`
`93 S.Ct. 253
`409 U.S. 63, 93 S.Ct. 253, 34 L.Ed.2d 273, 175 U.S.P.Q. 673
`(Cite as: 409 U.S. 63, 93 S.Ct. 253)
`
`
`
`Page 1
`
`Supreme Court of the United States
`Robert GOTTSCHALK, Acting Commissioner of Patents,
`Petitioner,
`v.
`Gary R. BENSON and Arthur C. Tabbot.
`
`
`
`
`
`
`
`
`
`No. 71—485.
`Argued Oct. 16, 1972.
`Decided Nov. 20, 1972.
`
`Proceeding on application for patent on method for
`converting binary-coded-decimal numerals into pure bi-
`nary numerals for use with general purpose digital com-
`puter of any type. The Board of Appeals of the United
`States Patent Office, serial No. 315,050, affirmed rejection
`of claims and applicant appealed. The United States Court
`of Customs and Patent Appeals, 441 F.2d 682, reversed
`and Acting Commissioner of Patents obtained certiorari.
`The Supreme Court, Mr. Justice Douglas, held that com-
`puter program, a mathematical formula without substantial
`practical application except in connection with digital
`computer, was not a patentable process.
`
`
`Reversed.
`
`
`
`Mr. Justice Stewart, Mr. Justice Blackmun, and Mr.
`Justice Powell took no part.
`
`
`West Headnotes
`
`16.2
`
`
`[1] Patents 291
`
`291 Patents
` 291II Patentability
` 291II(A) Invention; Obviousness
` 291k16.2 k. Ideas and abstract principles. Most
`Cited Cases
`
` (Formerly 291k6.2)
`
`
`An idea of itself is not patentable.
`
`16.2
`
`
`[2] Patents 291
`
`291 Patents
` 291II Patentability
` 291II(A) Invention; Obviousness
` 291k16.2 k. Ideas and abstract principles. Most
`Cited Cases
` (Formerly 291k2)
`
`
`16.3
`
`A principle, in the abstract, is fundamental truth, an
`original cause, a motive, and these cannot be patented, as
`no one can claim in any of them an exclusive right.
`
`[3] Patents 291
`
`291 Patents
` 291II Patentability
` 291II(A) Invention; Obviousness
` 291k16.3 k. Natural or scientific phenomena or
`principles. Most Cited Cases
`
`
`16.3
`
`Phenomena of nature, although just discovered, men-
`tal processes, and abstract intellectual concepts are not
`patentable as they are basic tools of scientific and techno-
`logical work.
`
`[4] Patents 291
`
`291 Patents
` 291II Patentability
` 291II(A) Invention; Obviousness
` 291k16.3 k. Natural or scientific phenomena or
`principles. Most Cited Cases
`
`
`© 2014 Thomson Reuters. No Claim to Orig. US Gov. Works.
`
`
`Page 00001
`
`Apple Exhibit 1030
`
`

