenon but discovered it for the first time.

His task is far more difficult than the putterer in the laboratory who may just chance upon something and not have the faintest idea why it works.

If I can illustrate that, the inventor who understands and is the first to discover a phenomenon of nature, who ascertains and can set forth for the public knowledge and underlying scientific principle would be barred by his own implementation of that, however new his implementation might be because the patent office would say he is simply doing what would naturally evolve from the suggestion of the principle in effect, this is tantamount to claiming the principle.

Whereas one who did not know the principle did not discover it and attempted to define a use of it would not be so barred.

The inventiveness of implementation tests also disregards how to compare the inventor's contribution with the prior art.

The Congress said in the 1952 Act, it must not only be new and useful and an invention, but it must be an invention in patentable sense which we say to me according to the prior cases un-obvious to one of ordinary skill in the art.

It must also in its usefulness not have been disqualified form patentability, so we have two additional sections; we have Section 102 that lists the disqualifications.

If the subject matter had become known to the public in someway, if it is in a printed article, public use, on sale, no matter how inventive it may have been it maybe too late to get a patent.

Hence, it is disqualified.

Under 103, we must now compare the invention assuming it is not disqualified with the prior art and focusing upon difference with regard to the invention as a whole, we must ascertain whether it would have been not obvious to one of ordinary skill.

Here if the inventiveness of implementation test is applied rather than the practical effect doctrine of Benson, we have an inventor hoist on his petard.

He is damned by his own discovery.

He is not one of ordinary skill in the art.

He is the discoverer and the inventor.

If you say, well, he knew the basic underlying principle so his implementation would naturally follow, he is in a worse position than the man who did not discover the underlying principle.

This is not an appropriate standard to apply it and the correct standard is the 103 Standard.

Justice Potter Stewart: What is the meaning of the last sentence of 103?

Mr. D. Dennis Allegretti: I was coming to that Your Honor, if I may get a copy of 103 before me?

Justice Potter Stewart: It is on A3 of your brief.

Mr. D. Dennis Allegretti: I have been getting lost with the number of briefs and I do know my way through my copy of the statute book.

patentability shall not be negative by the manner in which the invention was made.

This is an extremely important aspect of the statute, an expressed provision of 103.

If the inventor is to be measured by the inventiveness of the implementation of that which he has discovered, he is not being accorded the benefits of the condition of 103.

Justice Potter Stewart: In this case the application, the consideration never got beyond 101.

Mr. D. Dennis Allegretti: That is correct Your Honor.

I drew the inference perhaps erroneously that the 112 rejection having been made and having been overcome resulted in fall back rejection under 101.

The 101 rejection was made at the very outset.

It was persisted in throughout the prosecution.

Justice Potter Stewart: If something is not patentable under 101, one never gets to 102 or 103.

Mr. D. Dennis Allegretti: That is correct Your Honor, but if one qualifies under the categories capable of being patented under 101.

Justice Potter Stewart: Then one moves to 102 and 103.

Mr. D. Dennis Allegretti: Precisely, Your Honor.

Now, one of the strongest criticism raised by the Court of Customs and Patent Appeals with regard to the commissioners test, is that the commissioner dissects the claim.

He says there is an algorithm in this claim.

There is an equation in this claim and that as such is un-patentable, we acknowledge that.

But then he says but the balance of the claim and all of this other steps are straight forward, routine, and therefore because the point of novelty is non statutory, we will reject the claim as a whole.

Not so, says the CCPA and not so we say on behalf of the applicant Flook, you must examine the claim in its entirety.

You must look at all of the steps.

You must look at it in its total environment.

If I may, I would like to re-answer some of the questions that were put to the petitioner.

Mr. Justice Marshall looked with some horror at the formulae set forth in the claim and asked that you do not want me to get involved with that and that is correct you’re Honor.

And that is correct Your Honor, you need not focus on a particular equation.

Justice Thurgood Marshall: I am formally from the Second Circuit.

Mr. D. Dennis Allegretti: I see, Your Honor.

Justice Potter Stewart: I am from the Sixth.

