Gottschalk v. Benson

Citation: Gottschalk v. Benson, 409 U.S. 63, 175 U.S.P.Q. (BNA) 673 (1972).

On writ from the C.C.P.A., the U.S. Supreme Court held that the method claimed was not a "process" within the meaning of the Patent Act, since the method was not limited to any particular act or technology, to any particular machinery, or to any particular end use. Such a method was held unpatentable because (1) the method was so abstract as to cover both known and unknown uses of the binary-coded decimal (BCD) to pure binary conversion; (2) the end use could vary; (3) the end use could be performed through any existing machinery or future devised machinery or without any apparatus; (4) the mathematical formula involved had no substantial practical application except in connection with a digital computer; and (5) the result of granting a patent would be to wholly preempt the mathematical formula involved and, in practical effect, patent the algorithm itself.

The Court also held that the transformation or reduction of an article to a different state or thing was the clue to the patentability of a process claim that did not disclose a particular machine, resurrecting the reasoning of ''Cochrane v. Deener.