U.S. Supreme Court Graham v. John Deere Co., 383 U.S. 1 (1966) Graham v. John Deere Co. of Kansas
City No. 11 Argued October 14,
1965 Decided February 21, 1966 383 U.S.
1 ast|>* 383 U.S.
1 CERTIORARI TO THE UNITED STATES
COURT OF APPEALS FOR THE EIGHTH
CIRCUIT Syllabus In No. 11, petitioners sued for infringement of a patent,
consisting of a combination of old mechanical elements, for a
device designed to absorb shock from plow shanks in rocky soil to
prevent damage to the plow. In 1955, the Fifth Circuit held the
patent valid, ruling that a combination is patentable when it
produces an "old result in a cheaper and otherwise more
advantageous way." Here, the Eighth Circuit held that, since there
was no new result in the combination, the patent was invalid.
Petitioners in Nos. 37 and 43 filed actions for declaratory
judgments declaring invalid respondent's patent relating to a
plastic finger sprayer with a "hold-down" cap used as a built-in
dispenser for containers with liquids, principally insecticides. By
cross-action, respondent claimed infringement. The District Court
and the Court of Appeals sustained the patent. Held: The
patents do not meet the test of the "nonobvious" nature of the
"subject matter sought to be patented" to a person having ordinary
skill in the pertinent art, set forth in § 103 of the Patent Act of
1952, and are therefore invalid. Pp. 383 U. S.
3 -37. Page 383 U. S. 2 (a) In carrying out the constitutional command of Art. I, § 8,
that a patent system "promote the Progress of . . . useful Arts,"
Congress established the two statutory requirements of novelty and
utility in the Patent Act of 1793. Pp. 383 U. S. 3 , 383 U. S. 6 , 383 U. S. 12 .

															(b) This Court, in Hotchkis v.
Greenoood , 11 How. 248 (1851), additionally
conditioned the issuance of a patent upon the evidence of more
ingenuity and skill than that possessed by an ordinary mechanic
acquainted with the business. P. 383 U. S. 11 .

															(c) In § 103 of the 1952 Patent Act, Congress added the
statutory nonobvious subject matter requirement, originally
expounded in Hotchkis, which merely codified judicial
precedents requiring a comparison of the subject matter sought to
be patented and the prior art, tying patentable inventions to
advances in the art. Although § 103 places emphasis upon inquiries
into obviousness, rather than into "invention," the general level
of innovation necessary to sustain patentability remains unchanged
under the 1952 Act. Pp. 383 U. S.
14 -17.

															(d) This section permit a more practical test of patentability.
The determination of "nonobviousness" is made after establishing
the scope and content of prior art, the differences between the
prior art and the claims at issue, and the level of ordinary skill
in the pertinent art. P. 383 U. S. 17 .

															(e) With respect to each patent involved here, the differences
between the claims in issue and the pertinent prior art would have
been obvious to a person reasonably skilled in that art. Pp. 383 U. S. 25 -26,
37.

															333 F.2d 529, affirmed; 336 F.2d 110, reversed and remanded. Page 383 U. S. 3 MR. JUSTICE CLARK delivered the opinion of the Court.

															After a lapse of 15 years, the Court again focuses its attention
on the patentability of inventions under the standard of Art. I, §
8, cl. 8, of the Constitution and under the conditions prescribed
by the laws of the United States. Since our last expression on
patent validity, Great A. & P. Tea Co. v. Supermarket
Equipment Corp., 340 U. S. 147 (1950), the Congress has, for the first time, expressly added a
third statutory dimension to the two requirements of novelty and
utility that had been the sole statutory test since the Patent Act
of 1793. This is the test of obviousness, i.e., whether

															"the subject matter sought to be patented and the prior art are
such that the subject matter as a whole would have been obvious at
the time the invention was made to a person having ordinary skill
in the art to which said subject matter pertains. Patentability
shall not be negatived by the manner in which the invention was
made."

															§ 103 of the Patent Act of 1952, 35 U.S.C. § 103 (1964 ed.).

															The questions, involved in each of the companion cases before
us, are what effect the 1952 Act had upon traditional statutory and
judicial tests of patentability and what definitive tests are now
required. We have concluded that the 1952 Act was intended to
codify judicial precedents embracing the principle long ago Page 383 U. S. 4 announced by this Court in Hotchkiss v.
Greenwood , 11 How. 248 (1851), and that, while the
clear language of § 103 places emphasis on an inquiry into
obviousness, the general level of innovation necessary to sustain
patentability remains the same. I The Cases (a) No. 11, Graham v. John Deere Co., an infringement
suit by petitioners, presents a conflict between two Circuits over
the validity of a single patent on a "Clamp for vibrating Shank
Plows." The invention, a combination of old mechanical elements,
involves a device designed to absorb shock from plow shanks as they
plow through rocky soil, and thus to prevent damage to the plow. In
1955, the Fifth Circuit had held the patent valid under its rule
that, when a combination produces an "old result in a cheaper and
otherwise more advantageous way," it is patentable. Jeoffroy
Mfg., Inc. v. Graham, 219 F.2d 511, cert. denied, 350
U.S. 826. In 1964, the Eighth Circuit held, in the case at bar,
that there was no new result in the patented combination, and that
the patent was therefore not valid. 333 F.2d 529, reversing 216 F.
Supp. 272 . We granted certiorari, 379 U.S. 956. Although we
have determined that neither Circuit applied the correct test, we
conclude that the patent is invalid under § 103, and therefore we
affirm the judgment of the Eighth Circuit.

															(b) No. 37, Calmar, Inc. v. Cook Chemical Co., and No.
43, Colgate-Palmolive Co. v. Cook Chemical Co., both from
the Eighth Circuit, were separate declaratory judgment actions, but
were filed contemporaneously. Petitioner in Calmar is the
manufacturer of a finger-operated sprayer with a "hold-down" cap of
the type commonly seen on grocers' shelves inserted in bottles of
insecticides and other liquids prior to shipment. Petitioner in Colgate-Palmolive is a purchaser of the sprayers, and Page 383 U. S. 5 uses them in the distribution of its products. Each action
sought a declaration of invalidity and noninfringement of a patent
on similar sprayers issued to Cook Chemical as assignee of Baxter
I. Scoggin, Jr., the inventor. By cross-action, Cook Chemical
claimed infringement. The actions were consolidated for trial, and
the patent was sustained by the District Court. 220 F. Supp. 414.
The Court of Appeals affirmed, 336 F.2d 110, and we granted
certiorari, 380 U.S. 949. We reverse.

															Manifestly, the validity of each of these patents turns on the
facts. The basic problems, however, are the same in each case, and
require initially a discussion of the constitutional and statutory
provisions covering the patentability of the inventions. II At the outset, it must be remembered that the federal patent
power stems from a specific constitutional provision which
authorizes the Congress "To promote the Progress of . . . useful
Arts, by securing for limited Times to . . . Inventors the
exclusive Right to their . . . Discoveries." Art. I, § 8, cl. 8.
[ Footnote 1 ] The clause is both
a grant of power and a limitation. This qualified authority, unlike
the power often exercised in the sixteenth and seventeenth
centuries by the English Crown, is limited to the promotion of
advances in the "useful arts." It was written against the backdrop
of the practices -- eventually curtailed by the Statute of
Monopolies -- of the Crown in granting monopolies to court
favorites in goods or businesses which had long before been enjoyed
by the public. See Meinhardt, Inventions, Patents and
Monopoly, pp. 30-35 (London, 1946). The Congress in the Page 383 U. S. 6 exercise of the patent power may not overreach the restraints
imposed by the stated constitutional purpose. Nor may it enlarge
the patent monopoly without regard to the innovation, advancement
or social benefit gained thereby. Moreover, Congress may not
authorize the issuance of patents whose effects are to remove
existent knowledge from the public domain, or to restrict free
access to materials already available. Innovation, advancement, and
things which add to the sum of useful knowledge are inherent
requisites in a patent system which, by constitutional command,
must "promote the Progress of . . . useful Arts." This is the standard expressed in the Constitution, and it may not be
ignored. And it is in this light that patent validity "requires
reference to a standard written into the Constitution." Great
A. & P. Tea Co. v. Supermarket Equipment Corp., supra, at 340 U. S. 154 (concurring opinion).

															Within the limits of the constitutional grant, the Congress may,
of course, implement the stated purpose of the Framers by selecting
the policy which, in its judgment, best effectuates the
constitutional aim. This is but a corollary to the grant to
Congress of any Article I power. Gibbons v.
Ogden , 9 Wheat. 1. Within the scope established by
the Constitution, Congress may set out conditions and tests for
patentability. McClurg v.
Kingsland , 1 How. 202, 42 U. S. 206 .
It is the duty of the Commissioner of Patents and of the courts in
the administration of the patent system to give effect to the
constitutional standard by appropriate application, in each case,
of the statutory scheme of the Congress.

															Congress quickly responded to the bidding of the Constitution by
enacting the Patent Act of 1790 during the second session of the
First Congress. It created an agency in the Department of State
headed by the Secretary of State, the Secretary of the Department
of War Page 383 U. S. 7 and the Attorney General, any two of whom could issue a patent
for a period not exceeding 14 years to any petitioner that "hath .
. . invented or discovered any useful art, manufacture, . . . or
device, or any improvement therein not before known or used" if the
board found that "the invention or discovery [was] sufficiently
useful and important. . . ." 1 Stat. 110. This group, whose members
administered the patent system along with their other public
duties, was known by its own designation as "Commissioners for the
Promotion of Useful Arts."

															Thomas Jefferson, who as Secretary of State was a member of the
group, was its moving spirit, and might well be called the "first
administrator of our patent system." See Federico,
Operation of the Patent Act of 1790, 18 J.Pat.Off.Soc. 237, 238
(1936). He was not only an administrator of the patent system under
the 1790 Act, but was also the author of the 1793 Patent Act. In
addition, Jefferson was himself an inventor of great note. His
unpatented improvements on plows, to mention but one line of his
inventions, won acclaim and recognition on both sides of the
Atlantic. Because of his active interest and influence in the early
development of the patent system, Jefferson's views on the general
nature of the limited patent monopoly under the Constitution, as
well as his conclusions as to conditions for patentability under
the statutory scheme, are worthy of note.