Mr. D. Dennis Allegretti: We must look at the claim as a whole and the claim is a sequence of steps which happens to also include an algorithm and an equation.

That algorithm and an equation, we do not concede as old.

The algorithm is novel.

There is no rejection that it is not novel.

In fact, it is conceded that it is the point of novelty.

It is not an old equation because the values assigned to it are uniquely assigned for the specific purpose of this invention.

The steps of solving the algorithm or solving the equation by means of the algorithm however we state it has not been done before.

There is no contention that it is an old algorithm.

Justice John Paul Stevens: Can I interrupt you right there with a question.

Supposing that instead of this complicated formula, you just had a formula 4 divided by 2 equals 2 right in there and that was not new.

Could you nevertheless claim that even though 1, 2, 3, and 4 were all old, that the combination of 1, 2, 3, and 4 was in fact new and therefore patentable?

Mr. D. Dennis Allegretti: Yes, indeed.

Justice John Paul Stevens: Why all the emphasis on novelty if one element, when the element question as I understand is a novelty of the entire process?

Mr. D. Dennis Allegretti: I must speculate Your Honor, I believe it is because that patent office takes the view that any claim which utilizes an algorithm is in the nature of a programmable computer type of claim and they simply are not equipped to examine that type of subject matter and this is a convenient handle for rejection.

Chief Justice Warren E. Burger: They got that impression out of Benson perhaps did they?

Mr. D. Dennis Allegretti: It has been so stated that that is what Benson stands for.

I believe it does not stand for that.

I believe the case is quite clear that the Court did not so state.

Indeed even some of the judges of the Court of Customs and Patent Appeals have been dissenting opinions stated that that is what Benson stands for but I do not believe that is correct.

I do not believe this Court in Benson said that all programmable computer inventions are not patentable.

In Benson, we had the classic example that fits the Funk rule.

We had two kinds of numbering systems.

Justice John Paul Stevens: Mr. Allegretti, let me ask one other question if I may.

Just looking at claim one, it would not necessarily have to use a computer would it?

Mr. D. Dennis Allegretti: Not at all and claim One does not specify there should be a computer.

Indeed, Your Honor, no claim so specifies.

There was no use of the word computer, program or software in any of the claims.

Claim Three I believe it says automatically.

Justice John Paul Stevens: Under the government’s position, as I understand it, I suppose this perhaps should be addressed to Mr. Wallace, If you had a man watching the process that he found out that you could divide the temperature by the pressure or take half the difference of something and then push another button and it was brand new and it worked, that could not be patentable because there is some mathematical computation took place in the process, is that right?

Mr. D. Dennis Allegretti: That would be the petitioner’s contention, Your Honor.

Justice John Paul Stevens: It does not really have anything to do with software as I understand the underlying theory.

Mr. D. Dennis Allegretti: It does not.

It has to do with the basic concept that a mathematical expression of a fundamental truth or scientific principle is not patentable, we concede that.

Unknown Speaker: You concede that.

Mr. D. Dennis Allegretti: Certainly, that is the Funk rule.

That is the foundation for this Court’s ruling in Benson.

Benson says, let us not be deceived.

Let us look deep into the claim.

Let us see if has really condemned a la Funk or whether in fact some new process is being claimed.

If it is no more than a fundamental principle of nature in the clothes of a process, it still is not statutory subject matter and in Benson, clearly the relationship between the two numbering systems was old and existed.

It is a fundamental unknown concept discovered by a particular applicant.

When he then attempts to translate one into the other, he is just utilizing that concept for that sole purpose and in effect would be preempting the relationship between the new numbering systems which is not capable of being preempted.

The Court of Customs and Patent Appeals in its decision which is cited in the briefs of De Castelet which is reported at 562 F.2d 1236, Chief Judge Markey rendering the opinion of the Court pointed out that since Benson, they had attempted to evolve a standard.

They stated that it was clear from their point of view that the nutshell language of Benson simply expressed the ancient rule but practical application remains the key.

What have you done with this discovery of an old concept?

They concluded that in the Benson case, the Court had simply said that sum and substance of the claim however characterized was in effect claiming the basic principle.

