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Gottschalk v. Benson, 409 U.S. 63, 93 S.Ct. 253, 34 L.Ed.2d 273, 175 U.S.P.Q. 673

Facts

The case involves an application for a patent on a method for converting binary-coded-decimal numerals into pure binary numerals for use with general-purpose digital computers. The United States Patent Office rejected the claims, but the Court of Customs and Patent Appeals reversed this decision. The Supreme Court was asked to determine whether the method claimed constituted a 'process' under the Patent Act. The court ultimately found that the method was not patentable as it was deemed a mathematical formula without substantial practical application.

Issue

Whether the method described and claimed is a 'process' within the meaning of the Patent Act.

Rule

Analysis

The court analyzed the claims and determined that the method for converting BCD to pure binary numerals was too abstract and did not involve a transformation of an article to a different state or thing. The method was essentially a mathematical formula that could be performed without a computer, thus lacking the necessary practical application to qualify as a patentable process. The court emphasized that patenting such a formula would effectively grant a monopoly over the algorithm itself, which is not permissible under patent law.

The mathematical formula involved here has no substantial practical application except in connection with a digital computer, which means that if the judgment below is affirmed, the patent would wholly pre-empt the mathematical formula and in practical effect would be a patent on the algorithm itself.

Conclusion

The Supreme Court reversed the decision of the Court of Customs and Patent Appeals, holding that the method for converting BCD numerals to pure binary numerals was not a patentable process.

Reversed.

Who won?

The Supreme Court ruled in favor of the Acting Commissioner of Patents, reversing the lower court's decision. The court concluded that the method claimed was not patentable because it was essentially a mathematical formula without substantial practical application, thus affirming the rejection of the patent application.

The Supreme Court ruled in favor of the Acting Commissioner of Patents, stating that the claims were too abstract and did not meet the requirements for patentability under the Patent Act.

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