Claiming a Process Rather than a Mere Principle

by Dennis Crouch

The USPTO is maintaining an updated set of “select eligibility cases” (xlsx file) that the Office sees as useful guidance for its examiners.  Of these, the only 19th Century case is Tilghman v. Proctor, 102 U.S. 707 (1881).

In Tilghman, the Supreme Court sided with the patentee — holding that that the claimed process of obtaining free fatty acids and glycerine from fatty bodies to be patent eligible.

Claim:

I claim, as of my invention, the manufacturing of fat acids and glycerine from fatty bodies by the action of water at a high temperature and pressure.

U.S. Patent No. 11,766.

 

The patent first came before the Supreme Court in 1873 in Mitchell v. Tilghman, 86 U.S. 287 (1873).  In that decision, the Supreme Court limited the claim scope to be confined to the particular method described in the specification that used very high heat (612° Fah) for a short time (10 minutes) and thus, a process operating at a lower temperature (only 400° Fah) for much longer (several hours) did not infringe.

Seven years later, the Supreme Court changed course — holding that the claim is directed to a process, “and not for any specific mechanism for carrying such process into effect.”  The court explained:

What did Tilghman discover? And what did he, in terms, claim by his patent? He discovered that fat can be dissolved into its constituent elements by the use of water alone under a high degree of heat and pressure; and he patented the process of ‘manufacturing fat acids and glycerine from fatty bodies by the action of water at a high temperature and pressure.’ Had the process been known and used before, and not been Tilghman’s invention, he could not then have claimed anything more than the  particular apparatus described in his patent; but being the inventor of the process, as we are satisfied was the fact, he was entitled to claim it in the manner he did.

Id.

At that time, the patent act did not use the term “process” but instead the word “art”, which the Supreme Court interpreted to include processes that are “usually the result of a discovery [made] irrespective of any particular form of machinery or mechanical device.”  As such, the court allowed the patent to be enforced.

In contrasting somewhat parallel language found in the “great case” of O’Reilly v. Morse, Court noted that there is a difference between a patent for a process (patentable) and a patent for a mere principle (unpatentable).

The eighth claim of Morse’s patent was held to be invalid, because it was regarded by the court as being not for a process, but for a mere principle. It amounted to this, namely, a claim of the exclusive right to the use of electro-magnetism as a motive power for making intelligible marks at a distance; that is, a claim to the exclusive use of one of the powers of nature for a particular purpose. It was not a claim of any particular machinery, nor a claim of any particular process for utilizing the power; but a claim of the power itself,—a claim put forward on the ground that the patentee was the first to discover that it could be thus employed. This claim the court held could not be sustained.

The court then contrasted Tilghman’s invention:

The claim of the [Tilghman] patent is not for a mere principle. The chemical principle or scientific fact upon which it is founded is, that the elements of neutral fat require to be severally united with an atomic equivalent of water in order to separate from each other and become free. This chemical fact was not discovered by Tilghman. He only claims to have invented a particular mode of bringing about the desired chemical union between the fatty elements and water. He does not claim every mode of accomplishing this result. . . . He only claims the process of subjecting to a high degree of heat a mixture continually kept up, of nearly equal quantities of fat and water in a convenient vessel strong enough to resist the effort of the mixture to convert itself into steam. This is most certainly a process. . . .

It is our opinion that the patent is for a process, that it is a valid patent, and that the defendants infringe it.

Id.

39 thoughts on “Claiming a Process Rather than a Mere Principle

  1. 4

    I am curious as to how Random understands the statement of the Supreme Court, particularly:

    Seven years later, the Supreme Court changed course — holding that the claim is directed to a process, “and not for any specific mechanism for carrying such process into effect.”

    This (of course) pertains to the Ladders of Abstraction (and the fact that such ladders always have more than two rungs to them).

    1. 4.1

      The silence says everything.

  2. 3

    The claim describes steps which lead to a non-obvious transformation of matter. It’s broad (and arguably not 112 worthy) but the non-obvious transformation suffices to confer eligibility.

    Note the difference between that claim and the ineligible detection claims that we occasionally see being yanked under 101. Using prior art detection methods to merely *detect* some newly discovered phenomenon raises completely different issues and those claims are correctly deemed ineligible. Of course, adding steps of determining some “meaning” for what is being detected do nothing to fix the problem, nor does the recitation of prior art steps that are obvious in the art (“administer a therapy”).

    1. 3.1

      nor does the recitation of prior art steps that are obvious in the art (“administer a therapy”).

      Soooo…

      ALL Pharma claims are ineligible according to you then, since any utility from Pharms is only a natural law (body metabolizing something) and administering anything to a human to be metabolized is clearly a prior art step that is obvious in the art.

      Or did you want to “apply” your “logic” differently for Pharma items….?

      1. 3.1.1

        Are you mentally ret @rded?

        Serious question.

        1. 3.1.1.1

          “Resurfaced video shows Trump using “ret @rded” despite denial”

          link to thehill.com

          1. 3.1.1.1.1

            “Derp derp PC is teh worst thing ever DERRP!”

            1. 3.1.1.1.1.1

              “Donald Trump on Political Correctness”

              link to nytimes.com
              —————————————————————————–

              I think the big problem this country has is being politically correct. I’ve been challenged by so many people and I don’t, frankly, have time for total political correctness. And to be honest with you, this country doesn’t have time, either.
              — Donald Trump

      2. 3.1.2

        The cr @p you wrote sounds like something written by one of know-nothing pharma industry shills over at Patent Hacks.

