dissenting, with whom
RICH, Judge, joins.With deference, I cannot agree with the majority opinion in either its result or the underlying reasoning supporting its result. I would affirm the decision of the board rejecting claims 2, 7, 8, 9, and 10 under section 101. Since I would affirm the section 101 rejection, I find no need to consider the propriety of the examiner’s rejection under section 112.
At the outset, I note specific portions of the record and briefs which clearly demonstrate to me that the appealed claims indeed cover programming, albeit disguised in apparatus format. The majority has already noted the amendment filed on March 10,1971, wherein appellant emphasized that complete program control distinguishes his invention from the hardwired systems of the prior art, such as the Fenimore system. In the specification, abstract of the invention, appellant states:
A computer graphics system is described which includes a programmed computer for scan converting point-specifying data into a form suitable for storage in a dot matrix format, and for controlling subsequent sequential (or other) readout and presentation of such data to a television-like scanned display device. [My emphasis.]
The specification later discloses:
[T]hat the scan conversion is performed by computer program methods thereby permitting a considerable degree of freedom in selecting system parameters * * *
In his main brief before the board, appellant stated the following:
Thus the issue is raised squarely as to whether the identification of a programmable data processor and a disclosure of a program sufficient to enable one to program the programmable data processor is sufficient to enable one to practice an invention directed to a combination of means for performing the functions of the programmable data processor.
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By way of contrast, it is well to note that applicant regards any such detailed disclosure of the logic circuity and memory of a computer conditioned by the appropriate programs to not be the best mode of practicing the claimed invention. In fact, it is well known that one of the principal purposes for which most modern programmable processes [sic] have been designed is ease of programming. Thus it is desired that it not be necessary for a programmer to understand the fundamental internal circuit details of the computer.
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Nowhere in the instant application are (non-programmed) modifications to standard programmable machines required to practice the claimed invention, i. e., applicant in the instant application has only directed that the identified computer be appropriately programmed.
Finally, appellant’s reply brief before us states:
[Appellant’s novel program is loaded and executed in the cited general purpose computer. [My emphasis.]
I agree with the board majority that the claims here on appeal are properly rejected under section 101 in light of Gottschalk v. Benson, 409 U.S. 63, 93 S.Ct. 253, 34 L.Ed.2d 273, 175 USPQ 673 (1972). In that *151case, the Supreme Court held that the method claims before it1 were directed to non-statutory subject matter under section 101. Although the opinion in Benson is subject to differing, conflicting interpretations with respect to whether it represents a general proscription on the patenting of computer programs under section 101, I conclude that it does. I draw this conclusion from the following language in Benson, 409 U.S. at 73, 93 S.Ct. at 258, 175 USPQ at 677:
If these programs are to be patentable,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 us7 indi-
The reference to “these programs” in the above quote can only be to computer programs in general as discussed in the immediately preceding paragraph of the opinion, particularly where the Court quotes from the Report of the President’s Commission on the Patent System (1966). This view is further reinforced by the Court’s reference to several articles discussing the problems associated with the patenting of computer programs in general.
Although the holding of the Court in Benson may have been narrower than the above quoted language suggests, thus perhaps relegating that quoted language to the status of dicta, nevertheless the dicta remain as an indication of the Court’s thinking in this area, which we would be well advised to heed. In this regard, I cannot agree with the majority’s reliance on terse, cryptic excerpts found in Benson and in Dann v. Johnston, 425 U.S. 219, 96 S.Ct. 1393, 47 L.Ed.2d 692, 189 USPQ 257 (1976)2 *152which allegedly undercut any broad construction of Benson. On the contrary, I believe that Benson has broad ramifications.
Having concluded that Benson represents a general proscription on the patenting of computer programs under section 101, I turn to the claims before us to see whether they fall within this proscription. As acknowledged by the majority, all claims on appeal contain, at least in part, apparatus limitations which are internal structures of the claimed computer as configured to carry out appellant’s scan conversion program. The issue, then, is whether casting program limitations in apparatus format renders Benson inapplicable to the claims on appeal. I believe not. Merely because the instant claims are in apparatus rather than method format does not, in my opinion, distinguish from Benson. Indeed, narrowly limiting Benson to method claims would permit and invite circumvention of that decision by the facile drafting device of claiming in apparatus form an idea for programming computers that would, according to my understanding of Benson, be unpatentable subject matter if claimed as a method.3 Such results would be anomalous.
The majority relies heavily upon this court’s 3-2 ruling in In re Johnston, 502 F.2d 765, 183 USPQ 172 (CCPA 1974), rev’d on other grounds, 425 U.S. 219, 96 S.Ct. 1393, 47 L.Ed.2d 692, 189 USPQ 257 (1976), which viewed record-keeping machine systems defined by apparatus claims as being statutory subject matter under section 101. Benson was there distinguished by narrowly limiting it to method claims, not applicable to the apparatus type of claims then before us:
Furthermore, the instant claims, in apparatus form, do not claim or encompass a law of nature, a mathematical formula, or an algorithm. [502 F.2d at 771, 183 USPQ at 177, emphasis in original.]
Upon careful review of Johnston, however, I am not convinced that the distinction set forth therein between method and apparatus claims is completely sound. Certainly, the distinction between method and apparatus claims developed in Johnston is open to question where an applicant has merely claimed an otherwise proscribed computer program in “means for” language. Moreover, the Court in Benson failed to draw any distinction between claim 13 (note 1, supra), which recited a method devoid of any apparatus, and claim 8 (note 1, supra), which recited a method employing a specific piece of apparatus, holding both unpatentable under section 101. Clearly, if the apparatus used in the method of Benson claim 8 did not take the invention defined therein out of a general proscription against patenting programs in whatever form claimed, then similarly the apparatus format of the claims here on appeal does not make these claims, which cover programming, claims to statutory subject matter.
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 Proprietory Interest in Computer Programs, 51 J.Pat.Off.Soc’y 135 (1969).
. Claims 8 and 13 of Benson read:
8. 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 T’ in the second position of said register,
(3) masking out said binary T’ in said second position of said register,
(4) adding a binary T’ to the first position o.f said register,
(5) shifting the signals to the left by two positions,
(6) adding a T to said first position, and
(7) shifting the signals to the right by at least three positions in preparation for a succeeding binary T in the second position of said register.
13. 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 i, beginning with the least significant binary digit position, of the most significant decimal digit representation for a binary ‘0’ or a binary T’;
(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 T is detected, adding a binary T at the (i+l)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.
Amicus briefs of 14 interested groups have been filed in this case, cate to us that considered action by the Congress is needed.
. In Benson:
It is said that the decision precludes a patent for any program servicing a computer. We do not so hold. [409 U.S. at 71, 93 S.Ct. at 257, 175 USPQ at 676.]
In Dann v. Johnston:
Our limited holding [in Benson] * * * was that respondent’s method was not a patentable “process” as that term is defined in 35 U.S.C. § 100(b). [425 U.S. at 224, 96 S.Ct. at 1396, 189 USPQ at 259. Footnote omitted.]
. I note in passing the following material quoted by the Court in Benson, which is taken from the Report of the President’s Commission on the Patent System (1966):
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. [409 U.S. at 72, 93 S.Ct. at 257, 175 USPQ at 677.]