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In Re Bernhart - did you ever think of patenting your child's math homework? | 661 comments | Create New Account
Comments belong to whoever posts them. Please notify us of inappropriate comments.
Another SCOTUS case, Dann v. Johnston, plus bizarre Rich dissent - In Re Chatfield
Authored by: macliam on Saturday, March 30 2013 @ 04:32 PM EDT

Glad you found the State Street screed informative.

I might have gone on to make some general points, but in the past hour, thanks to Google Scholar I have come across some cases that were new to me.

I don't know whether you have come across Dann v. Johnston 425 U.S. 219. Searching for Groklaw articles mentioning this case, I find three. The first is in an interesti ng article by Prof. Michael Risch which I must re-read. The second is as a cited case mentioned in footnote 19 of the Government brief in Bilski v. Kappos. And the case was mentioned in the oral argument in Bilski v. Kappos. On my reading of Dann v. Johnston, it must surely be relevant if not ruling precedent for CLS v. Alice. Here is the opinion of a unanimous Supreme Court:

Respondent has applied for a patent on what is described in his patent application as a “machine system for automatic record-keeping of bank checks and deposits.” The system permits a bank to furnish a customer with subtotals of various categories of transactions completed in connection with the customer's single account, thus saving the customer the time and/or expense of conducting this bookkeeping himself. As respondent has noted, the “invention is being sold as a computer program to banks and to other data processing companies so that they can perform these data processing services for depositors.” Brief for Respondent 19A; Application of Johnston, 502 F. 2d 765 (CCPA 1974).

Petitioner and respondent, as well as various amici, have presented lengthy arguments addressed to the question of the general patentability of computer programs. Cf. Gottschalk v. Benson, 409 U. S. 63 (1972). We find no need to treat that question in this case, however, because we conclude that in any event respondent's system is unpatentable on grounds of obviousness. 35 U. S. C. ยง 103. Since the United States Court of Customs and Patent Appeals (CCPA) found respondent's system to be patentable, Application of Johnston, supra, the decision of that court is accordingly reversed. Dann v. Johnston, 425 U.S. 220 (1976).

Whilst I did not spot any neat quotes in the ‘obviousness’ argument under § 103, the broad thrust is that the accounting practices were well-understood, also computerized financial information systems were well-understood in the art back in 1976 and before, so the PHOSITA should have had no difficulty in automating a routine accounting system.

______

The other case seems to me really weird. This is a case, Application of Chatfield before the Court of Customs and Patent Appeals. 545 F.2d 152 (1976). I arrived at it through following a cryptic reference in footnote 11 of Benson v. Flook. Apparently the PTO did not want to allow patents for ‘software’ and rejected the application. The matter came before the CCPA. Three judges, Chief Judge Markey and Judges Baldwin and Miller reversed the decision of the PTO. They found (sensibly in my opinion) that there was nothing in Benson to preclude patentability in the case before them. Two judges, Judges Rich and Lane dissented.

After the CCPA ruled that the invention was patentable, the director of the PTO applied to the Supreme Court for certiorari. Certiorari was denied. And the patent, 4,183,083 duly issued. As patents go (I am no great fan of patents), this seems a perfectly respectable patent whose subject matter is an improvement to scheduling procedures for multiprogrammed operating systems. It is full of technical details about priorities, peripheral access queues, thruput, resource priorities, some relationships expressed through simple mathematical equations, constraints expressed through inequalities, use of the simplex algorithm etc.

In a bizarre dissent, Judge Rich, joined by Judge Lane wrote a long screed which offered no reason to deny patentablity other than his apparently incomprehension of the rationale of Gottschalk v. Benson. He included the following questions:

That brief observation adds considerably to the already existing ambiguity inherent in the Benson opinion. Does it say Benson's two claims were held non-statutory only because they were not limited to any particular technology, apparatus, or end use?

Does the Supreme Court not regard data processing as a technology, data-processing equipment as apparatus, or the necessary conversion in such apparatus of binary-coded-decimal to pure binary signals as an end use?

The answers to these questions are very important because in the instant case, and in In re Noll, the invention relates only to the operation of data-processing equipment (‘computers’) without reference to any other ‘technology,’ ‘apparatus,’ or ‘end use.’ How, then, can this case be distinguished from Benson even when the narrowest possible view of that decision is taken? Just how ‘limited’ was the holding in Benson supposed to be? Benson's claims were in fact limited to a method carried out in data-processing apparatus (including a ‘reentrant shift register,’ claim 8) and to ‘A data processing method’ (claim 13). Benson did not claim a ‘formula.’ Application of Chatfield before the Court of Customs and Patent Appeals. 545 F.2d 161 (1976).

