dissenting, with whom
LANE, Judge, joins.Are programs for general-purpose digital computers patentable subject matter under 35 U.S.C. § 101?
Such programs are “software” in the jargon of the computer technicians. More generally, therefore, the question is: can software ever be patented? It is a question of whether it falls within the statutory classes of patentable subject matter which are recited in § 101, which mentions neither programs nor software. The reason for this lacuna is clear and not unusual; the language of § 101 was developed long before computer technology evolved. The statute was, of course, written for the future and intended to encompass future inventions in unknown technologies or “useful arts,” mentioned in Article 1, section 8 of the Constitution. See In re Waldbaum, 457 F.2d 997, 59 CCPA 940, 173 USPQ 430 (1972), in which we held a program, claimed as method, to be statutory subject matter.
The categories of patentable inventions named in § 101 are an evolution from the first patent act of 1790 where they were named as “any useful art, manufacture, engine, machine, or device, or any improvement therein.” The 19^ act changed it to “any new and useful art, machine, manufacture, or composition of matter, or any new and useful improvement on any art, machine, manufacture, or composition of matter.” The 1836 act, which established the first Patent Office, retained the identical language. The Consolidated Patent Act of 1870 (§ 24) simplified it to “any new and useful art, machine, manufacture, or composition of matter, or any new and useful improvement thereof,” language which was repeated in the Revised Statutes of 1874 (§ 4886) and which remained the same until 1952. The only change in the wording made by the Patent Act of 1952 — which was not a change in substance — was the replacing of the word “art” by the word “process” (§ 101) coupled with a new definition in § 100(b) stating: “The term ‘process’ means process, art or method, and includes a new use of - a known process, machine, manufacture, composition of matter, or material,” a mere modernization of language and a declaration of existing case law.1
It has never been otherwise than perfectly clear to those desiring patent protection on inventions which are new and useful programs for general purpose computers (software) that the only way it could be obtained would be to describe and claim (35 U.S.C. § 112) the invention as a “process” or a “machine.” Method is the equivalent of process by statutory definition; apparatus *160is the equivalent of machine by long-established custom. Webster defines apparatus as including machinery. In patent law, machine and apparatus have for over a century been interchangeable words. See Corning v. Burden, 56 U.S. 252, 267, 14 L.Ed. 683 (1853); In re Prater, 415 F.2d 1393, n. 11, 56 CCPA 1381, n. 11, 162 USPQ 541, n. 11 (1969). As I have previously said in my dissenting opinion in In re Johnston, 502 F.2d 765, 772, 183 USPQ 172, 178 (1974), given an invention which is in essence a new program for a general-purpose digital computer, a competent patent draftsman can readily define the invention as either a process or a machine, or both. This has been demonstrated time and again by the computer program cases which have come to this court.
In the first such case, In re Prater, supra, we had both process or method and apparatus or machine claims. It was in that case that we stated an incontrovertible fact and a principle of patent law which, until recently, we have consistently since followed, to the effect that a new program makes an old computer into a new machine, as follows:
In one sense, a general-purpose digital computer may be regarded as but a storeroom of parts and/or electrical components. But once a program has been introduced, the general-purpose digital computer becomes a special-purpose digital computer (i. e., a specific electrical circuit with or without electro-mechanical components) which, along with the process by which it operates, may be patented subject, of course, to the requirements of novelty, utility, and non-obviousness. Based on the present law, we see no other reasonable conclusion. [Footnote 29. Emphasis mine.]
We applied that principle in a long line of cases that came to us as a result of the policy of the Patent Office to deny patentability to program inventions on the ground of non-statutory subject matter — and on any other ground it could find.
Finally, we came to the two software cases in which our decisions were reviewed by the Supreme Court, In re Benson, 441 F.2d 682, 58 CCPA 1134, 169 USPQ 548 (1971), rev’d., Gottschalk v. Benson, 409 U.S. 63, 93 S.Ct. 253, 34 L.Ed.2d 273, 175 USPQ 673 (1972); and In re Johnston, 502 F.2d 765, 183 USPQ 172 (1974), rev’d., Dann v. Johnston, 425 U.S. 219, 96 S.Ct. 1393, 47 L.Ed.2d 692, 189 USPQ 257 (1976). Benson involved two method claims and the sole question was whether they were directed to non-statutory subject matter. Johnston involved five apparatus claims directed to “machine systems.” Johnston sought to distinguish his case from Gottschalk v. Benson on the "ground that Benson’s claims were for process and his were for apparatus, which is no distinction at all in the computer program field because of the option the specification writer has to cast the claims in either format. Johnston persuaded a majority of this court to his point of view. I dissented on the point, saying:
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.
