LANE, Judge.
This is an appeal from the decision of the Patent Office Board of Appeals, adhered to on reconsideration, affirming the rejection of claims 4 and 5 of appellant’s application entitled “Method of Determining Subsurface Porosity.”1 No claims were allowed. Subsequent to the oral argument of this appeal, the Supreme Court of the United States handed down its opinion in Gottschalk v. Benson, 409 U.S. 63, 93 S.Ct. 253, 34 L.Ed.2d 273 (1972) (hereafter Benson). We allowed appellant and appellee here to file supplemental briefs directed to that Supreme Court opinion and both have done so. We affirm the decision of the board.
The invention relates to a method of determining the porosity of subsurface formations. Porosity is one of the subsurface parameters which are of value to geologists, petroleum engineers and others interested in analyzing lithologic formations. In accordance with the present invention, it is possible to obtain a continuous plot of the porosity of the substances penetrated by a bore hole. The claimed method of determinng the porosity of lithologic substances from collected well logging data is set forth in claims 4 and 5:
4. The method of determining the porosity of a subsurface formation in situ comprising the steps of forming a fluid filled hole through said formation, measuring the density of said formation, generating both compres[1393]*1393sion and shear waves in said formation, computing compression and shear wave velocity from said waves, determining the bulk modulus of said fluid, and computing the porosity of the formation from the relation:
wherein 0 is the porosity, X*is said density, Vp is said compression wave velocity, Vs is said shear wave velocity and K is the bulk modulus of said fluid. CA7561]
5. The method of claim 4 in which the value of K is taken to be 0.235 x 1011 dynes/cm2.
The examiner rejected method claims 4 and 5 under 35 U.S.C. § 103 as unpat-entable over Itria2 and Blizard 3 since, in his opinion, the alleged advance over the art resides in nonstatutory subject matter. The examiner explained the reasoning behind the rejection in his Answer stating:
* * * the prior art teaches all the claimed steps except that drawn to computing the porosity of a formation. The essence of the appellant’s invention lies in using data already available to one of ordinary skill in the art to compute the values of a parameter known to be of value in determining the geophysical properties of a formation * * * according to a novel quadratic equation. Stated otherwise, the appellant’s point of departure from the teachings of the prior art lies in applying his new formula to old data to calculate values of a known parameter. While this discovery of the appellant may constitute an important contribution to' the art of geophysical prospecting, unless it falls within the four statutory subjects matter of 35 U.S.C-. 101 it cannot be protected by the patent laws.
The 'board, agreeing with the examiner’s reasoning, affirmed. On request for reconsideration, the board went on to explain:
* * * the present case, which * * * depends for patentability on non-statutory matter, comes primarily under the provisions of 35 U.S.C. 101.
The Examiner referred to 35 U.S.C. 103 in the final rejection since no single reference showed each of the physical steps of collecting data as defined by the claims, even though these steps were admitted to be old in the specification.
From this, we conclude that the only real issue before us is whether the method claims, which recite a mathematical formula at the point of novelty, define a statutory process within the meaning of 35 U.S.C. § 101.
OPINION
It is well established that under the present statutory scheme, patent property rights may not be secured on mathematical equations. As this court recently said in In re Bemhart, 417 F.2d 1395, 1399, 57 CCPA 737, 743 (1969):
We think it is clear that in enacting section 101 Congress meant to exclude principles or laws of nature and mathematics, of which equations are an example, from even temporary monopolization * * *.
[1394]*1394The Supreme Court in Benson, supra, more recently said:
It is conceded that one may not patent an idea. But in practical effect that would be the result if the formula for converting * * * [BCD numerals to pure binary numerals] were patented in this case. The mathematical formula involved here has no substantial practical application except in connection with a digital computer, which means that if the judgment below is affirmed, the patent would wholly pre-empt the mathematical formula and in practical effect would be a patent on the algorithm itself.
It may be that the patent laws should be extended to cover these programs, a policy matter to which we are not competent to speak. [409 U.S. at 71, 93 S.Ct. at 257.]
