I have the feeling that people are unlikely to read my entire brief from Bilski. Therefore I am excerpting here just the part that criticizes Gottshalk v Benson, so that people can find it more easily.
GOTTSHALK V. BENSON[X]
This seminal case in the field of patentable subject matter was decided with an opinion written by Justice Douglas. When the undersigned was first learning about patent law, she heard patent attorneys sniping rather cynically about Justice Douglas, opining that the approach of Justice Douglas towards patents was “The only valid patent is one that has not been reviewed by this court.” Perhaps attorneys did not say so in court papers, but they said so to each other.
The Benson case contains a number of statements that invite clarification or repudiation.
Anxiety about the idea of patent monopoly manifests, e.g. “The end use may (1) vary from the operation of a train to verification of drivers’ licenses to researching the law books for precedents and (2) be performed through any existing machinery or future-devised machinery or without any apparatus…” 408 U.S. at 68
Some of this language seems to contradict the opinion’s later conclusion that the algorithm had no practical application outside a digital computer.
Additionally, the anxiety expressed here about breadth of claims really has nothing to do with subject matter. If one imagines hypothetically the first inventor of the carpentry nail, for instance, such an inventor could get a patent that would cover a nail, whether that nail were to be used in constructing a house, constructing a boat, scratching the surface of a soft material, or cleaning dirt out of a crevice. This is the nature of a patent, to give the inventor broad scope of protection – and, yet, if one were to apply the reasoning of the above paragraph, one might strike down a patent on such an original mechanical device out of fear of its scope. This would defeat the whole purpose of the patent law.
Another statement in Benson is “A digital computer, as distinguished from an analog computer, is that which operates on data expressed in digits, solving a problem by doing arithmetic as a person would do it by head and hand.” 409 U.S. at 65.[xi] Perhaps some computer scientists thought this was true at the time, but experts in artificial intelligence and neurology no longer believe that computers think like people, at least when using the type of program that was at issue in this case[xii]. People may have in their heads some illusion that they are thinking the way that computers process data, but this is not at all a complete explanation of the mysterious workings of the human brain.
Another statement from Benson is:
We have, however, made clear from the start that we deal with a program only for digital computers… The mathematical formula involved here has no substantial practical application except in connection with a digital computer, which means that if the judgment below is affirmed, the patent would wholly pre-empt the mathematical formula and in practical effect would be a patent on the algorithm itself. 409 U.S. 71-72
These assertions recognize that the invention can only be practically used in a computer and then jump to the conclusion that the entire algorithm is pre-empted. This reasoning, operating in conjunction with the belief stated earlier that computers think like people, gives rise to the disturbing implication that software related inventions include human thought, “pre-empting the entire algorithm” — that if computers think like people, then a claim reading on a computer processing reads on a person thinking. Such a leap of logic would be a clear fallacy. If one starts from a premise that an airplane flies like a bird, one should not therefore conclude that a claim reading on an airplane flying would read on a bird flying.
Moreover, there remains the inconsistency between the one statement saying that the claim reads on a person and the other statement that says the reasoning is motivated by the fact that the algorithm has no substantial application outside a computer. Indeed, no art having apparently been cited, it would appear that no one was motivated to attempt this rather cumbersome representation of decimal numbers prior to the arrival of computer storage with its binary nature.
Another sub-optimal aspect of this opinion is a failure to make a distinction between two very different claims. Claim 13[xiii] could conceivably have read on a human working with head and hand. Claim 8[xiv], on the other hand, recited the use of a shift register. A shift register is a piece of electronic equipment that can only be used with other electronic equipment, such as sources of power, electronic data signals, and clock signals. A shift register absolutely and categorically cannot be used by a human’s naked hand. This is physically impossible. The failure of Benson’s insufficiently considered opinion to recognize the distinction between these two claims has given rise to much later confusion.
There seems to be a prejudice against electronic devices in both Benson and Morse. Patent attorneys, with their scientific training, have studied Newtonian mechanics[xv] together with Maxwell’s Equations[xvi] regarding electricity and magnetism in the same physics courses with the same physics professors. They have seen, in quantum mechanics, how subatomic wave/particles — surrounded mostly by empty space — cooperate to create classical mechanics, electricity, magnetism, and radiation — allowing one form of physical phenomenon to be transformed into another: matter into energy and energy into matter[xvii]. Those thus trained have no philosophical rubric with which to distinguish electrical and mechanical devices one from the other logically, rendering the distinctions between the two categories from the point of view of patentable subject matter unjustifiable.
[x] Gottshalk v. Benson, 409 U.S. 63, 172 U.S.P.Q. (BNA) 673, (1972)
[xi] The aspect of computer software that looks like mathematics, namely its source code, belies the fact that upon compilation and execution that software actually becomes a configuration of a hardware device. see e.g. “Dissent of Commissioner Hersey” to the report of the National Commission on Ne Technological Uses of Copyrighted Works” at Ch. 3 (CONTU) (1978) http://digital-law-online.info/CONTU/contu14.html.
[xii] cf M. Minski, “Why People Think Computers Can’t”, (MIT, Cambridge, 7/6/2005)) http://aleph0.clarku.edu/~jbreecher/public/2005_Can_Computers_Think/Minsky-WhyPeopleThinkComputersCant.pdf (Describing how early computer programs were quite different from human thought and how researchers are trying to make them closer); J. Bryner, “Greatest Mysteries: How Does the Brain Work?” (Live Science, Au., 2, 2007) http://www.livescience.com/strangenews/070802_gm_brain.html (explaining that scientists still do not know how the brain works, because of the complexity of neurons, so it would be difficult to conclude that binary electronic circuits such as are found in a computer actually work “like” the brain)
[xiii] “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 ‘1’;
“(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 ‘1’ is detected, adding a binary ‘1’at the (i+1)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.” 409 U.S. at 74
[xiv] “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 ‘1’ in the second position of said register,
“(3) masking out said binary ‘1’ in said second position of said register,
“(4) adding a binary ‘1’ to the first position of said register,
“(5) shifting the signals to the left by two positions,
”(6) adding a ‘1’ to said first position, and
“(7) shifting the signals to the right by at least three positions in preparation for a succeeding binary ‘1’ in the second position of said register.” 409 U.S. at 73-74
[xv] see, e.g. I. Newton, De motu corporum in gyrum (1684); I. Newton, I Newton, Philosophiae Naturalis Principia Mathematica (1687)
[xvi] In electromagnetism, Maxwell's equations are a set of four partial differential equations that describe the properties of the electric and magnetic fields and relate them to their sources, charge density and current density. These equations are used to show that light is an electromagnetic wave. Individually, the equations are known as Gauss's law, Gauss's law for magnetism, Faraday's law of induction, and Ampère's law with Maxwell's correction.
These four equations, together with the Lorentz force law are the complete set of laws of classical electromagnetism. The Lorentz force law itself was actually derived by Maxwell under the name of "Equation for Electromotive Force" and was one of an earlier set of eight Maxwell's equations. “Maxwell's equations,” http://en.wikipedia.org/wiki/Maxwell%27s_equations (18 February 2009, at 01:59)
[xvii] In the immortal prose of Albert Einstein E=mc2