That law we, like others, have found to be something of a morass. As indicated by footnote 22 in Judge Baldwin's Prater opinion, "mental" is a vague term of indefinite meaning, and whether a given step is "mental," or "purely mental," is a question which has had to be determined on a case-by-case basis, "considering all of the surrounding circumstances." Since, additionally, the legal significance of a finding that a given step was or was not "mental" or "purely mental" was itself in doubt, characterizing steps of method claims as "mental," "purely mental," "physical," or "purely physical" gave little certainty to the law. Nothing points this up as well as consideration of some of the opinions by the Patent Office Board of Appeals in cases in which the board has reversed "mental step" rejections.

Ex parte Moser et al., 124 USPQ 454 (Board of Appeals 1959), involved claims to a process of operating a fluidized-bed coking unit, which process contained steps of determining a maximum permissable feed rate in accordance with a relationship between viscosity and another factor on a continuous basis and varying the severity of the coking operation in accordance therewith. The examiner rejected the claims as unpatentable in that they recited "mental steps." In reversing, the board said:

While determination of the relationship between viscosity and Conradson carbon of the feed may be in the nature of a mental process, we are not satisfied that the step of "continuously measuring the viscosity of the feed passing into the coking zone" is itself a wholly mental step requiring condemnation of the claims. Where, as here, operating conditions of a process are varied directly in accordance with the changes in a certain physical characteristic of the feed stock, it appears proper and necessary to recite the continuous measurement of this property.*** We agree with the appellants that the essential novelty in the case is in the positive and physical step of controlling the severity of the coking operation in response to variations in viscosity of the feed oil and not in the determination of the relationship between the viscosity and Conradson carbon or in the measurement of the viscosity, which are incidental steps in the process although desirably included in the claims in order to properly define, qualify or limit their scope. We will, accordingly, not sustain the rejection of the appealed claims as drawn to unpatentable subject matter because of the recitation of mental steps.

Ex parte McNabb, 127 USPQ 456 (Board of Appeals 1959), was concerned with claims to a method of locating defects in wooden objects such as telephone poles by radiographic methods involving several steps. A reference was cited showing radiographic testing of objects such as welded pipe to locate defects. The examiner rejected the claims on the reference because, he said, it showed the first three steps of the claim to be old and the other steps could not be relied on because they were "purely mental." In disagreeing with the examiner, the board said (emphasis ours):

We have carefully considered the examiner's position but are not in agreement therewith. The step of reading the film with a densitometer is obviously not a mental step since a densitometer is a piece of apparatus which functions to measure the density of the film by its inherent mode of operation. Plotting the optical densities as a function of the film likewise is no more of a mental step than reading a thermometer or gauge and plotting the value therefrom. Ascertaining the deviations from the norm of the curve can obviously be done by means of a French curve and a pair of dividers. The deviations, if any, from the norm are clearly evident from the graph plotted from the densitometer data. Orienting the deviations with respect to the test object is merely aligning the graph in its proper position, as indicated by the graph itself. None of these steps are purely mental or interpretative mental steps. Any method or step in a method which can be manually performed and requires the use of the human eyes for detection or determination of any condition, such as temperature, pressure, time, etc., and/or the use of the hands for the purpose of manipulating, such as turning off or on or regulating a given device in a certain manner or at a certain time, etc., to produce a certain result necessarily involves the human mind and hence can be classed as a mental step. Such steps, however, are not purely mental or interpretative mental steps and are not the kind which are prohibited by the decisions relating to purely mental steps.

Ex parte Kahn, 124 USPQ 511 (Board of Appeals 1959), related to a method of insect control. Evidently insects were to be selectively attracted according to species by a sound recording, to their ultimate disadvantage. The claim recited a number of steps including recording a sound signal produced by "one live female member of the selected insect species" while she was feeding during the periods around sunrise and sunset, modifying the signal by amplifying the high-frequency component to obtain an output signal, recording that signal, and then

reproducing the sound from said recording in the presence of captive live members of the insect species to be controlled, marking portions of the recording representing sounds most attractive to the captive insects based upon the behavior of the insects.

and re-recording the marked portions repetitively. The examiner cited no prior art and rejected the claim because, he said, the invention. could not be practiced "without the exercise of mental steps."

The board prefaced its opinion by saying,

We know of no decision that holds that a method is per se unpatentable merely because its practice requires that the operator thereof must think:

The board stated it to be the examiner's view that in selecting the portions of the recording to be repetitively reproduced the selection had to be made on the basis of an evaluation, "in the light of the knowledge and judgment of the individual or individuals making the recording." This he felt was "mental" and fatal to the claim. The board disagreed, saying (our emphasis):

The claim recites, however, that the first recorded sounds are reproduced in the presence of live insects and the portions of this first recording are selected or

marked on the basis of the observed effect on captive insects. In other words, captive insects indicate the parts of the record attractive to them (do the selecting), the operator observes such fact and appropriately marks the record. While it may be true that it would be advisable for the operator to think while observing whether or not the portion of the record being played attracts the captive insects, the actual steps out in the claim are independent of such thought and thus do not come under the types of decisions herein considered. Thus, the challenged portion of the claim is clearly a proper limitation and should be evaluated in connection with pertinent prior art as to its patentable effect or lack thereof upon the ground that it is a proper limitation.

For further opinions containing similar reasoning by the board see Ex parte Egan, 129 USPQ 23 (1960), a case which, incidentally, accepted the Abrams "Rules" as established law; Ex parte Garrett, 132 USPQ 514 (1961); Ex parte Bond, 135 USPQ 160 (1961), which reaffirms the Kahn statement that a method is not unpatentable merely because its practice requires the operator to think; and Ex parte Tripp, 141 USPQ 918 (1963).