`

`93 S.Ct. 253
`409 U.S. 63, 93 S.Ct. 253, 34 L.Ed.2d 273, 175 U.S.P.Q. 673
`(Cite as: 409 U.S. 63, 93 S.Ct. 253)
`
`He who discovers hitherto unknown phenomenon of
`nature has no claim to a monopoly of it which law recog-
`nizes and if there is to be invention from such discovery, it
`must come from application of law of nature to new and
`useful end.
`
`[5] Patents 291
`
`291 Patents
` 291II Patentability
` 291II(A) Invention; Obviousness
` 291k16.4 k. Results and means of producing.
`Most Cited Cases
`
`
`16.4
`
`7
`
`Transformation and reduction of article to different
`state or thing is clue to patentability of process claim that
`does not include particular machines. 35 U.S.C.A. §§
`100(b), 101.
`
`[6] Patents 291
`
`291 Patents
` 291I Subjects of Patents
` 291k4 Arts
` 291k7 k. Process or methods in general. Most
`Cited Cases
`
`Patents 291
`
`291 Patents
` 291II Patentability
` 291II(A) Invention; Obviousness
` 291k16.4 k. Results and means of producing.
`Most Cited Cases
`
`
`16.4
`
`It is not necessarily the case that no process patent
`may ever qualify without meeting requirements of prior
`precedents, that no program for serving computer, such as
`program for analog computers, is patentable, or that pro-
`cess patents are frozen to old technologies. 35 U.S.C.A. §§
`100(b), 101.
`
`Page 2
`
`7.14
`
`
`[7] Patents 291
`
`291 Patents
` 291I Subjects of Patents
` 291k4 Arts
` 291k7.14 k. Particular processes or methods as
`constituting invention. Most Cited Cases
` (Formerly 291k4)
`
` Patents 291
`
`291 Patents
` 291II Patentability
` 291II(A) Invention; Obviousness
` 291k16.4 k. Results and means of producing.
`Most Cited Cases
`
`
`16.4
`
`2518
`
`Computer program involving method of converting
`binary-coded-decimal numerals into pure binary numerals,
`a mathematical formula without substantial practical ap-
`plication except in connection with digital computer, was
`not a patentable process. 35 U.S.C.A. §§ 100(b), 101.
`
`[8] Constitutional Law 92
`
`92 Constitutional Law
` 92XX Separation of Powers
` 92XX(C) Judicial Powers and Functions
` 92XX(C)2 Encroachment on Legislature
` 92k2499 Particular Issues and Applications
` 92k2518 k. Intellectual property. Most
`Cited Cases
` (Formerly 92k70.3(9.1), 92k70.3(9))
`
`
`If programs for digital computers are to be patentable,
`problems are raised which only congressional committees
`can manage, and question is policy matter to which court is
`not competent to speak.
`
`**253 *63 Richard B. Stone, Washington, D.C., for peti-
`
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`
`
`Page 00002
`
`

`

`93 S.Ct. 253
`409 U.S. 63, 93 S.Ct. 253, 34 L.Ed.2d 273, 175 U.S.P.Q. 673
`(Cite as: 409 U.S. 63, 93 S.Ct. 253)
`
`tioner.
`
`Hugh B. Cox, Washington, D.C., for respondents.
`
`*64 Mr. Justice DOUGLAS delivered the opinion of the
`Court.
`Respondents filed in the Patent Office an application
`for an invention which **254 was described as being re-
`lated ‘to the processing of data by program and more par-
`ticularly to the programmed conversion of numerical in-
`formation’ in general-purpose digital computers. They
`claimed a method for converting binary-coded decimal
`(BCD) numerals into pure binary numerals. The claims
`were not limited to any particular art or technology, to any
`particular apparatus or machinery, or to any particular end
`use. They purported to cover any use of the claimed
`method in a general-purpose digital computer of any type.
`Claims 8 and 31FN1 were rejected by the Patent Office but
`sustained by the Court of Customs and Patent Appeals, 441
`F.2d 682. The case is here on a petition for a writ of cer-
`tiorari. Gottschalk v. Benson, 405 U.S. 915, 92 S.Ct. 934,
`30 L.Ed.2d 784.
`
`
`FN1. They are set forth in the Appendix to this
`opinion.
`
`
`
`The question is whether the method described and
`claimed is a ‘process' within the meaning of the Patent
`Act.FN2
`
`
`
`
`
`
`
`
`FN2. Title 35 U.S.C. s 100(b) provides:
`
`‘The term ‘process' means process, art or method,
`and includes a new use of a known process, ma-
`chine, manufacture, composition of matter, or
`material.’
`
`Title 35 U.S.C. s 101 provides:
`
`‘Whoever invents or discovers any new and use-
`ful process, machine, manufacture, or composi-
`tion of matter, or any new and useful improve-
`
`Page 3
`
`ment thereof, may obtain a patent therefor, sub-
`ject to the conditions and requirements of this ti-
`tle.’
`
`
`
`*65 A digital computer, as distinguished from an an-
`alog computer, operates on data expressed in digits, solv-
`ing a problem by doing arithmetic as a person would do it
`by head and hand.FN3 Some of the digits are stored as
`components of the computer. Others are introduced into
`the computer in a form which it is designed to recognize.
`The computer operates then upon both new and previously
`stored data. The general-purpose computer is designed to
`perform operations under many different programs.
`
`
`FN3. See R. Benrey, Understanding Digital
`Computers 4 (1964).
`
`
`
`The representation of numbers may be in the form of a
`time series of electrical impulses, magnetized spots on the
`surface of tapes, drums, or discs, charged spots on cath-
`ode-ray tube screens, the presence or absence of punched
`holes on paper cards, or other devices. The method or
`program is a sequence of coded instructions for a digital
`computer.
`
`
`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 pro-
`cedure 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 mathemat-
`ical problems of converting one form of numerical repre-
`sentation to another. From the generic formulation, pro-
`grams may be developed as specific applications.
`
`
`*66 The decimal system uses as digits the 10 symbols
`0, 1, 2, 3, 4, 5, 6, 7, 8, and 9. The value represented by any
`digit depends, as it does in any positional system of nota-
`tion, both on its individual value and on its relative position
`in the numeral. Decimal numerals are written by placing
`digits in the appropriate positions or columns of the nu-
`
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`
`
`Page 00003
`
`