The Benson application claims, which the Supreme Court held do not constitute a patentable process within the meaning of 35 U.S.C. § 100(b), recite a method of converting signals or representations from binary coded decimal form into binary form by a series of steps. The steps include shifting, masking, adding, and repeating. The Benson claims are set forth in the appendix to the Supreme Court opinion, 409 U.S. at 73-74, 93 S.Ct. 253.
The Supreme Court concluded that the Benson method varies the ordinary arithmetic steps á human would use by changing the order of the steps, changing the symbolism for writing the multiplier used in some steps, and by taking subtotals after each successive operation. The Court found that the claimed mathematical procedures may be carried out in existing digital computers long in use, no new machinery being necessary, and that the mathematical procedures may also be performed without a computer.
Appellant here, in his supplemental brief, contends that Benson did not decide the issues of this case. Appellant states that his claims are drawn explicitly to a method of determining subsurface porosity in situ, and that his invention is not a computer program. It is clear that the term, in situ, as used in appellant’s application and claims merely means that formation porosity is determined without removing core samples for direct measurement. The actual computation of subsurface porosity is not made in the ground.
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LANE, Judge.
This is an appeal from the decision of the Patent Office Board of Appeals, adhered to on reconsideration, affirming the rejection of claims 4 and 5 of appellant’s application entitled “Method of Determining Subsurface Porosity.”1 No claims were allowed. Subsequent to the oral argument of this appeal, the Supreme Court of the United States handed down its opinion in Gottschalk v. Benson, 409 U.S. 63, 93 S.Ct. 253, 34 L.Ed.2d 273 (1972) (hereafter Benson). We allowed appellant and appellee here to file supplemental briefs directed to that Supreme Court opinion and both have done so. We affirm the decision of the board.
The invention relates to a method of determining the porosity of subsurface formations. Porosity is one of the subsurface parameters which are of value to geologists, petroleum engineers and others interested in analyzing lithologic formations. In accordance with the present invention, it is possible to obtain a continuous plot of the porosity of the substances penetrated by a bore hole. The claimed method of determinng the porosity of lithologic substances from collected well logging data is set forth in claims 4 and 5:
4. The method of determining the porosity of a subsurface formation in situ comprising the steps of forming a fluid filled hole through said formation, measuring the density of said formation, generating both compres[1393]*1393sion and shear waves in said formation, computing compression and shear wave velocity from said waves, determining the bulk modulus of said fluid, and computing the porosity of the formation from the relation:
wherein 0 is the porosity, X*is said density, Vp is said compression wave velocity, Vs is said shear wave velocity and K is the bulk modulus of said fluid. CA7561]
5. The method of claim 4 in which the value of K is taken to be 0.235 x 1011 dynes/cm2.
The examiner rejected method claims 4 and 5 under 35 U.S.C. § 103 as unpat-entable over Itria2 and Blizard 3 since, in his opinion, the alleged advance over the art resides in nonstatutory subject matter. The examiner explained the reasoning behind the rejection in his Answer stating:
* * * the prior art teaches all the claimed steps except that drawn to computing the porosity of a formation. The essence of the appellant’s invention lies in using data already available to one of ordinary skill in the art to compute the values of a parameter known to be of value in determining the geophysical properties of a formation * * * according to a novel quadratic equation. Stated otherwise, the appellant’s point of departure from the teachings of the prior art lies in applying his new formula to old data to calculate values of a known parameter. While this discovery of the appellant may constitute an important contribution to' the art of geophysical prospecting, unless it falls within the four statutory subjects matter of 35 U.S.C-. 101 it cannot be protected by the patent laws.
The 'board, agreeing with the examiner’s reasoning, affirmed. On request for reconsideration, the board went on to explain:
* * * the present case, which * * * depends for patentability on non-statutory matter, comes primarily under the provisions of 35 U.S.C. 101.
The Examiner referred to 35 U.S.C. 103 in the final rejection since no single reference showed each of the physical steps of collecting data as defined by the claims, even though these steps were admitted to be old in the specification.
