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In our view the merits of the Examiner's rejection must turn on the applicability of either Rule 1 or Rule 2 of the Abrams case to each of the appealed claims and not on any suggested liberalization of those rules to cause the statute to embrace non-physical or "mental” activities even though they be valuable and meritorious discoveries.

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We shall first consider claim 2 which, in our opinion, appears to be more illustrative of the interpretive problem than any other of the principal claims which appellant has designated as decisive of the issues on this appeal. * * *

The preamble of claim 2 refers to "signals * * * from seismic detecting stations” so that "signals" here could have only the meaning of the output of a device which senses waves transmitted through the earth. Since these signals are not specified to be electrical, mechanical or optical or to denote any other physical state or a material or thing, the sole connotation here would be that "signals" (i.e. without a modifier) are synonomous with information or data and are an abstraction and intangible.

In step (1) of claim 2 the expression "generating * * * seismic signals" could possibly have reference to the fact that in step (3) the detecting stations also "generate signals” and the "seismic” modifier to the term "signals" could indicate merely the seismic origin of the information content of the signals. However, to be consistent with step (5) in which "seismic" signals could only have the meaning such as earth waves, we shall construe this term in the instant claims to mean the generation of a physical state in a physical body, the earth, when the expression "seismic signals" is used and to mean the generation of abstract data when the term "signals" is used, that is unmodified as to any physical thing that is altered to give rise to the signals.

We find no basis for interpreting "signals" to be limited to electrical or magnetic signals as might be present in an electrical conductor or a magnetic recording media consonant with the special analog computer illustrated in appellant's drawings, for appellant expressly directs otherwise in * * * his specification, which reads as follows: "With the foregoing outline of the operations as a whole, it will be understood that the several method steps may be carried out by a wide variety of apparatus, including computing equipment, which by a mathematical approach will provide solutions to equations which may be exact or approximate, as may be desired. In the more detailed description which follows, there will be presented both the field techniques and a description of simplified analog type of instruments by means of which the invention may be utilized and which are illustrative of the many features of the invention, to which the appended claims have been directed.”

The carrying out of appellant's method by a "mathematical approach”, through "solutions to equations" and with "computing equipment" (which we presume would be digital in character in order to contrast with the analog computer specifically illustrated) is inconsistent with the "signals”, where claimed without modifier, being the result of a change in state of a physical or material thing.

The "whereby" clause of step (1) of claim 2 is a statement of a wanted result that conceals the fact that mere generation and/or detection of "seismic signals" by themselves do not make known the static corrections specified by the claim. Omitted therefrom and essential thereto is the step of exercising human judg. ment that would be required to interpret these signals to gain any knowledge of the static corrections needed.

However, to the extent that step (1) calls for a physical and hence a statutory process, it is fully anticipated by the Salvatori et al. and Jolly patents in which seismic signals are generated also to derive corrections to be used in seismic explorations.

Steps (2) and (3) of claim 2 apply the corrections derived from the human judgment implicit in step (1) to "signals” which are generated at various "selected" or "detecting” stations. Since "corrections" are data having no physical means for representing the same, application of corrections to signals generated at the detecting stations, as called for by these steps, necessarily is a step requiring only the compilation of data from two sources. In step (3) the corrections are required to be further “interpolated" which likewise is an act requiring human judgment.

Steps (2) and (3) are non-statutory since they require no physical act on any physical thing.

Step (4) of claim 2 sets forth a second step of physically generating "seismic signals" which finds its counterpart in the successive generation of seismic wares of the cited patents.

Step (5) of claim 2 detects "seismic signals” which might at first appear to be physical acts involving waves transmitted through the earth but the “signals" from each detecting station must be information or data only, since "corrections" are applied to them. Both Salvatori et al. and Jolly have detecting apparatus that carry out whatever physical acts are contemplated by step (5).

Step (6) of claim 2 applies further "corrections" to the data evolved from the detectors, and necessarily requires no physical act on any physical thing.

From the above analysis it appears that insofar as claim 2 sets forth a statutory process, it is merely the physical steps of generating a succession of seismic waves and detecting such waves following each step of generation. That which is presented to distinguish these claims over the conventional method of seismic exploration is the broad method of applying correction data to experimental data by every possible procedure, including mere mental processing of the data.