`

`93 S.Ct. 253
`409 U.S. 63, 93 S.Ct. 253, 34 L.Ed.2d 273, 175 U.S.P.Q. 673
`(Cite as: 409 U.S. 63, 93 S.Ct. 253)
`
`merical sequence, i.e., ‘unit’ (100), ‘tens' (101), ‘hundreds'
`(102), ‘thousands' (103), etc. Accordingly, the numeral
`1492 signifies (1 103) (4 102) (9 101) (2 100).
`
`
`Page 4
`
`In pure binary notation, what would be the tens position is
`the twos position; what would be hundreds position is the
`fours position; what would be the thousands position is the
`eights. Any decimal number from **255 0 to 10 can be
`represented in the binary system with four digits or posi-
`tions as indicated in the following table.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`The pure binary system of positional notation uses two
`symbols as digits—0 and 1, placed in a numerical sequence
`with values based on consecutively ascending powers of 2.
`
`
`[Note: The following table/form is too wide to be printed on a single page. For meaningful review of its contents the table must
`be assembled with part numbers in ascending order from left to right. Row numbers, which are not part of the original data,
`have been added in the margins and can be used to align rows across the parts.]
`
`
`***********************************************************************
`************** This is piece: 1
`***********************************************************************
`1
`Shown as the sum of powers of 2
`2
`
`
`
`3
`
`
`
`
`
`***********************************************************************
`************** This is piece: 2
`***********************************************************************
`1
`
`2
`
`3
`
`
`
`[Note: The following table/form is too wide to be printed on a single page. For meaningful review of its contents the table must
`be assembled with part numbers in ascending order from left to right. Row numbers, which are not part of the original data,
`have been added in the margins and can be used to align rows across the parts.]
`
`
`***********************************************************************
`************** This is piece: 1
`***********************************************************************
`1
`2 3
`
`
`
`
`
`2 2
`2 1
`2
`
`
`
`
`
`
`
`
`2 0
`
`
`
`
`
`© 2014 Thomson Reuters. No Claim to Orig. US Gov. Works.
`
`
`Page 00004
`
`

`

`93 S.Ct. 253
`409 U.S. 63, 93 S.Ct. 253, 34 L.Ed.2d 273, 175 U.S.P.Q. 673
`(Cite as: 409 U.S. 63, 93 S.Ct. 253)
`
`Page 5
`
`
`
`***********************************************************************
`************** This is piece: 2
`***********************************************************************
`1
`
`2
`
`
`
`[Note: The following table/form is too wide to be printed on a single page. For meaningful review of its contents the table must
`be assembled with part numbers in ascending order from left to right. Row numbers, which are not part of the original data,
`have been added in the margins and can be used to align rows across the parts.]
`
`
`***********************************************************************
`************** This is piece: 1
`***********************************************************************
`1
`Decimal
`(8)
`
`
`
`(4)
`(2)
`2
`
`
`
`
`3
`0
`4
`1
`5
`2
`6
`3
`7
`4
`8
`5
`9
`6
`10
`7
`11
`8
`12
`9
`13
`10
`
`
`***********************************************************************
`************** This is piece: 2
`***********************************************************************
`1
`Binary
`
`2
`
`
`
`© 2014 Thomson Reuters. No Claim to Orig. US Gov. Works.
`
`
` 0
` 0
` 0
` 0
` 0
` 0
` 0
` 0
` 2 3
` 2 3
` 2 3
`
`=
`=
`=
`=
`=
`=
`=
`=
`=
`=
`=
`
`
` 0
` 0
` 0
` 0
` 2 2
` 2 2
` 2 2
` 2 2
` 0
` 0
` 0
`
`+
`+
`+
`+
`+
`+
`+
`+
`+
`+
`+
`
`
` 0
` 0
` 2 1
` 2 1
` 0
` 0
` 2 1
` 2 1
` 0
` 0
` 2 1
`
`+
`+
`+
`+
`+
`+
`+
`+
`+
`+
`+
`
`(1)
`
`Pure
`
`
` 0
` 2 0
` 0
` 2 0
` 0
` 2 0
` 0
` 2 0
` 0
` 2 0
` 0
`
`+
`+
`+
`+
`+
`+
`+
`+
`+
`+
`+
`
`
`
`=
`=
`=
`=
`=
`=
`=
`=
`=
`=
`=
`
`
`Page 00005
`
`

