Contested Ontologies of Software: The Story of Gottschalk v.

Benson , 1963–1972

Gerardo Con Diaz

IEEE Annals of the History of Computing, Volume 38, Number 1, January-March

2016, pp. 23-33 (Article)

Published by IEEE Computer Society

DOI: https://doi.org/10.1353/ahc.2016.0003

For additional information about this article

https://muse.jhu.edu/article/611870

Access provided at 12 Jan 2020 05:14 GMT from University of Nebraska - Lincoln
Contested Ontologies of Software: The
Story of Gottschalk v. Benson, 1963–1972
Gerardo Con Diaz
Yale University

In 1972, the US Supreme Court ruled in Gottschalk v. Benson that a

computer program developed at Bell Laboratories was ineligible for
patent protection. This article argues that the history of Gottschalk v.
Benson turned on a series of “ontological contests”—that is, clashes
among actors who advanced mutually incompatible conceptions of the
nature of software.

Few decisions by the US Supreme Court hold
a place as prominent in the canon of patent
law as Gottschalk v. Benson (1972).1 This case
concerned the patent eligibility of an inven-
tion created by Gary Benson and Arthur Tab-
bot, two employees at Bell Laboratories who
had devised a way of using a computer to
translate numbers from one number system
to another.2 The Supreme Court ruled that
this program was ineligible for patent protec-
tion because it amounted to a series of mathe-
matical calculations. This decision marked
the first arrival of software patenting to the
Court. Forty-two years have passed since this
first contact, but Benson continues to serve as
an important precedent that informs the pat-
ent eligibility of computer programs.3
The purpose of this article is to bring Ben-
son and Tabbot’s struggle to obtain a patent
into the historiography of computing. For the
last four decades, legal scholars have studied
the legal history of Benson thoroughly, writing
hosts of works that examine the legal doc-
trines and case law that preceded the ultimate
rejection of Benson and Tabbot’s patent appli-
cation.4 Despite this plentiful scholarly atten-
tion, the case has so far remained on the
fringes of the histories of computing and of
science and technology. However, it merits
introduction into both because its history
helped to shape the administrative, legal, and
conceptual underpinnings of the relationships
between the computing industry and the law.
The journey of Benson and Tabbot’s inven-
tion from Bell Laboratories to the Supreme
Court turned on a series of what I call
“ontological contests”—that is, clashes between
attorneys and federal agents who proposed
distinct and often incompatible stances on
the nature of software. Central to these con-
tests were the historical actors’ conceptions of
the nature of software as an invention. These
conceptions, each of which I call an “ontology
of software,” were not determined by the tech-
nical specifications of any computer pro-
grams.5 Instead, they were grounded on what
attorneys and federal agents identified as the
characteristics of computer programs as inven-
tions, the distinctions between programs and
mathematical algorithms, and the relation-
ships between programs and the computers
that ran them. The unfolding of ontological
contests therefore demonstrates that software
has not been exempt from a process with
which historians of science and technology
are becoming increasingly familiar: concep-
tions about the nature of technologies have
been shaped not just by the technologies
themselves, but also by the social, political,
and cultural contexts within which they
circulate.6
In the hands of the attorneys and federal
agents who mediated between the comput-
ing industry and the patent system, computer
programs had unstable, manifold, and mutu-
ally contradictory natures. A program could
be a mathematical algorithm, a new kind of
process, or a machine in its own right. It
could be some of these things, or none of
them at all. This means that a program’s
nature was not inherent to it; it was attrib-
uted to it by patent attorneys, judges, and
officers at the US Patent Office. The resulting
ontologies of software were often mutually
contradictory, but they were connected to
one another by the problems that stood at

IEEE Annals of the History of Computing Published by the IEEE Computer Society 1058-6180/16/$33.00 c 2016 IEEE 23
 Contested Ontologies of Software: The Story of Gottschalk v. Benson, 1963–1972
their cores: determining whether software
was a machine, characterizing programming
as a practice, and assessing the differences
between running a computer program and
solving a mathematical problem.
This article illustrates ontological contests
by analyzing both the Patent Office’s policies
on software inventions in the 1960s and the
journey of Benson and Tabbot’s application
from the Patent Office to the Supreme Court.
I begin by providing an overview of the Pat-
ent Office’s policies. This overview is neces-
sary to understand how and why patent
examiners rejected applications such as Ben-
son and Tabbot’s. I then highlight the ontolo-
gies of software that attorneys and federal
agents proposed as Benson and Tabbot’s pat-
ent application travelled from the Patent
Office to the Court of Customs and Patent
Appeals (CCPA, the court to which applicants
could turn if the Patent Office issued a final
rejection). Finally, I study the industry-wide
ontological contest that unfolded when the
application reached the Supreme Court.
This argument shows how the questions
and methods in the history of intellectual
property can yield new insights into the his-
tory of computing.7 In recent years, historians
of science and technology have begun to
account for how patent agents and attorneys
developed their own analytical frameworks
with which to study the nature and patent eli-
gibility of inventions.8 These frameworks
were usually meant to distinguish between an
idea and its embodiments—that is, between
the principles that underlie a particular inven-
tion and the material artifacts and verbal
descriptions that inventors submitted with
their patent applications.9 However, some pat-
ent applications unsettle the frameworks at
play at the Patent Office and the courts, and
they sometimes become the subject of fierce
battles that can culminate at Congress or the
Supreme Court.10 In particular, Benson and
Tabbot’s application shook software patenting
to its core.
Computer Programs and
the Patent Office
The mid-1960s was a turbulent time for the
American patent system. A commission
appointed by Lyndon B. Johnson, the Presi-
dent’s Commission on the Patent System,
judged that the US Patent Office was not well
equipped to handle what they saw as the
ongoing age of “exploding technology.”11
Although the commissioners identified sev-
eral important bureaucratic and economic ail-
24 IEEE Annals of the History of Computing
ments in the patent system, they insisted that
recent efforts to secure patents for designs,
plants, and computer programs placed an
undue burden on the Patent Office.12 In par-
ticular, they ruled that programs—the “series
of instructions which control or condition the
operation of a data processing machine”—
should not be considered eligible for patents.