We sustain the rejection of claim 2 as for non-statutory subject matter.

Claim 60 represents a method of processing data which starts with existing seismograms and generates signals therefrom which are processed as data through successive transformations none of which specify or require the use of apparatus or the employment of any physical acts on physical things. This claim merely calls for a general mathematical or a general graphical solution of an algorithm which appellant has propounded but which cannot be patented directly as an algorithm, or indirectly, as a series of conceptual steps in a method of solving the algorithm, under the statutes as they have been interpreted heretofore.

The rejection of claim 60 is sustained.

The opening sentence of the argument in the Patent Office brief states that, The opinion by the Board * * *

represents the best comprehensive statement of the Patent Office position.

OPINION

All claims here are method claims. All claims stand rejected on the sole ground that they are non-statutory, i.e., none defines a "process" within the meaning of 35 USC 101, read with the definition of 35 USC 100(b) in mind. The asserted reason for holding the claims nonstatutory is that either all steps of the claims are "mental steps" or some of the steps are “mental” and are relied on for patentability.

The examiner said his rejection was "based on the three categories of claims developed in” In re Abrams, 38 CCPA 945, 188 F. 2d 165, 89 USPQ 266 (1951), and was sound because the claims fall within either the first or second categories of Abrams. In affirming, the board accepted the examiner's reasoning and referred to the "Rules" set forth in Abrams, those rules being the "categories" referred to by the examiner. The board opinion, it should be noted, was rendered several months prior to even our first opinion in In re Prater, 56 CCPA 1360, 415 F. 2d 1378, 159 USPQ 583 (Nov. 20, 1968, Judge Smith's opinion), on rehearing 56 CCPA 1381, 415 F. 2d 1393, 162 USPQ 541 (Aug. 14, 1969, Judge Baldwin's opinion).

Since the three so-called "Rules of Abrams" appear to have been the legal basis of both decisions below, as well as the basis for the Patent Office Solicitor's brief before us, we deem it appropriate to state at the outset our position as to those so-called rules, a matter which was considered in penetrating detail in our initial Prater opinion, delivered by the late Judge Smith, and in no way contradicted in our later superseding opinion, delivered by Judge Baldwin.

In Abrams, appellant's counsel proposed, by way of argument which he hoped would win him a reversal, “three suggested 'rules of law.' In Abrams the court pointed out that the proposed rules had evidently been submitted to the Patent Office and that neither the examiner nor the board had either approved or disapproved them. The court declined to adopt them. Judge Smith said in Praterand time and restudy do not enable us to improve on his statement—that

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*** much confusion in subsequent interpretation of the Abrams decision has been caused by people misreading the decision as conferring judicial sanction upon the "rules” formulated and proposed by Abrams' attorney. This confusion has arisen because the court after initially declaring there was no necessity to embrace the rules, apparently adopted Rule 2 towards the later part of the opinion. We believe this later statement was advanced not to show adoption of the rules by the court but merely to point out that even if, arguendo, the court had adopted his rules, Abrams would still not have prevailed in his particular fact situation.

3 Abrams' counsel's proposed Rules were :

1. If all the steps of a method claim are purely mental in character, the subject matter thereof is not patentable within the meaning of the patent statutes.

2. If a method claim embodies both positive and physical steps as well as so-called mental steps, yet the alleged novelty or advance over the art resides in one or more of the so-called mental steps, then the claim is considered unpatentable for the same reason that it would be if all the steps were purely mental in character.

3. If a method claim embodies both positive and physical steps as well as so-called mental steps, yet the novelty or advance over the art resides in one or more of the positive and physical steps and the so-called mental step or steps are incidental parts of the process which are essential to define, qualify or limit its scope, then the claim is patentable and not subject to the objection contained in 1 and 2 above.

After further discussion of the case of Don Lee, Inc. v. Walker, 61 F. 2d 58, 14 USPQ 272 (9th Cir. 1932), cited in Abrams and apparently the genesis of the "mental step” concept in patent law, Judge Smith concluded, and we agree:

As a partial summary of our reasoning so far, we have observed that the "Rules" of Abrams * * * were not given the status of judicial acceptance by the court in Abrams and remain no more than parts of the argument put forward by Abrams' counsel. Further, we note that even if “Rule 2” had been so adopted, the rule when traced to its origin in Don Lee rests on an uncertain basis as precedent.

