(dissenting).
On the authority of Gottschalk v. Benson, 409 U.S. 63, 175 USPQ 673 (1972), I would affirm the rejection of the claims on appeal which was made by the *773board under § 101, as requested by the Solicitor for the Patent Office.
The board’s rejection was in these words:
Under the provisions of Rule 196(b) this board herewith enters under 35 U.S.C. 101 a further rejection of claims 1 through 11 and 16 through 27 as for subject matter outside the patent statutes.
This is inclusive of claims 20-24 on appeal here. The board did not, of course, have the benefit of the Supreme Court’s views in Benson because the board decision was on October 27, 1971, and Benson was not decided by the Supreme Court until November 20, 1972.
The Supreme Court held the process claims in Benson unpatentable under § 101. As the solicitor points out, appellant, in his main brief, ignored the Supreme Court Benson decision. In his reply brief he endeavors to deal with it— unsuccessfully, in my view. He attempts to distinguish on the ground that the claims here are directed to machines while Benson involved process claims. I. think that will not suffice. Appellant has to concede that
* * * the only resemblance of this case to Benson is that of the use of computer programs to embody the invention. Therein lies the rub, for ap-pellee [the Patent Office] would deny patents for all software-embodied inventions.
The board, which was dealing with claims of appellant cast in both process and machine form, said the following, with which I agree:
We see no essential difference in substance between these apparatus claims which define only broad means for performance of the steps of a data processing method and process claims 25, 26 and 27 which define the steps of the data processing method as being carried out by any conventional data processing machine. Hence, we consider that both the apparatus and the method claims on appeal must stand or fall together. [Emphasis added.]
I realize that claims 25, 26, and 27 are not on appeal but I do not take the board’s comment as being restricted to them among the process claims. The point is that the machine or apparatus and process claims are really directed to the same invention, of which appellant’s main brief says:
* * * this invention is being sold as a computer program to banks and to other data processing companies so that they can perform these data processing services for depositors.
What could more clearly reveal the reality that the invention is a program— software — and that that is what appellant wants to protect by the appealed “machine system” claims? Appellant did not invent a machine — i. e., “hardware.” Appellant’s brief further states:
This machine was reduced to practice in the software form of computer programs * * *.
I am quite familiar with the legal doctrine that a new program makes an old general purpose digital computer into a new and different machine. This court has been through that many times and I am not denying the validity of this principle — which partakes of the nature of a legal fiction when it comes to drafting claims. My problem is that, knowing the invention to be a new program, I must decide whether it is patentable in any claimed form in view of Benson, whether claimed as a machine, a “machine system,” or otherwise. I am probably as much — if not more — confused by the wording of the Benson opinion as many others. What the Court did in its decision reversing the holding of this court that Benson and Tabbot’s method claims were patentable subject matter under § 101 contains a message that is loud and clear. If those claims are not to patentable subject matter, neither, in my view, are the claims here, regardless of difference in form. Benson et al. had a program invention too and they could have cast their claims in machine system form just as appellant did. Every competent patent draftsman knows how to do that.
*774It seems to me important to focus on what the Supreme Cohrt did in Benson, rather than on the specifics of its explanation of why it did it. I have no idea what was in the collective mind of the six-justice Court in approving the statements :
It is said that the decision precludes a patent for any program servicing a computer. We do not so hold. * * * 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.
These are the comforting words to which some inventors of software and owners of software inventions look for solace. I find it more significant to contemplate the identities of the troops lined up for battle in Benson and observe which side obtained the victory. On the one side was the Government, against patenting programs or software, supported by the collective forces of major hardware (i. e., computer) manufacturers and their representative associations who, for economic reasons, did not want patents granted on programs for their machines. On the other side was Benson et al. and their assignee and assorted lawyers and legal groups who were in favor of patent protection for programs or software. The anti-patenting forces won the victory — if not an altogether clear one — and on the legal principle that the Benson et al. way of programming a computer to do a particularly useful job of general applicability in the data processing field was the kind of invention the Supreme Court would not approve patenting without prior consideration by and specific authorization from the Congress. The major part of the rather brief and now famous “nutshell” conclusion of the Court’s opinion dwells heavily on this point.
I can find no realistic distinction in kind between the Benson et al. invention and the invention here and I conclude that the Benson decision requires us to affirm the rejection of claims 20-24 as directed to non-patentable subject matter under 35 U.S.C. 101. Holding that view, I find it unnecessary to consider the remaining four grounds of rejection discussed by my colleagues.
It has been suggested that the position I am taking is inconsistent with the position I have taken or the views I have expressed in others of the many carefully reasoned opinions of this court on the statutory subject matter question under 35 U.S.C. 101 which led to Benson, none of which was discussed or even recognized in the Supreme Court’s Benson opinion. As a result, the value of those opinions as precedents has become unsettled.
It may well be that I seem to have been inconsistent. As the author of the opinion of this court in Benson, which was wholly reversed, I have not been persuaded by anything the Supreme Court said that we made a “wrong” decision and I therefore do not agree with the Supreme Court’s decision. But that is entirely beside the point. Under our judicial system, it is the duty of a judge of a lower court to try to follow in spirit decisions of the Supreme Court — that is to say, their “thrust.” I do not deem it to be my province as a judge to assume an advocate’s role and argue the rightness or wrongness of what the Court has decided or to participate in what I regard as the inconsistent decision here, supported by a bare majority which tries in vain, and only briefly, to distinguish Benson by discussing form rather than substance and various irrelevancies like pre-Benson decisions of this court, the banking business, social science, and the liberal arts. I deem it to be the Supreme Court’s prerogative to set the limits on Benson, which was broadly based. I hope it will do so. As John W. Davis, erstwhile outstanding Solicitor General, once said, “The first requirement of any judicial opinion is utter clarity.”*
Harbaugh, Lawyer’s Lawyer, The Life of John W. Davis, Oxford University Press, New York (1973), p. 108.