In re Bernhart

Citation: In re Bernhart, 417 F.2d 1395, 163 U.S.P.Q. (BNA) 611 (C.C.P.A. 1969).

The application disclosed a method of and apparatus for automatically making a two dimensional portrayal of a three dimensional object from any desired angle and distance and on any desired plane of projection. The disclosure provided equations defining the geometric relationship between the three dimensional and two dimensional coordinates. The application then taught that the equations could be used to control the operation of a computer, with the output controlling the operation of a plotting machine.

The court found no basis for rejection on "mental steps" grounds, since the claims "recite, and can be infringed only by, a digital computer in a certain physical condition, i.e., electromechanically set or programmed to carry out the recited routine." The court rejected the applicability of the "printed matter" cases since "the invention . . . requires that the information be processed not by the mind but by a machine, the computer, and that the drawings be done not by a draftsman but by a plotting machine."

The fact that the point of novelty of the invention lay in the equations was held insufficient to reject the application, since "[t]o allow the claims in issue here would not prohibit all uses of those equations," but only where the equations were used "in the physical equipment recited in the claim."

The court also held that "if a machine is programmed in a certain new and unobvious way, it is physically different from the machine without that program; its memory elements are differently arranged. The fact that these physical changes are invisible to the eye should not tempt us to conclude that the machine has not been changed."

The examiner had also rejected the claims as being drawn to an "old combination" (a computer and plotting device). The C.C.P.A. reasoned that if a prior invention does not show or support the improved element itself, it defies logic to say that the same prior invention suggests the use of that improved element in combination with other elements.