															Jefferson, like other Americans, had an instinctive aversion to
monopolies. It was a monopoly on tea that sparked the Revolution,
and Jefferson certainly did not favor an equivalent form of
monopoly under the new government. His abhorrence of monopoly
extended initially to patents as well. From France, he wrote to
Madison (July, 1788) urging a Bill of Rights provision restricting
monopoly, and as against the argument that Page 383 U. S. 8 limited monopoly might serve to incite "ingenuity," he argued
forcefully that "the benefit even of limited monopolies is too
doubtful to be opposed to that of their general suppression," V
Writings of Thomas Jefferson at 47 (Ford ed., 1895).

															His views ripened, however, and, in another letter to Madison
(Aug., 1789) after the drafting of the Bill of Rights, Jefferson
stated that he would have been pleased by an express provision in
this form:

															"Art. 9. Monopolies may be allowed to persons for their own
productions in literature, & their own inventions in the arts,
for a term not exceeding ___ years, but for no longer term & no
other purpose." Id. at 113. And he later wrote:

															"Certainly an inventor ought to be allowed a right to the
benefit of his invention for some certain time. . . . Nobody wishes
more than I do that ingenuity should receive a liberal
encouragement."

															Letter to Oliver Evans (May, 1807), V Writings of Thomas
Jefferson at 75-76 (Washington ed.).

															Jefferson's philosophy on the nature and purpose of the patent
monopoly is expressed in a letter to Isaac McPherson (Aug., 1813),
a portion of which we set out in the margin. [ Footnote 2 ] He rejected a natural rights theory
in Page 383 U. S. 9 intellectual property rights and clearly recognized the social
and economic rationale of the patent system. The patent monopoly
was not designed to secure to the inventor his natural right in his
discoveries. Rather, it was a reward, an inducement, to bring forth
new knowledge. The grant of an exclusive right to an invention was
the creation of society -- at odds with the inherent free nature of
disclosed ideas -- and was not to be freely given. Only inventions
and discoveries which furthered human knowledge, and were new and
useful, justified the special inducement of a limited private
monopoly. Jefferson did not believe in granting patents for small
details, obvious improvements, or frivolous devices. His writings
evidence his insistence upon a high level of patentability.

															As a member of the patent board for several years, Jefferson saw
clearly the difficulty in "drawing a line between the things which
are worth to the public the embarrassment of an exclusive patent,
and those which are not." The board on which he served sought to
draw such a line and formulated several rules which are preserved
in Page 383 U. S. 10 Jefferson's correspondence. [ Footnote 3 ] Despite the board's efforts, Jefferson saw
"with what slow progress a system of general rules could be
matured." Because of the "abundance" of cases and the fact that the
investigations occupied

															"more time of the members of the board than they could spare
from higher duties, the whole was turned over to the judiciary, to
be matured into a system under which every one might know when his
actions were safe and lawful."

															Letter to McPherson, supra, at 181, 182. Apparently
Congress agreed with Jefferson and the board that the courts should
develop additional conditions for patentability. Although the
Patent Act was amended, revised or codified some 50 times between
1790 and 1950, Congress steered clear of a statutory set of
requirements other than the bare novelty and utility tests
reformulated in Jefferson's draft of the 1793 Patent Act. III The difficulty of formulating conditions for patentability was
heightened by the generality of the constitutional grant and the
statutes implementing it, together with the underlying policy of
the patent system that "the things which are worth to the public
the embarrassment Page 383 U. S. 11 of an exclusive patent," as Jefferson put it, must outweigh the
restrictive effect of the limited patent monopoly. The inherent
problem was to develop some means of weeding out those inventions
which would not be disclosed or devised but for the inducement of a
patent.

															This Court formulated a general condition of patentability in
1851 in Hotchkiss v.
Greenwood , 11 How. 248. The patent involved a mere
substitution of materials -- porcelain or clay for wood or metal in
doorknobs -- and the Court condemned it, holding: [ Footnote 4 ]

															"[U]nless more ingenuity and skill . . . were required . . .
than were possessed by an ordinary mechanic acquainted with the
business, there was an absence of that degree of skill and
ingenuity which constitute essential elements of every invention.
In other words, the improvement is the work of the skilful
mechanic, not that of the inventor."

															At p. 52 U. S.
267 . Hotchkiss, by positing the condition that a patentable
invention evidence more ingenuity and skill than that possessed by
an ordinary mechanic acquainted with the business, merely
distinguished between new and useful innovations that were capable
of sustaining a patent and those that were not. The Hotchkiss test laid the cornerstone of the judicial
evolution suggested by Jefferson and left to the courts by
Congress. The language in the case, and in those which followed,
gave birth to "invention" as a word of legal art signifying
patentable inventions. Yet, as this Court has observed,

															"[t]he truth is, the word ['invention'] cannot be defined in
such manner as to afford any substantial aid in determining whether
a particular device involves an exercise of the inventive
faculty Page 383 U. S. 12 or not." McClain v. Ortmayer, 141 U. S. 419 , 141 U. S. 427 (1891); Great A. & P. Tea Co. v. Supermarket Equipment
Corp., supra, at 340 U. S. 151 .
Its use as a label brought about a large variety of opinions as to
its meaning both in the Patent Office, in the courts, and at the
bar. The Hotchkiss formulation, however, lies not in any
label, but in its functional approach to questions of
patentability. In practice, Hotchkiss has required a
comparison between the subject matter of the patent, or patent
application, and the background skill of the calling. It has been
from this comparison that patentability was in each case
determined. IV The 1952 Patent Act The Act sets out the conditions of patentability in three
sections. An analysis of the structure of these three sections
indicates that patentability is dependent upon three explicit
conditions: novelty and utility, as articulated and defined in §
101 and § 102, and nonobviousness, the new statutory formulation,
as set out in § 103. The first two sections, which trace closely
the 1874 codification, express the "new and useful" tests which
have always existed in the statutory scheme and, for our purposes
here, need no clarification. [ Footnote 5 ] The pivotal Page 383 U. S. 13 section around which the present controversy centers is § 103.
It provides:

															"§ 103. Conditions for patentability; non-obvious subject
matter "

															"A patent may not be obtained though the invention is not
identically disclosed or described as set forth in section 102 of
this title, if the differences between the subject matter sought to
be patented and the prior art are such that the subject matter as a
whole would have been obvious at the time the invention was made to
a person having ordinary skill in the art to which said subject
matter pertains. Patentability shall not be negatived by the manner
in which the invention was made. " Page 383 U. S. 14 The section is cast in relatively unambiguous terms.
Patentability is to depend, in addition to novelty and utility,
upon the "non-obvious" nature of the "subject matter sought to be
patented" to a person having ordinary skill in the pertinent
art.

															The first sentence of this section is strongly reminiscent of
the language in Hotchkiss. Both formulations place
emphasis on the pertinent are existing at the time the invention
was made, and both are implicitly tied to advances in that art. The
major distinction is that Congress has emphasized "nonobviousness"
as the operative test of the section, rather than the less definite
"invention" language of Hotchkiss that Congress thought
had led to "a large variety" of expressions in decisions and
writings. In the title itself, the Congress used the phrase
"Conditions for patentability; non-obvious subject matter "
(italics added), thus focusing upon "nonobviousness," rather than
"invention." [ Footnote 6 ] The
Senate and House Reports, S.Rep. No. 1979, 82d Cong., 2d Sess.
(1952); H.R.Rep. No. 1923, 82d Cong., 2d Sess. (1952), reflect this
emphasis in these terms:

															"Section 103, for the first time in our statute, provides a
condition which exists in the law and has existed for more than 100
years, but only by reason of decisions of the courts. An invention
which has been made, and which is new in the sense that the same
thing has not been made before, may still not be patentable if the
difference between the new thing and what was known before is not
considered sufficiently great to warrant a patent. That has been
expressed in a large variety of ways in decisions of Page 383 U. S. 15 the courts and in writings. Section 103 states this requirement
in the title. It refers to the difference between the subject
matter sought to be patented and the prior art, meaning what was
known before as described in section 102. If this difference is
such that the subject matter as a whole would have been obvious at
the time to a person skilled in the art, then the subject matter
cannot be patented."

															"That provision paraphrases language which has often been used
in decisions of the courts, and the section is added to the statute
for uniformity and definiteness. This section should have a
stabilizing effect and minimize great departures which have
appeared in some cases."

															H.R.Rep., supra, at 7; S.Rep., supra, at
6.

															It is undisputed that this section was, for the first time, a
statutory expression of an additional requirement for
patentability, originally expressed in Hotchkiss. It also
seems apparent that Congress intended by the last sentence of § 103
to abolish the test it believed this Court announced in the
controversial phrase "flash of creative genius," used in Cuno
Engineering Corp. v. Automatic Devices Corp., 314 U. S.
84 (1941). [ Footnote
7 ] Page 383 U. S. 16 It is contended, however, by some of the parties and by several
of the amici that the first sentence of § 103 was intended
to sweep away judicial precedents and to lower the level of
patentability. Others contend that the Congress intended to codify
the essential purpose reflected in existing judicial precedents --
the rejection of insignificant variations and innovations of a
commonplace sort -- and also to focus inquiries under § 103 upon
nonobviousness, rather than upon "invention," as a means of
achieving more stability and predictability in determining
patentability and validity.

															The Reviser's Note to this section, [ Footnote 8 ] with apparent reference to Hotchkiss, recognizes that judicial requirements as to "lack of patentable
novelty [have] been followed since at least as early as 1850." The
note indicates that the section was inserted because it "may have
some stabilizing effect, and also to serve as a basis for the
addition at a later time of some criteria which may be worked out."
To this same effect are the reports of both Houses, supra, which state that the first sentence Page 383 U. S. 17 of the section

															"paraphrases language which has often been used in decisions of
the courts, and the section is added to the statute for uniformity
and definiteness."