This recommendation was not grounded on a
legal argument, but on an administrative one.
In their view, the Patent Office was not in a
position to examine applications for software
because it lacked an appropriate classification
technique and because the “tremendous vol-
ume of prior art being generated” by software
makers meant that assessing the novelty of
computer programs could become an almost
impossible task.
The Commission also found that the prac-
tice of presenting computer programs as
machine components had “confused the
issue” and that it should not be permitted.13
This recommendation was likely intended to
ban a patent-drafting technique that in the
late 1960s became known as “embodying
software.”14 This technique dated back to the
mid-1940s, and it consisted of claiming indi-
vidual machines that functioned in accord-
ance with the programs for which inventors
sought protection. These machines received
patent protection in lieu of the program
itself. Software embodiment had spread rap-
idly during the 1950s in the hands of weap-
ons manufacturers, data-processing firms,
and industrial research laboratories. By the
mid-1960s, hardware firms had begun to
apply this technique, and software firms were
starting do the same in order to make inroads
against IBM’s market dominance.15
The commission’s recommendations
sparked a half-decade of policy reform at the
Patent Office. In 1966, the Commissioner of
Patents, Edward Brenner, issued the office’s
first set of guidelines for the examination of
computer programs. Unlike Johnson’s com-
missioners, Brenner did not intend to ban
patents on embodied software. On the con-
trary, his examiners were considering the
applications that would become the first pat-
ents for embodied software ever to be issued
to software firms.16 For this reason, Brenner
explained that software could arrive at his
doorstep in two forms. On the one hand, a
program could be protected by claiming an
apparatus—a “physical device which is asso-
ciatable with the machine and becomes part
of that machine so as to cause the total com-
bination to be capable of yielding the
result.”17 This device-centered view of com-
puter programs corresponded to software
embodiment; it would distinguish the pro-
gram from “the algorithm which the
machine is intended to solve as a result of its
functioning,” and it would allow inventors
to present their software as a patent-eligible
machine.17
On the other hand, a program could be
claimed as one of two kinds of processes. The
first kind, “algorithm processes,” carried out
functions such as processing data, performing
calculations, or otherwise producing informa-
tion such as numerical values based on what-
ever the user inputs into them.18 The second
kind were the “utility processes,” which “deal
with tangible things and substances.” Brenner
believed that this categorization was not per-
fect, but he hoped that it would at least pro-
vide a way of thinking about programs: a
process defined as “a series of steps for the
manipulation or evaluation of data” is an
algorithm process, whereas one defined as
“steps for causing a series of changes in state
of components of the computer” is a utility
process. Only the latter kind were eligible for
patents. This meant that programmers seek-
ing protection for their programs would need
to ensure that the patent application disclosed
changes in a machine, not mathematical
manipulations of data.
Brenner’s distinctions between an appara-
tus, a utility process, and an algorithm process
were grounded on an analogy between com-
puting and weaving. In the early 19th century,
a machine called the Jacquard loom had
become a common addition to textile facto-
ries. Able to produce intricate brocades and
damasks, these looms were controlled by a ser-
ies of punched cards in which rows of holes
dictated the lines in a design.19 The cards
could be connected to one another, so designs
could become as large and intricate as their
users desired. In this century-old arrangement,
Brenner explained, there was an apparatus
and a program—respectively, a loom and the
holes on the punched cards.20 Inventors in
the 19th century would not have been able to
secure patent protection on a specific
sequence of holes, but they may have been
able to patent a loom or a way of operating it.
In the same way, programmers in the mid-
1960s could not obtain a patent for the
sequence of instructions that characterized
their programs, but they could attempt to pat-
ent a machine that ran in accordance with the
program’s instructions and a way of operating
it. In short, to use terminology that would
emerge a few years later, software was only eli-
gible for a patent if it was embodied in a
machine or if it presented changes from one
state of a machine to another.
In 1968, as Brenner prepared to step down
from his office, the new Acting Commissioner
of Patents Edwin L. Reynolds changed the offi-
ce’s guidelines.21 His aim was not to reject soft-
ware patents altogether, but to impose an
important limit on them: regardless of how
inventors claimed their software, a patent
would not be issued unless the software was
part of an invention that produced a tangible
result. In other words, software aimed at pro-
ducing numbers, statistics, or some “other
informational result” would not be eligible for
a patent. However, if the software was
“combined in an unobvious manner with
physical steps,” it was not necessarily barred
from protection.
A year later, in 1969, yet another change
in the Patent Office’s guidelines took place as
Reynolds’ interim term came to an end. This
time, the new Commissioner of Patents Wil-
liam Schuyler withdrew both the Reynolds
and Brenner proposals, leaving the Patent
Office without any guidelines regarding the
patent eligibility of computer programs.22
Schuyler had chosen to remove all guidelines
because the CCPA had become the Patent
Office’s antagonist on the matter of software
patents. Indeed, the CCPA had recently been
advancing the idea that computer programs
were eligible for patent protection.23 It had
finally taken a hard unyielding stance in a
1968 decision regarding one of Mobil Oil’s
many patent applications, Prater v. Wei.24
There it had ruled that the fact that a
machine performed mental steps such as
mathematical computations and data trans-
lation did not preclude its patent eligibil-
ity.24,25 Then, in a flurry of decisions issued
within a few months, the CCPA reversed any
rejections that aligned with any of the Patent
Office’s policy proposals.26 This lapse in the
Patent Office guidelines put several patent
applications on hold, including the one for
Benson and Tabbot’s invention, which had
been on file at the office since 1963.
From the Patent Office to the CCPA
At Bell Telephone Laboratories in the early
1960s, Gary Benson and Arthur Tabbot were
working on a kind of telephone switching
system called a private branch exchange
(PBX). This system enabled the creation of a
private network of telephones within a build-
ing and the connection of these networks to
January–March 2016 25
 Contested Ontologies of Software: The Story of Gottschalk v. Benson, 1963–1972
Computer programs
were considered
ineligible for patent
protection because they
lacked materiality.
one another and to standard telephone lines.
