Freeman-Walter-Abele Test
Encyclopedia
Freeman-Walter-Abele is an outdated judicial test in United States
patent
law. It came from decisions concerning software patents. It was used to determine if mathematical principles or algorithms were patentable subject matter. The Court of Customs and Patent Appeals introduced and refined these test under the constraint that the U.S. Supreme Court found algorithms unpatentable. The aim was to allow claims that do not attempt to monopolize traditionally unpatentable subject matter, such as, mathematics, thinking, and laws of nature. Though primarily concerned with mathematical algorithms the test has some applicability in all subject matter discussions. Its use faded between 1992 and 1999 with In re Bilski
and was dead by 2008. See In re Freeman, 573 F.2d 1237 (C.C.P.A. 1978); In re Walter, 618 F.2d 758 (C.C.P.A. 1980); In re Abele, 684 F.2d 902 (C.C.P.A. 1982).
and Flook
“no amount of post-solution activity will render the claim statutory; nor is it saved by a preamble merely reciting the field of use of the mathematical algorithm.” Finally the test was defined in Abele algorithms “applied in any manner to physical elements or process steps” were patentable. However, caveats that field of use or non essential post processing activity remained.
within the meaning of Benson
. Second, determining whether the algorithm is “applied in any manner to physical elements or process steps” per In re Abele.
with In re Alappat it was no longer necessary to include physical elements in the invention the presence of programmed general-purpose computer was enough. However, the result became important. If mathematical algorithm produced "useful, concrete and tangible result" it was statutory subject matter.
The test was further modified by the Federal Circuit Court in AT&T Corp. v. Excel Communications, Inc.
and other similar cases to no longer require physical elements.
The test was repudiated in State Street Bank described as having "little, if any, applicability to determining the presence of statutory Subject matter." However, it continued to have use in the patent office who viewed it as much the same as the “practical application” and “useful, concrete and tangible results” tests. One noted issue with the test is that it dissects the claims into elements instead of analyzing the claims as a whole as required by Supreme Court precedent.
. It was noted that some patentable subject matter can fail the test. The CFAC
called the test inadequate. It voided the effect of the portions of decisions relying solely on the test. These include In re Abele, Meyer, In re Grams, and Arrhythmia Research Technology v. Corazonix Corp. However, some portions of those decisions survived Bilski, such as the portion of In re Abele concerning data representations of physical objects or substances.
United States
The United States of America is a federal constitutional republic comprising fifty states and a federal district...
patent
Patent
A patent is a form of intellectual property. It consists of a set of exclusive rights granted by a sovereign state to an inventor or their assignee for a limited period of time in exchange for the public disclosure of an invention....
law. It came from decisions concerning software patents. It was used to determine if mathematical principles or algorithms were patentable subject matter. The Court of Customs and Patent Appeals introduced and refined these test under the constraint that the U.S. Supreme Court found algorithms unpatentable. The aim was to allow claims that do not attempt to monopolize traditionally unpatentable subject matter, such as, mathematics, thinking, and laws of nature. Though primarily concerned with mathematical algorithms the test has some applicability in all subject matter discussions. Its use faded between 1992 and 1999 with In re Bilski
In re Bilski
In re Bilski, 545 F.3d 943, 88 U.S.P.Q.2d 1385 , was an en banc decision of the United States Court of Appeals for the Federal Circuit on the patenting of method claims, particularly business methods. The Federal Circuit court affirmed the rejection of the patent claims involving a method of...
and was dead by 2008. See In re Freeman, 573 F.2d 1237 (C.C.P.A. 1978); In re Walter, 618 F.2d 758 (C.C.P.A. 1980); In re Abele, 684 F.2d 902 (C.C.P.A. 1982).
Development from Freeman test
Freeman test: "It is first determined whether a mathematical algorithm is recited directly or indirectly in the claim. If so, it is next determined whether the claimed invention as a whole is no more than the algorithm itself; that is, whether the claim is directed to a mathematical algorithm that is not applied to or limited by physical elements or process steps." In Freeman this was a controlling computer. These physical elements were seen as part of apparatus claims while refinements and limits were to be present in process steps. With Walter the test was modified to be consistent with BensonGottschalk v. Benson
Gottschalk v. Benson, was a United States Supreme Court case in which the Court ruled that a process claim directed to a numerical algorithm, as such, was not patentable because "the patent would wholly pre-empt the mathematical formula and in practical effect would be a patent on the algorithm...
and Flook
Parker v. Flook
Parker v. Flook, was a 1978 United States Supreme Court decision that ruled that an invention that departs from the prior art only in its use of a mathematical algorithm is patent-eligible only if the implementation is novel and unobvious. The algorithm itself must be considered as if it were part...
