In re Bergy

Introduction

These appeals are from decisions of the Board of Appeals (board) of the United States Patent and Trademark Office (PTO) under 35 U.S.C. § 141 by dissatisfied applicants for patents. We reverse.

These two cases come before us for the second time under the circumstances hereinafter detailed. Since our first decisions, they have been to the United States Supreme Court and back without any decision by that Court. They are separate appeals, not formally consolidated, but on this second round they were heard together on November 6, 1978, • and are now decided together because, as will appear, they involve only the same single question of law.

The question before us is a limited one of statutory construction, not whether appellants have made and disclosed patentable inventions. The PTO has already determined that both applicants are entitled to patents; in technical patent law terms, un-appealed claims to their respective inventions have been allowed to each'appellant and, whatever the final disposition of these appeals, patents will issue if the applicants choose to pay their fees and take them out. Thus, there is no question of this court having “extended the scope of the patent laws” as the Bergy petition for certiorari asserted (p. 6). Deciding, a case of first impression is not necessarily an “extension” of the law, it is a determination of what it means.

The real question before us is whether appellants are to be allowed to define their inventions — already determined to be patentable — in a certain way in “claims” pursuant to 35 U.S.C. § 112, second paragraph.1 This question, which is the same in each case, involves the construction and application of 35 U.S.C. § 101, more particularly the meaning to be given to the words “man*956ufacture” and “composition of matter” in that section, which reads:

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. [Emphasis ours.]

The PTO has raised no issue in either case, as to any aspect of the inventions, about compliance with the “conditions and requirements of this title,” that is to say the basic Title 35 requirements for patentability, which are utility, novelty, and nonobvi-ousness (35 U.S.C. §§ 101, 102, and 103), or any other statutory condition or requirement such as adequacy of disclosure (35 U.S.C. § 112, first paragraph). The sole issue, as the PTO chooses to view it, is whether an invention, otherwise patentable under the statute, is excluded from the categories of, subject matter which may be patented, set forth in § 101, because it is “alive.” As we shall show, the PTO does not appear to us to have been altogether consistent in its position on this question. First, however, we review the history of this litigation to show the posture of the cases as they are now before us again.

Procedural Background

In re Bergy, 563 F.2d 1031,195 USPQ 344 (Oust. & Pat.App.1977), vacated sub nom. Parker v. Bergy, 438 U.S. 902, 98 S.Ct. 3119, 57 L.Ed.2d 1145 (June 26, 1978), 198 USPQ 257 (1978), hereinafter “Bergy,” was decided by us October 6, 1977. We reversed a 2-to-l decision of the board, 197 USPQ 78 (Bd.App.1976), which affirmed the final rejection by the PTO examiner of claim 5 of Bergy’s application for patent serial No. 477,766, filed June 10, 1974.

The real party in interest in Bergy is the assignee of the application, The Upjohn Company, Kalamazoo, Michigan.

In re Chakrabarty, 571 F.2d 40, 197 USPQ 72 (Cust. & Pat.App.), cert. dismissed, - U.S. -, 99 S.Ct. 44, 58 L.Ed.2d 94 (1978), hereinafter “Chakrabarty,” was decided by us March 2, 1978. We reversed the decision of the board (unreported) which affirmed the final rejection by the PTO examiner of claims 7 — 9, 13, 15, 17, 21, and 24-26 of Chakrabarty’s application for patent serial No. 260,563, filed June 7, 1972.

The real party in interest in Chakrabarty is the assignee of the application, General Electric Company.

In the PTO, Chakrabarty was the first of the two cases to be decided, the decision of the board being dated May 20, 1976. An entirely different panel of the board decided Bergy on June 22, 1976, one member dissenting with an extensive opinion. A long passage of the Chakrabarty board opinion was copied verbatim by the Bergy board majority. Due to delay caused by a request for reconsideration in the PTO in Chakrabarty, the Bergy appeal was the first to reach this court.

Having decided the sole question involved in Bergy, by our opinion dated October 6, 1977, wfien the identical question was presented to us in Chakrabarty in December of that year, we decided it on the basis of our Bergy decision as a controlling precedent in this court. Our opinion in Chakra-barty was published March 2, 1978.