Judge Giles S. Rich may have been distinguished as a patent lawyer, and probably rightly so. But I am getting the impression that he as a man who lacked a basic understanding of mathematics, and who could not understand issues relating to computer programming, operating systems etc. And this basic lack of understanding shows through in his judicial opinions.

After writing the above, I just found the CCPA decision on Flook overruled by SCOTUS here: Application of Flook (found on website www.leagle.com. Interesting! According to the patent judges on the CCPA, calculating a value (say) 40% of the way between x and y and then setting an alarm limit to that value is not pre-emptive, and therefore is allowable under Benson, because you are not precluded from calculating that value and not updating the alarm limit.

The message I am getting from the patent judges is this: scientists, mathematicians and computer programmers can play around with their laws of nature, natural phenomena, abstract ideas, equations, theorems, abstract and the like, so long as they are not doing anything useful. But every form of useful human activity is patent-eligible under the 1952 Act.

[ Reply to This | Parent | # ]

In Re Bernhart - did you ever think of patenting your child's math homework?
Authored by: macliam on Saturday, March 30 2013 @ 09:57 PM EDT

Applic ation of Bernhart (aka In Re Bernhart) is one of the cases that you looked into, I believe, from the ‘programmed computer is a special machine’ point of view.

Did you ever get round to looking at the issued patent, US3,519,997?

If you get round to looking at it, in the more readable parts in the pages before the claims start, and on to the claims which are in this case reasonably readable, do you see anything looking remotely like computer programming, or technical detail? Do you see anything that looks like anything other than pre-calculus analytic geometry?

Admittedly it is rather odd to read a piece of otherwise straightforward mathematical text that talks of signals (xi, yi, zi) rather than coordinates (xi, yi, zi).

But, in my view, In Re Bernhart is a story, not about dicta concerning programmed computers being particular machines, but a completely different story involving the weird rules governing the determination of ‘nonobviousness’ in the days before KSR v. Teleflex.

In the case In Re Bernhart under consideration, which involved using a computer to calculate a projection from three dimensions to two using basic pre-calculus coordinate geometry then plotting it, there was one prior art reference, Tripp that taught the combination of the computer and the plotter, but the main prior art was Taylor which also taught using the computer to compute the same projection from three dimensions onto a plane. But because the mathematics needed to transform from one two-dimensional representation to another was considered beyond the skill of the PHOSITA, the invention was held to be nonobvious under section 103: “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.” Applic ation of Bernhart, 417 F.2d 1402.

Of course, the prior art would of course be more likely to be found, not in the PTO databases, but in dusty 19th century geometry textbooks for schools and universities that people would not normally consider taking down off the shelves, since that sort of mathematics would only be of interest to a handful of specialists in the history of mathematics with a particular interest in 19th century pedagogy and geometry.

[ Reply to This | Parent | # ]

In Re Bernhart - it really is patenting math homework!
Authored by: macliam on Sunday, March 31 2013 @ 10:16 AM EDT

This is the problem. A patent US 3,519,997 issued in July 7, 1970. The application was filed in 1961, following a successful appeal at the Court of Customs and Patent Appeals Application of Bernhart (also known as In Re Bernhart).

The Patent, entitled Planar Illustration Method and Apparatus, concerns a projection and plotting program. Three-dimensional coordinate data (x,y,z) is projected into two dimensions (v, w) in a fashion to be described below in more detail. The co-inventors were Walter D. Bernhart and William A. Fetter. (The patent was issued to Fetter.) Given a sequence of points in three-dimensions, specified by their Cartesian coordinates (xi, yi, zi), and information to determine whether to draw a line segment between succeeding vertices, the projection onto two-dimensions is calculated by the computer, and the result is plotted using a standard plotting device. There was one piece of prior art (US patent 3153224, issued to M. Taylor) that taught calculating a projection from three dimensions to two with the same specification as that in Bernhart and Fetter's application. There was another piece of prior art, the Tripp reference, that taught using a plotter in conjunction with a computer. Thus the claimed invention would have been ‘obvious’ under § 103 of the Patent Statute over the combination of Taylor and Tripp, but for one missing piece of the jigsaw:

The equations specifying the two-dimensional co-ordinates (v,w) in terms of the three dimensional coordinates (x, y, z) set out in the claims of Bernhart and Fetter were not to be found verbatim in the Taylor reference.

Therefore the learned judges of the Court of Customs and Patent Appeals ruled that the invention was nonobvious and therefore patentable. The opinion was unanimous

To summarize: the claimed invention would have been obvious over a combination of Tripp, Taylor and a coordinate geometry problem. The judges ruled that the solution of the problem would not have been obvious to the PHOSITA (Person Having Ordinary Skill In The Art), though a similar transformation was present in the Taylor reference.

