Application of Zoltan TARCZYHORNOCH
397 F.2d 856, 55 C.C.P.A. 1441 (1968)
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Rule of Law:
A process or method claim that is otherwise patentable should not be rejected under the "function of the apparatus" doctrine, which held that a process claim is unpatentable if it merely describes the operation of a disclosed apparatus and cannot be performed by other means.
Facts:
- Zoltan Tarczy-Hornoch invented a method for sorting and counting electrical pulses at extremely high repetition rates (over 50 megacyles per second).
- The method utilizes a series of connected stages, where each input pulse is applied to each stage sequentially.
- When a stage accepts and counts an input pulse, it generates an "inhibit" pulse.
- This inhibit pulse is sent to all subsequent stages in substantial coincidence with the original input pulse.
- The inhibit pulse cancels the original pulse at the succeeding stages, thereby preventing the same pulse from being counted multiple times.
- If an earlier stage is unable to handle a pulse, the pulse passes to the next stage, which then counts it and sends its own inhibit pulse to the stages that follow.
Procedural Posture:
- Zoltan Tarczy-Hornoch filed a patent application for a "Pulse Sorting Apparatus and Method" in the U.S. Patent Office.
- The patent examiner allowed the claims directed to the apparatus but rejected the method claims (31-35 and 40) on the ground that they merely defined the function of the disclosed apparatus.
- Tarczy-Hornoch appealed the rejection to the Patent Office Board of Appeals.
- The Board of Appeals, as an intermediate appellate body, affirmed the examiner's rejection, stating it was bound by the controlling precedent of the Court of Customs and Patent Appeals regarding the "function of the apparatus" doctrine.
- Tarczy-Hornoch (appellant) appealed the Board's decision to the U.S. Court of Customs and Patent Appeals, the highest court for patent appeals at the time.
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Issue:
Does the long-standing "function of the apparatus" doctrine, which rejects a process claim if it merely describes the operation of a disclosed apparatus, provide a valid basis for rejecting an otherwise patentable process claim?
Opinions:
Majority - Rich, Judge
No. A process claim, if otherwise patentable, should not be rejected simply because the application discloses an apparatus that will inherently carry out the recited steps. The court traced the history of the "function of the apparatus" doctrine from early Supreme Court cases like O'Reilly v. Morse, concluding that the doctrine as applied by lower courts was historically unsound, illogical, and inequitable. The proper distinction is not whether a process can be performed by other means, but whether the claim is for a means (a series of acts or steps) versus a mere result or abstract principle. The court determined that a process is a separate and distinct patentable entity from the machine that performs it, even if the inventor has only conceived of one machine to carry out the process. Overruling its extensive precedent, the court held that denying patents on such processes is inconsistent with the goals of the patent system and unfairly risks cheating inventors of their discoveries should alternative apparatus be developed in the future.
Dissenting - Kirkpatrick, Judge
Yes. The well-established "function of the apparatus" doctrine should be upheld based on the principle of stare decisis. The dissent argued that the rule has been consistently followed for nearly seventy years without challenge from the patent bar and without intervention from Congress, which implicitly adopted the rule by not overturning it in the Patent Act of 1952. The majority failed to show a grave necessity for overturning such settled precedent. Furthermore, eliminating the rule could harm innovation by allowing an inventor to control a process itself, thereby discouraging others from inventing new and more efficient apparatus to perform that same process. The inventor is already adequately protected by the patent on their apparatus.
Analysis:
This landmark decision by the Court of Customs and Patent Appeals formally abolished the long-standing "function of the apparatus" doctrine as a valid ground for rejecting a patent claim. It established that a process is a distinct statutory class of invention that is patentable in its own right, separate from any apparatus used to perform it. This ruling significantly expanded patent protection for inventors, particularly in the mechanical and electrical arts, by ensuring that a novel method could be protected even if only one machine for its execution was known at the time of invention. The decision shifted patent examination focus from how a process is performed to whether the process itself, as a series of steps, meets the statutory requirements of novelty, utility, and non-obviousness.
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