CITE:  409 U.S. 63
CMON:  November 1972
PLAIN: Gottschalk, Commissioner of Patents
DEFND: Benson et al.
COURT: Supreme Court
DATE:  November 20, 1972

On writ of certiorari to Court of Customs and Patent Appeals; 169 USPQ 548.
Application for patent of Gary R. Benson and Arthur C. Tabbot, Serial No.
315,050, filed Oct. 9, 1963; Patent Office Group 283. On writ of certiorari
to review judgment allowing claims 8 and 13. Reversed.

See also 172 USPQ 577.

  Algorithm with a practical application is patentable.  Process claim
  without reference to particular machines must show transformation and
  reduction of an object to a different state or thing.



Respondents filed in the Patent Office an application for an invention
which was described as being related "to the processing of data by program
and more particularly to the programmed conversion of numerical information"
in general-purpose digital computers. They claimed a method for converting
binary-coded decimal (BCD) numerals into pure binary numerals. The claims
were not limited to any particular art or technology, to any particular
apparatus or machinery, or to any particular end use. They purported to
cover any use of the claimed method in a general-purpose digital computer
of any type.

Claims 8 and 13 {1} were rejected by the patent office but sustained by
the Court of Customs and Patent Appeals, -- C.C.P.A.(pat.) -- , 441 F.2d 682.
The case is here on a petition for a writ of certiorari. 405 U.S. 915.
The question is whether the method described and claimed is a "process"
within the meaning of the patent act. {2} A digital computer, as
distinguished from an analog computer, operates on data expressed in
digits, solving a problem by doing arithmetic as a person would do it
by head and hand. {3} Some of the digits are stored as components of
the computer. Others are introduced into the computer in a form which
it is designed to recognize. The computer operates then upon both new
and previously stored data. The general-purpose computer is designed to 
perform operations under many different programs. The representation of
numbers may be in the form of a time series of electrical impulses,
magnetized spots on the surface of tapes, drums, or discs, charged 
spots on cathode-ray tube screens, the presence or absence of punched
holes on paper cards, or other devices. The method or program is a
sequence of coded instructions for a digital computer. The patent 
sought is on a method of programming a general-purpose digital computer
to convert signals from binary-coded decimal form into pure binary form.
A procedure for solving a given type of mathematical problem is known as
an "algorithm." The procedures set forth in the present claims are of
that kind; that is to say, they are a generalized formulation for programs
to solve mathematical problems of converting one form of numerical
representation to another. From the generic formulation, programs may
be developed as specific applications. The decimal system uses as digits
the 10 symbols 0, 1, 2, 3, 4, 5, 6, 7, 8, and 9. The value represented
by any digit depends, as it does in any positional system of notation,
both on its individual value and on its relative position in the numeral.
Decimal numerals are written by placing digits in the appropriate positions
or columns of the numerical sequence, i.e., "unit" (equations omitted)
the pure binary system of positional notation uses two symbols as digits
-- 0 and 1, placed in a numerical sequence with values based on
consecutively ascending powers of 2. In pure binary notation, what
would be the tens position is the twos position; what would be hundreds
position is the fours position; what would be the thousands position is
the eights. Any decimal number from 0 to 10 can be represented in the binary 
system with four digits or positions as indicated in the following table.
(table omitted) the bcd system using decimal numerals replaces the
character for each component decimal digit in the decimal numeral with
the corresponding four-digit binary numeral, shown in the righthand
column of the table. Thus decimal 53 is represented as 0101 0011 in bcd,
because decimal 5 is equal to binary 0101 and decimal 3 is equivalent to
binary 0011. In pure binary notation, however, decimal 53 equals binary
110101. The conversion of BCD numerals to pure binary numerals can be
done mentally through use of the foregoing table.

The method sought to be patented varies the ordinary arithmetic steps
a human would use by changing the order of the steps, changing the
symbolism for writing the multiplier used in some steps, and by taking
subtotals after each successive operation. The mathematical procedures
can be carried out in existing computers long in use, no new machinery
being necessary. And, as noted, they can also be performed without a
computer. The court stated in Mackay Co. v. Radio Corp., 306 U.S. 86, 94,
that "(while a scientific truth, or the mathematical expression of it, 
is not a patentable invention, a novel and useful structure created with
the aid of knowledge of scientific truth may be)." That statement followed
the longstanding rule that "an idea of itself is not patentable."
Rubber-tip Pencil Co. v. Howard, 20 Wall. 498, 507. "a principle, in the
abstract, is a fundamental truth; an original cause; a motive; these
cannot be patented, as no one can claim in either of them an exclusive
right." Le Roy v. Tatham, 14 How. 156, 175.

