In re Musgrave

Citation: ''In re Musgrave,' 431 F.2d 882, 167 U.S.P.Q. (BNA) 280 (C.C.P.A. 1970).

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 possibility that a digital computer could be used to accomplish the corrections was disclosed.

All of the claims were drawn to methods and contained some steps not limited by machine-oriented language. 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.

The argument that statutory process steps had to "operate physically upon substances" was again rejected, at least where accompanied by other steps so limited. Judge Rich examined the "mental steps" doctrine and said, "[tlhat law we, like others, have found to be something of a morass.” Resort to the "Abrams non rules" was characterized as "legal error.” 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.”

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

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; 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.