In re Toma

Citation: In re Toma, 575 F.2d 872, 197 U.S.P.Q. (BNA) 853 (C.C.P.A. 1978).

The patent application, entitled "Method Using a Programmed Digital Computer System for Translation Between Natural Languages," involved a method of operating a digital computer to translate from a source natural language, e.g., Russian, to a target natural language, e.g., English. The method involves three phases: the dictionary look-up phase established the target language meaning of each word in the source text; the syntactical analysis phase identified syntactical information from the inflection of the word and the position of the word within the source text; and the synthesis phase used the meaning and syntactical information of all of the words of a sentence in the source text to form a sentence in the target language. The application further disclosed that from the time the source text is converted to machine readable input data to the time the machine readable output data is converted to human readable, translation text, the process proceeds totally under the control of a computer program. During the process, the computer carries out a series of unthinking, abstract mathematical operations on the abstract values of the text stored in the computer memory.

The Board of Appeals sustained the examiner's rejection of certain claims on the ground that they were directed to nonstatutory subject matter. The Board's decision was based on its reading of Gottschalk v. Benson, and an earlier interpretation of Gottschalk v. Benson appearing in In re Christensen.

The C.C.P.A. rejected the Board's analysis, holding that, in light of In re Chatfield, even when the only novel aspect of an invention is an algorithm, it is not proper to decide the question of statutory subject matter by focusing on less than all of the claimed invention. The C.C.P.A. further held that in determining whether an invention is statutory subject matter, the term "algorithm" will be utilized to refer specifically to a procedure for solving a given type of mathematical problem.

Base thereon, the C.C.P.A. ruled that the claims to a method of operating a computer to translate languages could not be rejected as pre-empting an algorithm, because translation between natural languages does not involve any direct or indirect recitation of an "algorithm" or of a procedure for solving a mathematical problem per se. The C.C.P.A. reversed the Board's decision, ruling that the claimed invention was statutory subject matter within the technological arts.