It should also be noted that the equations in Bernhart and Fetter seem to have been plucked out of thin air. The inventors just seem to describe how to break down the task of calculating using the equations into stages with intermediate quantities, so that the PHOSITA could program the steps into the computer. They do not teach how their equations were arrived at. They might have been (and I suspect probably were) just plucked from some textbook.

Rays meeting at the eye are projected onto a plane P. The origin has coordinates (0,0,0). I will denote the coordinates of the eye position by (a,b,c) (departing from the notation of the patent for ease of typing, so as not to have to bother with subscripts etc.). Rays passing through the eye position are projected to points of the plane P with equation ax + yb + cz = 0 so that the ray is projected to the point of the plane P where it cuts the plane. Moreover this plane is the unique plane passing through the origin that is perpendicular to the line joining the origin to the eye position at (a, b, c).

Now the points of the ray passing through (a, b, c) and (x, y, z) have coordinates of the form

( (1-t)a + tx, (1-t)b + ty, (1-t)c + tz )

where t is a real variable. Therefore the point (p, q, r) at which the line cuts the plane P is of the above form, but with the value of t determined to satisfy the equation

(1-t)a2 + tax + (1-t)b2 + tby + (1-t)c2 + tcz = 0.

Therefore

t (a2 + b2 + c2 - ax - by - cz) = a2 + b2 + c2.

Thus

p =(1-t)a + tx,   q =(1-t)b + ty,   r =(1-t)c + tz,

where

t = (a2 + b2 + c2) (a2 + b2 + c2 - ax - by - cz)-1.

Note that, once the problem is specified as determining the coordinates (p, q, r) of the point where the line passing through the points (a, b, c) and (x, y, z) cuts the plane P, the solution to that problem is uniquely determined. The solution is compelled by the standard properties of plane geometry, and by the laws of logic that underpin mathematical reasoning. It is then necessary to assign coordinates (v, w) to points in that plane. Analysis of the formula in Claim 1 of the Fetter patent shows that the ‘inventors’ used an orthonormal coordinate system with two coordinate axes at right angles passing through the origin. Moreover the coordinate axis corresponding to the coordinate v was chosen to be horizontal. This ensures that the other coordinate w is proportional to the vertical height of the point within the plane P. The coordinates v and w are in fact constant multiples of the orthonormal coordinates with constant of proportionality K. Thus the formulae in the patent of Bernhart and Fetter are uniquely determined by the requirement that rays passing through the eye at (a, b, c) are projected to points of the plane P defined above, and the projected points are then represented in Cartesian coordinates determined by coordinate axes at right angles, with one axis horizontal, and where the resulting orthonormal coordinates are multiplied by some given constant K. (I don't write out the formulae here because they involve fractions, square roots and plenty of subscripts, and are therefore not suitable for reproduction in plain HTML.) And had we the requirement that one coordinate axis in the plane be horizontal, specification of an angle would have determined the orientation of the chosen axes in the plane. Thus all possible ways of determining two-dimensional projected coordinates (v,w) from three-dimensional Cartesian coordinates (a, b, c) consistent with the requirements of the problem that Bernhart and Fetter were investigating are determined by two real constants: a constant of proportionality K, and an angle θ: it is possible to obtain other solutions from the given solutions by replacing v and w by

v cos θ + w sin θ  and  -v sin θ + w cos θ.

where the angle θ is chosen suitably.

Of course the patent was not in this mathematical method itself. But patent judges, textbook writers and lawyers in the Giles Rich School have regarded any application of a mathematical idea as being patentable, provided that the requirements of sections 102 and 103 of the Statute are met. And they have castigated Supreme Court Justices, accusing them of confusion and incoherence, for venturing to depart from this basic principle in Benson and Flook.

What the patent was on, of course, was the physical system consisting of the computer programmed to perform the calculations described, and plot the results on a standard plotter. The involvement of (programmed) machines is more than enough (in the opinion of the judges of the Giles Rich School) to satisfy the requirements of 101. And, in the case of Bernhard and Fetter's projection and plotting application, the requirements of sections 102 and 103 (novelty and nonobviousness) were also clearly satisfied, because there was no prior art reference describing exactly what Bernhart and Fetter did, and it would be unreasonable to expect a PHOSITA in the art of automated drawing to solve coordinate geometry problems.

But what about programming details. Surely there must be complex programming involved. Well, at certain points the specification, there are statements to the effect that the program contains subroutines to compute this or that intermediate quantity. And there is a general remark;

It is obviously within the skill of ordinary programmers to program the equations hereinbefore given into flow charts or diagrams and to translate the latter into computer subroutines for solution of such equations along with a compatible computer language for processing input data and instructions to produce an output directly (or on post processing) useful for controlling a planar plotter.

Thus practical implementation details are essentially irrelevant. the PHOSITA can handle those. And this was true back in 1961 when the patent was filed.

[ Reply to This | Parent | # ]

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