On April 20, 1978, a petition for a writ of certiorari in Bergy was filed in the Supreme Court by the Solicitor General on behalf of Lutrelle F. Parker, Acting Commissioner of Patents and Trademarks. The Court granted the petition June 26, 1978, and on the same day issued the following order:

THIS CAUSE having been submitted on the petition for writ of certiorari and response thereto,

ON CONSIDERATION WHEREOF, it is ordered and adjudged by this Court that the judgment of the United States Court of Customs and Patent Appeals in this cause is vacated; and that this cause is remanded to the United States Court of Customs and Patent Appeals for further consideration in light of Parker v. Flook, 437 U.S. 584 [98 S.Ct. 2522, 57 L.Ed.2d 451] (1978). [198 USPQ 193.]

*957Parker v. Flook, 437 U.S. 584, 98 S.Ct. 2522, 57 L.Ed.2d 451, 198 USPQ 193 (1978), hereinafter “Flook ”, was a case from this court (In re Flook, 559 F.2d 21,195 USPQ 9 (Cust. & Pat.App.1977), reversed sub nom. Parker v. Flook, supra), involving a computerized method of updating alarm limits by application of a mathematical formula. It was decided by the Supreme Court, three Justices dissenting, on June 22, 1978, four days before the date of the foregoing order in Bergy.

Meanwhile, in Chakrabarty, an extension of time to file a petition for a writ of certiorari requested by the Solicitor General had been granted by the Chief Justice on May 26,1978, extending the time to July 30, 1978. The petition, No. 78-145, was filed on July 26, 1978.

August 3, 1978, the Commissioner of Patents and Trademarks, by his solicitor, petitioned this court to vacate its decision in Chakrabarty, recall its mandate, and enter a new decision affirming the PTO board in view of the Supreme Court’s order in Ber-gy. The solicitor argued that the action taken in Parker v. Flook showed that our decision in Chakrabarty “was demonstrably wrong.” Chakrabarty, on August 11, opposed the petition, pointing out that in the Supreme Court’s order in Bergy “there is no hint that this Court’s decisions in Bergy and Chakrabarty were ‘demonstrably wrong’.” We granted the petition to the extent of vacating our judgment.

Perceiving the foregoing situation and being mindful of the similarities as well as the differences of the Bergy and Chakra-barty cases and of the fact they involved the same single issue, we issued orders in Bergy on August 8 and in Chakrabarty on August 11, 1978, restoring both cases to the calendar, setting times for filing supplementary briefs directed solely to the effect, if any, of Parker v. Flook on our decisions, and setting the cases for hearing together on November 6, 1978.

Counsel for Chakrabarty and the Solicitor General then stipulated, pursuant to Rule 60(1) of the Supreme Court, that Chakra-barty’s petition for a writ of certiorari be dismissed in view of this court’s order vacating our judgment and recalling our mandate, and the petition was so dismissed on August 25, 1978.

Prior to the oral argument, this court received amicus curiae briefs on behalf of The Regents of the University of California, The American Patent Law Association, Genentech, Inc. (a California Corporation located in South San Francisco), and Cornell D. Cornish, patent attorney, on behalf of himself and the Village of Belle Terre, Long Island, New York.

The Genentech brief, furthermore, called to our attention three resolutions, Nos. 30-32, adopted by the Section of Patent, Trademark and Copyright Law of the American Bar Association at its August 1978 Annual meeting directed to the issue in these appeals and supportive of our prior decisions herein. (1978 Summary of Proceedings, Section of Patent, Trademark and Copyright Law, A.B.A. 31.)

Appellants in both cases and the PTO appeared by counsel on November 6, 1978, and presented oral argument, whereupon the appeals were resubmitted for new decisions.

Present Posture of the Cases Summarized

In Bergy our judgment of October 6, 1977, was vacated by the Supreme Court on certiorari and we were directed to reconsider the case in the light of Flook. In Chak-rabarty, because the identical issue was involved, we vacated our own March 2, 1978, decision at the request of the PTO because it was obviously necessary to give it the same reconsideration. We therefore approach both cases with the slate wiped clean, having been “returned to square one,” to use a board game expression. Whatever we have to say in these cases is said here, though much of it was said before, and our prior opinions are to be deemed withdrawn. While certiorari was granted in Bergy, that case was returned to us without having been briefed or argued before the Supreme Court, on the very day that certiorari was granted, at the end of the Court’s term, and within four days of *958the decision in Flook, to be reconsidered by us in the light of the High Court’s opinion in Flook. The Court gave no intimation of what bearing it thought Flook has on the single issue in these appeals, except as it may be gleaned from the Flook opinion.