In the present case and in In re Noll, decided concurrently, a differently constituted majority of this court is again finding computer program inventions to be subject matter which is patentable within the contemplation of § 101, notwithstanding the Supreme Court’s Benson opinion. Clearly the reason for this is that the Benson opinion is open to different interpretations with respect to the patentability of software. That should have been obvious from the division in this court which occurred in Johnston, yet nothing was said in Dann v. Johnston to clear up the ambiguity because the Court avoided discussing the § 101 patentable subject-matter issue which was before it, preferring to reverse this court on the single ground of § 103 obviousness. The seven justices participating in the unanimous opinion said in its second paragraph:
Petitioner and respondent, as well as various amici, have presented lengthy arguments addressed to the question of the general patentability of computer pro*161grams. Cf. Gottschalk v. Benson, 409 U.S. 63, 93 S.Ct. 253, 34 L.Ed.2d 273 (1972). We find no need to treat that question in this case, however, because we conclude that in any event respondent’s system is unpatentable on grounds of obviousness. 35 U.S.C. § 103. [Emphasis mine.]
The Court did not leave the statutory subject matter question strictly alone, however, because, in reciting the background of the issues (Part II of opinion) and the decisions below, the Court thus characterized its Benson decision:
In Benson, the respondent sought to patent as a “new and useful process,” 35 U.S.C. § 101, “a method of programming a general-purpose digital computer to convert signals from binary-coded decimal form into pure binary form.” 409 U.S., at 65, 93 S.Ct. at 254, 34 L.Ed.2d at 276. As we observed, “[t]he claims were not limited to any particular art or technology, to any particular apparatus or machinery, or to any particular end use.” Id., at 64, 93 S.Ct. at 254, 34 L.Ed.2d at 275. Our limited holding, id., at 71, 93 S.Ct. at 257, 34 L.Ed.2d at 279, was that respondent’s method was not a patentable “process” as that term is defined in 35 U.S.C. § 100(b).
That brief observation adds considerably to the already existing ambiguity inherent in the Benson opinion. Does it say Benson’s two claims were held non-statutory only because they were not limited to any particular technology, apparatus, or end use?
Does the Supreme Court not regard data processing as a technology, data-processing equipment as apparatus, or the necessary conversion in such apparatus of binary-coded-decimal to pure binary signals as an end use?
The answers to these questions are very important because in the instant case, and-in In re Noll, the invention relates only to the operation of data-processing equipment (“computers”) without reference to any other “technology,” “apparatus,” or “end use.” How, then, can this case be distinguished from Benson even when the narrowest possible view of that decision is taken? Just how “limited” was the holding in Benson supposed to be? Benson’s claims were in fact limited to a method carried out in data-processing apparatus (including a “reentrant shift register,” claim 8) and to “A data processing method” (claim 13). Benson did not claim a “formula.”
In the Benson opinion, the Court states at the outset that “The question is, whether the method described and claimed is a ‘process’ within the meaning of the Patent Act.” (Sections 101 and 100(b) were quoted in a footnote to that statement.) But nowhere in the Benson opinion have I ever, after many attempts, been able to find an express answer to that question, for which reason, as more fully explained in my dissenting opinion in Johnston, supra, I have turned to the competing contentions which were presented to the Supreme Court in Benson, to its decision that we erred in holding the claims statutory, which was our only holding, and have concluded that the members of the Court participating in that decision were unanimous in holding that programs for general-purpose digital computers, at least when claimed as a “process,” are not within the meaning of that category of inventions in the statute. It is my own view that claiming as a “machine” instead of as a “process” is no distinction at all because it is merely a drafter’s choice.
My colleagues of the majority take a narrower view of Benson and arrive at an opposite result in these two new cases, as another majority did in Johnston. This, to me, signals an urgent need to settle the question of patent protection for software by higher authority than this court so that the Patent and Trademark Office, the Federal judiciary as a whole, and the data-processing industry (hardware and software both) may know what the law on software patentability is. It is a socioeconomic issue with an impact of considerable magnitude, particularly on the practical operation of the Patent and Trademark Office. It is obviously not going to be finally decided in this court. Two Commissioners (Gottschalk and Dann) have obtained review of our *162decisions in the Supreme Court and in both instances (Benson and Johnston) obtained reversals; but here we are in two more cases, three-to-two, reversing findings by the Office that program inventions are non-statutory under § 101. It seems to me like taking the problem of school segregation to court on a case-by-case basis, one school at a time.
. I make this statement as a matter of personal knowledge as one of the drafters. Many lawyers have thought the definition added new patentable subject matter but that is not so. New uses claimed in the form of process or method had long been deemed patentable by the Patent Office and the courts. See In re Waldbaum, supra.