Re-Emergence of Mental Steps Doctrine


Computer implemented inventions are not abstract ideas within the scope of Alice decision as the PTO and lower courts have tend to believe. It has been a literal carnage by the administrative and judicial bodies on patents that even partially refers to computer implementation of the claimed invention in the description. PTO and the courts have re-introduced the mental steps doctrine in order to justify the abstract nature of such inventions claiming the use of a computer in the implementation of invention. Per them, anything that can be implemented via pen and paper involving mental faculty is an abstract idea. To that end, they have gone on to re-interpret the doctrine from “intended to be” implemented to “can be” implemented mentally.

Mental Steps Doctrine?? What’s that! Before diving further in, lets understand what the fateful doctrine was originally supposed to mean. The mental steps doctrine reads that any inventions that “can be performed in the human mind, or by a human using a pen and paper” is not worthy of patent protection. The first instance of application of this doctrine can be seen in In re Heritage wherein the claims were directed to a method of “producing a porous coated fibre board” that included coating samples with varying amounts of material, testing them for sound reduction coefficient, selecting a specimen within the range of coefficients, and using the amount of material applied to the selected specimen as the criterion for further coatings. There was no disclosure of any apparatus or machine used to make the said selection.  In fact, all of these steps had to be carried out by a person using his subjective judgment.

However, this doctrine has now be extended to sweeping breadths encompassing digital image processing, communication networks, text mining and even to oil well drilling . How did this happen?? Again, this requires a historical backdrop.

Prior to the information age, a “computer” was not a machine at all; rather, it was a job title: “a person employed to make calculations.” Even the Oxford English Dictionary mentions as such. Those meanings conveniently illustrate the interchangeability of certain mental processes and basic digital computation. As per the highest court in In re Benson, this helps explain why the use of a computer in an otherwise patent-ineligible process for no more than its most basic function—making calculations or computations—fails to circumvent the prohibition against patenting abstract ideas and mental processes.

The court relied upon a work by Understanding Digital Computers (1964) by Ronald Benrey for deciding whether the work performed by computers were merely mental processes. The book recited that a digital computer solves a problem by actually doing arithmetic in much the same way a person would by hand.  

I fail to understand how court could have relied on this work, which was written for introducing fascinating computers to general people, for abstracting the tremendous computational capabilities of this digital machine to a human mind. The court failed to read the other definition in the same dictionary which defines computer as “An electronic device for storing and processing data, typically in binary form, according to instructions given to it in a variable program”. Even with respect to the relied upon work, author Ronald Benrey explains in his introduction to UDC, in 1964

“advances in electronic digital computer technology [had] made possible many spectacular scientific achievements that would have seemed like ‘science fiction’ three or four decades ago,” and computers were “generally pictured as incredibly complex electronic machines, aglow with flashing lights.”

The digital operations of a computer are not “interchangeable” with the mental process of a human. Mere fact that both can be described in a similar way does not make them the same. If the programmed operations of a computer are interchangeable with the mental processes of a human, then so too are the mechanical operations of an adding machine, since these operations can likewise be described as the “identical procedures” performed by a human mind. Certainly, this result is not correct, and thereby negating the “interchangeability” premise taken by anti-software advocacy groups.

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