															We believe that this legislative history, as well as other
sources, [ Footnote 9 ] show that
the revision was not intended by Congress to change the general
level of patentable invention. We conclude that the section was
intended merely as a codification of judicial precedents embracing
the Hotchkiss condition, with congressional directions
that inquiries into the obviousness of the subject matter sought to
be patented are a prerequisite to patentability. V Approached in this light, the § 103 additional condition, when
followed realistically, will permit a more practical test of
patentability. The emphasis on non-obviousness is one of inquiry,
not quality, and, as such, comports with the constitutional
strictures.

															While the ultimate question of patent validity is one of law, Great A. & P. Tea Co. v. Supermarket Equipment Corp.,
supra, at 340 U. S. 155 ,
the § 103 condition, which is but one of three conditions, each of
which must be satisfied, lends itself to several basic factual
inquiries. Under § 103, the scope and content of the prior art are
to be determined; differences between the prior art and the claims
at issue are to be ascertained; and the level of ordinary skill in
the pertinent art resolved. Against this background, the
obviousness or nonobviousness of the subject matter is determined.
Such secondary considerations as commercial success, long felt but
unsolved needs, failure of others, etc., might be utilized to give
light to the circumstances Page 383 U. S. 18 surrounding the origin of the subject matter sought to be
patented. As indicia of obviousness or nonobviousness, these
inquiries may have relevancy. See Note, Subtests of
"Nonobviousness": A Nontechnical Approach to Patent Validity, 112
U.Pa.L.Rev. 1169 (1964).

															This is not to say, however, that there will not be difficulties
in applying the nonobviousness test. What is obvious is not a
question upon which there is likely to be uniformity of thought in
every given factual context. The difficulties, however, are
comparable to those encountered daily by the courts in such frames
of reference as negligence and scienter, and should be
amenable to a case-by-case development. We believe that strict
observance of the requirements laid down here will result in that
uniformity and definiteness which Congress called for in the 1952
Act.

															While we have focused attention on the appropriate standard to
be applied by the courts, it must be remembered that the primary
responsibility for sifting out unpatentable material lies in the
Patent Office. To await litigation is, for all practical purposes,
to debilitate the patent system. We have observed a notorious
difference between the standards applied by the Patent Office and
by the courts. While many reasons can be adduced to explain the
discrepancy, one may well be the free rein often exercised by
Examiners in their use of the concept of "invention." In this
connection, we note that the Patent Office is confronted with a
most difficult task. Almost 100,000 applications for patents are
filed each year. Of these, about 50,000 are granted, and the
backlog now runs well over 200,000. 1965 Annual Report of the
Commission of Patents 13-14. This is itself a compelling reason for
the Commissioner to strictly adhere to the 1952 Act as interpreted
here. This would, we believe, not only expedite disposition,
but Page 383 U. S. 19 bring about a closer concurrence between administrative and
judicial precedent. [ Footnote
10 ]

															Although we conclude here that the inquiry which the Patent
Office and the courts must make as to patentability must be beamed
with greater intensity on the requirements of § 103, it bears
repeating that we find no change in the general strictness with
which the overall test is to be applied. We have been urged to find
in § 103 a relaxed standard, supposedly a congressional reaction to
the "increased standard" applied by this Court in its decisions
over the last 20 or 30 years. The standard has remained invariable
in this Court. Technology, however, has advanced, and with
remarkable rapidity in the last 50 years. Moreover, the ambit of
applicable art in given fields of science has widened by
disciplines unheard of a half century ago. It is but an evenhanded
application to require that those persons granted the benefit of a
patent monopoly be charged with an awareness of these changed
conditions. The same is true of the less technical, but still
useful, arts. He who seeks to build a better mousetrap today has a
long path to tread before reaching the Patent Office. VI We now turn to the application of the conditions found necessary
for patentability to the cases involved here:

															A. The Patent in Issue in No. 11, Graham v. John Deere
Co.

															This patent, No. 2,627,798 (hereinafter called the '798 patent)
relates to a spring clamp which permits plow shanks to be pushed
upward when they hit obstructions Page 383 U. S. 20 in the soil, and then springs the shanks back into normal
position when the obstruction is passed over. The device, which we
show diagrammatically in the accompanying sketches (Appendix, 383 U.S.
1 fig1|>Fig. 1), is fixed to the plow frame as a unit. The
mechanism around which the controversy center is basically a hinge.
The top half of it, known as the upper plate (marked 1 in the
sketches), is a heavy metal piece clamped to the plow frame (2),
and is stationary relative to the plow frame. The lower half of the
hinge, known as the hinge plate (3), is connected to the rear of
the upper plate by a hinge pin (4) and rotates downward with
respect to it. The shank (5), which is bolted to the forward end of
the hinge plate (at 6), runs beneath the plate and parallel to it
for about nine inches, passes through a stirrup (7), and then
continues backward for several feet curving down toward the ground.
The chisel (8), which does the actual plowing, is attached to the
rear end of the shank. As the plow frame is pulled forward, the
chisel rips through the soil, thereby plowing it. In the normal
position, the hinge plate and the shank are kept tight against the
upper plate by a spring (9), which is atop the upper plate. A rod
(10) runs through the center of the spring, extending down through
holes in both plates and the shank. Its upper end is bolted to the
top of the spring, while its lower end is hooked against the
underside of the shank.

															When the chisel hits a rock or other obstruction in the soil,
the obstruction forces the chisel and the rear portion of the shank
to move upward. The shank is pivoted (at 11) against the rear of
the hinge plate, and pries open the hinge against the closing
tendency of the spring. ( See sketch labeled "Open
Position," Appendix, 383 U.S.
1 fig1|>Fig. 1.) This closing tendency is caused by the fact
that, as the hinge is opened, the connecting rod is pulled downward
and the spring is compressed. When the obstruction Page 383 U. S. 21 is passed over, the upward force on the chisel disappears, and
the spring pulls the shank and hinge plate back into their original
position. The lower, rear portion of the hinge plate is constructed
in the form of a stirrup (7) which brackets the shank, passing
around and beneath it. The shank fits loosely into the stirrup
(permitting a slight up and down play). The stirrup is designed to
prevent the shank from recoiling away from the hinge plate, and
thus prevents excessive strain on the shank near its bolted
connection. The stirrup also girds the shank, preventing it from
fishtailing from side to side.

															In practical use, a number of spring-hinge-shank combinations
are clamped to a plow frame, forming a set of ground-working
chisels capable of withstanding the shock of rocks and other
obstructions in the soil without breaking the shanks. Background of the Patent Chisel plows, as they are called, were developed for plowing in
areas where the ground is relatively free from rocks or stones.
Originally, the shanks were rigidly attached to the plow frames.
When such plows were used in the rocky, glacial soils of some of
the Northern States, they were found to have serious defects. As
the chisels hit buried rocks, a vibratory motion was set up and
tremendous forces were transmitted to the shank near its connection
to the frame. The shanks would break. Graham, one of the
petitioners, sought to meet that problem, and, in 1950, obtained a
patent, U.S. No. 2,493,811 (hereinafter '811), on a spring clamp
which solved some of the difficulties. Graham and his companies
manufactured and sold the '811 clamps. In 1950, Graham modified the
'811 structure and filed for a patent. That patent, the one in
issue, was granted in 1953. This suit against competing plow
manufacturers resulted from charges by petitioners that several of
respondents' devices infringed the '798 patent. Page 383 U. S. 22 The Prior Art Five prior patents indicating the state of the art were cited by
the Patent Office in the prosecution of the '798 application. Four
of these patents, 10 other United States patents, and two prior-use
spring-clamp arrangements not of record in the '798 file wrapper
were relied upon by respondents as revealing the prior art. The
District Court and the Court of Appeals found that the prior art
"as a whole in one form or another contains all of the mechanical
elements of the 798 Patent." One of the prior-use clamp devices not
before the Patent Examiner -- Glencoe -- was found to have "all of
the elements."

															We confine our discussion to the prior patent of Graham, '811,
and to the Glencoe clamp device, both among the references asserted
by respondents. The Graham '811 and '798 patent devices are similar
in all elements, save two: (1) the stirrup and the bolted
connection of the shank to the hinge plate do not appear in '811;
and (2) the position of the shank is reversed, being placed in
patent '811 above the hinge plate, sandwiched between it and the
upper plate. The shank is held in place by the spring rod which is
hooked against the bottom of the hinge plate passing through a slot
in the shank. Other differences are of no consequence to our
examination. In practice, the '811 patent arrangement permitted the
shank to wobble or fishtail, because it was not rigidly fixed to
the hinge plate; moreover, as the hinge plate was below the shank,
the latter caused wear on the upper plate, a member difficult to
repair or replace.

															Graham's '798 patent application contained 12 claims. All were
rejected as not distinguished from the Graham '811 patent. The
inverted position of the shank was specifically rejected, as was
the bolting of the shank to the hinge plate. The Patent Office
examiner found these to be "matters of design well within the
expected skill of Page 383 U. S. 23 the art and devoid of invention." Graham withdrew the original
claims and substituted the two new ones which are substantially
those in issue here. His contention was that wear was reduced in
patent '798 between the shank and the heel or rear of the upper
plate. [ Footnote 11 ] He also
emphasized several new features, the relevant one here being that
the bolt used to connect the hinge plate and shank maintained the
upper face of the shank in continuing and constant contact with the
underface of the hinge plate.