`

`93 S.Ct. 253
`409 U.S. 63, 93 S.Ct. 253, 34 L.Ed.2d 273, 175 U.S.P.Q. 673
`(Cite as: 409 U.S. 63, 93 S.Ct. 253)
`
`Page 6
`
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`
`
`0000
`0001
`0010
`0011
`0100
`0101
`0110
`0111
`1000
`1001
`1010
`
`
`
`
`
`
`
`
`
`
`
`
`
`The BCD system using decimal numerals replaces the
`character for each component decimal digit in the decimal
`numeral with the corresponding four-digit binary *67
`numeral, shown in the righthand column of the table. Thus
`decimal 53 is represented as 0101 0011 in BCD, because
`decimal 5 is equal to binary 0101 and decimal 3 is equiv-
`alent to binary 0011. In pure binary notation, however,
`decimal 53 equals binary 110101. The conversion of BCD
`numerals to pure binary numerals can be done mentally
`through use of the foregoing table. The method sought to
`be patented varies the ordinary arithmetic steps a human
`would use by changing the order of the steps, changing the
`symbolism for writing the multiplier used in some steps,
`and by taking subtotals after each successive operation.
`The mathematical procedures can be carried out in existing
`computers long in use, no new machinery being necessary.
`And, as noted, they can also be performed without a
`computer.
`
`
`[1][2][3][4] The Court stated in Mackay Co. v. Radio
`Corp., 306 U.S. 86, 94, 59 S.Ct. 427, 431, 83 L.Ed. 506
`that ‘(w)hile a scientific truth, or the mathematical ex-
`pression of it, is not patentable invention, a novel and
`useful structure created with the aid of knowledge of sci-
`entific truth may be.’ That statement followed the
`longstanding rule that ‘(a)n idea of itself is not patentable.’
`
`Rubber-Tip Pencil Co. v. Howard, 20 Wall. (87 U.S.) 498,
`507, 22 L.Ed. 410. ‘A principle, in the abstract, is a fun-
`damental truth; an original cause; a motive; these cannot be
`patented, as no one can claim in either of them an exclusive
`right.’ Le Roy v. Tatham, 14 How. (55 U.S.) 156, 175, 14
`L.Ed. 367. Phenomena of nature, though just discovered,
`mental processes, and abstract intellectual concepts are not
`patentable, as they are the basic tools of scientific and
`technological work. As we stated in Funk Bros. Seed Co. v.
`Kalo Co., 333 U.S. 127, 130, 68 S.Ct. 440, 441, 92 L.Ed.
`588, ‘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 discov-
`ery, it must come from the application of the law of nature
`to a new and useful end.’ We dealt there with a ‘product’
`claim, while the *68 present case deals with a ‘process'
`claim. But we think the same principle applies.
`
`
`Here the ‘process' claim is so abstract and sweeping as
`to cover both known and unknown uses of the BCD to pure
`binary conversion. The end use may (1) vary from the
`operation of a train to verification of drivers' licenses to
`researching the law books for precedents and (2) be per-
`formed through any existing machinery or future-devised
`machinery or without any apparatus.
`
`© 2014 Thomson Reuters. No Claim to Orig. US Gov. Works.
`
`
`Page 00006
`
`

