DIAMOND, COMMISSIONER OF PATENTS AND TRADEMARKS v. DIEHR ET AL.
No. 79-1112
SUPREME COURT OF THE UNITED STATES
450 U.S. 175; 101 S. Ct. 1048; 67 L. Ed. 2d 155; 1981 U.S. LEXIS 73; 49 U.S.L.W.
4194; 209 U.S.P.Q. (BNA) 1
October 14, 1980, Argued
March 3, 1981, Decided
PRIOR HISTORY:
CERTIORARI TO THE UNITED STATES COURT OF CUSTOMS AND PATENT APPEALS.
DISPOSITION: 602 F.2d 982, affirmed.
DECISION: Process for curing synthetic rubber employing mathematical
formula and programmed digital computer, held patentable subject matter under 35
USCS 101.
SUMMARY: Certain individuals filed a patent application for a process for
molding raw, uncured synthetic rubber into cured precision products. The
individuals claimed that their process insured the production of molded articles
which are properly cured. Although it is possible by using well-known time,
temperature, and cure relationships to calculate by means of an established
mathematical equation when to open the molding press and remove the cured
product, the individuals argued that the industry had not been able to obtain
uniformly accurate cures because the temperature of the press could not be
precisely measured, making it difficult to do the necessary computations to
determine cure time. The individuals characterized their contribution to the art
as residing in the process of constantly measuring the actual temperature inside
the mold, with these temperature measurements being automatically fed into a
computer which recalculates the cure time by use of the mathematical equation
and ultimately signals a device to open the press at the correct moment.
Concluding that the individuals' claims defined and sought protection of a
computer program, the patent examiner rejected those claims on the sole ground
that they were drawn to nonstatutory subject matter under 35 USCS 101, which
provides for the issuance of patents to whoever invents or discovers any new and
useful process, machine, manufacture, or composition of matter, or any new and
useful improvement thereof. The Patent and Trademark Office Board of Appeals
agreed with the examiner, but the United States Court of Customs and Patent
Appeals reversed, noting that a claim drawn to subject matter otherwise
statutory does not become nonstatutory because a computer is involved (602 F2d
982).
On certiorari, the United States Supreme Court affirmed. In an opinion by
Rehnquist, J., joined by Burger, Ch. J., and Stewart, White, and Powell, JJ., it
was held that the physical and chemical process for molding precision synthetic
rubber products fell within the categories of subject matter eligible for patent
protection under 35 USCS 101, and this result was not altered by the fact that
in several steps of the process a mathematical equation and programmed digital
computer were used, since (1) no attempt was being made to preempt the use of
the equation but only to foreclose others from the use of that equation in
conjunction with all of the other steps in the claimed process, and (2) use of
the computer in the process did not render the process as a whole unpatentable
subject matter in view of the fact that the computer was used to achieve a
result previously unknown in the art, the fact that one or more of the steps in
the process might not, in isolation, be novel or independently eligible for
patent protection being irrelevant to the question of whether the claims as a
whole recited subject matter eligible for patent protection under 101.
Stevens, J., joined by Brennan, Marshall, and Blackmun, JJ., dissenting,
expressed the view that no program-related invention is a patentable process
under 35 USCS 101 unless it makes a contribution to the art that is not
dependent entirely on the utilization of a computer, and therefore the invention
claimed in the patent application at issue in the case at bar, which made no
contribution that was not entirely dependent upon the utilization of a computer
in a familiar process, was not patentable subject matter.
LAWYERS' EDITION HEADNOTES:
[***LEdHN1]
PATENTS §45
rubber curing process -- use of computer and mathematical formula --
patentability --
Headnote:[1A][1B][1C][1D][1E]
A physical and chemical process for molding precision synthetic rubber products
falls within the categories of subject matter eligible for patent protection
under 35 USCS 101--which provides for the issuance of patents to whoever invents
or discovers any new and useful process, machine, manufacture, or composition of
matter, or any new and useful improvement thereof--and this result is not
altered by the fact that in several steps of the process an established
mathematical equation and programmed digital computer are used, where (1) no
attempt is made to preempt the use of the equation but only to foreclose others
from the use of that equation in conjunction with all of the other steps in the
claimed process, and (2) use of the computer in the process does not render the
process as a whole unpatentable subject matter in view of the fact that the
computer is employed to achieve a result previously unknown in the art, the fact
that one or more of the steps in the process might not, in isolation, be novel
or independently eligible for patent protection being irrelevant to the question
of whether the claim as a whole recites subject matter eligible for patent
protection under 101. (Stevens, Brennan, Marshall, and Blackmun, JJ., dissented
from this holding.)
[***LEdHN2]
STATUTES §164
statutory construction -- language of statute -- common meaning --
Headnote:[2]
In cases of statutory construction, courts the place to begin is the language of
the statute, and words, unless otherwise defined, will be interpreted as taking
their ordinary, contemporary, common meaning.
[***LEdHN3]
PATENTS §16
laws of nature -- physical phenomena -- ideas --
Headnote:[3]
35 USCS 101, which governs the issuance of patents, does not embrace every
discovery, and excluded from such patent protection are laws of nature, physical
phenomena and abstract ideas; neither an idea, an abstract principle, an
original cause, nor a motive can be patented.
[***LEdHN4]
PATENTS §16
mathematical formula -- computer program -- digital computer --
Headnote:[4]
With regard to 35 USCS 101, which governs the issuance of patents, a claim drawn
to subject matter otherwise statutory does not become nonstatutory simply
because it uses a mathematical formula, computer program or digital computer.
[***LEdHN5]
PATENTS §45
scientific truth -- mathematical formula -- patentability --
Headnote:[5]
While a scientific truth, or the mathematical expression of it, is not a
patentable invention, a novel and useful structure created with the aid of
knowledge of scientific truth may be; an application of a law of nature or
mathematical formula to an known structure or process may well be deserving of
patent protection.
[***LEdHN6]
PATENTS §45
phenomenon of nature -- invention -- "product" claim -- "process" claim --
Headnote:[6A][6B]
The principle that the discoverer of a previously unknown phenomenon of nature
has no claim to a monopoly over that discovery which is recognized by law, and
that any invention from that discovery must come from the application of the law
of nature to a new and useful end, applies both to a "product" claim and to a
"process" claim.
[***LEdHN7]
PATENTS §45
mathematical equation -- rubber curing process -- patentability --
Headnote:[7]
While Arrhenius' equation for calculating the cure time in rubber molding
presses is not patentable in isolation, when a process for curing rubber is
devised which incorporates it in a more efficient solution of the equation, that
process is at the very least not barred at the threshold by 35 USCS 101, which
governs the issuance of patents.
[***LEdHN8]
PATENTS §45
process claim -- eligibility for patent protection --
Headnote:[8]
In determining the eligibility of a claimed process for patent protection under
35 USCS 101, claims must be considered as a whole, and it is inappropriate to
dissect the claims into old and new elements and then to ignore the presence of
the old elements in the analysis, and this is particularly true in a process
claim because a new combination of steps in the process may be patentable even
though all the constituents of the combination were well known and in common use
years before the combination was made; the "novelty" of any element or steps in
the process, or even of the process itself, is of no relevance in determining
whether the subject matter of a claim falls within the categories of possibly
patentable subject matter under 101.
[***LEdHN9]
PATENTS §45
mathematical algorithm -- patentability --
Headnote:[9A][9B]
With regard to the eligibility of a claimed process involving a mathematical
algorithm for patent protection under 35 USCS 101, which governs the issuance of
patents, the fact that everything other than the algorithm is determined to be
old in the art does not necessarily prevent the claim from reciting statutory
subject matter.
[***LEdHN10]
PATENTS §16
novelty of particular invention -- eligibility for patent protection --
Headnote:[10]
The question whether a particular invention is novel is fully apart from whether
the invention falls into a category of statutory subject matter eligible for
patent protection under 35 USCS 101.
