not disclose the laws by which it operates. The mandate of Congress in 35 U.S.C. 103 is that "patentability shall not be negatived by the manner in which the invention was made." For the foregoing reasons, we conclude that under the statute the appartus herein claimed constitutes statutory subject matter. The case law leads to the same conclusion. Prater, supra, dealt in part with an appartus claim (see 162 USPQ at 545) which, while it did not set forth specific equations, defined the invention by reference to "a set of linear simultaneous equations" and "the determinant for a first set of said equations." The Board of Appeals in that case held, as did the examiner here, that the novelty resided in the mathematical computations which, being in themselves non-statutory, rendered the claimed invention non-statutory. We held the claim to be patentable, noting that no "mental steps" issue was involved because the means-plus-function language did not encompass a human being. 162 USPQ at 551-552. The same type of language is used in the apparatus claims here. The same result must obtain, i.e. no question of mental steps is raised. [5] There is one further rationale used by both the board and the examiner, namely, that the provision of new signals to be stored by the computer does not make it a new machine, i.e. it is structurally the same, no matter how new, useful and unobvious the result. This rationale really goes more to novelty than to statutory subject matter but it appears to be at the heart of the present controversy. To this question we say that if a machine is programmed in a certain new and unobvious way, it is physcially different from the machine without that program; its memory elements are differently arranged. The fact that these physical changes are invisible to the eye should not tempt us to conclude that the machine has not been changed. If a new machine has not been invented, certainly a "new and useful improvement" of the unprogrammed machine has been, and Congress has said in 35 U.S.C. 101 that such improvements are statutory subject matter for a patent. It may well be that the vast majority of newly programmed machines are obvious to those skilled in the art and hence unpatentable under 35 U.S.C. 103. We are concluding here that such machines are statutory under 35 U.S.C. 101, and that claims defining them must be judged for patentability in light of the prior art. The solicitor's brief, while stating agreement with all the grounds of rejection applied by the board, does not discuss the questions of statutory subject matter. The solicitor cites no authorities to us on this point and instead relies upon section 103 in urging us to affirm the rejections for prior art. reasons. [6] Turning now to method claim 13, it recites three steps: Programming the computer to compute positions of planar axes, program ming the computer to render an output representative of the coordinates of planar point positions, and applying the output of the computer to a plotting apparatus. The solicitor's brief does not cite any authority to support the contention that this claim is drawn to non-statutory subject matter. We think, however, that this question is answered by what we said in Prater, supra. There we looked first to the disclosure and said: "It would appear that the disclosure of apparatus for performing the process wholly without human intervention merely shows that the disclosed process does not fall within the so-called 'mental steps' exclusion." 162 USPQ at 549. [Emphasis in original.] We then looked to the claims and found that they were broad enough to cover performance of the process in the mind without the use of machinery. We did not rule then on the question of whether claims covering truly mental steps could be statutory under 35 U.S.C. 101. We held that the applicants were claiming more than they regarded as their invention, thus rendering the claims unpatentable under the second paragraph of 35 U.S.C. 112. In the case now before us, the disclosure shows only machinery for carrying out the portrayal process. In fact it is the chief object of the invention to eliminate the drudgery involved in a draftsman's making the desired portrayals. Accordingly, a statutory process is here disclosed. Looking then to method claim 13, we find that it in no way covers any mental steps but requires both a "digital computer" and a "planar plotting apparatus" to carry it out. To find that the claimed process could be done mentally would require us to hold that a human mind is a digital computer or its equivalent, and that a draftsman is a planar plotting apparatus or its equivalent. On the facts of this case we are unwilling so to hold. We conclude that the method defined by claim 13 is statutory, and its patentability must be judged in light of the prior art. 3 Turning to the prior art, the examiner applied Taylor 3 alone under 35 U.S.C. 103 against all the claims, while the board applied Taylor in view of Tripp. We agree with the examiner's application of Taylor alone against claims 8, 13, and 18. Taylor shows the computation of the positions of points of a threedimensional object on a plane of projection, as applicants define in claims 8, 13, and 18. These claims then add only one more limitation: in claim 13 the step of applying the computer output to a plotting apparatus, and in claims 8 and 18 the addition of the plotting machine as part of the claimed structure. This limitation is insufficient to define an invention which is unobvious over Taylor because, as applicants argued in the Patent Office on the question of sufficiency of their dis U.S. Patent 3,153,224 filed Feb. 23, 1960, issued Oct. 13, 1964. closure, any person skilled in the art would know how to take the computer output and use it to control a drafting machine. The desirability of eliminating the draftsman in the Taylor teaching would have been apparent when applicants made their invention, and since any person skilled in the art would, by applicants' own argument, know how to do so, we must conclude that the invention defined by claims 8, 13, and 18 was obvious. In claim 19 the equations disclosed in the application are used to define the condition of the digital computer. The obviousness issue here is whether the claimed invention as whole, i.e. the entire apparatus defined by claim 19, would have been obvious to one of ordinary skill in the art in view of the teachings of Taylor. Tripp does not attempt to solve the three-to-two dimensional geometry problems to which appellants' claims 19-21 and Taylor's disclosure are addressed but merely