In Re Kuriappan P. Alappat, Edward E. Averill and James G. Larsen

PAULINE NEWMAN, Circuit Judge,

concurring.

I

I join the opinion authored for the court by Judge Rich. I write separately to state additional views on the basic question of this case: that of statutory subject matter. This question has been dominant in the PTO’s administration of its responsibilities with respect to computer-related inventions. I explore this subject in the context of the statu*1569tory purposes of Title 35, and specifically the issues of 35 U.S.C. § 101 that are raised in this appeal. The Board’s historical practice of giving § 101 the narrowest possible reading — even were that ever a valid administrative policy — is out of place in a world that has become totally dependent on technology, and in which the laws governing technological innovation have direct consequences for industrial growth. Governmental timidity in the face of scientific and technologic change is not only unnecessary: it is unsupportable.

The boundary between patentable and un-patentable subject matter is not always a bright line. A good example is the function of mathematics in modern technology. Mathematics is not only a set of abstract principles, but a powerful vehicle of applied technology — just as chemistry is both a set of scientific principles and a vehicle of applied technology. The Board’s underlying error in its Alappat decision arose from failure to distinguish between abstract mathematical principles and their practical applications.

II

Phenomena of nature and abstract scientific and mathematical principles have always been excluded from the patent system. Some have justified this exclusion simply on the ground of lack of “utility”; some on the ground of lack of “novelty”; and some on the ground that laws of nature, albeit newly discovered, are the heritage of humankind. On whatever theory, the unpatentability of the principle does not defeat patentability of its practical applications. See, e.g., O’Reilly v. Morse, 56 U.S. (15 How.) 62, 14 L.Ed. 601 (1854).

Most technologic inventions involve the application of scientific principles and phenomena of nature to specific purposes. It is these purposes that are the subject matter of 35 U.S.C. § 101, and we need not decide such interesting epistemological questions as whether mathematical formulae exist in nature, or are created by mathematicians in the way that chemical compounds are created by chemists. However, the distinction between principle and practice was not observed in the Board’s decision on Mr. Alappat’s invention.

The theme underlying the Board’s rejection of the Alappat claims was that since mathematical steps were involved, and were performable by computer, Alappat was claiming a mathematical algorithm such as was held unpatentable in Gottschalk v. Benson, 409 U.S. 63, 93 S.Ct. 253, 34 L.Ed.2d 273, 175 USPQ 673 (1972).1 However, as is explained by Judge Rich, Alappat is claiming a raster-izer of an oscilloscope and similar devices of applied technology. The flaw contained in the Board’s premise as applied to Alappat was recognized in Diamond v. Diehr, 450 U.S. 175, 101 S.Ct. 1048, 67 L.Ed.2d 155, 209 USPQ 1 (1981), the Court explaining that “A claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula, computer program or digital computer.” Id. at 187,101 S.Ct. at 1057, 209 USPQ at 8.2 It is conspicuous that the Board in its opinion cited only Benson, suggesting a failure of appreciation of the evolution in Supreme Court and this court’s jurisprudence.

Alappat’s rasterizer is an electronic device for displaying a smooth waveform by selective illumination of pixels. The Alappat rast-erizer operates by performing a sequence of steps in accordance with instructions that are generated electronically. This operation requires several mathematical calculations that *1570are performed with the aid of microelectronic circuitry, and can be performed by a digital computer. The structure resides in the configuration by which the device operates, as Judge Rich has explained, and is independent of how that configuration is provided. The structure may reside in semiconductor chips and hardwired connections, or be permanently embedded in the electronic form designated read-only memory, or removably embedded in the electronic form designated random-access memory. It is not relevant to section 101 whether the structure is hardwired or programmed, machine-readable or manually performed, and indeed the means-plus-function style of claim accommodates these alternatives.

Devices that work by way of digital electronics are not excluded from the patent system simply because their mechanism of operation can be represented by mathematical formulae. The output of an electronic device or circuit may be approximated to any required degree as a mathematical function of its current state and its inputs; some devices, such as the transistor, embody remarkably elementary mathematical functions. Principles of mathematics, like principles of chemistry, are “basic tools of scientific and technological work”. Benson, 409 U.S. at 67, 93 S.Ct. at 255. Such principles are indeed the subject matter of pure science. But they are also the subject matter of applied technology.