The Court then said if I may read, the distinction may thus be fine indeed between statutory and non-statutory subject matter considering the glorious flexibility and frustrating limitations of the English language on the one hand and the ingenuity of patent draftsman on the other.

Nonetheless, the line required by precedent and which must here be drawn is clear, the mathematical expression of scientific truth or principle is not itself patentable.

They concluded by pointing out that the case before them, De Castelet, fell on that side of the statutory, non-statutory line occupied and then they recited their string of cases.

On the one side, un-patentable because not qualified under the statutory requirement of 101 were the Morse case, Benson, their case in Christensen and the Wall, Bowman, Richman decisions.

On the other side of this fine line, however, where the effect of the claim is not to appropriate a scientific principle, under the guise of a statutory process, where the decisions by the CCPA in Chatfield, Deutsch and Flook.

Justice Byron R. White: Do you agree with that categorization of the cases?

I would not think you would, but do you agree with that type of placement of Christenson?

Mr. D. Dennis Allegretti: I examined the facts in each of them Your Honor and I struggled a bit with Christensen and I believe the common denominator in the un-patentable cases is that however it is being characterized, it is something that was old, maybe not known, but old, whereas in the cases which did qualify for patentability, there was not that oldness to the concept that was being described.

Justice Thurgood Marshall: What about this algorithm on the oldness?

The “oldness” of the algorithm.

Mr. D. Dennis Allegretti: I believe under 101, old means it is there in the public domain.

It has existed but it may be undiscovered.

It may not previously have been revealed but nevertheless, it is part of the scientific tools.

Chief Justice Warren E. Burger: How is it in the public domain if it has never been revealed, that eludes me a little bit.

Mr. D. Dennis Allegretti: Rather than not in the public domain, it is not capable of being patented.

It does not fall within one of the categories of 101.

In 102, however, we now, deal with old in a different way.

Old in the sense that the public knows about it by some means.

It is now prior art.

Justice Thurgood Marshall: But this would have been here forever has it not?q

Mr. D. Dennis Allegretti: This one meaning what Your Honor?

Justice Thurgood Marshall: The algorithm in this case.

Mr. D. Dennis Allegretti: The algorithm in that case, no, Your Honor.

We do not concede that that is an old algorithm.

Justice Thurgood Marshall: Why not?

Justice Potter Stewart: This has been waiting for some mathematician to come along has it not?

Mr. D. Dennis Allegretti: I do not even believe it is that Your Honor.

I do not think it is like Benson’s algorithm at all.

This is simply the manipulating of certain values by the inventor in a way that has not been manipulated before?

Justice Potter Stewart: But it has just been waiting for somebody to come along and manipulate it?

Mr. D. Dennis Allegretti: Yes, Your Honor and then to apply it to some useful and practical purpose.

Justice Potter Stewart: What was the opinion of the Court of Customs and Patent Appeals that you were describing to us?

Mr. D. Dennis Allegretti: De Castelet, Your Honor.

Justice Potter Stewart: I cannot find it in the index to your brief.

Mr. D. Dennis Allegretti: Perhaps my colleague can find the page but the citation is 562 F.2d 1236.

Justice Potter Stewart: That is a Court of Appeals' opinion I thought.

Mr. D. Dennis Allegretti: Court of Customs and Patent Appeals.

Chief Justice Warren E. Burger: What you have just described, is that characteristic of a good many of the patents that have been allowed in hydraulic mechanisms and processes that is the utilization of ancient laws of physics but combined in a way that produced a new use of hydraulic power?

Mr. D. Dennis Allegretti: Certainly, Your Honor.

Mr. Justice Stewart’s question with respect to the Eibel decision is directly in point with regard to that where the force of gravity was being utilized but the force of gravity was not being claimed.

It was the novel application of it to a new use and result which was being claimed.

Every invention is in some way a utilization of basic concepts and principles of nature.

But it is the claiming of such which is forbidden even though newly discovered.

Justice Potter Stewart: The claiming of such per se.

Mr. D. Dennis Allegretti: Yes, Your Honor.