[***LEdHN11]
PATENTS §45
patent claim -- mathematical formula -- post-solution activity --
Headnote:[11]
When a claim recites a mathematical formula (or scientific principle or
phenomenon of nature), an inquiry must be made into whether the claim is seeking
patent protection for that formula in the abstract, since a mathematical formula
as such is not accorded the protection of the patent laws, and this principle
cannot be circumvented by attempting to limit the use of the formula to a
particular technological environment; similarly, insignificant post-solution
activity does not transform an unpatentable principle into a patentable process.
[***LEdHN12]
PATENTS §45
mathematical formula -- patentable subject matter --
Headnote:[12A][12B]
A mathematical formula does not suddenly become patentable subject matter simply
by having the applicant acquiesce to limiting the reach of the patent for the
formula to a particular technological use, and a mathematical formula in the
abstract is nonstatutory subject matter regardless of whether the patent is
intended to cover all uses of the formula or only limited uses, just as a
formula does not become patentable subject matter merely by including in the
claim for the formula token post-solution activity; however when a claim
containing a mathematical formula implements or applies that formula in a
structure or process which, considered as a whole, is performing a function
which patent laws were designed to protect (for example, transforming or
reducing an article to a different state or thing), then the claim satisfies the
requirements of 35 USCS 101, which governs the issuance of patents.
[***LEdHN13]
PATENTS §16
process -- novelty -- patentable subject matter --
Headnote:[13A][13B]
In determining whether a claimed process is patentable subject matter under 35
USCS 101, which governs the issuance of patents, one should not read out of the
patent application all of the steps in the claimed process which are not novel
or "inventive" since that is not the purpose of the 101 inquiry, and to do so
would conflict with the proposition that a claimed invention may be entitled to
patent protection even though some or all of its elements are not "novel."
SYLLABUS: Respondents filed a patent application claiming invention for a
process for molding raw, uncured synthetic rubber into cured precision products.
While it was possible, by using well-known time, temperature, and cure
relationships, to calculate by means of an established mathematical equation
when to open the molding press and remove the cured product, according to
respondents the industry had not been able to measure precisely the temperature
inside the press, thus making it difficult to make the necessary
computations to determine the proper cure time. Respondents characterized their
contribution to the art to reside in the process of constantly measuring the
temperature inside the mold and feeding the temperature measurements into a
computer that repeatedly recalculates the cure time by use of the mathematical
equation and then signals a device to open the press at the proper time. The
patent examiner rejected respondents' claims on the ground that they were drawn
to nonstatutory subject matter under 35 U. S. C. § 101, which provides for the
issuance of patents to "[whoever] invents or discovers any new and useful
process, machine, manufacture, or composition of matter, or any new and
useful improvement thereof . . . ." The Patent and Trademark Office Board of
Appeals agreed, but the Court of Customs and Patent Appeals reversed.
Held: Respondents' claims recited subject matter that was eligible for
patent protection under § 101. Pp. 181-193.
(a) For purposes of § 101, a "process" is "an act, or a series of acts,
performed upon the subject-matter to be transformed and reduced to a different
state or thing. If new and useful, it is just as patentable as is a piece of
machinery. . . . The machinery pointed out as suitable to perform the process
may or may not be new or patentable." Cochrane v. Deener, 94 U.S.
780, 788. Industrial processes such as respondents' claims for transforming raw,
uncured synthetic rubber into a different state or thing are the types which
have historically been eligible to receive patent-law protection. Pp. 181-184.
(b) While a mathematical formula, like a law of nature, cannot be the subject of
a patent, cf. Gottschalk v. Benson, 409 U.S. 63; Parker v.
Flook, 437 U.S. 584, respondents do not seek to patent a mathematical
formula, but instead seek protection for a process of curing synthetic rubber.
Although their process employs a well-known mathematical equation, they do not
seek to pre-empt the use of that equation, except in conjunction with all of the
other steps in their claimed process. A claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a mathematical
formula, computer program, or digital computer. Respondents' claims must be
considered as a whole, it being inappropriate to dissect the claims into old and
new elements and then to ignore the presence of the old elements in the
analysis. The questions of whether a particular invention meets the "novelty"
requirements of 35 U. S. C. § 102 or the "nonobviousness" requirements of § 103
do not affect the determination of whether the invention falls into a category
of subject matter that is eligible for patent protection under § 101. Pp.
185-191.
(c) When a claim containing a mathematical formula implements or applies the
formula in a structure or process which, when considered as a whole, is
performing a function which the patent laws were designed to protect (e. g.,
transforming or reducing an article to a different state or thing), then the
claim satisfies § 101's requirements. Pp. 191-193.
COUNSEL: Deputy Solicitor General Wallace argued the cause for
petitioner. With him on the briefs were Solicitor General McCree, Assistant
Attorney General Litvack, Harriet S. Shapiro, Robert B. Nicholson, Frederic
Freilicher, Joseph F. Nakamura, and Thomas E. Lynch.
Robert E. Wichersham argued the cause for respondents. With him on the brief
were Robert F. Hess, Jay M. Cantor, and Thomas M. Freiburger. *
* Edward S. Irons, Mary Helen Sears, and Robert P. Beshar filed a brief for
National Semiconductor Corp. as amicus curiae urging reversal.
Briefs of amici curiae urging affirmance were filed by Donald R. Dunner, Kenneth
E. Kuffner, and Travis Gordon White for the American Patent Law Association,
Inc.; by Morton C. Jacobs for Applied Data Research, Inc.; by William L. Mathis
and Harold D. Messner for Chevron Research Co.; and by Reed C. Lawlor and James
W. Geriak for the Los Angeles Patent Law Association.
JUDGES: REHNQUIST, J., delivered the opinion of the Court, in which
BURGER, C. J., and STEWART, WHITE, and POWELL, JJ., joined. STEVENS, J., filed a
dissenting opinion, in which BRENNAN, MARSHALL, and BLACKMUN, JJ., joined, post,
p. 193.
OPINIONBY: REHNQUIST
OPINION: [*177] [***160] [**1052] JUSTICE REHNQUIST delivered the
opinion of the Court.
[***LEdHR1A] [1A]We granted certiorari to determine whether a process for
curing synthetic rubber which includes in several of its steps the use of a
mathematical formula and a programmed digital computer is patentable subject
matter under 35 U. S. C. § 101.
I
The patent application at issue was filed by the respondents on August 6, 1975.
The claimed invention is a process for molding raw, uncured synthetic rubber
into cured precision products. The process uses a mold for precisely shaping the
uncured material under heat and pressure and then curing the synthetic rubber in
the mold so that the product will retain its shape and be functionally operative
after the molding is completed. n1
- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -
n1 A "cure" is obtained by mixing curing agents into the uncured polymer in
advance of molding, and then applying heat over a period of time. If the
synthetic rubber is cured for the right length of time at the right temperature,
it becomes a usable product.
- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - -
Respondents claim that their process ensures the production of molded articles
which are properly cured. Achieving the perfect cure depends upon several
factors including the thickness of the article to be molded, the temperature of
the molding process, and the amount of time that the article is allowed to
remain in the press. It is possible using well-known time, temperature, and cure
relationships to calculate by means of the Arrhenius equation n2 when to open
the press [*178] and remove the cured product. Nonetheless, according to the
respondents, the industry has not been able to obtain uniformly accurate cures
because the temperature of the molding press could not be precisely measured,
thus making it difficult to do the necessary computations to determine cure
time. n3 Because the temperature inside the press has heretofore been
viewed as an uncontrollable variable, the conventional industry practice has
been to calculate the cure time as the shortest time in which all parts of the
product will [***161] definitely be cured, assuming a reasonable amount of
mold-opening time during loading and unloading. But the shortcoming of this
practice is that operating with an uncontrollable variable inevitably led in
some instances to overestimating the mold-opening time and overcuring the
rubber, and in other instances to underestimating that time and undercuring the
product. n4
- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -
n2 The equation is named after its discoverer Svante Arrhenius and has long been
used to calculate the cure time in rubber-molding presses. The equation can be
expressed as follows:
ln v <v1>equ CZ+x
wherein ln v is the natural logarithm of v, the total required cure time; C is
the activation constant, a unique figure for each batch of each compound being
molded, determined in accordance with rheometer measurements of each batch; Z is
the temperature in the mold; and x is a constant dependent on the geometry of
the particular mold in the press. A rheometer is an instrument to measure flow
of viscous substances.
n3 During the time a press is open for loading, it will cool. The longer it is
open, the cooler it becomes and the longer it takes to reheat the press to the
desired temperature range. Thus, the time necessary to raise the mold
temperature to curing temperature is an unpredictable variable. The respondents
claim to have overcome this problem by continuously measuring the actual
temperature in the closed press through the use of a thermocouple.
n4 We note that the petitioner does not seriously contest the respondents'
assertions regarding the inability of the industry to obtain accurate cures on a
uniform basis. See Brief for Petitioner 3.
- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - -
Respondents characterize their contribution to the art to reside in the process
of constantly measuring the actual temperature inside the mold. These
temperature [**1053] measurements are then automatically fed into a computer
which repeatedly recalculates the cure time by use of the Arrhenius equation.
[*179] When the recalculated time equals the actual time that has elapsed
since the press was closed, the computer signals a device to open the press.
According to the respondents, the continuous measuring of the temperature inside
the mold cavity, the feeding of this information to a digital computer which
constantly recalculates the cure time, and the signaling by the computer to open
the press, are all new in the art.
The patent examiner rejected the respondents' claims on the sole ground that
they were drawn to nonstatutory subject matter under 35 U. S. C. § 101. n5 He
determined [***162] that those [*180] steps in respondents' claims that are
carried out by a computer under control of a stored program constituted
nonstatutory subject matter under this Court's decision in Gottschalk v.
Benson, 409 U.S. 63 (1972). The remaining [**1054] steps -- installing
rubber in the press and the subsequent closing of the [*181] press -- were
"conventional and necessary to the process and cannot be the basis of
patentability." The examiner concluded that respondents' claims defined and
sought protection of a computer program for operating a rubber-molding press.
- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -
n5 Respondents' application contained 11 different claims. Three examples are
claims 1, 2, and 11 which provide:
"1. A method of operating a rubber-molding press for precision molded compounds
with the aid of a digital computer, comprising:
"providing said computer with a data base for said press including at least,
"natural logarithm conversion data (ln),
"the activation energy constant (C) unique to each batch of said compound being
molded, and
"a constant (x) dependent upon the geometry of the particular mold of the press,
"initiating an interval timer in said computer upon the closure of the press for
monitoring the elapsed time of said closure,
"constantly determining the temperature (Z) of the mold at a location closely
adjacent to the mold cavity in the press during molding,
"constantly providing the computer with the temperature (Z),
"repetitively calculating in the computer, at frequent intervals during each
cure, the Arrhenius equation for reaction time during the cure, which is
"ln v <v1>equ CZ+x
"where v is the total required cure time,
"repetitively comparing in the computer at said frequent intervals during the
cure each said calculation of the total required cure time calculated with the
Arrhenius equation and said elapsed time, and
"opening the press automatically when a said comparison indicates equivalence.
"2. The method of claim 1 including measuring the activation energy constant for
the compound being molded in the press with a rheometer and automatically
updating said data base within the computer in the event of changes in the
compound being molded in said press as measured by said rheometer.
. . . .
"11. A method of manufacturing precision molded articles from selected synthetic
rubber compounds in an openable rubber molding press having at least one heated
precision mold, comprising:
"(a) heating said mold to a temperature range approximating a predetermined
rubber curing temperature,
"(b) installing prepared unmolded synthetic rubber of a known compound in a
molding cavity of predetermined geometry as defined by said mold,
"(c) closing said press to mold said rubber to occupy said cavity in conformance
with the contour of said mold and to cure said rubber by transfer of heat
thereto from said mold,
"(d) initiating an interval timer upon the closure of said press for monitoring
the elapsed time of said closure,
"(e) heating said mold during said closure to maintain the temperature thereof
within said range approximating said rubber curing temperature,
"(f) constantly determining the temperature of said mold at a location closely
adjacent said cavity thereof throughout closure of said press,
"(g) repetitively calculating at frequent periodic intervals throughout closure
of said press the Arrhenius equation for reaction time of said rubber to
determine total required cure time v as follows:
"ln v <v1>equ cz+x
"wherein c is an activation energy constant determined for said rubber being
molded and cured in said press, z is the temperature of said mold at the time of
each calculation of said Arrhenius equation, and x is a constant which is a
function of said predetermined geometry of said mold,
"(h) for each repetition of calculation of said Arrhenius equation herein,
comparing the resultant calculated total required cure time with the monitored
elapsed time measured by said interval timer,
"(i) opening said press when a said comparison of calculated total required cure
time and monitored elapsed time indicates equivalence, and
"(j) removing from said mold the resultant precision molded and cured rubber
article."
- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - -
The Patent and Trademark Office Board of Appeals agreed with the examiner, but
the Court of Customs and Patent Appeals reversed. In re Diehr, 602 F.2d
982 (1979). The court noted that a claim drawn to subject matter otherwise
statutory does not become nonstatutory because a computer is involved. The
respondents' claims were not directed to a mathematical algorithm or an improved
method of calculation but rather recited an improved process for molding rubber
articles by solving a practical problem which had arisen in the molding of
rubber products.
The Commissioner of Patents and Trademarks sought certiorari arguing that the
decision of the Court of Customs and Patent Appeals was inconsistent with prior
decisions of this Court. Because of the importance of the question presented, we
granted the writ. 445 U.S. 926 (1980).
II
Last Term in Diamond v. Chakrabarty, 447 U.S. 303 (1980), this
Court discussed the historical purposes of the patent laws and in particular 35
U. S. C. § 101. As in Chakrabarty, we must here construe 35 U. S. C. §
101 which provides:
"Whoever invents or discovers any new and useful process, machine, manufacture,
or composition of matter, or any new and useful improvement thereof, may obtain
a patent therefor, subject to the conditions and requirements of this title." n6
- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -
n6 The word "process" is defined in 35 U. S. C. § 100 (b):
"The term 'process' means process, art or method, and includes a new use of a
known process, machine, manufacture, composition of matter, or material."
- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - -
[*182]
[***LEdHR2] [2]In cases of statutory construction, we begin with the language
of [***163] the statute. Unless otherwise defined, "words will be interpreted
as taking their ordinary, contemporary, common meaning," Perrin v.
United States, 444 U.S. 37, 42 (1979), and, in dealing with the patent laws,
we have more than once cautioned that "courts 'should not read into the patent
laws limitations and conditions which the legislature has not expressed.'"
Diamond v. Chakrabarty, supra, at 308, quoting United States
v. Dubilier Condenser Corp., 289 U.S. 178, 199 (1933).
The Patent Act of 1793 defined statutory subject matter as "any new and useful
art, machine, manufacture or composition of matter, or any new or useful
improvement [thereof]." Act of Feb. 21, 1793, ch. 11, § 1, 1 Stat. 318. Not
until the patent laws were recodified in 1952 did Congress replace the word
"art" with the word "process." It is that latter word which we confront today,
and in order to determine its meaning we may not be unmindful of the Committee
Reports accompanying the 1952 Act which inform us that Congress intended
statutory subject matter to "include anything under the sun that is made by
man." S. Rep. No. 1979, 82d Cong., 2d Sess., 5 (1952); H. R. Rep. No. 1923, 82d
Cong., 2d Sess., 6 (1952).
Although the term "process" was not added to 35 U. S. C. § 101 until 1952, a
process has historically enjoyed patent protection because it was considered a
form of "art" as that term was used in the 1793 Act. n7 In defining the nature
of a patentable process, the Court stated:
[***164] [**1055] "That a process may be patentable, irrespective of the
[*183] particular form of the instrumentalities used, cannot be disputed. . .
