The History of Software Patents

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In re Meyer, 1982
By Deepak MalhotraFebruary 16, 2007

Meyer’s invention related to a system for aiding a neurologist in diagnosing patients. Meyer’s claims were directed to a method of storing and correlating test responses on a complex system.

The CCPA upheld the Board of Patent Appeals and Interferences’ affirmance of an Examiner’s rejection of Meyer’s claims as being unstatutory under 35 USC § 101.

The court applied the first part of the two-part Freeman-Walter test to the Meyer claims, relying on the applicants’ specification and arguments, and found that the invention was concerned with partly replacing the thinking processes of a neurologist with a computer. The court then concluded that a mathematical algorithm was involved in the claims.

With respect to the second part of the Freeman-Walter test, the…

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In re Pardo, 1982
By Deepak Malhotra

In this case, the CCPA stated that any process, machine, manufacture, or composition of matter constitutes statutory subject matter unless it falls within a judicially determined exception to section 101.

This was an case in which the CCPA took the position that an invention can be statutory whether or not the novelty resides in the software.

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In re Taner, 1982
By Deepak MalhotraFebruary 15, 2007

Taner was decided after the Supreme Court’s decision in Diamond.

Taner’s claims were directed to a method of seismic exploration which simulated the response of subsurface earth formations to cylindrical or plane waves. An algorithm was directly recited in the claims.

In Taner, the CCPA distinguished between claims that are directed to “merely presenting and solving a mathematical algorithm,” which are not statutory subject matter, and claims that are drawn “to a process of converting one physical thing into another physical thing,” which are statutory subject matter.

The Court held that the claimed process involved taking one kind of “signal” and converting it into another kind of signal and that, thus, the claims set forth a process and were statutory within § 101.

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Diamond v. Diehr and Lutton, 1981
By Deepak Malhotra

In the History of Software Patents, this was a sensible decision.  By this time, the U.S. Patent and Trademark Office was still highly reluctant to allow patent applications covering to software based inventions. In the Diamond v. Diehr case, the Supreme Court forced the USPTO to grant a patent on an invention even though computer software was utilized. The USPTO had been fairly strictly refusing to allow applications for inventions reciting algorithms. In these years, an applicant’s best shot at gaining an allowance was to disguise software as hardware; e.g., instead of reciting a comparison step, show a comparator in a block diagram for a digital machine.

This case related to a patent application for molding raw, uncured, synthetic rubber into cured precision…

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In re Abele and Marshall, 1982
By Deepak Malhotra

In the History of Software Patents, this is an often cited case.  This invention related to image processing particularly as applied to computerized axial tomography or CAT scans. Specifically, the invention was directed to an improvement in computed tomography whereby the exposure to X-ray is reduced while the reliability of the produced image is improved.

The Examiner at the U.S. Patent and Trademark Office rejected the claims on appeal under the authority of Parker v. Flook. The examiner construed Flook as mandating the following test:
Taking each claim as a whole, it is assumed, for analysis purposes only, that any mathematical calculation in the claim is part of the prior art. If what is left is new and unobvious, then the claim, taken as a whole,…

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Diamond v. Chakrabarty, 1980
By Deepak Malhotra

In the History of Software Patents, this was one of the more sensible cases.  Diamond v. Chakrabarty is another Supreme Court case. A genetic engineer named Chakrabarty had developed a bacterium capable of breaking down crude oil, which he proposed to use in treating oil spills. He requested a patent for the bacterium in the United States but was turned down by a patent examiner, because the law dictated that living things were not patentable.

The court held that a live, human-made micro-organism is patentable subject matter under 35 U.S.C. 101. Chakrabarty’s micro-organism constitutes a “manufacture” or “composition of matter” within that statute.

The court stated that in choosing such expansive terms as “manufacture” and “composition of matter,” modified by the comprehensive “any,”…

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In re Walter, 1980
By Deepak Malhotra

In the History of Software Patents, this is an important case.  The invention in this case related to seismic prospecting and surveying. Seismic source waves are generated and transmitted downwardly into the earth. There they are deflected by subsurface formations and anomalies. The deflected waves return to the earth’s surface and are detected by transducers, known as geophones, which are distributed on the surface over the area of exploration. The geophones convert the returning mechanical vibrations into electrical signals, which are then recorded on a record medium, such as magnetic tape or chart recorder, for analysis. By studying the records of the deflected waves, analysts are able to make determinations concerning the nature of the subsurface structure of the earth.

In a final rejection, the…

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In re Freeman, 1978
By Deepak MalhotraFebruary 14, 2007

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…

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Gottschalk v. Benson, 1972
By Deepak Malhotra

In the History of Software Patents, this is an important early Supreme Court case.  In 1972, the U.S. Supreme Court reviewed a case involving patent application describing an invention as a method for converting binary-coded decimal numerals into pure binary numerals in a general purpose digital computer. The Court found that the invention was not patentable. The Supreme Court stated that this decision did not preclude ever finding a computer program patentable.
However, for years after this case came out, patent office examiners felt that no software was patentable, and they would routinely issue 101 rejections against patent applications that contained the word “algorithm.” A direct quote from the Gottschalk v. Benson case follows:

It is argued that a process patent must either…

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