Phenomena of nature, though just discovered, mental processes, and
abstract intellectual concepts are not patentable, as they are the
basic tools of scientific andtechnological work.  As we stated in Funk
Bros. Seed Co. v. Kalo Co., 333 U.S. 127, 130, "he who discovers a
hitherto unknown phenomenon of nature has no claim to a monopoly of it
which the law recognizes. If there is to be invention from such a 
discovery, it must come from the application of the law of nature to a
new and useful end."  We dealt there with a "product" claim, while the
present case deals with a "process" claim. But we think the same 
principle applies. Here the "process" claim is so abstract and sweeping
as to cover both known and unknown uses of the BCD to pure binary
conversion. The end use may (1) vary from the operation of a train to
verification of drivers' licenses to researching the law books for
precedents and (2) be performed through any existing machinery or
future-devised machinery or without any apparatus.

In O'Reilly v. Morse, 15 How. 62, Morse was allowed a patent for a process
of using electromagnetism to produce distinguishable signs for telegraphy.
id., At 111. But the court denied the eighth claim in which Morse claimed
the use of "electro magnetism, however developed for marking or printing
intelligible characters, signs, or letters, at any distances." id., At 112.
The court in disallowing that claim said, "if this claim can be maintained,
it matters not by what process or machinery the result is accomplished.
For aught that we now know, some future inventor, in the onward march of
science, may discover a mode of writing or printing at a distance by means
of the electric or galvanic current, without using any part of the process
or combination set forth in the plaintiff's specification. His invention
may be less complicated -- less liable to get out of order -- less expensive
in construction, and in its operation. But yet, if it is covered by this
patent, the inventor could not use it, nor the public have the benefit of
it, without the permission of this patentee." id., At 113. In the telephone
cases, 126 U.S. 1, 534, the court explained the Morse case as follows:
"the effect of that explained was, therefore, that the use of magnetism
as a motive power, without regard to the particular process with which
it was connected in the patent, could not be claimed, but that its use
in that connection could." Bell's invention was the use of electric
current to transmit vocal or other sounds. The claim was not "for the use
of a current of electricity in its natural state as it comes from the 
battery, but for putting a continuous current in a closed circuit into
a certain specified condition suited to the transmission of vocal and 
other sounds, and using it in that condition for that purpose." Ibid. The 
claim, in other words, was not "one for the use of electricity distinct
from the particular process with which it is connected in his patent." id.,
at 535. The patent was for that use of electricity "both for the magneto 
and variable resistance methods." id., At 538. Bell's claim, in other words,
was not one for all telephonic use of electricity.

In Corning v. Burden, 15 How. 252, 267-268, the court said, "one may
discover a new and useful improvement in the process of tanning, dyeing,
etc., irrespective of any particular form of machinery or mechanical
device." The examples given were the "arts of tanning, dyeing, making 
waterproof cloth, vulcanizing India rubber, smelting ores." id., at 267.
Those are instances, however, where the use of chemical substances or
physical acts, such as temperature control, changes articles or materials.
The chemical process or the physical acts which transform the raw material
are, however, sufficiently definite to confine the patent monopoly
within rather definite bounds. Cochrane v. Deener, 94 U.S. 780, involved
a process for manufacturing flour so as to improve its quality. The
process first separated the superfine flour and then removed impurities
from the middlings by blasts of air, reground the middlings, and then
combined the product with the superfine. id., At 785. The claim was not
limited to any special arrangement of machinery. ibid. The court said,
"that a process may be patentable, irrespective of the particular form of
the instrumentalities used, cannot be disputed. If one of the steps of a 
process be that a certain substance is to be reduced to a powder, it may
not be at all material what instrument or machinery is used to effect
that object, whether a hammer, a pestle and mortar, or a mill. Either may
be pointed out; but if the patent is not confined to that particular tool
or machine, the use of the others would be an infringement, the general
process being the same. A process is a mode of treatment of certain
materials to produce a given result. It is an act, or a series of acts,
performed upon the subject-matter to be transformed and reduced to a
different state or thing." id., At 787-788. Transformation and reduction
of an article "to a different state or thing" is the clue to the
patentability of a process claim that does not include particular machines.

So it is that a patent in the process of "manufacturing fat acids and 
glycerine from fatty bodies by the action of water at a high temperature
and pressure" was sustained in Tilghman v. Proctor, 102 U.S. 707, 721.
The court said, "the chemical principle or scientific fact upon which
it is founded is, that the elements of neutral fat require to be
severally united with an atomic equivalent of water in order to separate
from each other and become free. This chemical fact was not discovered by
Tilghman. He only claims to have invented a particular mode of bringing
about the desired chemical union between the fatty elements and water."
id., at 729. Expanded Metal Co. v. Bradford, 214 U.S. 366, sustained a
patent on a "process" for expanding metal. A process "involving mechanical 
operations, and producing a new and useful result," id., At 385-386, was
held to be a patentable process, process patents not being limited to
chemical action. Smith v. Snow, 294 U.S. 1, and Waxham v. Smith, 294 U.S.
20, involved a process for setting eggs in staged incubation and applying
mechanically circulated currents of air to the eggs. The court, in
sustaining the function performed (the hatching of eggs) and the means
or process by which that is done, said: "by the use of materials in a
particular manner he secured the performance of the function by a means
which had never occurred in nature, and had not been anticipated by the
prior art; this is a patentable method or process . . . A method, which may 
be patented irrespective of the particular form of the mechanism which
may be availed of for carrying it into operation, is not to be rejected
as 'functional', merely because the specifications show a machine capable
of using it." 294 U.S.,at 22.