															Graham did not urge before the Patent Office the greater
"flexing" qualities of the '798 patent arrangement which he so
heavily relied on in the courts. The sole element in patent '798
which petitioners argue before us is the interchanging of the shank
and hinge plate and the consequences flowing from this arrangement.
The contention is that this arrangement -- which petitioners claim
is not disclosed in the prior art -- permits the shank to flex
under stress for its entire length. As we have sketched
( see sketch, "Graham '798 Patent" in Appendix, 383 U.S.
1 fig2|>Fig. 2), when the chisel hits an obstruction, the
resultant force (A) pushes the rear of the shank upward and the
shank pivots against the rear of the hinge plate at (C). The
natural tendency is for that portion of the shank between the pivot
point and the bolted connection ( i.e., between C and D) to
bow downward and away from the hinge plate. The maximum
distance Page 383 U. S. 24 (B) that the shank moves away from the plate is slight -- for
emphasis, greatly exaggerated in the sketches. This is so because
of the strength of the shank and the short -- nine inches or so --
length of that portion of the shank between (C) and (D). On the
contrary, in patent '811 ( see sketch, "Graham '811 Patent"
in Appendix, 383 U.S.
1 fig2|>Fig. 2), the pivot point is the upper plate at point
(c); and while the tendency for the shank to bow between points (c)
and (d) is the same as in '798, the shank is restricted because of
the underlying hinge plate and cannot flex as freely. In practical
effect, the shank flexes only between points (a) and (c), and not
along the entire length of the shank, as in '798. Petitioners say
that this difference in flex, though small, effectively absorbs the
tremendous forces of the shock of obstructions, whereas prior art
arrangements failed. The Obviousness of the Differences We cannot agree with petitioners. We assume that the prior art
does not disclose such an arrangement as petitioners claim in
patent '798. Still we do not believe that the argument on which
petitioners' contention is bottomed supports the validity of the
patent. The tendency of the shank to flex is the same in all cases.
If free-flexing, as petitioners now argue, is the crucial
difference above the prior art, then it appears evident that the
desired result would be obtainable by not boxing the shank within
the confines of the hinge. [ Footnote 12 ] The only other effective place available in
the arrangement was to attach it below the hinge plate and run it
through a Page 383 U. S. 25 stirrup or bracket that would not disturb its flexing qualities.
Certainly a person having ordinary skill in the prior art, given
the fact that the flex in the shank could be utilized more
effectively if allowed to run the entire length of the shank, would
immediately see that the thing to do was what Graham did, i.e., invert the shank and the hinge plate.

															Petitioners' argument basing validity on the free-flex theory,
raised for the first time on appeal, is reminiscent of Lincoln
Engineering Co. of Illinois v. Stewart-Warner Corp., 303 U. S. 545 (1938), where the Court called such an effort

															"an afterthought. No such function . . . is hinted at in the
specifications of the patent. If this were so vital an element in
the functioning of the apparatus, it is strange that all mention of
it was omitted."

															At p. 303 U. S. 550 .
No "flexing" argument was raised in the Patent Office. Indeed, the
trial judge specifically found that "flexing is not a claim of the
patent in suit . . . ," and would not permit interrogation as to
flexing in the accused devices. Moreover, the clear testimony of
petitioners' experts shows that the flexing advantages flowing from
the '798 arrangement are not, in fact, a significant feature in the
patent. [ Footnote 13 ]

															We find no nonobvious facets in the '798 arrangement. The wear
and repair claims were sufficient to overcome Page 383 U. S. 26 the patent examiner's original conclusions as to the validity of
the patent. However, some of the prior art, notably Glencoe, was
not before him. There the hinge plate is below the shank, but, as
the courts below found, all of the elements in the '798 patent are
present in the Glencoe structure. Furthermore, even though the
position of the shank and hinge plate appears reversed in Glencoe,
the mechanical operation is identical. The shank there pivots about
the underside of the stirrup, which in Glencoe is above the shank.
In other words, the stirrup in Glencoe serves exactly the same
function as the heel of the hinge plate in '798. The mere shifting
of the wear point to the heel of the '798 hinge plate from the
stirrup of Glencoe -- itself a part of the hinge plate -- presents
no operative mechanical distinctions, much less nonobvious
differences.

															B. The Patent in Issue in No. 37, Calmar, Inc. v. Cook
Chemical Co., and in No. 43, Colgate-Palmolive Co. v. Cook
Chemical Co.

															The single patent [ Footnote
14 ] involved in these cases relates to a plastic finger sprayer
with a "hold-down" lid used as a built-in dispenser for containers
or bottles packaging liquid products, principally household
insecticides. Only the first two of the four claims in the patent
are involved here, and we therefore limit our discussion to them.
We do not set out those claims here, since they are printed in 220
F. Supp. at 417-418.

															In essence, the device here combines a finger-operated pump
sprayer, mounted in a container or bottle by means of a container
cap, with a plastic overcap which screws over the top of and
depresses the sprayer ( see Appendix, Page 383 U. S. 27 383 U.S.
1 fig3|>Fig. 3). The pump sprayer passes through the
container cap and extends down into the liquid in the container;
the overcap fits over the pump sprayer and screws down on the
outside of a collar mounting or retainer which is molded around the
body of the sprayer. When the overcap is screwed down on this
collar mounting, a seal is formed by the engagement of a circular
ridge or rib located above the threads on the collar mounting with
a mating shoulder located inside the overcap above its threads.
[ Footnote 15 ] The overcap,
as it is screwed down, depresses the pump plunger rendering the
pump inoperable, and, when the seal is effected, any liquid which
might seep into the overcap through or around the pump is prevented
from leaking out of the overcap. The overcap serves also to protect
the sprayer head and prevent damage to it during shipment or
merchandising. When the overcap is in place, it does not reach the
cap of the container or bottle, and in no way engages it, since a
slight space is left between those two pieces.

															The device, called a shipper-sprayer in the industry, is sold as
an integrated unit with the overcap in place, enabling the
insecticide manufacturer to install it on the container or bottle
of liquid in a single operation in an automated bottling process.
The ultimate consumer simply unscrews and discards the overcap, the
pump plunger springs up, and the sprayer is ready for use. The Background of the Patent For many years manufacturers, engaged in the insecticide
business had faced a serious problem in developing sprayers that
could be integrated with the containers or bottles in which the
insecticides were marketed. Originally, insecticides were applied
through the use of tin Page 383 U. S. 28 sprayers, not supplied by the manufacturer. In 1947, Cook
Chemical, an insecticide manufacturer, began to furnish its
customers with plastic pump dispensers purchased from Calmar. The
dispenser was an unpatented finger-operated device mounted in a
perforated cardboard holder and hung over the neck of the bottle or
container. It was necessary for the ultimate consumer to remove the
cap of the container and insert and attach the sprayer to the
latter for use.

															Hanging the sprayer on the side of the container or bottle was
both expensive and troublesome. Packaging for shipment had to be a
hand operation, and breakage and pilferage, as well as the loss of
the sprayer during shipment and retail display, often occurred.
Cook Chemical urged Calmar to develop an integrated sprayer that
could be mounted directly in a container or bottle during the
automated filling process and that would not leak during shipment
or retail handling. Calmar did develop some such devices, but, for
various reasons, they were not completely successful. The situation
was aggravated in 1954 by the entry of Colgate-Palmolive into the
insecticide trade with its product marketed in aerosol spray cans.
These containers, which used compressed gas as a propellent to
dispense the liquid, did not require pump sprayers.

															During the same year, Calmar was acquired by the Drackett
Company. Cook Chemical became apprehensive of its source of supply
for pump sprayers, and decided to manufacture its own through a
subsidiary, Bakan Plastics, Inc. Initially, it copied its design
from the unpatented Calmar sprayer, but an officer of Cook
Chemical, Scoggin, was assigned to develop a more efficient device.
By 1956, Scoggin had perfected the shipper-sprayer in suit, and a
patent was granted in 1959 to Cook Chemical as his assignee. In the
interim, Cook Chemical began to use Scoggin's device, and also
marketed Page 383 U. S. 29 it to the trade. The device was well received, and soon became
widely used.

															In the meanwhile, Calmar employed two engineers, Corsette and
Cooprider, to perfect a shipper-sprayer, and, by 1958, it began to
market its SS-40, a device very much similar to Scoggin's. When the
Scoggin patent issued, Cook Chemical charged Calmar's SS-40 with
infringement, and this suit followed. The Opinions of the District Court and the Court of
Appeals At the outset, it is well to point up that the parties have
always disagreed as to the scope and definition of the invention
claimed in the patent in suit. Cook Chemical contends that the
invention encompasses a unique combination of admittedly old
elements, and that patentability is found in the result produced.
Its expert testified that the invention was

															"the first commercially successful, inexpensive integrated
shipping closure pump unit which permitted automated assembly with
a container of household insecticide or similar liquids to produce
a practical, ready-to-use package which could be shipped without
external leakage and which was so organized that the pump unit,
with its hold-down cap, could be itself assembled and sealed and
then later assembled and sealed on the container without breaking
the first seal."

															Cook Chemical stresses the long-felt need in the industry for
such a device; the inability of others to produce it; and its
commercial success -- all of which, contends Cook, evidences the
nonobvious nature of the device at the time it was developed. On
the other hand, Calmar says that the differences between Scoggin's
shipper-sprayer and the prior art relate only to the design of the
overcap, and that the differences are so inconsequential that the
device as a whole would have been obvious at the time of its
invention to a person having ordinary skill in the art. Page 383 U. S. 30 Both courts accepted Cook Chemical's contentions. While the
exact basis of the District Court's holding is uncertain, the court
did find the subject matter of the patent new, useful and
nonobvious. It concluded that Scoggin

															"had produced a sealed and protected sprayer unit which the
manufacturer need only screw onto the top of its container in much
the same fashion as a simple metal cap."

															220 F. Supp. at 418. Its decision seems to be bottomed on the
finding that the Scoggin sprayer solved the long-standing problem
that had confronted the industry. [ Footnote 16 ] The Court of Appeals also found validity in
the "novel "marriage" of the sprayer with the insecticide
container" which took years in discovery, and in "the immediate
commercial success" which it enjoyed. While finding that the
individual elements of the invention were "not novel per
se, " the court found

															"nothing in the prior art suggesting Scoggin's unique
combination of these old features . . . as would solve the . . .
problems which for years beset the insecticide industry."

