In re Freeman, 1978

In the History of Software Patents, this is an important case.  The subject matter of Freeman’s invention was a system for typesetting alphanumeric information, using a computer-based control system in conjunction with a phototypesetter of conventional design. The claims included claims directed to methods of controlling a computer display system, as well as claims to a hierarchical “tree structure” computer storage arrangement. U.S. Patent and Trademark Office had rejected the patent application on the basis that the Benson case precluded patentability of an invention where the only novel part was the computer program.

The U.S. Court of Customs and Patent Appeals noted that with no reference to the nature of the algorithm involved, the U.S. Patent and Trademark Office’s Board of Appeals board merely stated that the coverage sought “in practical effect would be a patent on the algorithm itself.” Though the board gave no clear reasons for so concluding, its approach would appear to be that every implementation with a programmed computer equals “algorithm” in the Benson sense. If that rubric was the law, every claimed method that can be so implemented would equal nonstatutory subject matter under 35 USC 101.

The Court noted that a claim expressed in “means for” terms, though said to be an apparatus claim, may be indistinguishable from that of a method claim drawn to the steps performed by the “means.” The court agreed with the solicitor’s contention that if allowance of a method claim is proscribed by Benson, it would be anomalous to grant a claim to apparatus encompassing any and every “means for” practicing that very method.

The court held that because neither the apparatus claims nor the present method claims recite or preempt a mathematical algorithm as forbidden by Benson, both sets of claims are immune from a rejection based solely on the opinion in that case. The court then reversed the decision of the board rejecting claims 1-10 under 35 USC 101.

This case has been cited for laying out a two part test:

First, it must be determined whether the claim directly or indirectly recites an ” algorithm” in the Benson sense of that term, for a claim which fails even to recite an algorithm clearly cannot wholly preempt an algorithm.

Second, the claim must be further analyzed to ascertain whether in its entirety it wholly preempts that algorithm.