We have held that such programming creates a new machine, because a general purpose computer in effect becomes a special purpose computer once it is programmed to perform particular functions pursuant to instructions from program software.

Note also: A rejection under 35 USC 112,¶ 2, "cannot stand where there is adequate description in the specification to satisfy 35 USC 112, first paragraph, regarding means-plus-function recitations that are not, per se, challenged for being unclear."

As a corollary, the court reasoned that if the claim does recite structure, the claim necessarily does not "wholly preempt" an abstract idea

When a general purpose computer is programmed to carry out a specific task, such programming has been held to create a new machine

—of Customs and Patent Appeals consistently interpreted Benson to preclude the patenting of a program-related process invention only when the claims, if allowed, would wholly pre-empt the algorithm itself.

—apparatus claims were governed by the court's pre-Benson conclusion that a programmed computer was structurally different from the same computer without that particular program.

For a patent application over a claimed machine, the CCPA stuck to its pre-Benson analysis that a software/hardware combination which permitted the software to do something it could not do before was a new “machine

The instant claims, however, are drawn to physical structure and not to an abstract "mathematical formula

—distinguishing Benson on the ground that Noll's claims were limited to a particular technology (computer graphics systems and scan-conversion of graphic information

In dissent, Judge Lane, joined by Judge Rich, argued that Benson should be read as a general proscription of the patenting of computer programs regardless of the form of the claims.

[BOOK] Intangible Intangibles: Patent Law's Engagement with Dematerialised Subject …

[BOOK] Software Rights: How Patent Law Transformed Software Development in America

[BOOK] Software Rights

[BOOK] Software Law and Its Application:[Connected EBook]