															It concluded that

															"the . . . [device] meets the exacting standard required for a
combination of old elements to rise to the level of patentable
invention by fulfilling the long-felt need with an economical,
efficient, utilitarian apparatus which achieved novel results and
immediate commercial success."

															336 F.2d at 114. The Prior Art Only two of the five prior art patents cited by the Patent
Office Examiner in the prosecution of Scoggin's application are
necessary to our discussion, i.e., Lohse Page 383 U. S. 31 U.S. Patent No. 2,119,884 (1938) and Mellon U.S. Patent No.
2,586,687 (1952). Others are cited by Calmar that were not before
the Examiner, but of these our purposes require discussion of only
the Livingstone U.S. Patent No. 2,715,480 (1953). Simplified
drawings of each of these patents are reproduced in the Appendix,
Figs. 4-6, for comparison and description.

															The Lohse patent ( 383 U.S.
1 fig4|>Fig. 4) is a shipper-sprayer designed to perform the
same function as Scoggin's device. The differences, recognized by
the District Court, are found in the overcap seal, which in Lohse
is formed by the skirt of the overcap engaging a washer or gasket
which rests upon the upper surface of the container cap. The court
emphasized that in Lohse "[t]here are no seals above the threads
and below the sprayer head." 220 F. Supp. at 419.

															The Mellon patent ( 383 U.S.
1 fig5|>Fig. 5), however, discloses the idea of effecting a
seal above the threads of the overcap. Mellon's device, likewise a
shipper-sprayer, differs from Scoggin's in that its overcap screws
directly on the container, and a gasket, rather than a rib, is used
to effect the seal.

															Finally, Livingstone ( 383 U.S.
1 fig6|>Fig. 6) shows a seal above the threads accomplished
without the use of a gasket or washer. [ Footnote 17 ] Although Livingstone's arrangement was
designed to cover and protect pouring spouts, his sealing feature
is strikingly similar to Scoggin's. Livingstone uses a tongue and
groove technique in which the tongue, located on the upper surface
of the collar, fits into a groove on the inside of the overcap.
Scoggin employed the rib and shoulder seal in the identical
position and with less efficiency because the Livingstone
technique Page 383 U. S. 32 is inherently a more stable structure, forming an interlock that
withstands distortion of the overcap when subjected to rough
handling. Indeed, Cook Chemical has now incorporated the
Livingstone closure into its own shipper-sprayers, as had Calmar in
its SS-40. The Invalidity of the Patent Let us first return to the fundamental disagreement between the
parties. Cook Chemical, as we noted at the outset, urges that the
invention must be viewed as the overall combination, or -- putting
it in the language of the statute -- that we must consider the
subject matter sought to be patented taken as a whole. With this
position, taken in the abstract, there is, of course, no quibble.
But the history of the prosecution of the Scoggin application in
the Patent Office reveals a substantial divergence in respondent's
present position.

															As originally submitted, the Scoggin application contained 15
claims which, in very broad terms, claimed the entire combination
of spray pump and overcap. No mention of, or claim for, the sealing
features was made. All 15 claims were rejected by the Examiner
because (1) the applicant was vague and indefinite as to what the
invention was, and (2) the claims were met by Lohse. Scoggin
canceled these claims and submitted new ones. Upon a further series
of rejections and new submissions, the Patent Office Examiner,
after an office interview, at last relented. It is crystal clear
that, after the first rejection, Scoggin relied entirely upon the
sealing arrangement as the exclusive patentable difference in his
combination. It is likewise clear that it was on that feature that
the Examiner allowed the claims. In fact, in a letter accompanying
the final submission of claims, Scoggin, through his attorney,
stated that

															"agreement was reached between the Honorable Examiner and
applicant's attorney relative to limitations which must be
in the claims in Page 383 U. S. 33 order to define novelty over the previously applied disclosure
of Lohse when considered in view of the newly cited patents of
Mellon and Darley, Jr."

															(Italics added.)

															Moreover, those limitations were specifically spelled out as (1)
the use of a rib seal and (2) an overcap whose lower edge did not
contact the container cap. Mellon was distinguished, as was the
Darley patent, infra, n 18, on the basis that, although it disclosed a
hold-down cap with a seal located above the threads, it did not
disclose a rib seal disposed in such position as to cause the lower
peripheral edge of the overcap "to be maintained out of contacting
relationship with [the container] cap . . . when . . . [the
overcap] was screwed [on] tightly. . . ." Scoggin maintained that
the "obvious modification" of Lohse in view of Mellon would be
merely to place the Lohse gasket above the threads with the lower
edge of the overcap remaining in tight contact with the container
cap or neck of the container itself. In other words, the Scoggin
invention was limited to the use of a rib -- rather than a washer
or gasket -- and the existence of a slight space between the
overcap and the container cap.

															It is, of course, well settled that an invention is construed
not only in the light of the claims, but also with reference to the
file wrapper or prosecution history in the Patent Office. Hogg v.
Emerson , 11 How. 587 (1850); Crawford v.
Heysinger, 123 U. S. 589 (1887). Claims as allowed must be read and interpreted with
reference to rejected ones, and to the state of the prior art; and
claims that have been narrowed in order to obtain the issuance of a
patent by distinguishing the prior art cannot be sustained to cover
that which was previously by limitation eliminated from the patent. Powers-Kennedy Contracting Corp. v. Concrete Mixing &
Conveying Co., 282 U. S. 175 , 282 U. S.
185 -186 (1930); Schriber-Schroth Co. v. Cleveland
Trust Co., 311 U. S. 211 , 311 U. S.
220 -221 (1940). Page 383 U. S. 34 Here, the patentee obtained his patent only by accepting the
limitations imposed by the Examiner. The claims were carefully
drafted to reflect these limitations, and Cook Chemical is not now
free to assert a broader view of Scoggin's invention. The subject
matter as a whole reduces, then, to the distinguishing features
clearly incorporated into the claims. We now turn to those
features.

															As to the space between the skirt of the overcap and the
container cap, the District Court found:

															"Certainly, without a space so described, there could be no
inner seal within the cap, but such a space is not new or novel,
but it is necessary to the formation of the seal within the
hold-down cap."

															" To me, this language is descriptive of an element of the
patent, but not a part of the invention. It is too simple,
really, to require much discussion. In this device, the hold-down
cap was intended to perform two functions -- to hold down the
sprayer head and to form a solid tight seal between the shoulder
and the collar below. In assembling the element, it is necessary to
provide this space in order to form the seal."

															220 F. Supp. at 420. (Italics added.)

															The court correctly viewed the significance of that feature. We
are at a loss to explain the Examiner's allowance on the basis of
such a distinction. Scoggin was able to convince the Examiner that
Mellon's cap contacted the bottle neck, while his did not. Although
the drawings included in the Mellon application show that the cap
might touch the neck of the bottle when fully screwed down, there
is nothing -- absolutely nothing -- which indicates that the cap
was designed at any time to engage the bottle neck. It is palpably
evident that Mellon embodies a seal formed by a gasket
compressed Page 383 U. S. 35 between the cap and the bottle neck. It follows that the cap in
Mellon will not seal if it does not bear down on the gasket, and
this would be impractical, if not impossible, under the
construction urged by Scoggin before the Examiner. Moreover, the
space so strongly asserted by Cook Chemical appears quite plainly
on the Livingstone device, a reference not cited by the
Examiner.

															The substitution of a rib built into a collar likewise presents
no patentable difference above the prior art. It was fully
disclosed and dedicated to the public in the Livingstone patent.
Cook Chemical argues, however, that Livingstone is not in the
pertinent prior art, because it relates to liquid containers having
pouring spouts, rather than pump sprayers. Apart from the fact that
respondent made no such objection to similar references cited by
the Examiner, [ Footnote 18 ]
so restricted a view of the applicable prior art is not justified.
The problems confronting Scoggin and the insecticide industry were
not insecticide problems, they were mechanical closure problems.
Closure devices in such a closely related art as pouring spouts for
liquid containers are, at the very least, pertinent references. See II Walker on Patents § 260 (Deller ed. 1937).

															Cook Chemical insists, however, that the development of a
workable shipper-sprayer eluded Calmar, who had long and
unsuccessfully sought to solve the problem. And, further, that the
long-felt need in the industry for a device such as Scoggin's,
together with its wide commercial success, supports its
patentability. These legal inferences Page 383 U. S. 36 or subtests do focus attention on economic and motivational,
rather than technical issues, and are therefore more susceptible of
judicial treatment than are the highly technical facts often
present in patent litigation. See Judge Learned Hand in Reiner v. I. Leon Co., 285 F.2d 501, 504 (2 Cir. 1960). See also Note, Subtests of "Nonobviousness": A
Nontechnical Approach to Patent Validity, 112 U.Pa.L.Rev. 1169
(1964). Such inquiries may lend a helping hand to the judiciary
which, as Mr. Justice Frankfurter observed, is most ill-fitted to
discharge the technological duties cast upon it by patent
legislation. Marconi Wireless Telegraph Co. of America v.
United States, 320 U. S. 1 , 320 U. S. 60 (1943). They may also serve to "guard against slipping into use of
hindsight," Monroe Auto Equipment Co. v. Heckethorn Mfg. &
Supply Co., 332 F.2d 406, 412 (1964), and to resist the
temptation to read into the prior art the teachings of the
invention in issue.

															However, these factors do not, in the circumstances of this
case, tip the scales of patentability. The Scoggin invention, as
limited by the Patent Office and accepted by Scoggin, rests upon
exceedingly small and quite nontechnical mechanical differences in
a device which was old in the art. At the latest, those differences
were rendered apparent in 1953 by the appearance of the Livingstone
patent, and unsuccessful attempts to reach a solution to the
problems confronting Scoggin made before that time became wholly
irrelevant. It is also irrelevant that no one apparently chose to
avail himself of knowledge stored in the Patent Office and readily
available by the simple expedient of conducting a patent search --
a prudent and nowadays common preliminary to well organized
research. Mast, Foos & Co. v. Stover Mfg. Co., 177 U. S. 485 (1900). To us, the limited claims of the Scoggin patent are clearly
evident from the prior art as it stood at the time of the
invention. Page 383 U. S. 37 We conclude that the claims in issue in the Scoggin patent must
fall as not meeting the test of § 103, since the differences
between them and the pertinent prior art would have been obvious to
a person reasonably skilled in that art.