. A process is a mode of treatment of certain materials to produce a given
result. It is an act, or a series of acts, performed upon the subject-matter to
be transformed and reduced to a different state or thing. If new and useful, it
is just as patentable as is a piece of machinery. In the language of the patent
law, it is an art. The machinery pointed out as suitable to perform the process
may or may not be new or patentable; whilst the process itself may be altogether
new, and produce an entirely new result. The process requires [*184] that
certain things should be done with certain substances, and in a certain order;
but the tools to be used in doing this may be of secondary consequence."
Cochrane v. Deener, 94 U.S. 780, 787-788 (1877).
- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -
n7 In Corning v. Burden, 15 How. 252, 267-268 (1854), this Court
explained:
"A process, eo nomine, is not made the subject of a patent in our act of
congress. It is included under the general term 'useful art.' An art may require
one or more processes or machines in order to produce a certain result or
manufacture. The term machine includes every mechanical device or combination of
mechanical powers and devices to perform some function and produce a certain
effect or result. But where the result or effect is produced by chemical action,
by the operation or application of some element or power of nature, or of one
substance to another, such modes, methods, or operations, are called processes.
A new process is usually the result of discovery; a machine, of invention. The
arts of tanning, dyeing, making water-proof cloth, vulcanizing India rubber,
smelting ores, and numerous others, are usually carried on by processes as
distinguished from machines. One may discover a new and useful improvement in
the process of tanning, dyeing, &c., irrespective of any particular form of
machinery or mechanical device. And another may invent a labor-saving machine by
which this operation or process may be performed, and each may be entitled to
his patent. As, for instance, A has discovered that by exposing India rubber to
a certain degree of heat, in mixture or connection with certain metalic salts,
he can produce a valuable product, or manufacture; he is entitled to a patent
for his discovery, as a process or improvement in the art, irrespective of any
machine or mechanical device. B, on the contrary, may invent a new furnace or
stove, or steam apparatus, by which this process may be carried on with much
saving of labor, and expense of fuel; and he will be entitled to a patent for
his machine, as an improvement in the art. Yet A could not have a patent for a
machine, or B for a process; but each would have a patent for the means or
method of producing a certain result, or effect, and not for the result or
effect produced. It is for the discovery or invention of some practical method
or means of producing a beneficial result or effect, that a patent is granted,
and not for the result or effect itself. It is when the term process is used to
represent the means or method of producing a result that it is patentable, and
it will include all methods or means which are not effected by mechanism or
mechanical combinations."
- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - -
Analysis of the elibility of a claim of patent protection for a "process" did
not change with the addition of that term to § 101. Recently, in Gottschalk
v. Benson, 409 U.S. 63 (1972), we repeated the above definition recited
in Cochrane v. Deener, adding: "Transformation and reduction of an
article 'to a different state or thing' is the clue to the patentability of a
process claim that does not include particular machines." 409 U.S., at 70.
[***LEdHR1B] [1B]Analyzing respondents' claims according to the above
statements from our cases, we think that a physical and chemical process for
molding precision synthetic rubber products falls within the § 101 categories of
possibly patentable subject matter. That respondents' claims involve the
transformation of an article, in this case raw, uncured synthetic rubber, into a
different state or thing cannot be disputed. The respondents' claims describe in
detail a step-by-step method for accomplishing such, beginning with the loading
of a mold with raw, uncured rubber and ending with the eventual opening of the
press at the conclusion of the cure. Industrial processes such as this are the
types which have historically been eligible to receive the protection of our
patent laws. n8
- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -
n8 We note that as early as 1854 this Court approvingly referred to patent
eligibility of processes for curing rubber. See id., at 267; n. 7,
supra. In Tilghman v. Proctor, 102 U.S. 707 (1881), we
referred to the original patent Charles Goodyear received on his process for
"vulcanizing" or curing rubber. We stated:
"That a patent can be granted for a process, there can be no doubt. The patent
law is not confined to new machines and new compositions of matter, but extends
to any new and useful art or manufacture. A manufacturing process is clearly an
art, within the meaning of the law. Goodyear's patent was for a process, namely,
the process of vulcanizing india-rubber by subjecting it to a high degree of
heat when mixed with sulphur and a mineral salt. The apparatus for performing
the process was not patented, and was not material. The patent pointed out how
the process could be effected, and that was deemed sufficient." Id., at
722.
- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - -
[*185] III
[**1056]
[***LEdHR3] [3]Our conclusion regarding respondents' claims is not altered by
the fact that in several steps of the process a mathematical equation and a
programmed digital computer are used. This Court has undoubtedly recognized
limits to § 101 and every discovery is not embraced within the statutory terms.
Excluded from such patent protection are laws of nature, natural phenomena, and
[***165] abstract ideas. See Parker v. Flook, 437 U.S. 584
(1978); Gottschalk v. Benson, supra, at 67; Funk Bros. Seed Co.
v. Kalo Inoculant Co., 333 U.S. 127, 130 (1948). "An idea of itself is
not patentable," Rubber-Tip Pencil Co. v. Howard, 20 Wall. 498,
507 (1874). "A principle, in the abstract, is a fundamental truth; an original
cause; a motive; these cannot be patented, as no one can claim in either of them
an exclusive right." Le Roy v. Tatham, 14 How. 156, 175 (1853).
Only last Term, we explained:
"[A] new mineral discovered in the earth or a new plant found in the wild is not
patentable subject matter. Likewise, Einstein could not patent his celebrated
law that E=mc<2>; nor could Newton have patented the law of gravity. Such
discoveries are 'manifestations of . . . nature, free to all men and reserved
exclusively to none.'" Diamond v. Chakrabarty, 447 U.S., at 309,
quoting Funk Bros. Seed Co. v. Kalo Inoculant Co., supra, at 130.
Our recent holdings in Gottschalk v. Benson, supra, and Parker
v. Flook, supra, both of which are computer-related, stand for no more
than these long-established principles. In Benson, we held unpatentable
claims for an algorithm used to convert binary code decimal numbers to
equivalent pure binary numbers. The sole practical application of the algorithm
was in connection with the programming of a [*186] general purpose digital
computer. We defined "algorithm" as a "procedure for solving a given type of
mathematical problem," and we concluded that such an algorithm, or mathematical
formula, is like a law of nature, which cannot be the subject of a patent. n9
- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -
n9 The term "algorithm" is subject to a variety of definitions. The petitioner
defines the term to mean:
"'1. A fixed step-by-step procedure for accomplishing a given result; usually a
simplified procedure for solving a complex problem, also a full statement of a
finite number of steps. 2. A defined process or set of rules that leads [sic]
and assures development of a desired output from a given input. A sequence of
formulas and/or algebraic/logical steps to calculate or determine a given task;
processing rules.'" Brief for Petitioner in Diamond v. Bradley, O.
T. 1980, No. 79-855, p. 6, n. 12, quoting C. Sippl & R. Sippl, Computer
Dictionary and Handbook 23 (2d ed. 1972).
This definition is significantly broader than the definition this Court employed
in Benson and Flook. Our previous decisions regarding the
patentability of "algorithms" are necessarily limited to the more narrow
definition employed by the Court, and we do not pass judgment on whether
processes falling outside the definition previously used by this Court, but
within the definition offered by the petitioner, would be patentable subject
matter.
- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - -
Parker v. Flook, supra, presented a similar situation. The claims
were drawn to a method for computing an "alarm limit." An "alarm limit" is
simply a number and the Court concluded that the application sought to protect a
formula for computing this number. Using this formula, the updated alarm limit
could be calculated if several other variables were known. The application,
however, did not purport to explain how these other variables were to be
determined, n10 nor [*187] did it purport "to contain [***166] [**1057]
any disclosure relating to the chemical processes at work, the monitoring of
process variables, or the means of setting off an alarm or adjusting an alarm
system. All that it provides is a formula for computing an updated alarm limit."