A PBX worked by identifying and replicating
dial signals; it would receive one such signal
from a telephone, identify the telephone
being called, and connect the caller to his tar-
get. Benson and Tabbot hoped to create a
PBX that performed these connections by
directing the signals with the use of a com-
puter. This eliminated the need of employing
switchboard operators, the women who usu-
ally operated PBX systems.27 In particular,
Benson and Tabbot had created a computer
program that converted the signals that the
PBX received into signals that the computer
at its core could process. This program trans-
lated numbers written in one number system
into another one—from their so-called
binary-coded decimal form to their binary
counterparts.28
On 9 October 1963, Benson and Tabbot
filed an application for a patent. They
claimed that their invention was a “highly
desirable” process because it made fewer mis-
takes and used less computing capacity than
any of its predecessors.29 Their application
included descriptions and illustrations of a
computer that would perform the transla-
tions, but it was not intended to patent any
particular apparatus. The two claims that
would prove most controversial were claims
number 8 and 13, wherein Benson and Tab-
bot described a “data processing method” of
“converting signals from binary coded deci-
mal form into binary.”30 These claims were
directed toward processes, not embodied soft-
ware. Each of them described data manipula-
tions such as storing a binary-coded decimal
number in a shift register, adding a digit to
the start of a specific number, and identifying
each number one digit at a time.31
These two claims sparked nearly a decade
of disagreement over whether Benson and
Tabbot’s program constituted what patent law
called “mental steps.” Also called “mental
26 IEEE Annals of the History of Computing
processes,” these steps comprised manipula-
tions of information such as mathematical
computations, which a properly trained
human would be able to perform.32 The
notion of a mental step had emerged into pat-
ent law as the opposite of what constitutes a
patent-eligible process. In 1877, the Supreme
Court had explained in Cochrane v. Deener that
a process is a “mode of treatment of certain
materials to produce a given result.”33 This
definition was tailored for industrial manufac-
turing techniques, and it restricted patent-eli-
gible processes to those that manipulate
“subject-matter to be transformed and
reduced to a different state or thing.”33 It had
provided the rationale for the Patent Office’s
1968 guidelines, and it made anything from
grinding and melting to fusing and distilling a
potential basis for a patent-eligible process. By
the mid-20th century, federal courts had
affirmed the materiality at the core of the Dee-
ner decision by denying the patent eligibility
of data manipulation. The most notable deci-
sion in this vein was Halliburton Oil Cementing
Co. v. Walker (1944), wherein one of these
courts held that actions such as counting,
observing, measuring, comparing, recording,
and computing constituted ineligible mental
processes.34
By the 1960s, the notion that mental proc-
esses were ineligible for protection had
become almost axiomatic to patent law.35 In
this framework, mathematical computations
were ineligible for patent protection because
they lacked materiality. This is the rationale
that the patent examiner, Daryl W. Cook,
used to reject Benson and Tabbot’s pro-
gram—that their invention was a mental
process because it was no more than a soft-
ware implementation of a series of mathe-
matical computations that a person could
perform.36 Indeed, Cook explained that a
mathematician would be able to accomplish
the same task by “carrying out a set of rules”
and that, like the software, this mathemati-
cian would perform “no physical act on a
physical thing.”36
These views were as informed by the com-
mon law of patents as they were by the work
of academic programmers. In an article pub-
lished in 1967 in Datamation, the prominent
programmer Donald Knuth had explained
that reading was never enough to understand
how an algorithm works and that readers
“should always take pencil and paper” and
work through an example for each algorithm
they encounter in a text.37 This “simple and
painless” way of engaging with an algorithm
was in Knuth’s view the only way of grasping
it. This essay was a promotional excerpt from
the first volume of Knuth’s landmark work,
The Art of Computer Programming, but in
Cook’s hands it had an important legal conse-
quence: it justified the view that engaging
with an algorithm required the use of tools.
To Cook, a programmable computer was
just like paper and pencil in that a person
could use it in order to grasp algorithms such
as the one that Benson and Tabbot had
encoded into a program.38 This led him to
believe that storing data into a shift register
amounted to writing, that transforming data
from one form to another amounted to
manipulating “meanings and representations
made by signals,” and that no manipulation
of tangible subject matter occurred at any
step in the translation because the program
was an algorithm as Knuth understood it.
From this, Cook had concluded that granting
patent protection to Benson and Tabbot’s
method amounted to creating “a restriction
on mental processes” that would in no way
help to “promote science or the useful arts.”
In 1967, Bell’s legal team appealed Cook’s
decision to the Patent Office’s Board of Patent
Appeals, but Cook’s views emerged victori-
ous. Data processing was not new to the
Patent Office; seismography equipment,
weapons control systems, and flowcharting
programs all involved some form of data
processing, and machines in each of these
fields had received patents.15 However, these
predecessors produced a physical outcome—
the printing out of a signal’s intensity, the
creation of a flowchart on a piece of paper, or
the movement of an artillery system. Benson
and Tabbot’s invention produced data out of
data, creating numbers in one form out of
numbers in another form, so the board
insisted that it was ineligible for patent pro-
tection. Still, Bell appealed once again, this
time to the CCPA.39 It was at this point that
Robert O. Nimtz, one of Bell’s more promi-
nent patent attorneys, proposed an ontologi-
cal argument—that is, one grounded on his
conception of the nature of software—to jus-
tify the patent eligibility of Benson and Tab-
bot’s invention.40
At the CCPA, Nimtz argued that software
had a dual nature.41 On the one hand, there
was what he called the “explicative program,”
which he identified as “merely a list of
instructions”—the program’s “purely descrip-
tive aspect.” These programs were “closely
analogous to” and no more patent eligible
than “the schematic diagram of an electrical
circuit.” On the other hand, there were the
mechanical and electrical processes that are
carried out when an explicative program is
executed. Nimtz called these processes the
“extant program.” He explained that extant
programs “correspond to actual embodiments
of a circuit which are merely represented by
the schematic diagram.” Their relationship to
the explicative program was similar to that of
an electrical circuit and its schematic diagram.