        “Derp Nothing is patentable any more DERP!”

        Meanwhile, patents are flowing out of the office at historic levels. Get a flipping life already.

        1. 3.1.2.1

          The “cr @p I wrote” is a direct reflection of what YOU wrote.

          You seem quite oblivious as to what you say, as if no one may deign to apply any level of thinking to your rants.

          How very Trump of you.

        2. 3.1.2.2

          … you do realize that your first paragraph at post 3 conflates three different sections of law, eh?

          Here’s an idea for you: show that you understand each section of law distinctly and avoid the “whatever” syndrome that you are so apt to fall into in your “Ends justify the Means” rants.

      3. 3.1.3

        Yup anon. There is no doubt that if the same “logic” is being applied to pharma claims as information processing claims, then all pharma claims are ineligible.

        1. 3.1.3.1

          LOL

          In fact, pretty much nobody except for a few shills and mental defects on the Internet believes that. Hi

  3. 2

    I discuss these issues a fair amount in my article America’s First Patents

    1. 2.1

      Exactly what “issues” are you referring to? The issues raised by looking back at ancient Supreme Court cases that aren’t very well written and which were written in a very different historical/legal context?

      I’m still waiting for someone to show me where the Supreme Court plainly said that logic was patentable subject matter. Or instructions for carrying out logic.

      1. 2.1.1

        I’m still waiting for someone to show me where the Supreme Court plainly said that logic was patentable subject matter. Or instructions for carrying out logic.

        You do realize that with the Separation of Powers that what you wait for is an improper application of legislating from the Bench, right?

        I mean, you do profess to be an attorney, and should know these things.

        1. 2.1.1.1

          “Derp separation of powers DERP!”

          You are a j o k e.

          1. 2.1.1.1.1

            You do your mindless Derp Dance and then Accuse Others of being a j 0ke?

            Your moniker should be changed to the smirking Trump pic.

    2. 2.2

      Michael – do you have a link?

      1. 2.2.1

        Sorry – I missed this in all the name calling. Here is the SSRN link. The whole article is worth a read (IMNSHO), but the discussion about principles starts at 1296
        link to papers.ssrn.com

  4. 1

    At that time, the patent act did not use the term “process” but instead the word “art”, which the Supreme Court interpreted to include processes that are “usually the result of a discovery [made] irrespective of any particular form of machinery or mechanical device.” As such, the court allowed the patent to be enforced.

    It is absolutely critical to note the legislative fact that the Act of 1952 expanded the prior notion of “process” as merely being “art.”

    Some have refused to see the legal terminology (or if you will permit the reference to Sun Tzu: the legal terrain) of this expansion coming from the fact that the NEW meaning of “process” includes the older meaning PLUS more (and that this “plus more” is due in fact to the fact that the Congress was reacting against a Supreme Court that had created a moniker for itself of “The only valid patent is one that has not yet appeared before us.

    Those who do not learn from history are bound to repeat it. THIS NOTE should be presented to Senator Tillis et al.

    1. 1.1

      Yeah definitely Senator Tillis will be super impressed by the Sun Tzu reference, as we all are. I would drop in a couple more all caps embellishments to seal the deal, of course.

      1. 1.1.1

        “Yeah definitely Senator Tillis will be super impressed by the Sun Tzu reference, as we all are.”

        Yeah, well, we know he spends way too much time on Wikipedia. But don’t discourage his trying to better himself. Onward and upward!

        1. 1.1.1.1

          Ah my Shifty friend reappears – and with his self-flagellating “Wikipedia” reference at that.

    2. 1.2

      “THIS NOTE should be presented to Senator Tillis et al.”

      Do you know what “et al.” means?

      1. 1.2.1

        Do you know that Tillis is not the only Senator involved with the possible resetting of eligibility law?

        Do you have any funny gifs? (That was a much better schtick for you)

        1. 1.2.1.1

          You didn’t know what cite meant. Just checking. U.S. Lawyer you want to be?

          1. 1.2.1.1.1

            More of your self-flagellating – as it was you that was not using “cite” appropriately.

            You really cannot help yourself, can you?

            1. 1.2.1.1.1.1

              You are sadly mistaken again, my snowflake friend. We know you are paid to make stuff up. But when you go off on the making things up a citation from the record (or from anywhere) every now and then would give you some semblance of credibility. But, to what end? Pays the same. So be, lazy. U.S. lawyer you want to be?

              1. 1.2.1.1.1.1.1

                Referring to yourself in the plural again, and what “you” know are most definitely YOU types of problems.

                As is the mistake that is yours – and that you attempt to project onto another. That’s nothing more than the Malcolm Accuse Others game that you seem to have picked up (in your sycophant ways).

                As for being an attorney (lazy or otherwise), we both know that you are not one (from that distinguished beatdown that you received from Dave Boundy.

                Maybe you should return to simply supplying funny gifs.

                1. “Referring to yourself in the plural again, and what “you” know are most definitely YOU types of problems.”

                  There must be an English translation for that, somewhere.

                2. The “struck a nerve” is evidenced by the person rattling off five responses.

                  Five empty responses at that.

                  Please clean up after yourself when you are done self-flagellating.

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