“no amount of post-solution activity will render the claim statutory; nor is it saved by a preamble merely reciting the field of use of the mathematical algorithm.” Finally the test was defined in Abele algorithms “applied in any manner to physical elements or process steps” were patentable. However, caveats that field of use or non essential post processing activity remained.
Final Freeman-Walter-Abele test
The final test has two parts. First, determining whether the claim recites an algorithmAlgorithm
In mathematics and computer science, an algorithm is an effective method expressed as a finite list of well-defined instructions for calculating a function. Algorithms are used for calculation, data processing, and automated reasoning...
within the meaning of Benson
Gottschalk v. Benson
Gottschalk v. Benson, was a United States Supreme Court case in which the Court ruled that a process claim directed to a numerical algorithm, as such, was not patentable because "the patent would wholly pre-empt the mathematical formula and in practical effect would be a patent on the algorithm...
. Second, determining whether the algorithm is “applied in any manner to physical elements or process steps” per In re Abele.
Decline
This test was largely done away with by the Court of Appeals for the Federal CircuitUnited States Court of Appeals for the Federal Circuit
-Vacancies and pending nominations:-List of former judges:-Chief judges:Notwithstanding the foregoing, when the court was initially created, Congress had to resolve which chief judge of the predecessor courts would become the first chief judge...
with In re Alappat it was no longer necessary to include physical elements in the invention the presence of programmed general-purpose computer was enough. However, the result became important. If mathematical algorithm produced "useful, concrete and tangible result" it was statutory subject matter.
The test was further modified by the Federal Circuit Court in AT&T Corp. v. Excel Communications, Inc.
AT&T Corp. v. Excel Communications, Inc.
AT&T Corp. v. Excel Communications, Inc., 172 F.3d 1352 was a case in which the United States Court of Appeals for the Federal Circuit reversed the decision of the United States District Court for the District of Delaware, which had granted summary judgment to Excel Communications, Inc....
and other similar cases to no longer require physical elements.
The test was repudiated in State Street Bank described as having "little, if any, applicability to determining the presence of statutory Subject matter." However, it continued to have use in the patent office who viewed it as much the same as the “practical application” and “useful, concrete and tangible results” tests. One noted issue with the test is that it dissects the claims into elements instead of analyzing the claims as a whole as required by Supreme Court precedent.
Death
The test appears dead with In re BilskiIn re Bilski
In re Bilski, 545 F.3d 943, 88 U.S.P.Q.2d 1385 , was an en banc decision of the United States Court of Appeals for the Federal Circuit on the patenting of method claims, particularly business methods. The Federal Circuit court affirmed the rejection of the patent claims involving a method of...
. It was noted that some patentable subject matter can fail the test. The CFAC
United States Court of Appeals for the Federal Circuit
-Vacancies and pending nominations:-List of former judges:-Chief judges:Notwithstanding the foregoing, when the court was initially created, Congress had to resolve which chief judge of the predecessor courts would become the first chief judge...
called the test inadequate. It voided the effect of the portions of decisions relying solely on the test. These include In re Abele, Meyer, In re Grams, and Arrhythmia Research Technology v. Corazonix Corp. However, some portions of those decisions survived Bilski, such as the portion of In re Abele concerning data representations of physical objects or substances.
See also
- Software patents under United States patent lawSoftware patents under United States patent lawSoftware or computer programs are not explicitly mentioned in United States patent law. In the face of new technologies, decisions of the United States Supreme Court and United States Court of Appeals for the Federal Circuit in the latter part of the 20th century sought to redefine the boundary...
- Diamond v. DiehrDiamond v. DiehrDiamond v. Diehr, , was a 1981 U.S. Supreme Court decision which held that the execution of a physical process, controlled by running a computer program was patentable...
- Gottschalk v.BensonGottschalk v. BensonGottschalk v. Benson, was a United States Supreme Court case in which the Court ruled that a process claim directed to a numerical algorithm, as such, was not patentable because "the patent would wholly pre-empt the mathematical formula and in practical effect would be a patent on the algorithm...
- Parker v. FlookParker v. FlookParker v. Flook, was a 1978 United States Supreme Court decision that ruled that an invention that departs from the prior art only in its use of a mathematical algorithm is patent-eligible only if the implementation is novel and unobvious. The algorithm itself must be considered as if it were part...
- State Street Bank v. Signature Financial Group
- In re Abele
- In re BilskiIn re BilskiIn re Bilski, 545 F.3d 943, 88 U.S.P.Q.2d 1385 , was an en banc decision of the United States Court of Appeals for the Federal Circuit on the patenting of method claims, particularly business methods. The Federal Circuit court affirmed the rejection of the patent claims involving a method of...