437 U.S., at 586.
- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -
n10 As we explained in Flook, in order for an operator using the formula
to calculate an updated alarm limit the operator would need to know the original
alarm base, the appropriate margin of safety, the time interval that should
elapse between each updating, the current temperature (or other process
variable), and the appropriate weighing factor to be used to average the alarm
base and the current temperature. 437 U.S., at 586. The patent application did
not "explain how to select the approximate margin of safety, the weighing
factor, or any of the other variables." Ibid.
- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - -
[***LEdHR1C] [1C]In contrast, the respondents here do not seek to patent a
mathematical formula. Instead, they seek patent protection for a process of
curing synthetic rubber. Their process admittedly employs a well-known
mathematical equation, but they do not seek to pre-empt the use of that
equation. Rather, they seek only to foreclose from others the use of that
equation in conjunction with all of the other steps in their claimed process.
These include installing rubber in a press, closing the mold, constantly
determining the temperature of the mold, constantly recalculating the
appropriate cure time through the use of the formula and a digital computer, and
automatically opening the press at the proper time. Obviously, one does not need
a "computer" to cure natural or synthetic rubber, but if the computer use
incorporated in the process patent significantly lessens the possibility of
"overcuring" or "undercuring," the process as a whole does not thereby become
unpatentable subject matter.
[***LEdHR4] [4] [***LEdHR5] [5] [***LEdHR6A] [6A]Our earlier opinions lend
support to our present conclusion that a claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a mathematical
formula, computer program, or digital computer. In Gottschalk v.
Benson we noted: "It is said that the decision precludes a patent for any
program servicing a computer. We do not so hold." 409 U.S., at 71. Similarly, in
Parker v. Flook we stated that "a process is not unpatentable
simply because it contains a law of nature or a mathematical algorithm." 437
U.S., at 590. It is now commonplace that an application of a law of
nature or mathematical formula to a known structure or process may well be
deserving of patent protection. See, e. g., Funk Bros. Seed [*188] Co.
v. Kalo Inoculant Co., 333 U.S. 127 (1948); Eibel Process Co. v.
Minnesota & Ontario Paper Co., 261 U.S. 45 (1923); Cochrane v.
Deener, 94 U.S. 780 (1877); O'Reilly v. Morse, 15 How. 62
(1854); and Le Roy v. Tatham, 14 How. 156 (1853). As Justice Stone
explained four decades ago:
"While a scientific truth, or the mathematical expression of it, is not a
patentable invention, a novel and useful structure created with the aid of
knowledge of scientific truth may be." Mackay Radio & Telegraph Co. v.
Radio Corp. of America, 306 U.S. 86, 94 (1939). n11
[***LEdHR6B] [6B]
- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -
n11 We noted inFunk Bros. Seed Co. v. Kalo Inoculant Co., 333 U.S.
127, 130 (1948):
"He who discovers a hitherto unknown phenomenon of nature has no claim to a
monopoly of it which the law recognizes. If there is to be invention from such a
discovery, it must come from the application of the law of nature to a new and
useful end."
Although we were dealing with a "product" claim in Funk Bros., the same
principle applies to a process claim. Gottschalk v. Benson, 409
U.S. 63, 68 (1972).
- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - -
[***LEdHR7] [7]We [***167] think this statement in Mackay takes us a
long way toward the correct answer in this case. Arrhenius' equation is not
patentable in isolation, but when a process for curing rubber is devised which
incorporates in it a more efficient solution of the equation, that process is at
the very least not barred at the threshold by § 101.
[***LEdHR8] [8] [***LEdHR9A] [9A]In determining the eligibility of
respondents' claimed process for patent protection under § 101, their claims
must be [**1058] considered as a whole. It is inappropriate to dissect the
claims into old and new elements and then to ignore the presence of the old
elements in the analysis. This is particularly true in a process claim because a
new combination of steps in a process may be patentable even though all the
constituents of the combination were well known and in common use before the
combination was made. The "novelty" of any element or steps in a process, or
even of the [*189] process itself, is of no relevance in determining whether
the subject matter of a claim falls within the § 101 categories of possibly
patentable subject matter. n12
[***LEdHR9B] [9B]
- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -
n12 It is argued that the procedure of dissecting a claim into old and new
elements is mandated by our decision inFlook which noted that a
mathematical algorithm must be assumed to be within the "prior art." It is from
this language that the petitioner premises his argument that if everything other
than the algorithm is determined to be old in the art, then the claim cannot
recite statutory subject matter. The fallacy in this argument is that we did not
hold in Flook that the mathematical algorithm could not be considered at
all when making the § 101 determination. To accept the analysis proffered by the
petitioner would, if carried to its extreme, make all inventions unpatentable
because all inventions can be reduced to underlying principles of nature which,
once known, make their implementation obvious. The analysis suggested by the
petitioner would also undermine our earlier decisions regarding the criteria to
consider in determining the eligibility of a process for patent protection. See,
e. g., Gottschalk v. Benson, supra; and Cochrane v.
Deener, 94 U.S. 780 (1877).
- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - -
[***LEdHR10] [10]It has been urged that novelty is an appropriate
consideration under § 101. Presumably, this argument results from the language
in § 101 referring to any "new and useful" process, machine, etc. Section 101,
however, is a general statement of the type of subject matter that is eligible
for patent protection "subject to the conditions and requirements of this
title." Specific conditions for patentability follow and § 102 covers in detail
the conditions relating to novelty. n13 [*190] The question [***168]
therefore of whether a particular invention is novel is "wholly apart from
whether the invention falls into a category of statutory subject matter." In
re Bergy, 596 F.2d 952, 961 (CCPA 1979) (emphasis deleted). See also
Nickola v. Peterson, 580 F.2d 898 (CA6 1978). The legislative history
of the 1952 Patent Act is in accord with this reasoning. The Senate Report
stated:
Section 101 sets forth the subject matter that can be patented, 'subject to the
conditions and requirements of this title.' The conditions under which a patent
may be obtained follow, and Section 102 covers the conditions relating to
novelty." S. Rep. No. 1979, 82d Cong., 2d Sess., 5 [**1059] (1952)
(emphasis supplied).
It is later stated in the same Report:
"Section 102, in general, may be said to describe the statutory novelty required
for patentability, and includes, [*191] in effect, an amplification and
definition of 'new' in section 101." Id., at 6.
Finally, it is stated in the "Revision Notes":
"The corresponding section of [the] existing statute is split into two sections,
section 101 relating to the subject matter for which patents may be obtained,
and section 102 defining statutory novelty and stating other conditions for
patentability." Id., at 17.
See also H. R. Rep. No. 1923, 82d Cong., 2d Sess., 6, 7, and 17 (1952).
- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -
n13 Section 102 is titled "Conditions for patentability; novelty and loss of
right to patent," and provides:
"A person shall be entitled to a patent unless --
"(a) the invention was known or used by others in this country, or patented or
described in a printed publication in this or a foreign country, before the
invention thereof by the applicant for patent, or
"(b) the invention was patented or described in a printed publication in this or
a foreign country or in public use or on sale in this country, more than one
year prior to the date of the application for patent in the United States, or
"(c) he has abandoned the invention, or
"(d) the invention was first patented or caused to be patented, or was the
subject of an inventor's certificate, by the applicant or his legal
representatives or assigns in a foreign country prior to the date of the
application for patent in this country on an application for patent or
inventor's certificate filed more than twelve months before the filing of the
application in the United States, or
"(e) the invention was described in a patent granted on an application for
patent by another filed in the United States before the invention thereof by the
applicant for patent, or on an international application by another who has
fulfilled the requirements of paragraphs (1), (2), and (4) of section 371 (c) of
this title before the invention thereof by the applicant for patent, or
"(f) he did not himself invent the subject matter sought to be patented, or
"(g) before the applicant's invention thereof the invention was made in this
country by another who had not abandoned, suppressed, or concealed it. In
determining priority of invention there shall be considered not only the
respective dates of conception and reduction to practice of the invention, but
also the reasonable diligence of one who was first to conceive and last to
reduce to practice, from a time prior to conception by the other."
- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - -
In this case, it may later be determined that the respondents' process is not
deserving of patent protection because it fails to satisfy the statutory
conditions of novelty under § 102 or nonobviousness under § 103. A rejection on
either of these grounds does not affect the determination that respondents'
claims recited subject matter which was eligible for patent protection under §
101.
IV
[***LEdHR1D] [1D] [***LEdHR11] [11] [***LEdHR12A] [12A] [***LEdHR13A]
[13A]We have before us today only the question of whether respondents' claims
fall within the § 101 categories of possibly patentable subject matter. We view
respondents' claims as nothing more than a process for molding rubber products
and not as an attempt to patent a mathematical formula. We recognize, of course,
that when a claim recites a mathematical formula (or scientific principle or
phenomenon of nature), an inquiry must be made into whether the claim is seeking
patent protection for that formula in the abstract. A mathematical formula as
such is not accorded the protection of our patent laws, Gottschalk v.
Benson, 409 U.S. 63 (1972), and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment. Parker v. Flook, 437 U.S. 584 (1978). Similarly,
insignificant postsolution activity will not transform [*192] an unpatentable
principle into a patentable [***169] process. Ibid. n14 To hold
otherwise would allow a competent draftsman to evade the recognized limitations
on the type of subject matter eligible for patent protection. On the other hand,
when a claim containing a mathematical formula implements or applies that
formula in a structure or process which, when considered as a whole, is
performing a function which the patent laws were designed to protect (e. g.,
transforming or reducing an article to a different [**1060] state or thing),
then the claim satisfies the requirements of § 101. Because we do not view
respondents' claims as an attempt to patent a mathematical formula, but rather
to be drawn to an industrial process [*193] for the molding of rubber
products, we affirm the judgment of the Court of Customs and Patent Appeals. n15
[***LEdHR12B] [12B]
- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -
n14 Arguably, the claims inFlook did more than present a mathematical
formula. The claims also solved the calculation in order to produce a new number
or "alarm limit" and then replaced the old number with the number newly
produced. The claims covered all uses of the formula in processes "comprising
the catalytic chemical conversion of hydrocarbons." There are numerous such
processes in the petrochemical and oil refinery industries and the claims
therefore covered a broad range of potential uses. 437 U.S., at 586. The claims,
however, did not cover every conceivable application of the formula. We rejected
in Flook the argument that because all possible uses of the mathematical
formula were not pre-empted, the claim should be eligible for patent protection.
Our reasoning in Flook is in no way inconsistent with our reasoning here.
A mathematical formula does not suddenly become patentable subject matter simply
by having the applicant acquiesce to limiting the reach of the patent for the
formula to a particular technological use. A mathematical formula in the
abstract is nonstatutory subject matter regardless of whether the patent is
intended to cover all uses of the formula or only limited uses. Similarly, a
mathematical formula does not become patentable subject matter merely by
including in the claim for the formula token postsolution activity such as the
type claimed in Flook. We were careful to note in Flook that the
patent application did not purport to explain how the variables used in the
formula were to be selected, nor did the application contain any disclosure
relating to chemical processes at work or the means of setting off an alarm or
adjusting the alarm limit. Ibid. All the application provided was a
"formula for computing an updated alarm limit." Ibid.
[***LEdHR1E] [1E]
n15 The dissent's analysis rises and falls on its characterization of
respondents' claims as presenting nothing more than "an improved method of
calculating the time that the mold should remain closed during the curing
process." Post, at 206-207. The dissent states that respondents claim
only to have developed "a new method of programming a digital computer in order
to calculate -- promptly and repeatedly -- the correct curing time in a familiar
process." Post, at 213. Respondents' claims, however, are not limited to
the isolated step of "programming a digital computer." Rather, respondents'
claims describe a process of curing rubber beginning with the loading of the
mold and ending with the opening of the press and the production of a synthetic
rubber product that has been perfectly cured -- a result heretofore unknown in
the art. See n. 5, supra. The fact that one or more of the steps in
respondents' process may not, in isolation, be novel or independently eligible
for patent protection is irrelevant to the question of whether the claims as a
whole recite subject matter eligible for patent protection under § 101.
As we explained when discussing machine patents in Deepsouth Packing Co.
v. Laitram Corp., 406 U.S. 518 (1972):
"The patents were warranted not by the novelty of their elements but by the
novelty of the combination they represented. Invention was recognized because
Laitram's assignors combined ordinary elements in an extraordinary way -- a
novel union of old means was designed to achieve new ends. Thus, for both
inventions 'the whole in some way [exceeded] the sum of its parts.' Great A.
& P. Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147, 152
(1950)." Id., at 521-522 (footnote omitted).
[***LEdHR13B] [13B] [13B]
In order for the dissent to reach its conclusion it is necessary for it to read
out of respondents' patent application all the steps in the claimed process
which it determined were not novel or "inventive." That is not the purpose of
the § 101 inquiry and conflicts with the proposition recited above that a
claimed invention may be entitled to patent protection even though some or all
of its elements are not "novel."
- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - -
It is so ordered.
DISSENTBY: STEVENS
DISSENT: JUSTICE [***170] STEVENS, with whom JUSTICE BRENNAN, JUSTICE
MARSHALL, and JUSTICE BLACKMUN join, dissenting.
The starting point in the proper adjudication of patent litigation is an
understanding of what the inventor claims [*194] to have discovered. The
Court's decision in this case rests on a misreading of the Diehr and Lutton
patent application. Moreover, the Court has compounded its error by ignoring the
critical distinction between the character of the subject matter that the
inventor claims to be novel -- the § 101 issue -- and the question whether that
subject matter is in fact novel -- the § 102 issue.
I
Before discussing the major flaws in the Court's opinion, a word of history may
be helpful. As the Court recognized in Parker v. Flook, 437 U.S.
584, 595 (1978), the computer industry is relatively young. Although computer
technology seems commonplace today, the first digital computer capable of
utilizing stored programs was developed less than 30 years ago. n1 Patent law
developments in response to this new technology are of even more recent vintage.
The subject of legal protection for computer programs did not begin to receive
serious consideration until over a decade after completion of the first
programmable digital computer. n2 It was 1968 before [*195] the federal
[**1061] courts squarely addressed the subject, n3 and 1972 before this Court
announced its first decision in the area. n4
- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -
n1 ENIAC, the first general purpose electronic digital computer, was built in
1946. Unlike modern computers, this machine was externally programmed; its
circuitry had to be manually rewired each time it was used to perform a new
task. See Gemignani, Legal Protection for Computer Software: The View From '79,
7 Rutgers J. Computers, Tech. & L. 269, 270 (1980). In 1952, a group of
scientists at the Institute for Advanced Study completed MANIAC I, the first
digital computer capable of operating upon stored programs, as opposed to
hard-wired circuitry. See Ulam, Computers, 211 Scientific American 203 (1964).
n2 The subject received some scholarly attention prior to 1964. See, e. g.,
Seidel, Antitrust, Patent and Copyright Law Implications of Computer Technology,
44 J. Pat. Off. Soc. 116 (1962); Comment, The Patentability of Computer
Programs, 38 N. Y. U. L. Rev. 891 (1963). In 1964, the Copyright Office began
registering computer programs. See 11 Copyright Soc. Bull. 361 (1964); Davis,
Computer Programs and Subject Matter Patentability, 6 Rutgers J. Computers,
Tech. & L. 1, 5 (1977). Also in 1964, the Patent Office Board of Appeals issued
what appears to be the first published opinion concerning the patentability of a
computer-related invention. See Ex parte King, 146 USPQ 590.
n3 In re Prater, 56 C. C. P. A. (Pat.) 1360, 415 F.2d 1378 (1968),
modified on rehearing, 56 C. C. P. A. (Pat.) 1381, 415 F.2d 1393 (1969), is
generally identified as the first significant judicial decision to consider the
subject-matter patentability of computer program-related inventions. The Court
of Customs and Patent Appeals earlier decided In re Naquin, 55 C. C. P.