If I may conclude in this way, in the Freeman case of the Court of Customs and Patent Appeals which was newly decided and yet unreported as I indicated to the Court, a test was suggested there which I think makes good common sense and seems to be what the Court of Customs and Patent Appeals has been doing ever since Benson and Talbot.

The Court said that a two step analysis is appropriate to determine whether there is qualification under Section 101.

First, it must be determined whether the claim directly or indirectly recites an algorithm in the Benson sense of that term.

The Benson sense of that term meaning the mathematical expression of an old principle even though it may have previously been undiscovered.

Second, the claim must then be analyzed to ascertain whether in its entirety, not dissected for some alleged point of novelty but whether the claim in its entirety wholly preempts that algorithm and under the facts of our case with regard to Mr. Flook in his modest invention in the field of process controls, he does not claim an algorithm of the Benson sense.

We do not concede that his expression of the equation is in any sense an old expression.

There is no rejection of novelty.

He claims it in a very specific environment like catalytic chemical hydrocarbon conversion process.

He does not attempt to claim all other uses.

Mr. Justice White asked the question would this patent foreclose use of this algorithm for other uses.

It certainly would not.

Justice Byron R. White: Are there any other uses?

Mr. D. Dennis Allegretti: Yes Your Honor.

The petitioner’s brief at Appendix page 8a suggests many such other uses.

I would have to step outside the record to confirm that but I think it is a true statement.

Justice John Paul Stevens: Can I ask the other side of the coin for a moment?

Does your position mean that every time a software person is requested to solve a particular problem and in this case, how to compute a new alarm and limit or adjust it or something, how to figure out how much fuel to be added to the process or something like that, the problem has not been worked out with computers before, the idea that if you work it out is obvious, he comes up with some mathematical formula that will solve that particular problem.

It was not obvious because it took him five weeks to work out a lot of tough mathematics and it was new and nobody has done it before.

It is automatically patentable.

Every computer solution, every software solution to a new problem?

Mr. D. Dennis Allegretti: No, Your Honor.

I do not think it is automatically patentable.

Justice John Paul Stevens: Why not?

Mr. D. Dennis Allegretti: I contend that if it is properly claimed and if the….

Justice John Paul Stevens: Their argument as I have said, they seek to direct our attention to a case in which the only point of novelty is the new formula.

The new algorithm.

Mr. D. Dennis Allegretti: Although I contend that is not the case in Flook, I will accept the assumption of a fact situation where the only point of novelty is the equation.

I think that that would qualify for patent examination and the determination must be is the use of that algorithm for that purpose un-obvious?

I think it would have to be determined.

Justice John Paul Stevens: Of course the use of the algorithm would have been un-obvious because he had to work it out.

It was new.

Mr. D. Dennis Allegretti: Then it would be patentable.

Justice John Paul Stevens: But then is not every new software not patentable?

Mr. D. Dennis Allegretti: No, Your Honor.

Because as Mr. Justice Marshall says if you examine them in their entirety to see what has really been done and you apply the practical effect test to Benson, they will either stand or fall on the merits of the contribution that has been made in applying it.

Justice John Paul Stevens: I assume, well every new software program that has some practical value is worth spending enough money to hire somebody to work for six weeks to find the answer.

Mr. D. Dennis Allegretti: I think the decisions of the CCPA in Deutsch which is cited in De Castelet case and in other decisions as well Richman, did find patentability in a computer software application to a new use.

Justice John Paul Stevens: I am not saying it is necessarily wrong but I do not really see where we draw the line between new software that is patentable and new software that is not patentable when it is produced in response to some kind of industry request that is for a particular answer to a particular problem.

Mr. D. Dennis Allegretti: If properly claimed so as to qualify under 101 in the way in which I have been describing it, I think the way it is determined is under 103.

Is it an obvious use?

Does it qualify for patentability under the other provisions of the statute.

I would simply sum up if I may with the view that the Flook claims are directed to a series of combination steps and the statute itself.

Section 112 of the statute clearly contemplates combination step inventions including process inventions, it is appropriate to claim such an invention in a combination format.