`

`93 S.Ct. 253
`409 U.S. 63, 93 S.Ct. 253, 34 L.Ed.2d 273, 175 U.S.P.Q. 673
`(Cite as: 409 U.S. 63, 93 S.Ct. 253)
`
`Page 7
`
`
`
`In O'Reilly v. Morse, 15 How. (56 U.S.) 62, 14 L.Ed.
`601, Morse was allowed a patent for a process of using
`electromagnetism to produce distinguishable signs for
`telegraphy. Id., at 111, 14 L.Ed. 601. But the Court denied
`the eighth claim in which Morse claimed the use of ‘elec-
`tromagnetism, however developed for marking or printing
`intelligible characters, signs, or letters, at any distances.’
`Id., at 112. The Court in disallowing that claim said, ‘If this
`claim can be maintained, it matters not by what process or
`machinery the result is accomplished. For aught that we
`now know, some future inventor, in the onward march of
`science, may discover a mode of writing or printing at a
`distance by means of the electric or **256 galvanic cur-
`rent, without using any part of the process or combination
`set forth in the plaintiff's specification. His invention may
`be less complicated—less liable to get out of order—less
`expensive in construction, and in its operation. But yet, if it
`is covered by this patent, the inventor could not use it, nor
`the public have the benefit of it, without the permission of
`this patentee.’ Id., at 113, 14 L.Ed. 601.
`
`
`In The Telephone Cases, 126 U.S. 1, 534, 8 S.Ct. 778,
`782, 31 L.Ed. 863, the Court explained the Morse case as
`follows: ‘The effect of that decision was, therefore, that the
`use of magnetism as a motive power, without regard to the
`particular process with which it was connected in the pa-
`tent, could not be claimed, but that its use in that connec-
`tion could.’ Bell's invention was the use of electric current
`to transmit*69 vocal or other sounds. The claim was not
`‘for the use of a current of electricity in its natural state as it
`comes from the battery, but for putting a continuous cur-
`rent, in a closed circuit, into a certain specified condition,
`suited to the transmission of vocal and other sounds, and
`using it in that condition for that purpose.’ Ibid. The claim,
`in other words, was not ‘one for the use of electricity dis-
`tinct from the particular process with which it is connected
`in his patent.’ Id., at 535, 8 S.Ct., at 782. The patent was for
`that use of electricity ‘both for the magneto and variable
`resistance methods'. Id., at 538, 8 S.Ct., at 784. Bell's
`claim, in other words, was not one for all telephonic use of
`electricity.
`
`
`In Corning v. Burden, 15 How. (56 U.S.) 252,
`267—268, 14 L.Ed. 683, the Court said, ‘One may dis-
`cover a new and useful improvement in the process of
`tanning, dyeing, etc., irrespective of any particular form of
`machinery or mechanical device.’ The examples, given
`were the ‘arts of tanning, dyeing, making waterproof cloth,
`vulcanizing India rubber, smelting ores.’ Id., at 267, 14
`L.Ed. 683. Those are instances, however, where the use of
`chemical substances or physical acts, such as temperature
`control, changes articles or materials. The chemical pro-
`cess or the physical acts which transform the raw material
`are, however, sufficiently definite to confine the patent
`monopoly within rather definite bounds.
`
`
` Cochrane v. Deener, 94 U.S. 780, 24 L.Ed. 139, in-
`volved a process for manufacturing flour so as to improve
`its quality. The process first separated the superfine flour
`and then removed impurities from the middlings by blasts
`of air, reground the middlings, and then combined the
`product with the superfine. Id., at 785, 24 L.Ed. 139. The
`claim was not limited to any special arrangement of ma-
`chinery. Ibid. The Court said,
`
`
`‘That a process may be patentable, irrespective of the
`particular form of the instrumentalities used, *70 cannot be
`disputed. If one of the steps of a process be that a certain
`substance is to be reduced to a powder, it may not be at all
`material what instrument or machinery is used to effect
`that object, whether a hammer, a pestle and mortar, or a
`mill. Either may be pointed out; but if the patent is not
`confined to that particular tool or machine, the use of the
`others would be an infringement, the general process being
`the same. A process is a mode of treatment of certain ma-
`terials to produce a given result. It is an act, or a series of
`acts, performed upon the subject-matter to be transformed
`and reduced to a different state or thing.’ Id., at 787—788,
`24 L.Ed. 139.
`
`
`[5] Transformation and reduction of an article ‘to a
`different state or thing’ is the clue to the patentability of a
`process claim that does not include particular machines. So
`it is that a patent in the process of ‘manufacturing fat acids
`and glycerine from fatty bodies by the action of water at a
`
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`
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`Page 00007
`
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`