A. (Pat.) 1428, 398 F.2d 863 (1968), in which it rejected a challenge to an
application for a patent on a program-related invention on grounds of inadequate
disclosure under § 112.
n4 See Gottschalk v. Benson, 409 U.S. 63 (1972).
- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - -
Prior to 1968, well-established principles of patent law probably would have
prevented the issuance [***171] of a valid patent on almost any conceivable
computer program. Under the "mental steps" doctrine, processes involving mental
operations were considered unpatentable. See, e. g., In re Heritage, 32
C. C. P. A. (Pat.) 1170, 1173-1177, 150 F.2d 554, 556-558 (1945); In re Shao
Wen Yuan, 38 C. C. P. A. (Pat.) 967, 972-976, 188 F.2d 377, 380-383 (1951).
The mental-steps doctrine was based upon the familiar principle that a
scientific concept or mere idea cannot be the subject of a valid patent. See
In re Bolongaro, 20 C. C. P. A. (Pat.) 845, 846-847, 62 F.2d 1059, 1060
(1933). n5 The doctrine was regularly invoked to deny patents to inventions
consisting primarily of mathematical formulae or methods of computation. n6 It
was also applied against patent claims in which a mental operation or
mathematical computation was the sole novel element or inventive contribution;
it was clear that patentability [*196] could not be predicated upon a mental
step. n7 Under the "function of a machine" doctrine, a process which amounted to
nothing more than a description of the function of a machine was unpatentable.
This doctrine had its origin in several 19th-century decisions of this Court, n8
and it had been consistently followed thereafter by the lower federal courts. n9
[*197] Finally, the definition of "process" [**1062] announced by this Court
in Cochrane v. Deener, 94 U.S. 780, 787-788 (1877), seemed to
indicate that a patentable process must cause a physical transformation in the
materials to which the process is applied. See ante, at 182-184.
- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -
n5 See also Novick & Wallenstein, The Algorithm and Computer Software
Patentability: A Scientific View of a Legal Problem, 7 Rutgers J. Computers,
Tech. & L. 313, 316-317 (1980).
n6 See, e. g., Don Lee, Inc. v. Walker, 61 F.2d 58, 67 (CA9 1932);
In re Bolongaro, 20 C. C. P. A. (Pat.) 845, 846-847, 62 F.2d 1059, 1060
(1933); In re Shao Wen Yuan, 38 C. C. P. A. (Pat.) 967, 969-972, 188 F.2d
377, 379-380 (1951); Lyman v. Ladd, 120 U. S. App. D. C. 388, 389,
347 F.2d 482, 483 (1965).
n7 See, e. g., In re Cooper, 30 C. C. P. A. (Pat.) 946, 949, 134 F.2d
630, 632 (1943); Halliburton Oil Well Cementing Co. v. Walker, 146
F.2d 817, 821, 823 (CA9 1944), rev'd on other grounds, 329 U.S. 1 (1946); In
re Heritage, 32 C. C. P. A. (Pat.) 1170, 1173-1177, 150 F.2d 554, 556-558
(1945); In re Abrams, 38 C. C. P. A. (Pat.) 945, 950-953, 188 F.2d 165,
168-170 (1951); In re Shao Wen Yuan, supra, at 975-976, 188 F.2d, at 383;
In re Lundberg, 39 C. C. P. A. (Pat.) 971, 975, 197 F.2d 336, 339 (1952);
In re Venner, 46 C. C. P. A. (Pat.) 754, 758-759, 262 F.2d 91, 95 (1958).
- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - -
- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -
n8 The "function of a machine" doctrine is generally traced to Corning v.
Burden, 15 How. 252, 268 (1854), in which the Court stated: "[It] is well
settled that a man cannot have a patent for the function or abstract effect of a
machine, but only for the machine which produces it." The doctrine was
subsequently reaffirmed on several occasions. See, e. g., Risdon Iron &
Locomotive Works v. Medart, 158 U.S. 68, 78-79, 84 (1895);
Westinghouse v. Boyden Power Brake Co., 170 U.S. 537, 554-557 (1898);
Busch v. Jones, 184 U.S. 598, 607 (1902); Expanded Metal Co.
v. Bradford, 214 U.S. 366, 383 (1909).
n9 See, e. g., In re Weston, 17 App. D. C. 431, 436-442 (1901);
Chisholm-Ryder Co. v. Buck, 65 F.2d 735, 736 (CA4 1933); In re
Ernst, 21 C. C. P. A. (Pat.) 1235, 1238-1240, 71 F.2d 169, 171-172 (1934);
In re McCurdy, 22 C. C. P. A. (Pat.) 1140, 1142-1145, 76 F.2d 400,
402-403, (1935); In re Parker, 23 C. C. P. A. (Pat.) 721, 722-725, 79
F.2d 908, 909-910 (1935); Black-Clawson Co. v. Centrifugal Engineering
& Patents Corp., 83 F.2d 116, 119-120 (CA6), cert. denied, 299 U.S. 554
(1936); In re Wadman, 25 C. C. P. A. (Pat.) 936, 943-944, 94 F.2d 993,
998 (1938); In re Mead, 29 C. C. P. A. (Pat.) 1001, 1004, 127 F.2d 302,
304 (1942); In re Solakian, 33 C. C. P. A. (Pat.) 1054, 1059, 155 F.2d
404, 407 (1946); In re Middleton, 35 C. C. P. A. (Pat.) 1166, 1167-1168,
167 F.2d 1012, 1013-1014 (1948); In re Nichols, 36 C. C. P. A. (Pat.)
759, 762-763, 171 F.2d 300, 302-303 (1948); In re Ashbaugh, 36 C. C. P.
A. (Pat.) 902, 904-905, 173 F.2d 273, 274-275 (1949); In re Horvath, 41
C. C. P. A. (Pat.) 844, 849-851, 211 F.2d 604, 607-608 (1954); In re Gartner,
42 C. C. P. A. (Pat.) 1022, 1025-1026, 223 F.2d 502, 504 (1955).
- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - -
Concern [***172] with the patent system's ability to deal with rapidly
changing technology in the computer and other fields led to the formation in
1965 of the President's Commission on the Patent System. After studying the
question of computer program patentability, the Commission recommended that
computer programs be expressly excluded from the coverage of the patent laws;
this recommendation was based primarily upon the Patent Office's inability to
deal with the administrative burden of examining program applications. n10 At
approximately the time that the Commission issued its report, the Patent Office
published notice of its intention to prescribe guidelines for the examination of
applications for patents on computer programs. See 829 Off. Gaz. Pat. Off. 865
(Aug. 16, 1966). Under the proposed guidelines, a computer program, whether
claimed as an apparatus or as a process, was unpatentable. n11 The Patent Office
indicated, however, [*198] that a programmed computer could be a component of
a patentable process if combined with unobvious elements to produce a physical
result. The Patent Office formally adopted the guidelines in 1968. See 33 Fed.
Reg. 15609 (1968).
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n10 The Commission's report contained the following evaluation of the current
state of the law with respect to computer program patentability:
"Uncertainty now exists as to whether the statute permits a valid patent to be
granted on programs. Direct attempts to patent programs have been rejected on
the ground of nonstatutory subject matter. Indirect attempts to obtain patents
and avoid the rejection, by drafting claims as a process, or a machine or
components thereof programmed in a given manner, rather than as a program
itself, have confused the issue further and should not be permitted." Report of
the President's Commission on the Patent System, "To Promote the Progress of . .
. Useful Arts" in an Age of Exploding Technology 14 (1966).
n11 The Patent Office guidelines were based primarily upon the mental-steps
doctrine and the Cochrane v. Deener, 94 U.S. 780 (1877),
definition of "process." See 829 Off. Gaz. Pat. Off. 865 (Aug. 16, 1966); 33
Fed. Reg. 15609 (1968).
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The new guidelines were to have a short life. Beginning with two decisions in
1968, a dramatic change in the law as understood by the Court of Customs and
Patent Appeals took place. By repudiating the well-settled "function of a
machine" and "mental steps" doctrines, that court reinterpreted § 101 of the
Patent Code to enlarge drastically the categories of patentable subject matter.
