In re Bergy

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United States Court of Customs and Patent Appeals.


596 F.2d 952

March 29, 1979.

RICH, Judge.


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The real question before us is whether appellants are to be allowed to define their inventions already determined to be patentable in a certain way in “claims” pursuant to 35 U.S.C. s 112, second paragraph. This question, which is the same in each case, involves the construction and application of 35 U.S.C. s 101, more particularly the meaning to be given to the words “manufacture” and “composition of matter” in that section, which reads:

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. (Emphasis ours.)

The PTO has raised no issue in either case, as to any aspect of the inventions, about compliance with the “conditions and requirements of this title,” that is to say the basic Title 35 requirements for patentability, which are utility, novelty, and nonobviousness (35 U.S.C. ss 101, 102, and 103), or any other statutory condition or requirement such as adequacy of disclosure (35 U.S.C. s 112, first paragraph). The sole issue, as the PTO chooses to view it, is whether an invention, otherwise patentable under the statute, is excluded from the categories of subject matter which may be patented, set forth in s 101, because it is “alive.”

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The Constitution

The grant of power to Congress to establish a patent system is in these familiar words of Article I, section 8, clauses 8 and 18:

(The Congress shall have Power) * * * (8) To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries; * * * (And) (18) To make all Laws which shall be necessary and proper for carrying into Execution the foregoing Powers * * *.

Scholars who have studied this provision, its origins, and its subsequent history, have, from time to time, pointed out that it is really two grants of power rolled into one; first, to establish a copyright system and, second, to establish a patent system. See R. DeWolf, An Outline of Copyright Law 15 (1925); K. Lutz, Patents and Science. A Clarification of the Patent Clause of the Constitution, 18 Geo.Wash.L.Rev. 50 (1949); P. Federico, Commentary on the New Patent Act, 35 U.S.C.A. s 1 to s 110, 1, 3 (1954); G. Rich, Principles of Patentability, 28 Geo.Wash.L.Rev. 393 (1960). Their conclusions have been that the constitutionally-stated purpose of granting patent rights to inventors for their discoveries is the promotion of progress in the “useful Arts,” rather than in science. In enacting the 1952 Patent Act, both houses of Congress adopted in their reports this construction of the Constitution in identical words, as follows:

The background, the balanced construction, and the usage current then and later, indicate that the constitutional provision is really two provisions merged into one. The purpose of the first provision is to promote the progress of Science by securing for limited times To authors the exclusive right to their Writings, the word “science” in this connection having the meaning of knowledge in general, which is one of its meanings today. The other provision is that Congress has the power to promote the Progress of useful arts by securing for limited times to inventors the exclusive right to their Discoveries. The first patent law and all patent laws up to a much later period were entitled “Acts to promote the progress of useful arts.”(H.R.Rep.No.1923, 82d Cong., 2d Sess. 4 (1952); S.Rep.No.1979, 82d Cong., 2d Sess. 3 (1952), U.S.Code Cong. & Admin.News 1952, pp. 2394, 2396. Emphasis ours.)

It is to be observed that the Constitutional clause under consideration neither gave to nor preserved in inventors (or authors) any rights and set no standards for the patentability of individual inventions; it merely empowered Congress, if it elected to do so, to secure to inventors an “exclusive right” for an unstated “limited” time for the stated purpose of promoting useful arts. We have previously pointed out that the present day equivalent of the term “useful arts” employed by the Founding Fathers is “technological arts.” In re Musgrave, 431 F.2d 882, 893, 57 CCPA 1352, 1367, 167 USPQ 280, 289-90 (1970). See also In re Waldbaum, 457 F.2d 997, 59 CCPA 940, 173 USPQ 430 (1972) (Rich, J., Concurring ).

We turn now to a consideration of how Congress has implemented the power delegated to it.

Anatomy of the Patent Statute

The reason for our consideration of the statutory scheme in relation to its Constitutional purpose is that we have been directed to review our prior decisions in the light of Flook and we find in Flook an unfortunate and apparently unconscious, though clear, commingling of distinct statutory provisions which are conceptually unrelated, namely, those pertaining to the Categories of inventions in s 101 which May be patentable and to the Conditions for patentability demanded by the statute for inventions within the statutory categories, particularly the nonobviousness condition of s 103. The confusion creeps in through such phrases as “eligible for patent protection,” “patentable process,” “new and useful,” “inventive application,” “inventive concept,” and “patentable invention.” The last-mentioned term is perhaps one of the most difficult to deal with unless it is used Exclusively with reference to an invention which complies with Every condition of the patent statutes so that a valid patent may be issued on it.