Whereas explicative programs were best
understood as writings eligible for copyright
protection, extant programs were just
“methods of processing signals.” In Nimtz’s
view, the latter had been the subject matter of
patents ever since the Supreme Court issued
the so-called Telephone Cases in the 19th cen-
tury, wherein the original patents for teleph-
ony had been assigned.42
Nimtz believed that the coexistence of
explicative and extant programs explained
software’s complicated relationship with
intellectual property law.43 In particular, he
noted that Cook’s rejection confused the
extant and explicative components of Ben-
son and Tabbot’s invention. Nimtz high-
lighted what he considered to be evidence of
Cook’s confusion by annotating the exam-
iner’s text with bracketed words of his own.
For instance, Nimtz contested Cook’s claim
that one of Benson and Tabbot claims “is
merely a program which is a set of instruc-
tions [explicative] to control the operation of
a computer [extant].”43 To Nimtz, Cook’s line
of thought was analogous to rejecting a pat-
ent for an electrical circuit on the grounds
that the circuit’s schematic diagram is printed
matter. The fact that explicative programs are
texts did not mean that the extant programs
that they described were necessarily banned
from patent protection.44
In 1971, the CCPA embraced Nimtz’s argu-
ment for the patent eligibility of Benson and
Tabbot’s invention.45 It ruled that the pres-
ence of electrical signals and shift registers in
the claims was sufficient to demonstrate that
Benson and Tabbot’s claims were not directed
to mental steps. The idea that the invention
was mental in character because it dealt with
numbers was also inadmissible in the court’s
view, especially because inventions such as
cash registers were eligible for protection
even though they, too, dealt with numbers.46
The court explained that the translation
process that Benson and Tabbot had invented
could, “in theory,” be performed with “any
kind of writing implement and any kind of
recording medium.” However, this did not
January–March 2016 27
 Contested Ontologies of Software: The Story of Gottschalk v. Benson, 1963–1972
Patent attorney Morton
C. Jacobs argued that the
“myth of the
nonmachine” collapsed
under the weight of the
fact that software is both
integral to hardware and
equivalent to it.
render the invention ineligible for protection
because the hardware made the algorithm
fast enough to be useful; it was improbable
that any human being would ever be able to
perform the data translations in the “milli- or
even micro- seconds” required to operate the
computerized PBX. In Nimtz’s terminology,
this amounted to ruling that the claims for
the extant program were sufficient to issue a
patent that did not cover its explicative
counterpart.
The Nonmachine’s Triumph
A new Commissioner of Patents Robert Gott-
schalk appealed the CCPA’s decision, and the
Supreme Court agreed to hear the case in
1972. Before the court, the Patent Office’s
legal team focused on clarifying Cook’s and
the Board of Appeals’ rationales. However,
Bell’s lead attorney, Hugh B. Cox, changed
the strategy that had worked at the CCPA.
Instead of advancing Nimtz’s argument
on extant and explicative programs, Cox
insisted that Benson and Tabbot’s claims were
merely “directed to a process involving the
manipulation of electrical signals performable
only in a digital computer or other electrical
data processing apparatus.”47 He argued that
Benson and Tabbot’s creation was a type of
patent-eligible invention best understood as a
machine process—a way of arranging a data
processing machine in order to elicit opera-
tions such as the transfer and modification of
electrical signals. This shifted the focus away
from the nature of software and toward that
of the data that it processed. Indeed, Cox
explained that numbers, text, and any other
information would be stored in the data-proc-
28 IEEE Annals of the History of Computing
essing machine in the form of electrical sig-
nals. Like flour, metal, or glycerin, these
signals were the “proper work stuff for a proc-
ess patent.”48 Otherwise, the patents on teleg-
raphy, telephony, and radio technologies that
the Patent Office had been issuing since the
19th century should not exist.49
The arrival of Benson and Tabbot’s patent
application to the Supreme Court prompted
several attorneys to submit amicus briefs—
that is, briefs wherein interested third parties
propose rationales to the court—on behalf of
several firms and trade associations. Three
years had passed since IBM had decided to
sell its software instead of including it for free
with the purchase of its hardware.50 This so-
called unbundling had catalyzed the growth
of the software industry, but the fledgling
firms dedicated to the making and sale of pro-
grams were minute in comparison with hard-
ware manufacturers such as Burroughs or
IBM.51
At the Supreme Court, the hardware giants
opposed granting Benson and Tabbot’s pat-
ent, in part because they predicted that the
production and marketing costs for their
own software could rise if they had to pay
licensing fees to the software firms and to one
another.52 In contrast, software firms argued
that denying Benson and Tabbot’s patent
would make the patent system even more ill
prepared to encourage the growth of their
fledging industry.53 In their collective wis-
dom, the hardware manufacturers’ support of
the Patent Office’s position illustrated how
giants such as IBM attacked any “hope of
innovation and competition” and attempted
to terminate “the very existence of an inde-
pendent software sub-industry.”53
Leading the software firms was the promi-
nent patent attorney Morton C. Jacobs, who
wrote one brief for each of his main clients in
the software industry—the software firm
Applied Data Research (ADR) and the Associa-
tion of Data Processing Service Organizations
(ADAPSO).54 Jacobs’ take on the patent eligi-
bility of Benson and Tabbot’s invention relied
on his notion that software was equivalent to
hardware. He argued that “software program-
ming is a machine device” and that the Patent
Office was just as well equipped to handle the
search and classification of “inventions
embodied in software” as it was for those
“embodied in hardware.”55 In Jacobs’ view,
the Patent Office was attempting to perpetu-
ate what he had called the “myth of the non-
machine.”56 This is a phrase he had been
using for the past three years in reference to
the idea that software is not a patent-eligible
machine. His goal was to debunk this myth—
that is, to lay to rest the idea that “computer
programs have a certain ephemeral character,
a non-physical or non-machine character.”57
Jacobs argued that the myth of the non-
machine collapsed under the weight of the
fact that software is both integral to hardware
and equivalent to it. He grounded this asser-
tion on two observations. First, computer
programs “are control mechanisms of com-
puting machines.”58 By this, he meant that a
program stored into a general-purpose com-
puter gave the machine a special purpose.
