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In re Musgrave

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Citation Edit

In re Musgrave, 431 F.2d 882, 167 U.S.P.Q. (BNA) 280 (C.C.P.A. 1970) (full-text).

Factual Background Edit

Musgrave's invention was directed to a method of delineating geological subsurface formations by taking a series of seismograms from geographically separated stations. Musgrave's primary discovery was that the delineation could be improved by applying a hyperbolic function to the family of seismograms produced by a particular arrangement of stations. The claims include steps such as “generating signals” and “applying corrections." The possibility that a digital computer could be used to accomplish the corrections was disclosed.[1]

The Patent and Trademark Office rejected the claims, asserting that none of the claims defined a process within the meaning of Section 101. The Board of Patent Appeals and Interferences considered the claims by separating the "mental steps” from the "physical steps” and found that the point of novelty was found in the mental steps. Thus, the Board held the process did not fall within the category of patentable inventions.

C.C.P.A. Proceedings Edit

All of the claims were drawn to methods and contained some steps not limited by machine-oriented language.[2] This provided the Patent Office with an opportunity to force consideration of its "mental steps" theories. It also provided Judge Rich, the author of the opinion, an opportunity to reinstate much of Judge Smith's Prater I opinion.[3]

The argument that statutory process steps had to "operate physically upon substances" was again rejected, at least where accompanied by other steps so limited.[4] Judge Rich examined the "mental steps" doctrine and said, "[tlhat law we, like others, have found to be something of a morass.”[5] Resort to the "Abrams non rules" was characterized as "legal error.”[6] According to the court, dissecting the claims to arrive at some “point of novelty” was irrelevant to an analysis of statutory subject matter of the process under Section 101. The court explicitly stated that:

As maybe seen from the statutory language, it contains nothing whatever which would either include or exclude claims containing "mental steps" and whatever law may be on the subject cannot be attributed to Congress.

Judge Rich summarized his findings in a sweeping statement of the law on statutory subject matter:

All that is necessary, in our view, to make a sequence of operational steps a statutory "process" within 35 U.S.C. §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.”[7]

The court by this holding thus expanded the bases for a process as defined by Section 101 to include any sequence of steps that can be performed by a machine as well as by a thinking person and that promotes the progress of the useful arts.

Judge Baldwin concurred in the outcome but objected to the majority’s “major and radical shift in this area of the law”[8] and to their “serious breach with the time honored judicial practice of resolving important questions of law on a case-by-case basis.”[9] He felt that the majority had overreacted to "this ‘fearful’ mental steps doctrine[10] and expressed concern that the new "technological arts" standard would merely substitute one set of uncertainties for another.[11]

For all intents and purposes, the court had come full circle since Prater I. It was not surprising that Judge Rich would reach this position in view of his reaction to a rehearing of that case;[12] but the fact that three other judges joined with him in the Musgrave opinion was an important indication of the court's growing impatience with Patent Office subject matter objections to program-related patents.

ReferencesEdit

  1. 431 F.2d at 887, 167 U.S.P.Q. (BNA) at 284-85.
  2. Id. at 888, 167 U.S.P.Q. (BNA) at 285.
  3. In re Prater, 415 F.2d 1378, 159 U.S.P.Q. (BNA) 583 (C.C.P.A. 1968)(full-text), superseded by Prater II, 415 F.2d 1393, 162 U.S.P.Q. (BNA) 541 (C.C.P.A. 1969)(full-text).
  4. 431 F.2d at 892-93, 167 U.S.P.Q. (BNA) at 289.
  5. Id. at 890, 167 U.S.P.Q. (BNA) at 287.
  6. Id. at 892, 167 U.S.P.Q. (BNA) at 289.
  7. Id. at 893, 167 U.S.P.Q. (BNA) at 289-90.
  8. Id. at 893 94,167 U.S.P.Q. (BNA) at 290 (Baldwin, J., concurring).
  9. Id.
  10. Id. at 895, 167 U.S.P.Q. (BNA) at 291 (Baldwin, J., concurring).
  11. Id. at 896, 167 U.S.P.Q. (BNA) at 291-92 (Baldwin, J., concurring).
  12. Prater II, 415 F.2d 1378, 1390, 160 U.S.P.Q (BNA) 230, 231 (C.C.P.A. 1968) (Rich, J., dissenting).

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