`93 S.Ct. 253
`409 U.S. 63, 93 S.Ct. 253, 34 L.Ed.2d 273, 175 U.S.P.Q. 673
`(Cite as: 409 U.S. 63, 93 S.Ct. 253)
`
`Page 8
`
`high temperature and pressure’ was sustained in Tilghman
`v. Proctor, 102 U.S. 707, 721, 26 L.Ed. 279. The Court
`said, ‘The chemical principle or scientific fact upon which
`it is founded is, that the elements **257 of neutral fat
`require to be severally united with an atomic equivalent of
`water in order to separate from each other and become free.
`This chemical fact was not discovered by Tilghman. He
`only claims to have invented a particular mode of bringing
`about the desired chemical union between the fatty ele-
`ments and water.’ Id., at 729, 26 L.Ed. 279.
`
`
` Expanded Metal Co. v. Bradford, 214 U.S. 366, 29
`S.Ct. 652, 53 L.Ed. 1034, sustained a patent on a ‘process'
`for expanding metal. A process ‘involving mechanical
`operations, and producing a new and useful result,’ id., at
`385—386, 29 S.Ct., at 657, was held to be a patentable
`process, process patents not being limited to chemical
`action.
`
`
` Smith v. Snow, 294 U.S. 1, 55 S.Ct. 279, 79 L.Ed.
`721, and Waxham v. Smith, 294 U.S. 20, 55 S.Ct. 277, 79
`L.Ed. 733, involved a process for setting eggs in staged
`incubation*71 and applying mechanically circulated cur-
`rents of air to the eggs. The Court, in sustaining the func-
`tion performed (the hatching of eggs) and the means or
`process by which that is done, said:
`
`
`‘By the use of materials in a particular manner, he
`secured the performance of the function by a means which
`had never occurred in nature and had not been anticipated
`by the prior art; this is a patentable method or process. . . .
`A method, which may be patented irrespective of the par-
`ticular form of the mechanism which may be availed of for
`carrying it into operation, is not to be rejected as ‘func-
`tional’ merely because the specifications show a machine
`capable of using it.' 294 U.S., at 22, 55 S.Ct., at 278.
`
`
`[6] It is argued that a process patent must either be tied
`to a particular machine or apparatus or must operate to
`change articles or materials to a ‘different state or thing.’
`We do not hold that no process patent could ever qualify if
`it did not meet the requirements of our prior precedents. It
`
`is said that the decision precludes a patent for any program
`servicing a computer. We do not so hold. It is said that we
`have before us a program for a digital computer but extend
`our holding to programs for analog computers. We have,
`however, made clear from the start that we deal with a
`program only for digital computers. It is said we freeze
`process patents to old technologies, leaving no room for
`the revelations of the new, onrushing technology. Such is
`not our purpose. What we come down to in a nutshell is the
`following.
`
`
`[7] It is conceded that one may not patent an idea. But
`in practical effect that would be the result if the formula for
`converting BCD numerals to pure binary numerals were
`patented in this case. The mathematical formula involved
`here has no substantial practical application except in
`connection with a digital computer, which *72 means that
`if the judgment below is affirmed, the patent would wholly
`pre-empt the mathematical formula and in practical effect
`would be a patent on the algorithm itself.
`
`
`It may be that the patent laws should be extended to
`cover these programs, a policy matter to which we are not
`competent to speak. The President's Commission on the
`Patent SystemFN4 rejected the proposal that these programs
`be patentable:FN5
`
`
`FN4. ‘To Promote the Progress of . . . Useful
`Arts,’ Report of the President's Commission on
`the Patent System (1966).
`
`FN5. Id., at 13.
`
`
`
`
`
`‘Uncertainty now exists as to whether the statute
`permits a valid patent to be granted on programs. Direct
`attempts to patent programs have been rejected on the
`ground of nonstatutory subject matter. Indirect attempts to
`obtain patents and avoid the rejection, by drafting claims as
`a process, or a machine or components thereof pro-
`grammed in a given manner, rather than as a program
`itself, have confused**258 the issue further and should not
`be permitted.
`
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`93 S.Ct. 253