Second, the installation of software had a
transformative power; a single program
would make a computer system become a
new device—perhaps a payroll accounting
machine or one able to process airline reser-
vations or typeset text.58
Jacobs’ views stood in stark opposition to
the one advanced by the Business Equipment
Manufacturers Association (BEMA), the pri-
mary trade association for firms such as IBM,
Honeywell, and Burroughs.59 BEMA’s attor-
ney, John S. Voorhees, explained that soft-
ware was akin to text or music in that it
merited protection by copyrights, not pat-
ents. He insisted that a computer program “is
nothing more than a set of instructions to a
computer as to how it should manipulate
information and data.”60 A computer runs a
program much like an automatic piano
player runs the “code contained in a punched
paper or paper piano roll.”61 Regardless of the
complexity of a musical composition, a piano
roll maker could translate musical notes into
holes, and the piano will be able to operate it.
In both the piano and the computer, there is
“nothing more than a set of instructions for
the machine” to perform automatically “the
mental processes or steps contained in the
algorithm or musical composition.”62 Creat-
ing a program was akin to writing a book or
composing a song, inscribing the program in
some storage medium to punching holes on
a piano roll, and running a programmed
machine to listening to a music player.62
IBM and Honeywell were keen supporters
of this argument.63 However, Burroughs took
Voorhees’ argument one step further by argu-
ing that the presence of hardware descriptions
in a claim for a computer program was
improper. According to this firm’s lead attor-
neys, James Clabault and Edward Fiorito, Ben-
son and Tabbot had attempted to mask their
invention, which was in essence an algorithm
or mathematical expression, by “garbing their
In the Gottschalk v.
Benson ruling, the US
Supreme Court
established a new
understanding of
software patents.
claims” using “digital computer operations or
well-known hardware.”64 Their application’s
description of hardware was unnecessary,
which meant a patent for their program would
grant “a monopoly as broad as the algorithm”
that stood at the program’s core.65 This echoed
Cook’s original rejection back at the Patent
Office. The wording of the patent application
could “sound like a hardware component,”
but a countless number of hardware arrange-
ments other than the ones that they proposed
could perform the same function equally
well.65 Their claimed invention did not
enhance or change the algorithm in any way;
it was merely a transparent “façade of com-
puter hardware” written with unnecessarily
broad language.66
Finally, on 20 November 1972, the
Supreme Court issued Gottschalk v. Benson,
wherein it held that programs such as Benson
and Tabbot’s were ineligible for patent protec-
tion. In the court’s view, there was no duality
between extant and explicative programs, and
the nonmachine was no myth. Instead, soft-
ware was merely a “sequence of coded
instructions,” a vehicle for an algorithm that
was no more eligible for a patent than a for-
mula or an electrical current.67 By issuing this
ruling, the Court established a new under-
standing of software patents—patents for the
instructions encoded into a computer pro-
gram, not any machines that embody it. How-
ever, at the same time, it sent a discouraging
decision for any programmers who would be
interested in securing one. At least for a few
years, software that was not embodied would
remain ineligible for a patent.
Conclusion
As Benson and Tabbot’s program travelled
from the Patent Office to the Supreme Court,
it became the subject of a series of ontological
January–March 2016 29
 Contested Ontologies of Software: The Story of Gottschalk v. Benson, 1963–1972
contests aimed at identifying a nature for soft-
ware that could serve as a conceptual under-
pinning for patent law. The contesting parties
were attorneys and federal agents. Their argu-
ments were shaped by administrative consid-
erations, the common law of patents, and the
views that circulated within trade associations
for the computing industry and the academic
programming community. These historical
actors repeatedly defined and characterized
computer programs, making patent law a
ground wherein they struggled with one diffi-
cult question that could be asked in decep-
tively simple manner: what is software?
The history of software patenting invites
further study of these ontological contests.
Since 1972, federal courts at all levels have
been issuing decisions that deal either with
software patenting or with a practice that
would become closely related to it during the
late 20th century: business method patent-
ing.68 Many of these conflicts involved com-
peting actors eager to identify and establish a
nature of software, and together they formed
the web of ontological contests of which this
article provides a glimpse. Historians of com-
puting can continue to follow the trail of pat-
ents and applications that the history of
software has left behind. This will show us
how the natures of the technologies that con-
cern us were manifold, volatile, and pro-
foundly historically contingent.
Acknowledgments
I am indebted to my dissertation adviser,
Daniel Kevles, and to Naomi Lamoreaux,
Mario Biagioli, William Rankin, Nathan
Ensmenger, Jeffrey Yost, Joanna Radin, and
Eric Hintz for their advice and encourage-
ment; to the Yale Program in the History of
Science and Medicine, IEEE, the Charles Bab-
bage Institute, and the Lemelson Center for
the Study of Invention and Innovation for
financial support; to Thomas Misa and Arvid
Nelsen at the Charles Babbage Institute for
assistance in navigating the rich archives in
their care; and to the editors and anonymous
peer reviewers at the IEEE Annals for their
thoughtful feedback.
References and Notes
1. A patent grants an inventor the right to exclude
others from making or selling his or her inven-
tion for a limited period of time. In exchange for
this limited monopoly, the inventor must dis-
30 IEEE Annals of the History of Computing
close the details of the invention in full. An
invention is eligible for patent protection (or
“patent eligible”) if it qualifies as one of the cate-
gories of inventions for which the Patent Office
can grant protection under Title 35 of the
United States Code, section 101. The Code
establishes that the invention must be a “new
and useful process, machine, manufacture, or
composition of matter, or any new and useful
improvement thereof.” If the invention is eligi-
ble for a patent, the inventor must demonstrate
that it is new, useful, and nonobvious in order to
secure a patent. US Code, Title 35, section 101.
2. A number system is a way of expressing quanti-
ties using a specific set of symbols. The best-
known number system is the decimal system,
which we use in the West and which expresses
quantities using the digits from 0 to 9. Com-
puters normally use the binary system, which
expresses quantities using the digits 0 and 1.
3. For instance, the Supreme Court cited Gott-
schalk v. Benson several times in its recent deci-
sion, Alice v. CLS, in an effort to assess the place
of algorithms and data processing in patent law.
Alice Corporation v. CLS Bank International, US
Supreme Court, no. 13-298, 19 June 2014;
www.supremecourt.gov/opinions/13pdf/
13-298 7lh8.pdf.
4. P. Samuelson, “The Strange Odyssey of Software
Interfaces as Intellectual Property,” Making and
Unmaking Intellectual Property: Creative Produc-
tion in Legal and Cultural Perspective, M. Biagioli
et al., ed., Univ. of Chicago Press, 2011; G.