Clearly, our assigned task is first to determine the bearing of Flook, if any, on these two appeals. This requires, as we see it, consideration not only of what was decided in Flook but examination of everything that was said in the opinion. Preliminary to that consideration, however, and laying the groundwork therefor, we will examine the Constitutional basis for the patent system and the anatomy of the statutes Congress has enacted insofar as they are relevant to the problem before us.

The Constitution

The grant of power to Congress to establish a patent system is in these familiar words of Article I, section 8, clauses 8 and 18:

[The Congress shall have Power] * * [8] To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries; * * * [And]

[18] To make all Laws which shall be necessary and proper for carrying into Execution the foregoing Powers * *.

Scholars who have studied this provision, its origins, and its subsequent history, have, from time to time, pointed out that it is really two grants of power rolled into one; first, to establish a copyright system and, second, to establish a patent system. See R. DeWolf, An Outline of Copyright Law 15 (1925); K. Lutz, Patents and Science. A Clarification of the Patent Clause of the Constitution, 18 Geo.Wash.L.Rev. 50 (1949); P. Federico, Commentary on the New Patent Act, 35 U.S.C.A. § 1 to § 110, 1, 3 (1954); G. Rich, Principles of Patentability, 28 Geo.Wash.L.Rev. 393 (1960). Their conclusions have been that the constitutionally-stated purpose of granting patent rights to inventors for their discoveries is the promotion of progress in the “useful Arts,” rather than in science. In enacting the 1952 Patent Act, both houses of Congress adopted in their reports this construction of the Constitution in identical words, as follows:

The background, the balanced construction, and the usage current then and later, indicate that the constitutional provision is really two provisions merged into one. The purpose of the first provision is to promote the progress of science by securing for limited times to authors the exclusive right to their writings, the word “science” in this connection having the meaning of knowledge in general, which is one of its meanings today. The other provision is that Congress has the power to promote the progress of useful arts by securing for limited times to inventors the exclusive right to their discoveries. The first patent law and all patent laws up to a much later period were entitled “Acts to promote the progress of useful arts.” [H.R.Rep.No.1923, 82d Cong., 2d Sess. 4 (1952); S.Rep.No.1979, 82d Cong., 2d Sess. 3 (1952), U.S.Code Cong. & Admin.News 1952, pp. 2394, 2396. Emphasis ours.]

It is to be observed that the Constitutional clause under consideration neither gave to nor preserved in inventors (or authors) any rights and set no standards for the patentability2 of individual inventions; it merely empowered Congress, if it elected to *959do so, to secure to inventors an “exclusive right”3 for an unstated “limited” time for the stated purpose of promoting useful arts. We have previously pointed out that the present day equivalent of the term “useful arts” employed by the Founding Fathers is “technological arts.” In re Musgrave, 431 F.2d 882, 893, 57 CCPA 1352, 1367, 167 USPQ 280, 289-90 (1970). See also In re Waldbaum, 457 F.2d 997, 59 CCPA 940, 173 USPQ 430 (1972) (Rich, J., concurring).

We turn now to a consideration of how Congress has implemented the power delegated to it.

Anatomy of the Patent Statute

The reason for our consideration of the statutory scheme in relation to its Constitutional purpose is that we have been directed to review our prior decisions in the light of Flook and we find in Flook an unfortunate and apparently unconscious, though clear, commingling of distinct statutory provisions which are conceptually unrelated, namely, those pertaining to the categories of inventions in § 101 which may be patentable and to the conditions for patentability demanded by the statute for inventions within the statutory categories, particularly the nonob-viousness condition of § 103. The confusion creeps in through such phrases as “eligible for patent protection,” “patentable process,” “new and useful,” “inventive application,” “inventive concept,” and “patentable invention.” The last-mentioned term is perhaps one of the most difficult to deal with unless it is used exclusively with reference to an invention which complies with every condition of the patent statutes so that a valid patent may be issued on it.