The problem of accurate, unambiguous expression is exacerbated by the fact that prior to the Patent Act of 1952 the words “invention,” “inventive,” and “invent” had distinct legal implications related to the concept of patentability which they have not had for the past quarter century. Prior to 1952, and for sometime thereafter, they were used by courts as imputing Patentability. Statements in the older cases must be handled with care lest the terms used in their reasoning clash with the reformed terminology of the present statute; lack of meticulous care may lead to distorted legal conclusions.

The transition made in 1952 was with respect to the old term “invention,” imputing Patentability, which term was replaced by a new statutory provision, s 103, requiring Nonobviousness, as is well explained and approved in Graham v. John Deere Co., supra n. 2. Part IV of that opinion, entitled “The 1952 Act,” quotes the key sections of the statute upon which patentability depends. Graham states that there are three explicit conditions, novelty, utility, and nonobviousness, which is true, but there is a fourth requirement, which alone, is involved here. This was also the sole requirement involved in Flook.

The Revised Statutes of 1874, which contained the primary patent statutes revised and codified in 1952, lumped most of the conditions for patentability in a single section, s 4886, as did all of the prior statutes back to the first one of 1790. The 1952 Act divided that statute up into its logical components and Added the nonobviousness requirement, which until then had been imposed only by court decisions. This attempt at a clearcut statement to replace what had been a hodgepodge of separate enactments resulted in a new and official Title 35 in the United States Code with three main divisions. Part I pertains to the establishment and organization of the PTO. Part II, here involved, covers patentability of inventions and the grant of patents. Part III relates to issued patents and the protection of the rights conferred by them.

All of the statutory law relevant to the present cases is found in four of the five sections in Chapter 10, the first chapter of Part II: Sec. 100 Definitions Sec. 101 Inventions patentable (if they qualify) Sec. 102 Conditions for patentability; novelty and loss of right to patent Sec. 103 Conditions for patentability; non-obvious subject matter

More strictly speaking, these cases involve only s 101, as did Flook. Achieving the ultimate goal of a patent under those statutory provisions involves, to use an analogy, having the separate keys to open in succession the three doors of sections 101, 102, and 103, the last two guarding the public interest by assuring that patents are not granted which would take from the public that which it already enjoys (matters already within its knowledge whether in actual use or not) or Potentially enjoys by reason of obviousness from knowledge which it already has.

Inventors of patentable inventions, as a class, are those who bridge the chasm between the known and the obvious on the one side and that which promotes progress in useful arts or technology on the other.

The first door which must be opened on the difficult path to patentability is s 101 (augmented by the s 100 definitions), quoted supra p. 956. The person approaching that door is An inventor, whether his invention is patentable or not. There is always an inventor; being an inventor might be regarded as a preliminary legal requirement, for if he has not invented something, if he comes with something he knows was invented by someone else, he has no right even to approach the door. Thus, section 101 begins with the words “Whoever invents or discovers,” and since 1790 the patent statutes have always said substantially that. Being an inventor or having an invention, however, is no guarantee of opening even the first door. What Kind of an invention or discovery is it? In dealing with the question of kind, as distinguished from the qualitative conditions which make the invention patentable, s 101 is broad and general; its language is: “any * * * process, machine, manufacture, or composition of matter, or any * * * improvement thereof.”Section 100(b) further expands “process” to include “art or method, and * * * a new use of a known process, machine, manufacture, composition of matter, or material.”If the invention, as the inventor defines it in his claims (pursuant to s 112, second paragraph), falls into any one of the named categories, he is allowed to pass through to the second door, which is s 102; “novelty and loss of right to patent” is the sign on it. Notwithstanding the words “new and useful” in s 101, the invention is not examined under that statute for novelty because that is not the statutory scheme of things or the long-established administrative practice.