Stobbs, Software Patents, Aspen Publishers,
2000; P. Samuelson, “Benson Revisited: The
Case Against Patent Protection for Algorithms
and Other Computer Program-Related
Inventions,” Emory Law J., vol. 39, 1990, pp.
1025–1154.
5. I do not use the word “ontology” in the meta-
physical sense common among philosophers,
nor do I use it in the highly technical sense that
software engineers sometimes employ it.
Instead, my phrase “an ontology of software” is
a shorthand for the phrase “a conception of the
nature of software.” My intention is not to
advance my own ontologies of software, but to
show how competing ontologies helped to
shape the history of software patenting.
6. See, for example, D. Nofre, M. Priestley, and G.
Alberts, “When Technology Became Language:
The Origins of the Linguistic Conception of
Computer Programming, 1950-1960,” Technol-
ogy & Culture, vol. 55, no. 1, 2014, pp. 40–75;
D. Kevles, “The Genes You Can’t Patent,” New
York Rev. of Books, 23 Sept. 2013; W. Rankin,
“The Reification of Sound: Technology and the
Changing Ontology of Music,” Open Space, 8/9,
 Fall 2006–Spring 2007; H. Nissenbaum,
“Hackers and the Contested Ontology of
Cyberspace,” New Media & Society, vol. 6, no. 2,
2004, pp. 195–271; G. Con Diaz, “The Text in
the Machine: American Copyright Law and the
Many Natures of Software,” Technology &
Culture, forthcoming Oct. 2016. Interest in
ontological matters is also gaining momentum
among scholars in science and technology
studies, albeit from a much more theoretically
inclined viewpoint than the one I adopt in this
article. See S. Woolgar and J. Lezaun, eds.,
“Special Issue: A Turn to Ontology in Science
and Technology Studies?” Social Studies of
Technology, vol. 43, no. 3, 2013. Many historians
of medicine have also been concerned with
similar phenomena for several years. See C.
Rosenberg, Framing Disease: Studies in Cultural
History, Rutgers Univ. Press, 1992.
7. The intersection of the histories of software and
intellectual property is crystallizing as a site for
interdisciplinary study. See, for instance, G. Con
Diaz, “Embodied Software: Patents and the
History of Software Development, 1946–1970,”
IEEE Annals of the History of Computing, vol. 37,
no. 3, 2015, pp. 8–19; P. Samuelson, “The
Strange Odyssey of Software Interfaces as
Intellectual Property”; C. Kelty, “Inventing
Copyleft,” Making and Unmaking Intellectual
Property: Creative Production in Legal and Cultural
Perspective, M. Biagioli et al., ed., Univ. of
Chicago Press, 2011; A. Bonaccorsi, J. Calvert,
and P. B. Joly, “From Protecting Texts to Protect-
ing Objects in Biotechnology and Software: A
Tale of Changes of Ontological Assumptions in
Intellectual Property Protection,” Economy and
Society, vol. 40, no. 4, 2011, pp. 611–639; C.
Kelty, Two Bits: The Cultural Significance of Free
Software, Duke Univ. Press, 2008; M. O’Rourke,
“The Story of Diamond v. Diehr: Toward Patent-
ing Software,” Intellectual Property Stories, J.
Ginsburg and R. Dreyfuss, eds., Foundation
Press, 2006, pp. 194–219; M. Campbell-Kelly,
“Not All Bad: An Historical Perspective on Soft-
ware Patents,” Michigan Telecommunications
and Technology Law Rev., vol. 11, 2005, pp.
191–249.
8. See D. Kevles, “Inventions, Yes; Nature, No: The
Products-of-Nature Doctrine from the American
Colonies,” Perspectives on Science, vol. 23, no.
1, 2015, pp. 13–34; M. Biagioli, “Between
Knowledge and Technology: Patenting Meth-
ods, Rethinking Materiality,” Anthropological
Forum, vol. 22, 2012, pp. 285–300; A. Pottage
and B. Sherman, Figures of Invention: A History of
Modern Patent Law, Oxford Univ. Press, 2010; K.
Swanson, “The Emergence of the Professional
Patent Practitioner,” Technology and Culture,
vol. 50, July 2009, pp. 519–548; M. Biagioli,
“Patent Republic: Representing Inventions,
Constructing Rights and Authors,” Social
Research, vol. 73, no. 4, 2006, pp. 1129–1172.
See also W. Rankin, “The Person Skilled in the
Art Is Really Quite Conventional: US Patent
Drawings and the Persona of the Inventor,”
Making and Unmaking Intellectual Property: Cre-
ative Production in Legal and Cultural Perspective,
M. Biagioli et al., eds., Univ. of Chicago Press,
2011, pp. 55–78.
9. M. Biagioli, “Patent Republic”; Pottage and
Sherman, Figures of Invention; P. Samuelson,
“The Story of Baker v. Selden: Sharpening the
Distinction between Authorship and Invention,”
Intellectual Property Stories, J. Ginsburg and R.
Dreyfuss, eds., Foundation Press, 2006, pp.
159–193.
10. This is an important subject in the history of
intellectual property and biotechnology. J.
Gabriel, Medical Monopoly: Intellectual Property
Rights and the Origins of the Modern Pharmaceut-
ical Industry, Chicago Univ. Press, 2015; D.
Kevles, “New Blood, New Fruits: Protections for
Breeders and Originators, 1789–1930,” Making
and Unmaking Intellectual Property: Creative Pro-
duction in Legal and Cultural Perspective, M. Bia-
gioli et al., eds., Univ. of Chicago Press, 2011,
pp. 253–269; D. Kevles, “Protections, Privileges,
and Patents: Intellectual Property in American
Horticulture,” Proc. Am. Philosophical Soc., vol.
152, June 2008, pp. 207–213; D. Kevles and A.
Berkowitz, “The Gene Patenting Controversy: A
Convergence of Law, Economic Interests, and
Ethics,” Brooklyn Law Rev., vol. 67, 2002, pp.
233–248; K. Swanson, “Biotech in Court: A
Legal Lesson on the Unity of Science,” Social
Studies of Science, vol. 37, no. 3, 2007, pp.