															The judgment of the Court of Appeals in No. 11 is affirmed. The
judgment of the Court of Appeals in Nos. 37 and 43 is reversed, and
the cases remanded to the District Court for disposition not
inconsistent with this opinion. It is so ordered. MR. JUSTICE STEWART took no part in the consideration or
decision of Nos. 37 and 43.

															MR. JUSTICE FORTAS took no part in the consideration or decision
of these cases.

															|384 U.S. 383 U. S. 1 ast|

															* Together with No. 37, Calmar, Inc. v. Cook Chemical
Co., and No. 43, Colgate-Palmolive Co. v. Cook Chemical
Co., also on certiorari to the same court.

															[ Footnote 1 ]

															The provision appears in the Constitution spliced together with
the copyright provision, which we omit as not relevant here. See H.R.Rep.No.1923, 82d Cong., 2d Sess., at 4 (1952);
DeWolf, An Outline of Copyright Law, p. 15 (Boston, 1925).

															[ Footnote 2 ]

															"Stable ownership is the gift of social law, and is given late
in the progress of society. It would be curious, then, if an idea,
the fugitive fermentation of an individual brain, could, of natural
right, be claimed in exclusive and stable property. If nature has
made anyone thing less susceptible than all others of exclusive
property, it is the action of the thinking power called an idea,
which an individual may exclusively possess as long as he keeps it
to himself; but the moment it is divulged, it forces itself into
the possession of everyone, and the receiver cannot dispossess
himself of it. Its peculiar character, too, is that no one
possesses the less because every other possesses the whole of it.
He who receives an idea from me receives instruction himself
without lessening mine, as he who lights his taper at mine,
receives light without darkening me. That ideas should freely
spread from one to another over the globe, for the moral and mutual
instruction of man and improvement of his condition, seems to have
been peculiarly and benevolently designed by nature when she made
them, like fire, expansible over all space, without lessening their
density in any point, and, like the air in which we breathe, move,
and have our physical being, incapable of confinement or exclusive
appropriation. Inventions then cannot, in nature, be a subject of
property. Society may give an exclusive right to the profits
arising from them, as an encouragement to men to pursue ideas which
may produce utility, but this may or may not be done according to
the will and convenience of the society, without claim or complaint
from anybody."

															VI Writings of Thomas Jefferson at 180-181 (Washington ed.).

															[ Footnote 3 ]

															"[A] machine of which we are possessed might be applied by every
man to any use of which it is susceptible." Letter to Isaac
McPherson, supra, at 181.

															"[A] change of material should not give title to a patent. As
the making a ploughshare of cast, rather than of wrought, iron; a
comb of iron, instead of horn or of ivory. . . ." Ibid. "[A] mere change of form should give no right to a patent, as a
high-quartered shoe instead of a low one, a round hat instead of a
three-square; or a square bucket instead of a round one." Id. at 181-182.

															"[A combined use of old implements.] A man has a right to use a
saw, an axe, a plane separately; may he not combine their uses on
the same piece of wood?"

															Letter to Oliver Evans, (Jan., 1814), VI Writings of Thomas
Jefferson at 298 (Washington ed.).

															[ Footnote 4 ]

															In historical retrospect, the specific result in Hotchkiss flows directly from an application of one of the
rules of the original board of "Commissioners," n 3, second rule, supra. [ Footnote 5 ]

															"§ 101. Inventions patentable "

															"Whoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new and
useful improvement thereof, may obtain a patent therefor, subject
to the conditions and requirements of this title."

															"§ 102. Conditions for patentability; novelty and loss of
right to patent "

															"A person shall be entitled to a patent unless --"

															"(a) the invention was known or used by others in this country,
or patented or described in a printed publication in this or a
foreign country, before the invention thereof by the applicant for
patent, or"

															"(b) the invention was patented or described in a printed
publication in this or a foreign country or in public use or on
sale in this country, more than one year prior to the date of the
application for patent in the United States, or"

															"(c) he has abandoned the invention, or"

															"(d) the invention was first patented or caused to be patented
by the applicant or his legal representatives or assigns in a
foreign country prior to the date of the application for patent in
this country on an application filed more than twelve months before
the filing of the application in the United States, or"

															"(e) the invention was described in a patent granted on an
application for patent by another filed in the United States before
the invention thereof by the applicant for patent, or"

															"(f) he did not himself invent the subject matter sought to be
patented, or"

															"(g) before the applicant's invention thereof the invention was
made in this country by another who had not abandoned, suppressed,
or concealed it. In determining priority of invention there shall
be considered not only the respective dates of conception and
reduction to practice of the invention, but also the reasonable
diligence of one who was first to conceive and last to reduce to
practice, from a time prior to conception by the other."

															The precursors of these sections are to be found in the Act of
February 21, 1793, c. 11, 1 Stat. 318; Act of July 4, 1836, c. 357,
5 Stat. 117; Act of July 8, 1870, c. 230, 16 Stat. 198; Rev.Stat. §
4886 (1874).

															[ Footnote 6 ]

															The corresponding provision in the preliminary draft was titled
"Conditions for patentability, lack of invention " (italics
added), Proposed Revision and Amendment of the Patent Laws,
Preliminary Draft with Notes, House Committee on the Judiciary
(Committee Print, 1950).

															[ Footnote 7 ]

															The sentence in which the phrase occurs reads: "[T]he new
device, however useful it may be, must reveal the flash of creative
genius, not merely the skill of the calling." At p. 314 U. S. 91 .
Although some writers and lower courts found in the language
connotations as to the frame of mind of the inventors, none was so
intended. The opinion approved Hotchkiss specifically, and
the reference to "flash of creative genius" was but a rhetorical
embellishment of language going back to 1833. Cf. "exercise of genius," Shaw v.
Cooper , 7 Pet. 292; "inventive genius," Reckendorfer v. Faber, 92 U. S. 347 (1876); Concrete Appliance Co. v. Gomery, 269 U.
S. 177 ; "flash of thought," Densmore v.
Scofield, 102 U. S. 375 (1880); "intuitive genius," Potts v. Creager, 155 U.
S. 597 (1895). Rather than establishing a more exacting
standard, Cuno merely rhetorically restated the
requirement that the subject matter sought to be patented must be
beyond the skill of the calling. It was the device, not the
invention, that had to reveal the "flash of creative genius." See Boyajian, The Flash of Creative Genius, An Alternative
Interpretation, 25 J.Pat.Off.Soc. 776, 780, 781 (1943); Pacific
Contact Laboratories, Inc. v. Solex Laboratories, Inc., 209
F.2d 529, 533; Brown & Sharpe Mfg. Co. v. Kar Engineering
Co., 154 F.2d 48, 51-52; In re Shortell, 142 F.2d
292, 295-296, 31 CCPA (Pat.) 1062, 1069.

															[ Footnote 8 ]

															"There is no provision corresponding to the first sentence
explicitly stated in the present statutes, but the refusal of
patents by the Patent Office, and the holding of patents invalid by
the courts, on the ground of lack of invention or lack of
patentable novelty has been followed since at least as early as
1850. This paragraph is added with the view that an explicit
statement in the statute may have some stabilizing effect, and also
to serve as a basis for the addition at a later time of some
criteria which may be worked out."

															"The second sentence states that patentability as to this
requirement is not to be negatived by the manner in which the
invention was made -- that is, it is immaterial whether it resulted
from long toil and experimentation or from a flash of genius."

															[ Footnote 9 ] See Efforts to Establish a Statutory Standard of
Invention, Study No. 7, Senate Subcommittee on Patents, Trademarks,
and Copyrights, 85th Cong., 1st Sess. (Committee Print, 1958);
Hearings, Subcommittee No. 3, House Committee on the Judiciary, on
H.R. 3760, 82d Cong., 1st Sess. (1951).

															[ Footnote 10 ]

															The President has appointed a Commission on the Patent System.
Executive Order No. 11215, 30 Fed.Reg. 4661 (April 10, 1965). It is
hoped that its studies may develop more efficient administrative
procedures and techniques that will further expedite dispositions
and at the same time insure the strict application of appropriate
tests of patentability.

															[ Footnote 11 ]

															In '811, where the shank was above the hinge plate, an upward
movement of the chisel forced the shank up against the underside of
the rear of the upper plate. The upper plate thus provided the
fulcrum about which the hinge was pried open. Because of this, as
well as the location of the hinge pin, the shank rubbed against the
heel of the upper plate, causing wear both to the plate and to the
shank. By relocating the hinge pin and by placing the hinge plate
between the shank and the upper plate, as in '798, the rubbing was
eliminated and the wear point was changed to the hinge plate, a
member more easily removed or replaced for repair.

															[ Footnote 12 ]

															Even petitioners' expert testified to that effect:

															"Q. Given the same length of the forward portion of the clamp .
. . , you would anticipate that the magnitude of flex [in '798]
would be precisely the same or substantially the same as in 811,
wouldn't you?"

															"A. I would think so."

															[ Footnote 13 ]

															"Q. . . . Do you regard the small degree of flex in the forward
end of the shank that lies between the pivot point and the point of
spring attachment to be of any significance or any importance to
the functioning of a device such as 798?"

															"A. Unless you are approaching the elastic limit, I think this
flexing will reduce the maximum stress at the point of pivot there,
where the maximum stress does occur. I think it will reduce that. I
don't know how much."

															"Q. Do you think it is a substantial factor, a factor of
importance in the functioning of the structure?"

															"A. Not a great factor, no."

															The same expert previously testified similarly in Jeoffoy
Mfg., Inc. v. Graham, 219 F.2d 511.

															[ Footnote 14 ]

															The patent is U.S. No. 2,870,943 issued in 1959 to Cook Chemical
Co. as assignee of Baxter I. Scoggin, Jr., the inventor. In No. 37,
Calmar is the manufacturer of an alleged infringing device, and, in
No. 43, Colgate is a customer of Calmar and user of its device.