Section 101 States three requirements: novelty, utility, and statutory subject matter. The understanding that these three requirements are Separate and distinct is long-standing and has been universally accepted. The text writers are all in accord and treat these requirements under separate chapters and headings. See, e. g., Curtis's Law of Patents, Chapters I and II (1873); 1 Robinson on Patents ss 69-70 at 105-109 (1890); 1 Rogers on Patents (1914); Revise & Caesar, Patentability and Validity, Chapters II, III, IV (1936); Deller's Walker on Patents, Chapters II, IV, V (1964). Thus, the questions of whether a *961 particular invention is Novel or Useful are questions wholly apart from whether the invention falls into a category of Statutory subject matter. Of the three requirements Stated in s 101, only two, utility and statutory subject matter, are Applied under s 101. As we shall show, in 1952 Congress voiced its intent to consider the novelty of an invention under s 102 where it is first made clear what the statute means by “new”, notwithstanding the fact that this requirement is first Named in s 101.

The PTO, in administering the patent laws, has, for the most part, consistently applied s 102 in making rejections for lack of novelty. To provide the option of making such a rejection under either s 101 or s 102 is confusing and therefore bad law. Our research has disclosed only two instances in which rejections for lack of novelty were made by the PTO under s 101, In re Bergstrom, 427 F.2d 1394, 57 CCPA 1240, 166 USPQ 256 (1970); In re Seaborg, 328 F.2d 996, 51 CCPA 1109, 140 USPQ 662 (1964). In In re Bergstrom we in effect treated the rejection as if it had been made under s 102, observing in the process that “The word ‘new’ in s 101 is defined and is to be construed in accordance with the provisions of s 102.”427 F.2d at 1401, 57 CCPA at 1249, 166 USPQ at 262.

When s 101 was enacted, the accompanying Reviser's Note stated (inserts and emphasis ours):

The corresponding section of the existing statute (R.S. s 4886) is split into two sections, section 101 relating to the Subject matter for which patents May be obtained (“subject to the conditions and requirements of this title”), and section 102 defining statutory novelty and stating other conditions for patentability.

H.R.Rep. No. 1923, supra at 6,U.S.Code Cong. & Admin.News 1952, p. 2409, another contemporaneous document, states (emphasis ours):

Part II relates to patentability of inventions and the grant of patents.

Referring first to section 101, this section specifies The type of material which can be the subject matter of a patent.

Section 101 sets forth the Subject matter that can be patented “subject to the conditions and requirements of this title.”The conditions under which a patent may be obtained Follow, and section 102 covers the conditions relating to novelty.

A person may have “invented” a machine or a manufacture, which may include anything under the sun that is made by man, But it is not necessarily patentable under section 101 unless the conditions of the title are fulfilled.

Section 102 in paragraphs (a), (b), and (c) repeats the conditions in the existing law relating to novelty.

The Senate report, No. 1979, makes the identical statement.

The second door then, as we have already seen, is s 102 pursuant to which the inventor's claims are examined for novelty, requiring, for the first time in the examination process, comparison with the prior art which, up to this point, has therefore been irrelevant.

Section 102 also contains other conditions under the heading “loss of right” which need not be considered here. An Invention may be in a statutory category and not patentable for want of Novelty, or it may be novel and still not be patentable because it must meet yet another condition existing in the law since 1850 when Hotchkiss v. Greenwood, 11 How. 248, 13 L.Ed. 683, was decided. This condition developed in the ensuing century into the “Requirement for invention.” See Graham v. John Deere Co., supra.

The third door, under the 1952 Act, is s 103 which was enacted To take the place of the requirement for “invention.” We need not examine this requirement in detail for it is not involved in the present appeals, and was not involved in Flook. It will suffice to quote what the House and Senate reports, cited supra “signals” from Congress say about the third requirement, from which it will be seen that, again, the claimed invention for which a patent is sought must be compared with the prior *962 art. We quote H.R.Rep. No. 1923, supra at 7U.S.Code Cong. & Admin.News 1952, p. 2399:

Section 103, for the first time in our statute, provides a condition which exists in the law and has existed for more than 100 years, but only by reason of decisions of the courts. An invention which has been made, and which is new in the sense that the Same thing has not been made (or known) before, may still not be patentable if the difference between the new thing and what was known before is not considered sufficiently great to warrant a patent. That has been expressed in a large variety of ways in decisions of the courts and in writings.Section 103 states this requirement in the title (“Conditions for patentability; non-obvious subject matter”). It refers to the difference between the subject matter sought to be patented And the prior art, meaning what was known before as described in section 102. If this difference is such that The subject matter as a whole would have been obvious at the time (the invention was made) to a person (ordinarily) skilled in the art, then the subject matter cannot be patented. (Insertions and emphasis ours.)