357–384; D. Kevles, “Ananda Chakrabarty Wins
a Patent: Biotechnology, Law and Society,” His-
torical Studies of the Physical and Biological Scien-
ces, 1994, pp. 111–135.
11. Commission on the Patent System, To Promote
the Progress of Useful Arts: Report of the Presi-
dent’s Commission on the Patent System, Govt.
Printing Office, 1967, p. 1.
12. The quoted words in this sentence and the rest
of the paragraph are found in Commission on
the Patent System, To Promote the Progress of
Useful Arts, p. 20.
13. In the early 1960s, all software inventions,
embodied or not, were classified as inventions in
the arts of electrical computing and data proc-
essing. US Dept. of Commerce, Development
and Use of Patent Classification System, Library of
Congress Catalog no. 65-62235, 1966. Com-
mission on the Patent System, To Promote the
Progress of Useful Arts, p. 21.
January–March 2016 31
 Contested Ontologies of Software: The Story of Gottschalk v. Benson, 1963–1972
14. R. Kurtz, “Examples of Inventions Embodying
Software,” Software Protection by Trade Secret,
Contract, Patent, I. Kayton, ed., Patent Resources
Group, 1969, p. 160.
15. Con Diaz, “Embodied Software.”
16. M. Goetz, Sorting System, US patent 3,380,029,
Patent and Trademark Office, filed 9 Apr. 1965,
issued 23 Apr. 1968; M. Goetz, Automatic System
for Constructing and Recording Display Charts, US
patent 3,533,086, Patent and Trademark Office,
filed 24 Dec. 1968, continuing application
512,113 filed 7 Dec. 1965, issued 6 Oct. 1970.
17. US Patent Office, “Guidelines to Examination of
Programs,” Official Gazette of the United States
Patent Office, vol. 829, no. 3, 16 Aug. 1966, p.
866.
18. The quoted words in this sentence and the rest of
the paragraph are found in US Patent Office,
“Guidelines to Examination of Programs,” p. 865.
19. J. Essinger, Jacquard’s Web: How a Hand-Loom
Led to the Birth of the Information Age, Oxford
Univ. Press, 2004.
20. US Patent Office, “Guidelines to Examination of
Programs,” p. 865.
21. The quoted words in this sentence and the rest
of the paragraph are found in “Examination of
Patent Applications on Computer Programs,”
Federal Register, vol. 33, no. 206, 22 Oct. 1968,
p. 15610.
22. US Patent Office, “Examination of Patent Appli-
cations on Computer Programs,” Official Gazette
of the United States Patent Office, vol. 868, 11
Nov. 1969.
23. A series of cases dealing with patents filed in the
early 1960s led to important precedents. First, a
process claim was not necessarily ineligible for a
patent just because the application disclosed an
apparatus that inherently carries out the steps.
In re Tarczy-Hornoch, 397 F.2d 856, Court of
Customs and Patent Appeals, 1968; In re Bekey,
397 F.2d, Court of Customs and Patent Appeals,
1968. Second, an inventor claiming a pro-
grammed machine need not provide enough
information to teach people how to program a
computer; he may instead provide sufficient
information to enable a person skilled in the art
of programming to reproduce his programmed
machine. In re Naquin, 398 F.2d 863, Court of
Customs and Patent Appeals, 1968.
24. In re Prater and Wei, 415 F.2d 1378, Court of
Customs and Patent Appeals, 1968.
25. In re Prater and Wei, 415 F.2d 1393, Court of
Customs and Patent Appeals, 1969.
26. Two of the most important decisions are In re
Bernhart, 417 F.2d 1395, Court of Customs and
Patent Appeals, 1969, and In re Musgrave, 431
F.2d 882, Court of Customs and Patent Appeals,
1970.
32 IEEE Annals of the History of Computing
27. Gottschalk v. Benson, “Brief for Respondents,”
no. 71-485, US Supreme Court, Aug. 1972, p. 2.
28. The binary system, which all computers use, uses
only the digits 0 and 1, and each digit represents a
power of two. In this system, the number indi-
cated by 34 would be expressed as 100010. Read
from right to left, this expression indicates the
presence of zero ones, one two, zero fours, and so
on. The left most digit denotes one fifth power of
two, or 32. The number 34 is therefore expressed
as the sum of 32 and 2. In contrast, the binary
coded decimal (BCD) consists of writing down the
binary form of each digit in a decimal expression.
A literal digit-by-digit translation, BCD notation
creates long sequences of zeroes and ones. In this
case, the number 34 would be expressed as
00110100. In this expression, the first four digits
(0011) are the binary expression for 3, and the last
four digits (0100) are the binary expression for 4.
29. Gottschalk v. Benson, “Brief for Respondents,”
no. 71-485, p. 8.
30. G. Benson and A. Tabbot, “Application,” Patent
Appeal Docket no. 8376, Transcript of Record in
the Matter of the Application of Gary R. Benson
and Arthur C. Tabbot, Court of Customs and
Patent Appeals, 1969, p. 10.
31. Daryl W. Cook, “Examiner’s Answer,” Patent
Appeal Docket no. 8376, Transcript of Record in
the Matter of the Application of Gary R. Benson
and Arthur C. Tabbot, Court of Customs and
Patent Appeals, 1969, p. 122.
32. Stobbs, Software Patents, pp. 49–52.
33. Cochrane v. Deener, 94 US 780, US Supreme
Court, 1877, p. 788.
34. Halliburton Oil Well Cementing Company v.
Walker, 146 F.2d 817, 9th Circuit, 1944.
35. In re Venner, 262 F. 2d 91, Court of Customs
and Patent Appeals, 1958; In re Yuan, 188 F. 2d
377, Court of Customs and Patent Appeals,
1951; In re Abrams, 188 F.2d 165, Court of Cus-
toms and Patent Appeals, 1951; Ex Parte Jenny,
130 USPQ 318, Board of Appeals, 1960.
36. D.W. Cook, “Examiner’s Answer,” Patent Appeal
Docket no. 8376, Transcript of Record in the
Matter of the Application of Gary R. Benson and
Arthur C. Tabbot, Court of Customs and Patent
Appeals, 1969, p. 122.