The problem of accurate, unambiguous expression is exacerbated by the fact that prior to the Patent Act of 1952 the words “invention,” “inventive,” and “invent” had distinct legal implications related to the concept of patentability which they have not had for the past quarter century. Prior to 1952, and for sometime thereafter, they were used by courts as imputing patentability. Statements in the older cases must be handled with care lest the terms used in their reasoning clash with the reformed terminology of the present statute; lack of meticulous care may lead to distorted legal conclusions.

The transition made in 1952 was with respect to the old term “invention,” imputing patentability, which term was replaced by a new statutory provision, § 103, requiring nonobviousness, as is well explained and approved in Graham v. John Deere Co., supra n. 2. Part IV of that opinion, entitled “The 1952 Act,” quotes the key sections of the statute upon which patentability depends. Graham states that there are three explicit conditions, novelty, utility, and non-obviousness, which is true, but there is a fourth requirement, which alone, is involved here. This was also the sole requirement involved in Flook.

The Revised Statutes of 1874, which contained the primary patent statutes revised and codified in 1952, lumped most of the conditions for patentability in a single section, § 4886, as did all of the prior statutes back to the first one of 1790. The 1952 Act divided that statute up into its logical components and added the nonobviousness requirement, which until then had been imposed only by court decisions. This attempt *960at a clearcut statement to replace what had been a hodgepodge of separate enactments resulted in a new and official Title 35 in the United States Code with three main divisions. Part I pertains to the establishment and organization of the PTO. Part II, here involved, covers patentability of inventions and the grant of patents. Part III relates to issued patents and the protection of the rights conferred by them.

All of the statutory law relevant to the present cases is found in four of the five sections in Chapter 10, the first chapter of Part II:

Sec. 100 Definitions

Sec. 101 Inventions patentable [if they qualify]

Sec. 102 Conditions for patentability; novelty and loss of right to patent

Sec. 103 Conditions for patentability; non-obvious subject matter

More strictly speaking, these cases involve only § 101, as did Flook. Achieving the ultimate goal of a patent under those statutory provisions involves, to use an analogy, having the separate keys to open in succession the three doors of sections 101,102, and 103, the last two guarding the public interest by assuring that patents are not granted which would take from the public that which it already enjoys (matters already within its knowledge whether in actual use or not) or potentially enjoys by reason of obviousness from knowledge which it already has.

Inventors of patentable inventions, as a class, are those who bridge the chasm between the known and the obvious on the one side and that which promotes progress in useful arts or technology on the other.

The first door which must be opened on the difficult path to patentability is § 101 (augmented by the § 100 definitions), quoted supra p. 956.4 The person approaching that door is an inventor, whether his invention is patentable or not. There is always an inventor;' being an inventor might be regarded as a preliminary legal requirement, for if he has not invented something, if he comes with something he knows was invented by someone else, he has no right even to approach the door. Thus, section 101 begins with the words “Whoever invents or discovers,” and since 1790 the patent statutes have always said substantially that. Being an inventor or having an invention, however, is no guarantee of opening even the first door. What kind of an invention or discovery is it? In dealing with the question of kind, as distinguished from the qualitative conditions which make the invention patentable, § 101 is broad and general; its language is: “any * * * process, machine, manufacture, or composition of matter, or any * * * improvement thereof.” Section 100(b) further expands “process” to include “art or method, and * * * a new use of a known process, machine, manufacture, composition of matter, or material.” If the invention, as the inventor defines it in his claims (pursuant to § 112, second paragraph), falls into any one of...the named categories, he is allowed to pass through to the second door, which is § 102; “novelty and loss of right to patent” is the sign on it. Notwithstanding the words “new and useful” in § 101, the invention is not examined under that statute for novelty because that is not the statutory scheme of things or the long-established administrative practice.