Turning now to the board decision in the present appeal, we have said above that the board used the Abrams non-rules as the primary basis of its decision that the claims are non-statutory. This was legal error for the reasons already stated.

[3] The above-quoted extracts from the board opinion further reveal that the board repeatedly asserted that steps were "mental" and rendered the claims non-statutory because they were not physical acts applied to physical things. This presumes that the law requires all steps of a statutory "process" to be physical acts applied to physical things. We considered this matter in Prater. In the first opinion by Judge Smith we showed how this erroneous idea arose from a dictum in Cochrane v. Deener, 94 U.S. 780 (1876), and is inconsistent with several later Supreme Court opinions. In Judge Baldwin's Prater opinion we readopted a large portion of Judge Smith's opinion on this point and again pointed out that it was a misconstruction to assume that "all processes, to be patentable, must operate physically upon substances." As above noted, the board's opinion herein was rendered before the dates of our Prater opinions. The board's contrary presumption as to the statutory requirements further infects its conclusions with legal error.

[4] Another aspect of the board's reasoning which we consider legally unsound in holding claims non-statutory resides in its giving weight to the fact that certain individual steps in the claims lacked novelty, as shown by cited art. In considering the patentability of a process consisting of a plurality of steps we think it is immaterial to the question whether the combination is a statutory "process" that individual steps are old. The whole process could be old and yet be statutory; a fortiori, it matters not that one or more steps are old.

The board also considered individual steps in the claims to be "non-statutory," as in its conclusion about steps (2) and (3) of claim 2. While it may be a minor matter or a mere lapsus linquae, we are here concerned only with whether the combinations of steps constituting the claimed processes are statutory "processes."

Although representatives claims 2 and 60, quoted above, are directed to different aspects of appellant's invention, each of the claimed processes basically involves manipulations of certain "signals" to obtain a more meaningful record of seismic events. The "signals" may take the form of impressions on a magnetic tape, electrical impulses in an analog or digital computer, or visible patterns on graph paper or on an oscilloscope screen. The actual manipulation of the signals may be effected by apparatus or manually, depending on the form taken by the "signals," the proper degree of manipulation being definable mathematically.

[5] We cannot agree with the board that these claims (all the steps of which can be carried out by the disclosed apparatus) are directed to non-statutory processes merely because some or all the steps therein. can also be carried out in or with the aid of the human mind or because it may be necessary for one performing the processes to think. All that is necessary, in our view, to make a sequence of operational steps a statutory "process" within 35 USC 101 is that it be in the technological arts so as to be in consonance with the Constitutional purpose to promote the progress of "useful arts." Const. Art. 1, sec. 8.

Of course, to obtain a valid patent the claim must also comply with all the other provisions of the statute, including definiteness under 35 USC 112. A step requiring the exercise of subjective judgment without restriction might be objectionable as rendering a claim indefinite, but this would provide no statutory basis for a rejection under 35 USC 101. Moreover, as pointed out previously, the claims here on appeal clearly contain no steps of that type.

In view of the errors of reasoning of the board in reaching the legal conclusion that the claims are all non-statutory, and finding no other reasons warranting that conclusion, its decision affirming the rejection of all the appealed claims must be reversed.

BALDWIN, Judge, concurring.

I feel compelled to speak out against the majority opinion. It is my position that the doctrine promulgated by that opinion, which constitutes a major and radical shift in this area of the law, is a serious breach with the time-honored judicial practice of resolving important questions of law on a case-by-case basis, a policy matter which I thought had been settled by agreement of the full court with the second Prater decision and which up to now the court has followed. In addi

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tion, I feel that the course which the majority opinion takes is not only unnecessary in order to decide this particular case (or any others in this area, for that matter), but also will probably create more problems than it is intended to solve. Finally, I must point out that the majority embarked on this course without having been asked to do so by appellant.

What the Majority Opinion Does

One need only read the last page of the opinion to find the principal holding: "All that is necessary * ** to make a sequence of operational steps a statutory 'process' within 35 USC 101 is that it be in the technological arts." No limitations are placed upon this holding. In effect it is a pronouncement of new law.

At first reading, it may appear that this holding is but a resurrection of that made in Judge Smith's opinion in the first Prater decision. Closer analysis reveals that the majority now goes much beyond the holding of our late colleague. A major basis of the holding in that first Prater opinion was that the claimed process must be "disclosed as being a sequence or combination of steps, capable of performance without human intervention." [Emphasis added.] The opinion was clearly dealing with claims drawn primarily to cover a machine-implemented process but which were found to read also on carrying out the process using mental steps.

Here, however, the majority does not so limit its holding. Musgrave obviously discloses a process which can be implemented entirely by machine. Indeed, he argues with respect to some of his claims that it is unreasonable to interpret them as covering anything but a machineimplemented process. Nevertheless, the majority now says, in effect, that one no longer need disclose apparatus for carrying out his process. Thus, while not only being a drastic departure from the policy decision implicit in the second Prater case, i.e., to decide the problems in this area of mental processes on a case-by-case basis, the majority opinion also goes far beyond the holding in the first Prater decision. As such, it should be recognized as overruling those cases which were so carefully distinguished by Judge Smith in Prater I.

Is This Change Really Necessary?

Academically, intellectually, perhaps, the majority's new proposal— to throw out entirely the "mental steps" doctrine and replace it with a new rule-may sound appealing. Any process which is drawn to a technological art is now held to come within the ambit of the Patent Laws. I submit, however, that this court should concern itself only with realities and let the law professors worry about academic prob