`409 U.S. 63, 93 S.Ct. 253, 34 L.Ed.2d 273, 175 U.S.P.Q. 673
`(Cite as: 409 U.S. 63, 93 S.Ct. 253)
`
`
`
`‘The Patent Office now cannot examine applications
`for programs because of a lack of a classification technique
`and the requisite search files. Even if these were available,
`reliable searches would not be feasible or economic be-
`cause of the tremendous volume of prior art being gener-
`ated. Without this search, the patenting of programs would
`be tantamount to mere registration and the presumption of
`validity would be all but nonexistent.
`
`
`‘It is noted that the creation of programs has under-
`gone substantial and satisfactory growth in the absence of
`patent protection and that copyright protection for pro-
`grams is presently available.’
`
`
`*73 [8] If these programs are to be patentable,FN6
`considerable problems are raised which only committees
`of Congress can manage, for broad powers of investigation
`are needed, including hearings which canvass the wide
`variety of views which those operating in this field enter-
`tain. The technological problems tendered in the many
`briefs before usFN7 indicate to us that considered action by
`the Congress is needed.
`
`
`FN6. See Wild, Computer Program Protection:
`The Need to Legislate a Solution, 54 Corn.L.Rev.
`586, 604—609 (1969); Bender, Computer Pro-
`grams: Should They Be Patentable?, 68
`Col.L.Rev. 241 (1968); Buckman, Protection of
`Proprietory Interest in Computer Programs, 51
`J.Pat.Off.Soc. 135 (1969).
`
`FN7. Amicus briefs of 14 interested groups have
`been filed on the merits in this case.
`
`
`
`
`
`Reversed.
`
`
`Mr. Justice STEWART, Mr. Justice BLACKMUN, and
`Mr. Justice POWELL took no part in the consideration or
`decision of this case.
`APPENDIX TO OPINION OF THE COURT
`Claim 8 reads:
`
`Page 9
`
`
`
`‘The method of converting signals from binary coded
`decimal form into binary which comprises the steps of
`
`
`‘(1) storing the binary coded decimal signals in a
`reentrant shift register,
`
`
`‘(2) shifting the signals to the right by at least three
`places, until there is a binary ‘1’ in the second position of
`said register,
`
`
`‘(3) masking out said binary ‘1’ in said second posi-
`tion of said register,
`
`
`‘(4) adding a binary ‘1’ to the first position of said
`register,
`
`
`‘(5) shifting the signals to the left by two positions,
`
`*74 ‘(6) adding a ‘1’ to said first position, and
`
`‘(7) shifting the signals to the right by at least three
`positions in preparation for a succeeding binary ‘1’ in the
`second position of said register.'
`
`
`Claim 13 reads:
`
`‘A data processing method for converting binary
`coded decimal number representations into binary number
`representations comprising the steps of
`
`
`‘(1) testing each binary digit position ‘1,’ beginning
`with the least significant binary digit position, of the most
`significant decimal digit representation for a binary ‘0’ or a
`binary ‘1’;
`
`
`‘(2) if a binary ‘0’ is detected, repeating step (1) for
`the next least significant binary digit position of said most
`significant decimal digit representation;
`
`
`‘(3) if a binary ‘1’ is detected, adding a binary ‘1’ at
`
`
`
`
`
`
`
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`Page 10
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`93 S.Ct. 253
`409 U.S. 63, 93 S.Ct. 253, 34 L.Ed.2d 273, 175 U.S.P.Q. 673
`(Cite as: 409 U.S. 63, 93 S.Ct. 253)
`
`the (i 1)th and (i 3) th least significant binary digit positions
`of the next lesser significant decimal digit representation,
`and repeating step (1) for the next least significant binary
`digit position of said most significant decimal digit repre-
`sentation;
`
`
`‘(4) upon exhausting the binary digit positions of said
`most significant decimal digit representation, repeating
`steps (1) through (3) for the next lesser significant decimal
`digit representation as **259 modified by the previous
`execution of steps (1) through (3); and
`
`
`‘(5) repeating steps (1) through (4) until the second
`least significant decimal digit representation has been so
`processed.’
`
`U.S.Cust. & Pat.App. 1972.
`Gottschalk v. Benson
`409 U.S. 63, 93 S.Ct. 253, 34 L.Ed.2d 273, 175 U.S.P.Q.
`673
`
`END OF DOCUMENT
`
`
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