Section 101 states three requirements: novelty, utility, and statutory subject matter. The understanding that these three requirements are separate and distinct is long-standing and has been universally accepted. The text writers are all in accord and treat these requirements under separate chapters and headings. See, e. g., Curtis’s Law of Patents, Chapters I and II (1873); 1 Robinson on Patents §§ 69-70 at 105 — 109 (1890); 1 Rogers on Patents (1914); Revise & Caesar, Patentability and Validity, Chapters II, III, IV (1936); Deller’s Walker on Patents, Chapters II, IV, V (1964). Thus, the questions of whether a *961particular invention is novel or useful are questions wholly apart from whether the invention falls into a category of statutory subject matter. Of the three requirements stated in § 101, only two, utility and statutory subject matter, are applied under § 101. As we shall show, in 1952 Congress voiced its intent to consider the novelty of an invention under § 102 where it is first made clear what the statute means by “new”, notwithstanding the fact that this requirement is first named in § 101.

The PTO, in administering the patent laws, has, for the most part, consistently applied § 102 in making rejections for lack of novelty. To provide the option of making such a rejection under either § 101 or § 102 is confusing and therefore bad law. Our research has disclosed only two instances in which rejections for lack of novelty were made by the PTO under § 101, In re Bergstrom, 427 F.2d 1394, 57 CCPA 1240, 166 USPQ 256 (1970); In re Seaborg, 328 F.2d 996, 51 CCPA 1109, 140 USPQ 662 (1964). In In re Bergstrom we in effect treated the rejection as if it had been made under § 102, observing in the process that “The word ‘new’ in § 101 is defined and is to be construed in accordance with the provisions of § 102.” 427 F.2d at 1401, 57 CCPA at 1249, 166 USPQ at 262.

When § 101 was enacted, the accompanying Reviser’s Note stated (inserts and emphasis ours):

The corresponding section of the existing statute [R.S. § 4886] is split into two sections, section 101 relating to the subject matter for which patents may be obtained [“subject to the conditions and requirements of this title”], and section 102 defining statutory novelty and stating other conditions for patentability.

H.R.Rep. No. 1923, supra at 6, U.S.Code Cong. & Admin.News 1952, p. 2409, another contemporaneous document, states (emphasis ours):

Part II relates to patentability of inventions and the grant of patents.

Referring first to section 101, this section specifies the type of material which can be the subject matter of a patent. * * * * * *

Section 101 sets forth the subject matter that can be patented “subject to the conditions and requirements of this title.” The conditions under which a patent may be obtained follow, and section 102 covers the conditions relating to novelty.

A person may have “invented” a machine or a manufacture, which may include anything under the sun that is made by man, but it is not necessarily patentable under section 101 unless the conditions of the title are fulfilled.

Section 102 in paragraphs (a), (b), and (c) repeats the conditions in the existing law relating to novelty.

The Senate report, No. 1979, makes the identical statement.

The second door then, as we have already seen, is § 102 pursuant to which the inventor’s claims are examined for novelty, requiring, for the first time in the examination process, comparison with the prior art which, up to this point, has therefore been irrelevant.

Section 102 also contains other conditions under the heading “loss of right” which need not be considered here. An invention may be in a statutory category and not patentable for want of novelty, or it may be novel and still not be patentable because it must meet yet another condition existing in the law since 1850 when Hotchkiss v. Greenwood, 11 How. 248, 13 L.Ed. 683, was decided. This condition developed in the ensuing century into the “requirement for invention.” See Graham v. John Deere Co., supra.

The third door, under the 1952 Act, is § 103 which was enacted to take the place of the requirement for “invention.” We need not examine this requirement in detail for it is not involved in the present appeals, and was not involved in Flook. It will suffice to quote what the House and Senate reports, cited supra — “signals” from Congress — say about the third requirement, from which it will be seen that, again, the claimed invention for which a patent is sought must be compared with the prior *962art. We quote H.R.Rep. No. 1923, supra at 7 U.S.Code Cong. & Admin.News 1952, p. 2399:

Section 103, for the first time in our statute, provides a condition which exists in the law and has existed for more than 100 years, but only by reason of decisions of the courts. An invention which has been made, and which is new in the sense that the same thing has not been made [or known] before, may still not be patentable if the difference between the new thing and what was known before is not considered sufficiently great to warrant a patent. That has been expressed in a large variety of ways in decisions of the courts and in writings. Section 103 states this requirement in the title [“Conditions for patentability; non-obvious subject matter”]. It refers to the difference between the subject matter sought to be patented and the prior art, meaning what was known before as described in section 102. If this difference is such that the subject matter as a whole would have been obvious at the time [the invention was made] to a person [ordinarily] skilled in the art, then the subject matter cannot be patented. [Insertions and emphasis ours.]