We do not feel our reasoning need be encumbered by the so-called "Rules" of Abrams for the reasons we have indicated. On rehearing, our new opinion by Judge Baldwin notes the fact that Abrams had been exhaustively analyzed in Judge Smith's opinion and expresses no disagreement with that analysis. It remains our view that we need not be encumbered in our reasoning by the “Rules” of Abrams for the reason that they have never enjoyed the approval of this court.

[1] Additionally, it is our view that “Rules” 2 and 3, at least, are logically unsound. According to these “Rules,” a process containing both“physical steps" and so-called "mental steps” constitutes statutory subject matter if the “alleged novelty or advance in the art resides in" steps deemed to be “physical” and non-statutory if it resides in steps deemed to be “mental.” It should be apparent, however, that novelty and advancement of an art are irrelevant to a determination of whether the nature of a process is such that it is encompassed by the meaning of “process” in 35 USC 101. Were that not so, as it would not be if “Rules" 2 and 3 were the law, a given process including both “physical” and “mental" steps could be statutory during the infancy of the field of technology to which it pertained, when the physical steps were new, and non-statutory at some later time after the physical steps became old, acquiring prior art status, which would be an absurd result. Logically, the identical process cannot be first within and later without the categories of statutory subject matter, depending on such extraneous factors.

Whether “Rule” 1 of Abrams would lead to a correct result on the ultimate question of patentability would depend on how one interprets "purely mental.” 4 If so construed as to encompass only steps incapable

4

* In this regard, see footnotes 22 and 23 of Judge Baldwin's Prater opinion. In "The Field of the Statutory Useful Arts,” by Coulter, 34 J. Pat. Off. Soc'y. 417 (1952), the author points out at p. 426 what "peculiarly human activities" involve, in the second paragraph of the following extract:

There is an important point that should not be overlooked. In all of the technological "mental step" cases, the claims say nothing about mental steps or a human operator. The situation is that one or more steps are of such nature that they can be performed by a human operator, who is required to use his brain, and that no device for automatically performing such steps is specifically described in the specification. The claims are held not to define a statutory "useful art" even though, if the method were performed without a human operator (which is not excluded from the claims), it would constitute a statutory "useful art.” In the Abrams case, for instance, there was no intimation that the specified petroleum prospecting method would not be a "useful art" if the criticized steps were performed by devices.

of being performed by a machine or apparatus, it might lead to a correct result. Clearly there are no steps of that nature in the presently appealed claims. If the expression “purely mental” is construed (as the board apparently did here) so as to encompass steps performable by apparatus, as well as mentally, then the "Rule” is unsound for reasons expressed below.

The sole rejection in this case being based on the ground that the subject matter of the appealed claims is "non-statutory,” we here set down the involved statute, 35 USC 101 (emphasis ours) : 101. Inventions patentable

Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title. Since no question is raised as to novelty or utility, the only question is whether the claimed subject matter falls within one of the enumerated categories of patentable inventions and the only category here involved is “process.” A definition of process is provided in 35 USC 100 (b) reading:

(b) The term "process” means, process, art or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material. The Patent Office has raised no question involving application of the definition. It simply insists that the methods of the appealed claims are not such as are encompassed by the term "process” because the claims all fall into one of two categories: (1) “all mental steps"; (2) "some mental steps and some physical steps with patentability dependent on the mental steps.” The examiner himself categorized his rejection as a "mental step rejection” and this raises two questions: Are some or all of the steps in each claim "mental" and, if so, is that fatal to patentability?

[2] As may be seen from the statutory language, it contains nothing whatever which would either include or exclude claims containing “mental steps" and whatever law there may be on the subject cannot be attributed to Congress. It is purely a question of case law.

And to a person familiar with the available devices, it is clear that in principle all of the steps could be performed by devices. None of the steps involve peculiarly human mental activities which cannot, in principle, be performed by devices. None of them involve aesthetic, emotional, imaginative, or creative thought or reactions on the part of the practitioners (operators). None of them involve human "value judgments"--that is, judgments on human conduct, ethics, morals, economics, politics. law, aesthetics, etc.

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