In re Freeman

Citation: In re Freeman, 573 F.2d 1237, 197 U.S.P.Q. (BNA) 464 (C.C.P.A. 1978).

Factual Background
The application, entitled “Computer Typesetting,” was for a system for typesetting alphanumeric information, using a computer-based control system in conjunction with a phototypesetter of convention design.

The patent examiner cited In re Christensen in rejecting the claims, as their only novelty resided in the algorithm and the attendant software. The Board of Appeals (“Board”) found Christensen inapposite, since Freeman’s invention involved more than a mere practice of an algorithm on data considered to be old and well known. The Board, however, entered a new rejection, based upon Gottschalk v. Benson .'' The Board reasoned that the novelty of the invention resided in the computer program, and that a patent on Freeman’s invention would, in effect be a patent on the algorithm itself.

C.C.P.A. Decision
The C.C.P.A. reversed the Board, ruling that the claims indirectly recited an algorithm (i.e., there was no reference to a particular program), and that neither the apparatus claims nor the method claims pre-empted a mathematical algorithm. The C.C.P.A. found that the Board had improperly rejected the claim]s.