															[ Footnote 15 ]

															Our discussion here relates to the overcap seal. The container
itself is sealed in the customary way through the use of a
container gasket located between the container and the container
cap.

															[ Footnote 16 ]

															"By the same reasoning, may it not also be said that if [the
device] solved a long-sought need, it was likewise novel? If it
meets the requirements of being new, novel and useful, it was the
subject of invention, although it may have been a short step,
nevertheless it was the last step that ended the journey. The last
step is the one that wins, and he who takes it when others could
not is entitled to patent protection."

															220 F. Supp. at 421.

															[ Footnote 17 ]

															While the sealing feature was not specifically claimed in the
Livingstone patent, it was disclosed in the drawings and
specifications. Under long settled law, the feature became public
property. Miller v. Brass Co., 104 U.
S. 350 , 104 U. S. 352 (1882).

															[ Footnote 18 ]

															In addition to Livingstone and Mellon, the Examiner cited Slade,
U.S. Patent No. 2,844,290 (hold-down cap for detergent cans having
a pouring spout); Nilson, U.S. Patent No. 2,118,222 (combined cap
and spout for liquid dispensing containers); Darley, Jr., U.S.
Patent No. 1,447,712 (containers for toothpaste, cold creams and
other semi-liquid substances).

															| 383 U.S.
1 app| APPENDIX TO OPINION OF THE COURT. | 383 U.S.
1 fig1|

															image:a

															| 383 U.S.
1 fig2|

															image:b

															| 383 U.S.
1 fig3|

															image:c

															| 383 U.S.
1 fig4|

															image:d

															| 383 U.S.
1 fig5|

															image:e

															| 383 U.S.
1 fig6|

															image:f

Summary: In Graham v. John Deere Co., the Supreme Court held that a patent must meet the "nonobvious" nature test to be valid. The Court established a three-part test to determine nonobviousness: the scope and content of prior art, differences between prior art and the patent, and the level of ordinary skill in the field. This decision set a higher bar for patentability, ensuring that only inventions demonstrating a significant level of innovation are eligible for patent protection.


U.S. Supreme Court Gottschalk v. Benson, 409 U.S.
63 (1972) Gottschalk v. Benson No. 71-485 Argued October 16,
1972 Decided November 20,
1972 409 U.S.
63 CERTIORARI TO THE UNITED STATES
COURT OF CUSTOMS AND PATENT
APPALS Syllabus Respondents' method for converting numerical information from
binary-coded decimal numbers into pure binary numbers, for use in
programming conventional general purpose digital computers, is
merely a series of mathematical calculations or mental steps, and
does not constitute a patentable "process" within the meaning of
the Patent Act, 35 U.S.C. § 100(b). Pp. 409 U. S.
64 -73.

															___ C.C.P.A. (Pat.) ___, 441 F.2d 682, reversed.

															DOUGLAS, J., delivered the opinion of the Court, in which all
members joined except STEWART, BLACKMUN, and POWELL, JJ., who took
no part in the consideration or decision of the case. Page 409 U. S. 64 MR. JUSTICE DOUGLAS delivered the opinion of the Court.

															Respondents filed in the Patent Office an application for an
invention which was described as being related "to the processing
of data by program and more particularly to the programmed
conversion of numerical information" in general purpose digital
computers. They claimed a method for converting binary-coded
decimal (BCD) numerals into pure binary numerals. The claims were
not limited to any particular art or technology, to any particular
apparatus or machinery, or to any particular end use. They
purported to cover any use of the claimed method in a general
purpose digital computer of any type. Claims 8 and 13 [ Footnote 1 ] were rejected by the Patent
Office but sustained by the Court of Customs and Patent Appeals,
C.C.P.A. (Pat.) , 441 F.2d 682. The case is here on a petition for
a writ of certiorari. 405 U.S. 915.

															The question is whether the method described and claimed is a
"process" within the meaning of the Patent Act. [ Footnote 2 ] Page 409 U. S. 65 A digital computer, as distinguished from an analog computer,
operates on data expressed in digits, solving a problem by doing
arithmetic as a person would do it by head and hand. [ Footnote 3 ] Some of the digits are stored as
components of the computer. Others are introduced into the computer
in a form which it is designed to recognize. The computer operates
then upon both new and previously stored data. The general purpose
computer is designed to perform operations under many different
programs.

															The representation of numbers may be in the form of a time
series of electrical impulses, magnetized spots on the surface of
tapes, drums, or discs, charged spots on cathode-ray tube screens,
the presence or absence of punched holes on paper cards, or other
devices. The method or program is a sequence of coded instructions
for a digital computer.

															The patent sought is on a method of programming a general
purpose digital computer to convert signals from binary-coded
decimal form into pure binary form. A procedure for solving a given
type of mathematical problem is known as an "algorithm." The
procedures set forth in the present claims are of that kind; that
is to say, they are a generalized formulation for programs to solve
mathematical problems of converting one form of numerical
representation to another. From the generic formulation, programs
may be developed as specific applications. Page 409 U. S. 66 The decimal system uses as digits the 10 symbols 0, 1, 2, 3, 4,
5, 6, 7, 8, and 9. The value represented by any digit depends, as
it does in any positional system of notation, both on its
individual value and on its relative position in the numeral.
Decimal numerals are written by placing digits in the appropriate
positions or columns of the numerical sequence, i.e., "unit" (10^0), "tens" (10^1), "hundreds" (10^2), "thousands"
(10^3), etc. Accordingly, the numeral 1492 signifies (1 x 10^3)+(4
x 10^2)+(9 x 10^1)+(2 x 10^0).

															The pure binary system of positional notation uses two symbols
as digits -- 0 and 1, placed in a numerical sequence with values
based on consecutively ascending powers of 2. In pure binary
notation, what would be the tens position is the twos position;
what would be hundreds position is the fours position; what would
be the thousands position is the eights. Any decimal number from 0
to 10 can be represented in the binary system with four digits or
positions as indicated in the following table.

															Shown as the sum of powers of 2

															2^3 2^2 2^1 2^0

															Decimal (8) (4) (2) (1) Pure Binary

															0 = 0 0 0 0 = 0000

															1 = 0 0 0 2^0 = 0001

															2 = 0 0 2^1 0 = 0010

															3 = 0 0 2^1 2^0 = 0011

															4 = 0 2^2 0 0 = 0100

															5 = 0 2^2 0 2^0 = 0101

															6 = 0 2^2 2^1 0 = 0110

															7 = 0 2^2 2^1 2^0 = 0111

															8 = 2^3 0 0 0 = 1000

															9 = 2^3 0 0 2^0 = 1001

															10 = 2^3 0 2^1 0 = 1010

															The BCD system using decimal numerals replaces the character for
each component decimal digit in the decimal numeral with the
corresponding four-digit binary Page 409 U. S. 67 numeral, shown in the right-hand column of the table. Thus,
decimal 53 is represented as 0101 0011 in BCD, because decimal 5 is
equal to binary 0101 and decimal 3 is equivalent to binary 0011. In
pure binary notation, however, decimal 53 equals binary 110101. The
conversion of BCD numerals to pure binary numerals can be done
mentally through use of the foregoing table. The method sought to
be patented varies the ordinary arithmetic steps a human would use
by changing the order of the steps, changing the symbolism for
writing the multiplier used in some steps, and by taking subtotals
after each successive operation. The mathematical procedures can be
carried out in existing computers long in use, no new machinery
being necessary. And, as noted, they can also be performed without
a computer.

															The Court stated in Mackay Co. v. Radio Corp., 306 U. S. 86 , 306 U. S. 94 ,
that,

															"[w]hile a scientific truth, or the mathematical expression of
it, is not a patentable invention, a novel and useful structure
created with the aid of knowledge of scientific truth may be."

															That statement followed the longstanding rule that "[a]n idea,
of itself, is not patentable." Rubber-Tip Pencil Co. v.
Howard , 20 Wall. 498, 87 U. S. 507 .

															"A principle, in the abstract, is a fundamental truth; an
original cause; a motive; these cannot be patented, as no one can
claim in either of them an exclusive right." Le Roy v.
Tatham , 14 How. 156, 55 U. S. 175 .
Phenomena of nature, though just discovered, mental processes, and
abstract intellectual concepts are not patentable, as they are the
basic tools of scientific and technological work. As we stated in Funk Bros. Seed Co. v. Kalo Co., 333 U.
S. 127 , 333 U. S.
130 ,

															"He who discovers a hitherto unknown phenomenon of nature has no
claim to a monopoly of it which the law recognizes. If there is to
be invention from such a discovery, it must come from the
application of the law of nature to a new and useful end."

															We dealt there with a "product" claim, while the Page 409 U. S. 68 present case deals with a "process" claim. But we think the same
principle applies.

															Here the "process" claim is so abstract and sweeping as to cover
both known and unknown uses of the BCD to pure binary conversion.
The end use may (1) vary from the operation of a train to
verification of drivers' licenses to researching the law books for
precedents and (2) be performed through any existing machinery or
future-devised machinery or without any apparatus.

															In O'Reilly v.
Morse , 15 How. 62, Morse was allowed a patent for a
process of using electromagnetism to produce distinguishable signs
for telegraphy. Id. at 56 U. S. 111 .
But the Court denied the eighth claim in which Morse claimed the
use of "electro magnetism, however developed for marking or
printing intelligible characters, signs, or letters, at any
distances." Id. at 56 U. S. 112 .
The Court, in disallowing that claim, said,

															"If this claim can be maintained, it matters not by what process
or machinery the result is accomplished. For aught that we now
know, some future inventor, in the onward march of science, may
discover a mode of writing or printing at a distance by means of
the electric or galvanic current, without using any part of the
process or combination set forth in the plaintiff's specification.
His invention may be less complicated -- less liable to get out of
order -- less expensive in construction, and in its operation. But
yet, if it is covered by this patent, the inventor could not use
it, nor the public have the benefit of it, without the permission
of this patentee." Id. at 56 U. S.
113 .

