In re Bernhart, 417 F.2d 1395, 163 U.S.P.Q. (BNA) 611 (C.C.P.A. 1969) (full-text).
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. A set of transformation equations constituted much of the novelty and were disclosed along with a [[digital computer] and plotting machine. No software appeared in the specifications.
The examiner had attacked the failure to provide actual programs as insufficient disclosure under Section 112, but was reversed by the Board of Patent Appeals and Interferences, which found the programming obvious given the equations. One apparatus claim was drawn in broad terms but was rejected by the Board on the basis of prior art citations by the Patent Office. The remaining process and apparatus claims were limited by such language as "programming the computer" and "electronic digital computer means."
The Government again urged its subject matter objections on the C.C.P.A. It also offered two novel objections to the apparatus claim: (a) that programming did not constitute the requisite structural difference over the prior art; and (b) that the "printed matter" cases blocked patents on nonstatutory subject matter by "indirection."
The C.C.P.A. 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."
In answer to the contention, that since the equations themselves are nonstatutory the whole invention is nonstatutory, the court conceded that Congress had intended to exclude mathematical equations from “monopolization by patent,” but stated that:
- To allow the claims in issue here would not prohibit all uses of those equations. . . . [A] member of the public would have to do much more than use the equations to infringe any of these claims. He would have to use them in the physical equipment recited in the claim.
The structural difference objection occasioned the formulation of an important characterization:
- 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 . . . . If a new machine has not been invented, certainly a ‘new and useful improvement’ of the unprogrammed machine has been. . . .
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.
Bernhart is usually cited for the proposition that a newly programmed, general-purpose, digital computer is transformed into a "new machine" by the programming. That proposition has been likened to saying that putting a new piano roll into an old player piano transforms the machine into a new player piano. After the Supreme Court's decision in Parker v. Flook, Bernhart went into eclipse and the CCPA and the Federal Circuit stopped citing it. In 1995, however, in the Federal Circuit's In re Alappat decision, Bernhart came back to life and thereafter the Federal Circuit began citing it again. The present status of the Bernhart doctrine, in the wake of In re Bilski, is uncertain. If the law takes the direction that a general-purpose, digital computer is not a "particular machine," Bernhart may go back into exile.
- Id. at 1398, 163 U.S.P.Q. (BNA) at 614.
- Id. at 1398, 163 U.S.P.Q. (BNA) at 614-15.
- Id. at 1399, 163 U.S.P.Q. (BNA) at 616.
- Id. at 1399, 163 U.S.P.Q. (BNA) at 616.
- Id. at 1400, 163 U.S.P.Q. (BNA) at 616.
- See Government brief in Dann v. Johnston, 425 U.S. 219, 189 U.S.P.Q. (BNA) 257 (1976) (full-text) ("A new program in an old computer no more turns the computer into a 'new' machine (let alone a new and unobvious one) than: putting a new piano roll into an old player piano makes it a 'new' piano").