It is argued that a process patent must either be tied to a particular 
machine or apparatus or must operate to change articles or materials to
a "different state or thing." We do not hold that no process patent could
ever qualify if it did not meet the requirements of our prior precedents.
It is said that the decision precludes a patent for any program servicing
a computer. We do not so hold. It is said that we have before us a program
for a digital computer but extend our holding to programs for analog
computers. We have, however, made clear from the start that we deal with a 
program only for digital computers. It is said we freeze process patents
to old technologies, leaving no room for the revelations of the new,
onrushing technology. Such is not our purpose. What we come down to in
a nutshell is the following.

It is conceded that one may not patent an idea. But in practical effect
that would be the result if the formula for converting BCD numerals to
pure binary numerals were patented in this case. The mathematical formula
involved here has no substantial practical application except in connection
with a digital computer, which means that if the judgment below is
affirmed, the patent would wholly preempt the mathematical formula and
in practical effect would be a patent on the algorithm itself. It may be
that the patent laws should be extended to cover these programs, a policy
matter to which we are not competent to speak. The President's Commission
on the patent system {4} rejected the proposal that these programs be
patentable: {5} "uncertainty now exists as to whether the statute permits
a valid patent to be granted on programs.

Direct attempts to patent programs have been rejected on the ground of
nonstatutory subject matter. Indirect attempts to obtain patents and
avoid the rejection, by drafting claims as a process, or a machine or
components thereof programmed in a given manner, rather than as a program
itself, have confused the issue further and should not be permitted.
"the patent office now cannot examine applications for programs because
of a lack of a classification technique and the requisite search files.
Even if these were available, reliable searches would not be feasible
or economic because of the tremendous volume of prior art being
generated. Without this search, the patenting of programs would be
tantamount to mere registration and the presumption of validity would
be all but nonexistent. "it is noted that the creation of programs has
undergone substantial and satisfactory growth in the absence of patent
protection and that copyright protection for programs is presently

If these programs are to be patentable, {6} considerable problems are
raised which only committees of Congress can manage, for broad powers
of investigation are needed, including hearings which canvass the wide
variety of views which those operating in this field entertain. The
technological problems tendered in the many briefs before us {7} indicate
to us that considered action by the Congress is needed. 



{1} They are set forth in the appendix to this opinion.

{2} Title 35 U.S.C. 100(b) provides: "the term 'process' means process,
art or method, and includes a new use of a known process, machine, 
manufacture, composition of matter, or material." Title 35 U.S.C. 101
provides: "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."

{3} See R. Benrey, Understanding Digital Computers 4 (1964).

{4} "To Promote the Progress of . . . Useful arts," Report of the President's
Commission on the Patent System (1966).

{5} Id., at 13.

{6} See Wild, Computer Program Protection: the need to legislate a
solution, 54 Corn.L.Rev. 586, 604-609 (1969); Bender, Computer Programs:
should they be patentable?, 68 Col.L.Rev. 241 (1968); Buckman, Protection
of Proprietory Interest in Computer Programs, 51 J.Pat.Off.Soc. 135 (1969).

{7} Amicus briefs of 14 interested groups have been filed on the merits
in this case. Mr. Justice Stewart, Mr. Justice Blackmun, and Mr. Justice
Powell took no part in the consideration or decision of this case.
Appendix to opinion of the court claim 8 reads: "the method of converting
signals from binary coded decimal form into binary which comprises the
steps of "(1) storing the binary coded decimal signals in a re-entrant
shift register, "(2) shifting the signals to the right by at least three
places, until there is a binary '1' in the second position of said
register, "(3) masking out said binary '1' in said second position of
said register, "(4) adding a binary '1' to the first position of said
register, "(5) shifting the signals to the left by two positions,
"(6) adding a '1' to said first position, and "(7) shifting the signals
to the right by at least three positions in preparation for a succeeding
binary '1' in the second position of said register." Claim 13 reads:
"a data processing method for converting binary coded decimal number
representations into binary number representations comprising the steps
of "(1) testing each binary digit position '1,' beginning with the least
significant binary digit position, of the most significant decimal
digit representation for a binary '0' or a binary '1'; "(2) if a 
binary '0' is detected, repeating step (1) for the next least
significant binary digit position of said most significant decimal
digit representation; "(3) if a binary '1' is detected, adding a
binary '1' at the (i.1th and (i-3th least significant binary digit
positions of the next lesser significant decimal digit representation,
and repeating step (1) for the next least significant binary digit
position of said most significant decimal digit representation; "(4)
upon exhausting the binary digit positions of said most significant
decimal digit representation, repeating steps (1) through (3) for the
next lesser significant decimal digit representation as modified by
the previous execution of steps (1) and (3); and "(5) repeating steps
(1) through (4) until the second least significant decimal digit
representation has been so processed."