From this, we conclude that the only real issue before us is whether the method claims, which recite a mathematical formula at the point of novelty, define a statutory process within the meaning of 35 U.S.C. § 101.
OPINION
It is well established that under the present statutory scheme, patent property rights may not be secured on mathematical equations. As this court recently said in In re Bemhart, 417 F.2d 1395, 1399, 57 CCPA 737, 743 (1969):
We think it is clear that in enacting section 101 Congress meant to exclude principles or laws of nature and mathematics, of which equations are an example, from even temporary monopolization * * *.
[1394]*1394The Supreme Court in Benson, supra, more recently said:
It is conceded that one may not patent an idea. But in practical effect that would be the result if the formula for converting * * * [BCD numerals to pure binary numerals] were patented in this case. The mathematical formula involved here has no substantial practical application except in connection with a digital computer, which means that if the judgment below is affirmed, the patent would wholly pre-empt the mathematical formula and in practical effect would be a patent on the algorithm itself.
It may be that the patent laws should be extended to cover these programs, a policy matter to which we are not competent to speak. [409 U.S. at 71, 93 S.Ct. at 257.]
The Benson application claims, which the Supreme Court held do not constitute a patentable process within the meaning of 35 U.S.C. § 100(b), recite a method of converting signals or representations from binary coded decimal form into binary form by a series of steps. The steps include shifting, masking, adding, and repeating. The Benson claims are set forth in the appendix to the Supreme Court opinion, 409 U.S. at 73-74, 93 S.Ct. 253.
The Supreme Court concluded that the Benson method varies the ordinary arithmetic steps á human would use by changing the order of the steps, changing the symbolism for writing the multiplier used in some steps, and by taking subtotals after each successive operation. The Court found that the claimed mathematical procedures may be carried out in existing digital computers long in use, no new machinery being necessary, and that the mathematical procedures may also be performed without a computer.
Appellant here, in his supplemental brief, contends that Benson did not decide the issues of this case. Appellant states that his claims are drawn explicitly to a method of determining subsurface porosity in situ, and that his invention is not a computer program. It is clear that the term, in situ, as used in appellant’s application and claims merely means that formation porosity is determined without removing core samples for direct measurement. The actual computation of subsurface porosity is not made in the ground. The measurement of density, compression wave velocity, shear wave velocity and bulk modulus of the subsurface formation, all known steps, merely precede the mathematical computation of formation porosity by solution of appellant’s novel equation. The in situ limitation in appellant’s claims does not render Benson inapplicable. We believe that Benson must influence our decision in the instant case. Appellant’s arguments, that Benson does not fully deal with the breadth of ’§ 101 and does not suggest what view the Congress should take, do not render inapplicable what the Supreme Court said in the quotation reproduced above.
Appellant further states that Benson does not mention the mental step issue and that it does not refer to the prior decisions of this court except the specific one before it. The issue considered by the Supreme Court in Benson was a narrow one, namely, is a formula for converting binary coded decimal numerals into pure binary numerals by a series of mathematical calculations a patentable process? The issue before us in the instant case is also a narrow one, namely, is a method claim in which the point of novelty is a mathematical equation to be solved as the final step of the method, a statutory method? We follow the Supreme Court'in concluding that the answer is in the negative. Given that the method of solving a mathematical equation may not be the subject of patent protection, it follows that the addition of the old and necessary antecedent steps of establishing values for the variables in the equation cannot convert the unpatentable method to patentable subject matter.
[1395]*1395In reaching our conclusion in the light of Benson, we find it unnecessary to discuss the correctness or the rationale of any of our prior decisions in a line of cases starting with In re Abrams, 188 F.2d 165, 38 CCPA 945 (1951). Each new appeal must be decided on its own facts and in view of interpretations of the patent law as handed down by the Supreme Court of the United States.
We conclude that in the instant case, the nonstatutory subject matter rejection made toy the Patent Office calls only for a treatment of this aspect of patentability with respect to the particular claims here involved. The decision of the board is affirmed.
Affirmed.