If the inventor holds the three different keys to the three doors, his invention (here assumed to be “useful” ) qualifies for a patent, otherwise not; but he, as inventor, must meet still other statutory requirements in the preparation and prosecution of his patent application. We need not here consider the latter because appellants have not been faulted by the PTO in their paperwork or behavior. The point not to be forgotten is that being an inventor and having made an invention is not changed by the fact that one or more or all of the conditions for patentability cannot be met. Year in and year out this court turns away the majority of the inventors who appeal here because their inventions do not qualify for patents. They remain inventions nevertheless. It is time to settle the point that the terms invent, inventor, inventive, and the like are unrelated to deciding whether the statutory requirements for patentability under the 1952 Act have been met. There is always an invention; the issues is its patentability. Terms like “inventive application” and “inventive concept” no longer have any useful place in deciding questions under the 1952 Act, notwithstanding their universal use in cases from the last century and the first half of this one. As Mr. Justice Holmes said in Towne v. Eisner, 245 U.S. 418, 425, 38 S.Ct. 158, 159, 62 L.Ed. 372 (1918), “A word * * may vary greatly in color and content according to the circumstances and the time in which it is used.” And Mr. Justice Frankfurter said in Shapiro v. United States, 335 U.S. 1, 56, 68 S.Ct. 1375,1403, 92 L.Ed. 1787 (1948), “It is the part of wisdom, particularly for judges, not to be victimized by words.”

We have observed with regret that the briefs filed by the Solicitor General for Acting Commissioner Parker in Parker v. Flook, a case which, as the Court noted, “turns entirely on the proper construction of § 101,” badly, and with a seeming sense of purpose, confuse the statutory-categories requirement of § 101 with a requirement for the existence of “invention.” This they do by basing argument on the opening words of § 101, “Whoever invents or discovers,” thereby importing into the discussion of compliance with § 101 a requirement for “invention” in a patentability sense. But there has not been a requirement for “invention” in the patentability sense in the laws since 1952 — the requirement was replaced by the § 103 requirement for nonobviousness. Graham v. John Deere Co., supra. Furthermore, when one has only compliance with § 101 to consider, the sole question, aside from utility, is whether the invention falls into a named category, not whether it is patentable. Falling into a category, does not involve considerations of novelty or nonobviousness and only those two considerations involve comparison with prior art or inquiry as to whether all or any part of the invention is or is not in, or assumed to be in, the prior art or the public domain. Prior art is irrelevant to the determination of statutory subject matter un*963der § 101. An invention can be statutory subject matter and be 100% old, devoid of any utility, or entirely obvious. This is our understanding of the statute and the basis on which we proceed to the further consideration of these appeals.

The error of the line of argument pursued in the Solicitor General’s briefs in Flook is sufficiently illustrated by quoting from the summation of that argument in the opening paragraphs of the Reply Brief for the Petitioner, pages 1 and 2 (footnotes omitted, all emphasis and bracketed material in original):

1. Respondent errs in asserting (Br. 7 — 13) that our argument confuses the standard of nonobviousness prescribed in 35 U.S.C. 103 and the requirement of statutory subject matter under 35 U.S.C. 101. As respondent recognizes, the patent examiner’s sole ground for rejection of the claims at issue was that they did not cover statutory subject matter under 35 U.S.C. 101. We do not contend that respondent’s particular algorithm for computing updated alarm-limits is not novel or is obvious within the meaning of 35 U.S.C. 102 or 103. We simply contend that the subject matter he seeks to patent is unpatentable under 35 U.S.C. 101, because it is not an “inventpon] or dis-coverfy]” within the meaning of that Section.

The plain language of Section 101 requires that the application of a mathematical algorithm involve invention or discovery for it to be patentable. It states that patents may issue only to one who “invents or discovers any * * * process, machine, manufacture, or composition of matter” (emphasis supplied). This language dates from the original Patent Act of 1790. In none of the subsequent amendments to the patent statute has Congress altered this basic requirement.

