August 23, 1891

WASHINGTON, DC

In a unanimous panel ruling, the Federal Circuit has found that the calculating machine of U.S. Patent No. 388,116 fails to meet the eligibility requirements of 35 U.S.C. § 101.  Inventor W.S. Burroughs of St. Louis described the machine as "mechanically assisting arithmetical calculations."  Particularly, it includes "one or more registers, of a series of independent keys and intervening connections constructed, arranged, and operating, as fully specified hereinafter, so as to indicate upon the register the sum of any series of numbers by the proper manipulation of the keys, and also so as to print or permanently record the final result."  But this device ran afoul of recent Federal Circuit case law regarding the so-called "abstract idea" exception to patentability.

In a challenge brought by a potential licensee, the Court was asked to review the validity of the '116 patent.  While the Court agreed with the U.S. Patent and Trademark Office's ultimate conclusion that the claimed invention was novel and non-obvious, it found that the Office did not apply the § 101 test strictly enough during prosecution.

At play was claim 1, which recites:

The combination of a series of numbered independent indicators, a series of independent keys to each indicator, connections between each of the series of keys and each indicator, said connections being arranged to insure the movement of each indicator upon the movement of any key of its series and including a series of stops to each series of keys adjustable by but independent of the keys, arranged to vary the extent of movement of the indicator according to the position of the key struck, substantially as described.

The Court began its analysis by stating that "under § 101 we first determine the focus and character of claim, including the problem that it purports to solve."  Here, the Court found that the '116 patent addresses the summing of numbers through the mathematical operation of addition.  The Court observed that such simple arithmetic functions have been performed by hand and with assistance by machines for thousands of years.  For instance, "the first abacus was introduced no later than 2700 B.C. to perform sums as well as to store partial results of more complex operations -- clearly addition had previously been performed by humans in their minds or in writing prior to that."  Thus, the Court viewed the invention as being directed to an abstract idea.  Or, in the Court's words, no more than "a longstanding principle or an idea of itself."

More specifically, the Court wrote that "the claim is directed to a fundamental concept of the sort that could be performed mentally; that is, a person, armed with paper and pencil, could perform the claimed operations."  The Court also found claim 1 to lack specificity, using result-oriented language that "recites what the inventor hopes to achieve without reciting how the inventor purports to have achieved that goal."  In particular, the arrangement of connections and the positions of the series of stops were "claimed so broadly as to encompass the mere idea of their functionality and not a specific implementation thereof."

Burroughs argued that the invention of the '116 patent was a technical improvement in that it "eliminated painstaking and error-prone manual calculations required to sum a list of numbers."  But the Court disagreed, stating that "we have held many times in the past that automating an activity previously performed manually is not in and of itself patentable, even if said automation produces a faster and more accurate result."

Moving on, the Court looked to the remaining elements of the claim to determine whether it included an inventive concept -- something significantly more than the abstract idea that constituted a practical application of that idea.  It found that the additional elements of claim 1, indicators, keys, connections, and stops, were all well-understood, routine and conventional components claimed at a high level.  The Court concluded that "considering the elements of the claim both individually and as an ordered combination, they recite no additional parts or steps that would suffice to transform the nature of the claim into a patent-eligible application."

Burroughs argued that claim 1 recited several inventive concepts that were neither previously known, nor conventional or routine.  But the Court found his position lacking, and instead reasoned that:

Mr. Burroughs argues that his invention is an improvement in tallying sums.  As we noted earlier, that is no more than an abstract notion.  Our case law makes clear that improvements that are abstract themselves do not render a claimed abstract idea eligible for patent protection.  Furthermore, since the claim at hand merely recites the achievement of a result -- a result that has previously been achieved in a similar manner for most of written history -- the Burroughs machine is not the type of invention that patent law is intended to protect.

Consequently, the Court held that '116 patent invalid under § 101, and Mr. Burroughs must return to the proverbial drawing board.

The above is a sarcastic parody; our earlier sarcastic parodies can be found here:

• "Federal Circuit Rules Public Key Cryptography Algorithm Invalid Under 35 U.S.C. § 101," July 22, 2020
• "Federal Circuit Invalidates Edison's Light Bulb Patent," October 20, 2019
• "Federal Circuit Invalidates A. G. Bell's Telegraphy Patent," September 2, 2019