															In The Telephone Cases, 126 U. S.
1 , 126 U. S. 534 ,
the Court explained the Morse case as follows.

															"The effect of that decision was, therefore, that the use of
magnetism as a motive power, without regard to the particular
process with which it was connected in the patent, could not be
claimed, but that its use in that connection could."

															Bell's invention was the use of electric current to transmit Page 409 U. S. 69 vocal or other sounds. The claim was not

															"for the use of a current of electricity in its natural state as
it comes from the battery, but for putting a continuous current in
a closed circuit into a certain specified condition suited to the
transmission of vocal and other sounds, and using it in that
condition for that purpose." Ibid. The claim, in other words, was not "one for the
use of electricity distinct from the particular process with which
it is connected in his patent." Id. at 126 U. S. 535 .
The patent was for that use of electricity "both for the magneto
and variable resistance methods." Id. at 126 U. S. 538 .
Bell's claim, in other words, was not one for all telephonic use of
electricity.

															In Corning v.
Burden , 15 How. 252, 56 U. S.
267 -268, the Court said,

															"One may discover a new and useful improvement in the process of
tanning, dyeing, etc., irrespective of any particular form of
machinery or mechanical device."

															The examples given were the "arts of tanning, dyeing, making
waterproof cloth, vulcanizing India rubber, smelting ores." Id. at 56 U. S. 267 .
Those are instances, however, where the use of chemical substances
or physical acts, such as temperature control, changes articles or
materials. The chemical process or the physical acts which
transform the raw material are, however, sufficiently definite to
confine the patent monopoly within rather definite bounds. Cochrane v. Deener, 94 U. S. 780 ,
involved a process for manufacturing flour so as to improve its
quality. The process first separated the superfine flour and then
removed impurities from the middlings by blasts of air, reground
the middlings, and then combined the product with the superfine. Id. at 94 U. S. 785 .
The claim was not limited to any special arrangement of machinery. Ibid. The Court said,

															"That a process may be patentable, irrespective of the
particular form of the instrumentalities used, Page 409 U. S. 70 cannot be disputed. If one of the steps of a process be that a
certain substance is to be reduced to a powder, it may not be at
all material what instrument or machinery is used to effect that
object, whether a hammer, a pestle and mortar, or a mill. Either
may be pointed out; but if the patent is not confined to that
particular tool or machine, the use of the others would be an
infringement, the general process being the same. A process is a
mode of treatment of certain materials to produce a given result.
It is an act, or a series of acts, performed upon the subject
matter to be transformed and reduced to a different state or
thing." Id. at 94 U. S.
787 -788.

															Transformation and reduction of an article "to a different state
or thing" is the clue to the patentability of a process claim that
does not include particular machines. So it is that a patent in the
process of "manufacturing fat acids and glycerine from fatty bodies
by the action of water at a high temperature and pressure" was
sustained in Tilghman v. Proctor, 102 U.
S. 707 , 102 U. S. 721 .
The Court said,

															"The chemical principle or scientific fact upon which it is
founded is that the elements of neutral fat require to be severally
united with an atomic equivalent of water in order to separate from
each other and become free. This chemical fact was not discovered
by Tilghman. He only claims to have invented a particular mode of
bringing about the desired chemical union between the fatty
elements and water." Id. at 102 U. S.
729 . Expanded Metal Co. v. Bradford, 214 U.
S. 366 , sustained a patent on a "process" for expanding
metal. A process "involving mechanical operations, and producing a
new and useful result," id. at 214 U. S.
385 -386, was held to be a patentable process, process
patents not being limited to chemical action. Smith v. Snow, 294 U. S. 1 , and Taxham v. Smith, 294 U. S. 20 ,
involved a process for setting eggs in staged incubation Page 409 U. S. 71 and applying mechanically circulated currents of air to the
eggs. The Court, in sustaining the function performed (the hatching
of eggs) and the means or process by which that is done, said:

															"By the use of materials in a particular manner, he secured the
performance of the function by a means which had never occurred in
nature, and had not been anticipated by the prior art; this is a
patentable method or process. . . . A method which may be patented
irrespective of the particular form of the mechanism which may be
availed of for carrying it into operation is not to be rejected as
'functional' merely because the specifications show a machine
capable of using it."

															294 U.S. at 294 U. S.
22 .

															It is argued that a process patent must either be tied to a
particular machine or apparatus or must operate to change articles
or materials to a "different state or thing." We do not hold that
no process patent could ever qualify if it did not meet the
requirements of our prior precedents. It is said that the decision
precludes a patent for any program servicing a computer. We do not
so hold. It is said that we have before us a program for a digital
computer but extend our holding to programs for analog computers.
We have, however, made clear from the start that we deal with a
program only for digital computers. It is said we freeze process
patents to old technologies, leaving no room for the revelations of
the new, onrushing technology. Such is not our purpose. What we
come down to, in a nutshell, is the following.

															It is conceded that one may not patent an idea. But, in
practical effect, that would be the result if the formula for
converting BCD numerals to pure binary numerals were patented in
this case. The mathematical formula involved here has no
substantial practical application except in connection with a
digital computer, which Page 409 U. S. 72 means that, if the judgment below is affirmed, the patent would
wholly preempt the mathematical formula and, in practical effect,
would be a patent of the algorithm itself.

															It may be that the patent laws should be extended to cover these
programs, a policy matter to which we are not competent to speak.
The President's Commission on the Patent System [ Footnote 4 ] rejected the proposal that these
programs be patentable: [ Footnote
5 ]

															"Uncertainty now exists as to whether the statute permits a
valid patent to be granted on programs. Direct attempts to patent
programs have been rejected on the ground of nonstatutory subject
matter. Indirect attempts to obtain patents and avoid the
rejection, by drafting claims as a process, or a machine or
components thereof programmed in a given manner, rather than as a
program itself, have confused the issue further, and should not be
permitted."

															"The Patent Office now cannot examine applications for programs
because of a lack of a classification technique and the requisite
search files. Even if these were available, reliable searches would
not be feasible or economic because of the tremendous volume of
prior art being generated. Without this search, the patenting of
programs would be tantamount to mere registration, and the
presumption of validity would be all but nonexistent."

															"It is noted that the creation of programs has undergone
substantial and satisfactory growth in the absence of patent
protection, and that copyright protection for programs is presently
available. " Page 409 U. S. 73 If these programs are to be patentable, [ Footnote 6 ] considerable problems are raised which only
committees of Congress can manage, for broad powers of
investigation are needed, including hearings which canvass the wide
variety of views which those operating in this field entertain. The
technological problems tendered in the many briefs before us
[ Footnote 7 ] indicate to us
that considered action by the Congress is needed. Reversed. MR. JUSTICE STEWART, MR. JUSTICE BLACKMUN, and MR. JUSTICE
POWELL took no part in the consideration or decision of this
case.

															| 409 U.S.
63 app| APPENDIX TO OPINION OF THE COURT Claim 8 reads:

															"The method of converting signals from binary coded decimal form
into binary which comprises the steps of"

															"(1) storing the binary coded decimal signals in a reentrant
shift register,"

															"(2) shifting the signals to the right by at least three places,
until there is a binary '1' in the second position of said
register,"

															"(3) masking out said binary '1' in said second position of said
register,"

															"(4) adding a binary '1' to the first position of said
register,"

															"(5) shifting the signals to the left by two positions, " Page 409 U. S. 74 "(7) shifting the signals to the right by at least three
positions in preparation for a succeeding binary '1' in the second
position of said register."

															Claim 13 reads:

															"A data processing method for converting binary coded decimal
number representations into binary number representations,
comprising the steps of"

															"(1) testing each binary digit position '1,' beginning with the
least significant binary digit position, of the most significant
decimal digit representation for a binary '0' or a binary '1';"

															"(2) if a binary '0' is detected, repeating step (1) for the
next least significant binary digit position of said most
significant decimal digit representation;"

															"(3) if a binary '1' is detected, adding a binary '1' at the
(i+1)th and (i+3)th least significant binary digit positions of the
next lesser significant decimal digit representation, and repeating
step (1) for the next least significant binary digit position of
said most significant decimal digit representation;"

															"(4) upon exhausting the binary digit positions of said most
significant decimal digit representation, repeating steps (1)
through (3) for the next lesser significant decimal digit
representation as modified by the previous execution of steps (1)
through (3); and"

															"(5) repeating steps (1) through (4) until the second least
significant decimal digit representation has been so
processed."

															[ Footnote 1 ]

															They are set forth in the 409 U.S.
63 app|>Appendix to this opinion.

															[ Footnote 2 ]

															Title 35 U.S.C. § 100(b) provides:

															"The term 'process' means process, art or method, and includes a
new use of a known process, machine, manufacture, composition of
matter, or material."

															Title 35 U.S.C. § 101 provides:

															"Whoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new and
useful improvement thereof, may obtain a patent therefor, subject
to the conditions and requirements of this title."

															[ Footnote 3 ] See R. Benrey, Understanding Digital Computers 4
(1964).

															[ Footnote 4 ]

															"To Promote the Progress of . . . Useful Arts," Report of the
President's Commission on the Patent System (1966).

															[ Footnote 5 ] Id. at 13.

															[ Footnote 6 ] See Wild, Computer Program Protection: The Need to
Legislate a Solution, 54 Corn.L.Rev. 586, 604-609 (1969); Bender,
Computer Programs: Should They Be Patentable?, 68 Col.L.Rev. 241
(1968); Buckman, Protection of Proprietary Interest in Computer
Programs, 51 J.Pat.Off.Soc. 135 (1969).

															[ Footnote 7 ] Amicus briefs of 14 interested groups have been filed
on the merits in this case.

Summary: The Supreme Court ruled that a method for converting numerical information from binary-coded decimal numbers to pure binary numbers is not patentable as it is a series of mathematical calculations or mental steps, and does not fall under the definition of a "process" in the Patent Act.