37. The quotes in this sentence and the rest of this
paragraph are taken from D. Knuth, “What Is an
Algorithm?” Datamation, Oct. 1967, p. 31.
38. The quoted words in this sentence and the rest of
the paragraph are found Cook, “Examiner’s
Answer,” Patent Appeal Docket no. 8376, p. 122.
39. “Decision of the Board of Appeals,” Patent
Appeal Docket no. 8376, Transcript of Record in
the Matter of the Application of Gary R. Benson
and Arthur C. Tabbot, Court of Customs and
Patent Appeals, 1969, p. 136.
40. R.O. Nimtz, “Brief for Appellants,” Patent
Appeal Docket no. 8376, Transcript of Record in
the Matter of the Application of Gary R. Benson
and Arthur C. Tabbot, Court of Customs and
Patent Appeals, 1969, p. 12.
41. The quoted words in this sentence and the rest
of the paragraph are found in Nimtz, “Brief for
Appellants,” Patent Appeal Docket no. 8376.
42. See C. Beauchamp, “Who Invented the Tele-
phone? Lawyers, Patents, and the Judgments of
History,” Technology and Culture, vol. 51, no. 4,
2010, pp. 854–878.
43. Nimtz, “Brief for Appellants,” Patent Appeal
Docket no. 8376, p. 28.
44. Nimtz, “Brief for Appellants,” Patent Appeal
Docket no. 8376, p. 13.
45. “Application of Benson,” 441 F.2d 682, Court of
Customs and Patent Appeals, 1971.
46. The quoted words in this sentence and the rest
of the paragraph are found in “Application of
Benson,” 441 F.2d 682, p. 688.
47. “Respondent’s Brief,” Gottschalk v. Benson, no.
71-485, US Supreme Court, 1971, p. 23.
48. “Respondent’s Brief,” Gottschalk v. Benson, no.
71-485, p. 20.
49. “Respondent’s Brief,” Gottschalk v. Benson, no.
71-485, p. 19.
50. S. Usselman, “Unbundling IBM: Antitrust and
the Incentives to Innovation in American
Computing,” The Challenge of Remaining Inno-
vative, N. Lamoreaux et al., eds., Stanford Univ.
Press, 2009, pp. 249–279.
51. M. Campbell-Kelly, From Airline Reservations to
Sonic the Hedgehog: A History of the Software
Industry, MIT Press, 2003.
52. J.S. Voorhees, “Brief Amicus Curiae on Behalf of
the Business Equipment Manufacturers
Association,” Gottschalk v. Benson, no. 71-485,
US Supreme Court, 1971; H. Hanson and D.D.
Allegretti, “Brief Amicus Curiar for Honeywell
Inc.,” Gottschalk v. Benson, no. 71-485, US
Supreme Court, 1971; L. Cutler, “Brief for Ami-
cus Curiae International Business Machines Cor-
poration,” Gottschalk v. Benson, no. 71-485, US
Supreme Court, 1971.
53. M.C. Jacobs, “Brief Amicus Curiae for the Associ-
ation of Data Processing Service Organizations,
Software Products and Service Section
(ADAPSO/AISC),” Gottschalk v. Benson, no. 71-
485, US Supreme Court, 1971.
54. M.C. Jacobs, “Brief Amicus Curiae for Applied
Data Research, Inc. (ADR),” Gottschalk v. Ben-
son, no. 71-485, US Supreme Court, 1971.
55. Jacobs, “Brief Amicus Curiae for Applied Data
Research, Inc. (ADR),” p. 1.
56. M.C. Jacobs, “Patentable Machines—Systems
Embodiable in Hardware or Software (The Myth
of the Non-Machine),” Proc. Law of Software,
George Washington Univ., 1968, B-77. Cited in
Jacobs, “Brief Amicus Curiae for Applied Data
Research, Inc. (ADR).”
57. Jacobs, “Patentable Machines,” B-77.
58. Jacobs, “Patentable Machines,” B-78.
59. Voorhees, “Brief Amicus Curiae on Behalf of the
Business Equipment Manufacturers
Association.”
60. Voorhees, “Brief Amicus Curiae on Behalf of the
Business Equipment Manufacturers
Association,” p. 6.
61. Voorhees, “Brief Amicus Curiae on Behalf of the
Business Equipment Manufacturers
Association,” p. 8.
62. Voorhees, “Brief Amicus Curiae on Behalf of the
Business Equipment Manufacturers
Association,” p. 9.
63. Hanson and Allegretti, “Brief Amicus Curiar for
Honeywell Inc,” and Cutler, “Brief for Amicus
Curiae International Business Machines
Corporation.”
64. J. Clabault and E. Fiorito, “Brief Amicus Curiae
for Burroughs Corporation,” Gottschalk v. Ben-
son, no. 71-485, US Supreme Court, 1971, p.
13.
65. Clabault and Fiorito, “Brief Amicus Curiae for
Burroughs Corporation,” p. 14.
66. Clabault and Fiorito, “Brief Amicus Curiae for
Burroughs Corporation,” p. 16.
67. Gottschalk v. Benon, 409 U.S. 63, US Supreme
Court, 1972, p. 65.
68. The most prominent Supreme Court decisions
in the vein are Parker v. Flook, 437 US 584, US
Supreme Court, 1978; Diamond v. Diehr, 450
US 175, US Supreme Court, 1981; Bilski v. Kap-
pos, 561 US 593, US Supreme Court, 2010;
Alice v. CLS, no. 13-298, US Supreme Court,
2014. A textbook account of the procedural his-
tory of these decisions and the ones issued by
the lower courts can be found in S. Lundberg, S.
Durant, and A. McCrackin, Electronic and Soft-
ware Patents: Law and Practice, BNA Books,
2013.
Gerardo Con Diaz is a his-
torian of science and technol-
ogy with a special interest in
law and public policy and a
PhD candidate at Yale Univer-
sity’s Program in the History
of Science and Medicine. His
dissertation is a history of
software patenting in the United States. Con Diaz
has an MPhil from the Department of History and
Philosophy of Science at University of Cambridge,
Trinity College. Contact him at gerardo.condiaz@
yale.edu.
January–March 2016 33