If the inventor holds the three different keys to the three doors, his Invention (here assumed to be “useful” ) qualifies for a patent, otherwise not; but he, as Inventor, must meet still other statutory requirements in the preparation and prosecution of his patent application. We need not here consider the latter because appellants have not been faulted by the PTO in their paperwork or behavior. The point not to be forgotten is that being an Inventor and having made an Invention is not changed by the fact that one or more or all of the conditions for Patentability cannot be met. Year in and year out this court turns away the majority of the inventors who appeal here because their inventions do not qualify for patents. They remain inventions nevertheless. It is time to settle the point that the terms invent, inventor, inventive, and the like are unrelated to deciding whether the statutory requirements for patentability under the 1952 Act have been met. There is always An invention ; the issues is its patentability. Terms like “inventive application” and “inventive concept” no longer have any useful place in deciding questions under the 1952 Act, notwithstanding their universal use in cases from the last century and the first half of this one. As Mr. Justice Holmes said in Towne v. Eisner, 245 U.S. 418, 425, 38 S.Ct. 158, 159, 62 L.Ed. 372 (1918), “A word * * * may vary greatly in color and content according to the circumstances and the time in which it is used.”And Mr. Justice Frankfurter said in Shapiro v. United States, 335 U.S. 1, 56, 68 S.Ct. 1375, 1403, 92 L.Ed. 1787 (1948), “It is the part of wisdom, particularly for judges, not to be victimized by words.”

We have observed with regret that the briefs filed by the Solicitor General for Acting Commissioner Parker in Parker v. Flook, a case which, as the Court noted, “turns entirely on the proper construction of s 101,” badly, and with a seeming sense of purpose, confuse the statutory-categories requirement of s 101 with a requirement for the existence of “invention.” This they do by basing argument on the opening words of s 101, “Whoever invents or discovers,” thereby importing into the discussion of compliance with s 101 a requirement for “invention” in a patentability sense. But there has not been a requirement for “invention” in the patentability sense in the laws since 1952 the requirement was replaced by the s 103 requirement for nonobviousness. Graham v. John Deere Co., supra.Furthermore, when one has only compliance with s 101 to consider, the sole question, aside from utility, is whether the invention falls into a named category, not whether it is Patentable. Falling into a category, does not involve considerations of novelty or nonobviousness and Only those two considerations involve comparison with prior art or inquiry as to whether all or any part of the invention is or is not in, or assumed to be in, the prior art or the public domain. Prior art is irrelevant to the determination of statutory subject matter under s 101. An invention can be statutory subject matter and be 100% Old, devoid of any utility, or entirely obvious. This is our understanding of the statute and the basis on which we proceed to the further consideration of these appeals.

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The question here, as it always has been, is: are the inventions claimed of a Kind contemplated by Congress as possibly patentable If they turn out to be new, useful, and unobvious within the meaning of those terms as used in the statute.

For a better understanding of the issues presented by the present appeals, one further matter should be pointed out. An “invention” in the popular sense may have many aspects in the patent law sense and, technically speaking, may really be an aggregation of closely related inventions all pertaining to the same contribution the inventor is making to the technological arts. This will later be seen to be the case with the inventions of Bergy and Chakrabarty. When that is so, the applicant is in a position to define his invention(s) in claims (technical legal definitions of the spheres of Protection sought, not Descriptions of the invention) which may fall into different s 101 categories. For example, an inventor may have produced a new product which is made by a new process and put to a new use. The invention is capable, therefore, of being defined or Claimed as a manufacture or composition of matter, as a process for making the product, and as a process utilizing the product in some way. The PTO has procedures under which it may or may not permit claims of differing types to be prosecuted in the same patent application. In each of the cases here on appeal, the application contains claims of different types to process and to product. In each application the process claims have been approved stand “allowed” only product claims being rejected and on appeal; but in each application all of the claims pertain to the Same invention, considered broadly and in terms of the contribution of the inventor.

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