In re Abrams

Citation: In re Abrams, 188 F.2d 165, 89 U.S.P.Q. (BNA) 266 (1951).

Four claims were rejected because the steps which constituted the heart of the invention were purely mental in character. These steps involved the mental processes of “measuring,” “determining,” and “comparing.”

This case set forth what later was referred to as the Abrams “rules” for determining the patentability of method claims which included mental steps. These “rules” were:


 * 1) If all the steps of a method claim are purely mental in character, the subject matter thereof is not patentable, within the meaning of the patent statutes.


 * 1) If a [method claim embodies both positive and physical steps as well as so-called mental steps, yet the alleged novelty or advance over the art resides in one or more of the so-called mental steps, then the claim is considered unpatentable for the same reason that it would be if all the steps were purely mental in character.


 * 1) If a method claim embodies both positive and physical steps as well as so-called mental steps, yet the novelty or advance over the art resides in one of more of the positive and physical steps and the so-called mental step or steps are incidental parts of the process which are essential to define, qualify or limit its scope, then the claim is patentable and not subject to the objection contained in 1 and 2 above.

While acknowledging that these rules were in apparent accordance with the reported decisions, the court found it unnecessary to apply them to the facts of this case.

Finally, the C.C.P.A. in In re Musgrave, formally rejected these “rules” as “unsound.”