Digital electronic devices implement mathematical manipulations of electronic signals, as chemical structures and reactions implement principles of molecular behavior. An apparatus that is configured to perform specific electronic procedures in accordance with instructions that require numerical measurements and mathematical calculations is no less statutory than any other combination of steps and components. A combination of mechanical or chemical components, structured to operate in accordance with the principles of mechanics or chemistry, does not become nonstatutory because those interactions and reactions follow basic scientific principles. Mathematics is not a monster to be struck down or out of the patent system, but simply another resource whereby technological advance is achieved. Alappat’s claim to a rasterizer that is characterized by specified electronic functions and the means of performing them no more preempts the mathematical formulae that are used to direct these functions than did Chakrabarty’s bacterium preempt genetic theory.

Ill

An inquiring and receptive attitude by the PTO to new technologies finds a mandate in the statute. The text of section 1013 has not changed since 1793, other than to change the word “art” to “process”. This simple text served the industrial revolution and the atomic age; surely it can serve modern electronics. Indeed, the First Congress anticipated that new fields of human ingenuity would be developed, for the Patent Act of 1790 stated that the written description should enable one “skilled in the art of manufacture, whereof it is a branch, or wherewith it may be nearest connected” to make and use the invention. The Act contemplated that there would be inventions for which there was no established art, by referring to the art “nearest connected”. An Act to promote the progress of the useful Arts, ch. VII, 1 Stat. 109, 110 (1789).

Old law is often adapted to new needs: “If Congress has made a choice of language which fairly brings a given situation within a statute, it is unimportant that the particular application may not have been contemplated by the legislators.” Barr v. United States, 324 U.S. 83, 90, 65 S.Ct. 522, 525, 89 L.Ed. 765 (1945). In Diamond v. Chakrabarty, 447 U.S. 303, 100 S.Ct. 2204, 65 L.Ed.2d 144, 206 USPQ 193 (1980) the Court emphasized that the patent system is available to serve all fruits of human ingenuity.

Law and public policy intertwine in embracing new fields in the scope of section 101. Patent law has nicely fostered technological *1571advance in the United States, for its principles are particularly suited to a free market system: it requires neither governmental intrusion nor federal funds to provide the incentive for industrial innovation; the innovation incentive is the direct consequence of the patent grant. I know of no major technological advance, no new industry or evolving technology, that has not participated in the patent system. It is estimated that 85-90% of the world’s technology is disclosed only in patent documents. Justice Story’s words at the threshold of our nation’s industrialization have been reinforced by experience:

Patents for inventions are now treated as a just reward to ingenious men, and as highly beneficial to the public, not only by holding out suitable encouragements to genius and talents and enterprise; but as ultimately securing to the whole community great advantages from the free communication of secrets, and processes, and machinery, which may be most important to all the great interests of society, to agriculture, to commerce and to manufactures, as well as to the cause of science and art.

Blanchard v. Sprague, 3 F.Cas. 648, 650 (C.C.D.Mass.1839). The nation was forcefully reminded of this truth when our economic leadership faltered in the 1970s. In an address before the Economic Club of Detroit, Irving S. Shapiro, Chairman, E.I. duPont de Nemours & Co., discussing “Technology’s Decline”, stated:

What seems to be missing in our country is an understanding that, no matter how much money we spend on research and development, the findings are not going to benefit the public unless there are suitable incentives to invest in commercialization. That means a chance of reasonable profits from risk taking and a chance to hold onto one’s original ideas once they are created.

XLV Vital Speeches of the Day, 360, 364 (1979). To bar such inventions as Alappat’s rasterizer from access to the patent system is to eliminate the incentive provided by this law, disserving not only technological industry, but the public benefit of improved technology. One must have a powerful reason to exclude technology from the scope of Title 35. Indeed, the importance of the patent incentive in industrial innovation was the principal factor in the formation of the Federal Circuit. It is thus appropriate constructively to apply statute, precedent, and policy to the variety of inventions that the information age has generated, and to remove the cloud on whether these inventions may participate in the benefits and obligations of the patent system..

. In Benson the invention sought to be patented was a process whereby a number expressed in binary coded decimal form was converted to the same number expressed in binary form, for use in a digital computer. The Court held that such a patent would preempt all uses of the Benson mathematical formula in digital computers, viewing the formula as a form of scientific principle.

. In Diehr the Court approved the patenting of a process for curing rubber wherein a well known mathematical equation (the Arrhenius equation) was used in a computer to calculate optimum cure time. The Court held that the presence of the mathematical algorithm did not defeat pat-entability of the overall process. In this context the CCPA and this court developed, case by case, the jurisprudence that the court now applies to Alappat’s invention. See Arrhythmia Research Technology, Inc. v. Corazonix Corp., 958 F.2d 1053, 22 USPQ2d 1033 (Fed.Cir.1992) (discussing the evolution of Supreme Court, CCPA, and Federal Circuit decisions after Benson).

. 35 U.S.C. § 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.