shows computerized drawing in general. It therefore appears that Tripp does not shed any light on the specific obviousness question with which we are concerned. The solicitor, in his brief and oral argument, similarly deemphasized Tripp and concentrated on Taylor alone. Taylor's object is to partially automate the tedious process of making various kinds of drawings of three-dimensional objects. Applicants' object is to further automate the production of these drawings. Their invention as defined by claim 19 does this in two ways: It adds the plotting machine at the output end of the computer, and it conditions the computer in a new way to perform the data transformations. The first addition alone would not have saved the invention from obviousness, as we discussed above. We believe the second addition, the new programming claimed, does make the invention as a whole unobvious. The Taylor equations for finding the planar coordinates (fi, f2) are: [(a1-b1)2+(a2-b2)2+(a3-b3)2] [(a1-b1) (a2-c2)-(a2-b2) (α-c1)] ƒ1⁄2= √(a1—b1)2+(ɑ2—b2) [ (a1—b1) (a1—c1) +(A3—b2) (A2—C2)+(α3—b3) (A3—C3] where a is the observation point, b is the penetration point of a sight line normal to the projection plane, and c is a typical object point to be portrayed. The subscripts 1, 2, and 3 refer to the three coordinates of each of the points a, b, and c. As far as the record before us reveals, Taylor's expression for the three-to-two dimensional transformation was the only way it could be done at the time applicants filed. There is nothing in the record to suggest that there was any possibility of the simplified programming claimed by the applicants in claim 19. The Patient Office belatedly, by an appendix to the Solicitor's brief, attempts to show that Taylor's equations can be manipulated to an identity with the equations appearing in claim 19. In so doing the solicitor has had the benefit of seeing applicants' equations, and with this hindsight a mathematical identity is revealed. There is nothing to suggest that, within the context of automated drawing, one of ordinary mathematical skill armed with the Taylor reference would be able to discover the simpler equations which are the basis of the claimed programming. Accordingly, we conclude that claim 19 as a whole defines an invention which is not obvious in view of the prior art. The same reasoning and the same conclusion apply to claims 20 and 21. Lastly, the examiner rejected claims 19-21 as being "drawn to the old combination of a programmed computer and a plotting device, which combination is shown to be old by Tripp." The board apparently affirmed this rejection, but seems to have mixed it into the discussion of novelty and obviousness. The rejection was stated by the examiner to be under section 112 and we will so treat the board's affirmance of it. The rationale of an old combination rejection is stated in MPEP 706.03 (j) as follows: "The fact that an applicant has improved one element of a combination which may be per se patentable does not entitle him to a claim to the improved element in combination with old elements where the elements perform no new function in the combination." This statement has the support of many cases. See, e.g., Lincoln Engineering Co. v. Stewart-Warner Corp., 303 U.S. 545 (1938). Why an applicant should not be so entitled is not clear. Many cases have said that the combination claim reciting only one new element with no new result is overclaiming or claiming more than the applicant invented. Such statements are indeed puzzling in view of the fact that the addition of elements to a claim narrows its scope and thereby creates a lesser monopoly. Others have said the combination is not new, or is obvious, if no new coaction or result is obtained. This too is unsound, since it is not the result which is to be patented but the recited machine, composition, etc. If the prior art does not show or suggest the improved element itself, it defies logical reasoning to say that the same prior art suggests the use of that improved element in a combination. [7] Our primary concern, however, is not with the soundness of the underlying policy, if any, for old combination rejections; it is with whether such rejections are proper under the present statute. The Patent Office Board of Appeals has recognized this problem in Ex parte Des Granges, 864 O.G. 712, 162 USPQ 379 (1968). There the board found that there was a statutory basis for the rejection in that portion of section 112 which requires that the claims specifically point out and distinctly claim the invention. We agree. We think that that statutory language is the only proper basis for an old combination rejection, and in applying the rejection that language determines what an applicant has a right and an obligation to do. Applying the section 112 language to claims 19-21, we do not see, and the examiner has not stated, how any of the claims would be made more particular or distinct by eliminating the plotting machine limitation from the body of the claim. Indeed the opposite appears to be true, since moving the recitation of the plotting machine to the preamble (in the continental manner or in the manner permitted by Ex parte Jepson, 1917 C.D. 62) would greatly increase the number of words in the preamble and impair, rather than enhance, the intelligibility of the claim. Neither would complete elimination of the plotting machine recitation make the claims more particular or distinct, since the monopoly defined by the claims would then be substantially broadened beyond the automatic drafting art. We therefore conclude that the rejection of claims 19-21 on the ground of old combination under 35 U.S.C. 112 was erroneous. As to claims 8, 13, and 18 the decision of the board is affirmed; as to claims 19-21 the decision of the board is reversed. 417 F. 2d 1387; 163 USPQ 641 IN RE PAUL A. MULLER (No. 8186) PATENTS 1. DRAWINGS-IN GENERAL Patent drawings are illustrative rather than comprehensive of the disclosure; there is no requirement that every feature recited in claim must appear in a single figure of the drawing; thus, applicant need not illustrate cylindrical folding with each and every disclosed material, since it is clear how it could be done. 2. CLAIMS AGGREGATION OR COMBINATION Addition of limitation to claim, as distinguished from substitution of limitation, can never result in claim to different species, since species claims must be mutually exclusive in scope; by including additional limitation in claims, applicant is not shifting to different species, but is simply defining invention more narrowly. |