Yet respondent would have the courts ignore this explicit language and adopt a new rule that would allow patents to issue to anyone who “[applies for a patent on ] any * * * process, machine, manufacture, or composition of matter, * * * subject to the conditions and requirements of this title”. Congress could have changed the language of Section 101 to broaden the statutory standards of patentability, but it did not; indeed, respondent agrees (Br. 11) that in the 1952 Patent Act revision, Congress intended to codify the existing judicial precedents regarding the standard of pat-entability.

It is transparently clear that the above argument makes the opening words of § 101, “Whoever invents or discovers,” into a requirement for compliance with § 103, the 1952 replacement for the old requirement for “invention”; one must get through the third door in order to get past the first one! That is not the statutory scheme.5 The statement that respondent Flook was asking for a rule under which “anyone who ‘[applies for a patent on ] any * * * of the § 101 named categories should have a patent “issue” to him is subversive nonsense. There is no issuance without examination for novelty and nonob-viousness. The statement that “Congress could have changed the language of section 101 to broaden the statutory standards of patentability, but it did not” is wholly beside the point because § 101 was never intended to be a “standard of patentability”; the standards, or conditions as the statute calls them, are in § 102 and § 103. The naming of the categories of inventions that may be patented, in whatever statute appearing, has never supplied a standard. The question here, as it always has been, is: *964are the inventions claimed of a kind contemplated by Congress as possibly patentable if they turn out to be new, useful, and unobvious within the meaning of .those terms as used in the statute.

For a better understanding of the issues presented by the present appeals, one further matter should be pointed out. An “invention” in the popular sense may have many aspects in the patent law sense and, technically speaking, may really be an aggregation of closely related inventions all pertaining to the same contribution the inventor is making to the technological arts. This will later be seen to be the case with the inventions of Bergy and Chakrabarty. When that is so, the applicant is in a position to define his invention(s) in claims (technical legal definitions of the spheres of protection sought, not descriptions of the invention) which may fall into different § 101 categories. For example, an inventor may have produced a new product which is made by a new process and put to a new use. The invention is capable, therefore, of being defined or claimed as a manufacture or composition of matter, as a process for making the product, and as a process utilizing the product in some way. The PTO has procedures under which it may or may not permit claims of differing types to be prosecuted in the same patent application. In each of the cases here on appeal, the application contains claims of different types— to process and to product. In each application the process claims have been approved — stand “allowed” — only product claims being rejected and on appeal; but in each application all of the claims pertain to the same invention, considered broadly and in terms of the contribution of the inventor.

Before explaining the Bergy and Chakra-barty inventions, we shall state our understanding of the views expressed by the Supreme Court in the Flook opinion and the light shed thereby on the problems before us.

In Light of Parker v. Flook

We are redeciding these appeals, as directed, “in light of Parker v. Flook.” The parties were given the opportunity in briefs and oral argument to tell us what bearing Flook has on these appeals. As might have been foreseen, the results are not helpful.

The PTO says the fact of remand should mandate affirmance and be “taken to buttress the positions taken by the dissenting judges.” The only specific thing seized upon, as a launching pad for argument, is a rhetorical passage quoted from Deepsouth Packing Co. v. Laitram Corp., 406 U.S. 512, 531, 92 S.Ct. 1700, 32 L.Ed.2d 273 (1972), about looking for a signal from Congress before changing well-established law, a situation in no way involved here as will be discussed later. As everyone has conceded, we are dealing with appeals raising an issue of first impression in the courts, the effect on compliance with § 101 of the fact of being “alive.”

Appellants and amici collectively tell us that Flook has no bearing, that it did not deal with the issue here, that we were right the first time, and that the reason for remand is unclear. In short, we can read more for ourselves than we have been told. We have read and analyzed Flook diligently-

The only thing we see in common in these appeals and in Flook is that they all involve § 101. Flook was a review of one of the many appeals we have heard involving the general theme of the patentability of computer programs. The only way to claim a program is as a programmed “machine” or as a “process” or “method.” The Flook invention was claimed as a “process” under § 101.6 That was the second case of its *965kind from this court reviewed by the Supreme Court, the first being Gottschalk v. Benson, 409 U.S. 63,