The practice of the algorithm that is included in that combination of steps in and of itself would not infringe the claim that is not being preempted and appropriated.

The claim is not to some use West of the Mississippi.

It is very explicit.

It is in a catalytic, chemical conversion process with hydrocarbons.

It is a process that has never been performed before, the use of the algorithm for this purpose has never been done before.

If it is un-obvious, it should clearly be patentable and capable of being examined for patentability in accordance with Section 101 of statute.

Thank you, your Honors.

Chief Justice Warren E. Burger: Mr. Wallace do you have any further.

Rebuttal of Lawrence G. Wallace

Mr. Wallace: In the limited time, I have remaining, I have to take issue with respondent’s characterization of the Funk case and with his analogy to the putter in the laboratory.

The putter in the laboratory who comes up with a new apparatus although he did not know the phenomenon of nature he was applying gets a patent only on that apparatus.

Someone applying for a process patent on the phenomenon of nature as applied to this end use preempts all use of that phenomenon of nature regardless of what other apparatus someone might design for this end use.

It is a much broader preemption of the phenomenon of nature that we are talking about here, limited only by an end use and end uses can be listed along.

Justice John Paul Stevens: But Mr. Wallace, in this particular patent, this relates to conversion of hydrocarbons, you would not say the patent would preclude the use of this algorithm to make bathtubs or something like that.

Mr. Wallace: But if he had listed it to make bathtubs, then it would have precluded it to make bathtubs also.

It is just a matter of drafting the claim.

The point of novelty is in the algorithm.

Chief Justice Warren E. Burger: But he did not make that determination.

Mr. Wallace: He did not make it but we are talking about whether he can get it for whatever end use if he specifies, if the only thing new is the algorithm which is comparable to a phenomenon of nature.

Now, the Funk case, I have to emphasize was a case in which this Court held that the standard of invention under Section 101 must be applied to the application of the phenomenon of nature.

This is not a novel question before this Court.

This is the significance of the holding in Funk.

The claim in Funk was not on the discovery that these bacteria did not inhibit one another.

The claim in Funk was on the product of a mixed inoculant that was commercially valuable that was being marketed to farmers for use on their leguminous plants in which these bacteria were intermixed and that the Court said was the application of the phenomenon of nature.

It used the very word 'application'.

Then it said, however ingenious the discovery of the underlying natural principle may have been in this case, the application of it is hardly more than an advance in the packaging of the inoculants.

The application did not meet the standard of invention and the very last paragraph of the opinion says, we conclude that the product claims do not disclose an invention or discovery within the meaning of the patent statutes and at that time, Section 103 was not in the patent statutes.

That was merely common law about obviousness.

What was in the patent statutes was that it must be an invention or discovery of a new and useful product and it was not because there was no novelty in the application of the phenomenon --

Justice John Paul Stevens: Let me ask one other question about the government's position I am not entirely clear on.

If not only the algorithm were novel and new, but also the concept of using any algorithm to compute adjustable alarm elements was also new, would the government say that that fact that a new algorithm was used disqualified the entire process from being patentable subject matter?

Mr. Wallace: We would say there has to be novelty in the end use.

It either has to be tied.

Justice John Paul Stevens: If there is novelty --.

Mr. Wallace: The use itself must produce an unexpected result.

Justice John Paul Stevens: Just try to listen to my question.

If there is novelty in the end use and also novelty in an algorithm, that is part of the process, is the subject matter patentable in the government’s view?

Mr. Wallace: That is a patentable process patent but tied into that end use or that apparatus, that is what we understand Benson and Funk to mean and Benson saying that Funk applies to process patents.

That is our position and otherwise, you do get all computer programming subject to patentability with all the difficulties that are pointed out in an amicus brief which I have not had time to refer to but which I do call the Court’s attention to filed on behalf of the Computer and Business Manufacturers Association which points out both international problems and problems of trying to set up a search system for this.

These are matters that do require legislative attention.

The present patent laws are not designed for this.

Chief Justice Warren E. Burger: Thank you gentlemen.

The case is submitted.