This reinterpretation would lead to the conclusion that computer programs were
within the categories of inventions to which Congress intended to extend patent
protection.
In In re Tarczy-Hornoch, 55 C. C. P. A. (Pat.) 1441, 397 F.2d 856 (1968),
a divided Court of Customs and Patent Appeals overruled the line of cases
developing and applying the "function of a machine" doctrine. The majority
acknowledged that the doctrine had originated with decisions of this Court and
that the lower federal courts, including the Court of Customs and Patent
Appeals, had consistently adhered to it during the preceding 70 years.
Nonetheless, the court concluded that the doctrine rested on a misinterpretation
of the precedents and that it was contrary to "the basic purposes of the patent
system and productive of a range of undesirable results from the harshly
inequitable to the silly." Id., at 1454, 397 F.2d, [**1063] at 867. n12
[***173] Shortly thereafter, a similar [*199] fate befell the "mental steps"
doctrine. In In re Prater, 56 C. C. P. A. (Pat.) 1360, 415 F.2d 1378
(1968), modified on rehearing, 56 C. C. P. A. (Pat.) 1381, 415 F.2d 1393 (1969),
the court found that the precedents on which that doctrine was based either were
poorly reasoned or had been misinterpreted over the years. 56 C. C. P. A.
(Pat.), at 1366-1372, 415 F.2d, at 1382-1387. The court concluded that the fact
that a process may be performed mentally should not foreclose patentability if
the claims reveal that the process also may be performed without mental
operations. Id., at 1374-1375, 415 F.2d, at 1389. n13 This aspect of the
original Prater opinion was substantially undisturbed by the opinion
issued after rehearing. However, the second Prater opinion clearly
indicated that patent claims broad enough to encompass the operation of a
programmed computer would not be rejected for lack of patentable subject matter.
56 C. C. P. A. (Pat.), at 1394, n. 29, 415 F.2d, at 1403, n. 29. n14
- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -
n12 Judge Kirkpatrick, joined by Chief Judge Worley, wrote a vigorous dissent
objecting to the majority's decision to abandon "a rule which is about as
solidly established as any rule of the patent law." 55 C. C. P. A. (Pat.), at
1457, 397 F.2d, at 868. Unlike the majority, the dissenting judges did not
consider the doctrine inequitable or silly, and they observed that it had
functioned in a satisfactory manner in the past. Id., at 1457-1458, 397
F.2d, at 869. In addition, they considered the doctrine to be so well
established that it had been adopted by implication in the Patent Act of 1952.
Id., at 1458, 397 F.2d, at 869.
n13 In Prater, the patent application claimed an improved method for
processing spectrographic data. The method analyzed conventionally obtained data
by using well-known equations. The inventors had discovered a particular
mathematical characteristic of the equations which enabled them to select the
specific subset of equations that would yield optimum results. The application
disclosed an analog computer as the preferred embodiment of the invention, but
indicated that a programmed digital computer could also be used. 56 C. C. P. A.
(Pat.), at 1361-1363, 415 F.2d, at 1379-1380. The Patent Office had rejected the
process claims on a mental-steps theory because the only novel aspect of the
claimed method was the discovery of an unpatentable mathematical principle. The
apparatus claim was rejected essentially because, when the mathematical
principle was assumed to be within the prior art, the claim disclosed no
invention entitled to patent protection. Id., at 1364-1365, 1375, 415
F.2d, at 1381, 1399.
n14 It is interesting to note that the Court of Customs and Patent Appeals in
the second Prater opinion expressly rejected the Patent Office's
procedure for analyzing the apparatus claim pursuant to which the mathematical
principle was treated as though it were within the prior art. 56 C. C. P. A.
(Pat.), at 1397, 415 F.2d, at 1405-1406. This precise procedure, of course, was
later employed by this Court in Parker v. Flook, 437 U.S. 584
(1978).
- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - -
[*200] The Court of Customs and Patent Appeals soon replaced the overruled
doctrines with more expansive principles formulated with computer technology in
mind. In In re Bernhart, 57 C. C. P. A. (Pat.) 737, 417 F.2d 1395 (1969),
the court reaffirmed Prater, and indicated that all that remained of the
mental-steps doctrine was a prohibition on the granting of a patent that would
confer a monopoly on all uses of a scientific principle or mathematical
equation. Id., at 743, 417 F.2d, at 1399. The court also announced that a
computer programmed with a new and unobvious program was physically different
from the same computer without that program; the programmed computer was a new
machine or at least a new improvement over the unprogrammed computer. Id.,
at 744, 417 F.2d, at 1400. Therefore, patent protection could be obtained for
new computer programs if the patent claims were drafted in apparatus form.
The Court of Customs and Patent Appeals turned its attention to process claims
encompassing computer programs in In re Musgrave, 57 C. C. P. A. (Pat.)
1352, 431 F.2d 882 (1970). In that case, the court emphasized the fact that
Prater had done away with the mental-steps doctrine; in particular, the
court rejected the Patent Office's continued reliance upon the "point of
novelty" approach to [***174] claim analysis. Id., at 1362, 431 F.2d,
[**1064] at 889. n15 The court also announced a new standard for evaluating
process claims under § 101: any sequence of operational steps was a patentable
process under § 101 as long as it was within the "technological arts." Id.,
at 1366-1367, 431 F.2d, at 893. This standard effectively disposed of any
vestiges of the mental-steps doctrine remaining [*201] after Prater and
Bernhart. n16 The "technological arts" standard was refined in In re
Benson, 58 C. C. P. A. (Pat.) 1134, 441 F.2d 682 (1971), in which the court
held that computers, regardless of the uses to which they are put, are within
the technological arts for purposes of § 101. Id., at 1142, 441 F.2d, at
688.
- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -
n15 Under the "point of novelty" approach, if the novelty or advancement in the
art claimed by the inventor resided solely in a step of the process embodying a
mental operation or other unpatentable element, the claim was rejected under §
101 as being directed to nonstatutory subject matter. See Blumenthal & Riter,
Statutory or Non-Statutory?: An Analysis of the Patentability of Computer
Related Inventions, 62 J. Pat. Off. Soc. 454, 457, 461, 470 (1980).
n16 The author of the second Prater opinion, Judge Baldwin, disagreed
with the Musgrave "technological arts" standard for process claims. He
described that standard as "a major and radical shift in this area of the law."
57 C. C. P. A. (Pat.), at 1367, 431 F.2d, at 893-894. As Judge Baldwin read the
majority opinion, claims drawn solely to purely mental processes were now
entitled to patent protection. Id., at 1369, 431 F.2d, at 895-896. Judge
Baldwin's understanding of Musgrave seems to have been confirmed in In
re Foster, 58 C. C. P. A. (Pat.) 1001, 1004-1005, 438 F.2d 1011, 1014-1015
(1971).
- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - -
In re Benson, of course, was reversed by this Court in Gottschalk
v. Benson, 409 U.S. 63 (1972). n17 Justice Douglas' opinion for a
unanimous Court made no reference to the lower court's rejection of the
mental-steps doctrine or to the new technological-arts standard. n18 Rather, the
Court clearly held that new mathematical procedures that can be conducted in old
computers, like mental processes and abstract intellectual concepts, see id.,
at 67, are not patentable processes within the meaning of § 101.
- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -
n17 In the interval between the two Benson decisions, the Court of
Customs and Patent Appeals decided several cases in which it addressed the
patentability of computer-related inventions. In In re McIlroy, 58 C. C.
P. A. (Pat.) 1249, 442 F.2d 1397 (1971), and In re Waldbaum, 59 C. C. P.
A. (Pat.) 940, 457 F.2d 997 (1972), the court relied primarily upon Musgrave
and Benson. In In re Ghiron, 58 C. C. P. A. (Pat.) 1207, 442 F.2d
985 (1971), the court reaffirmed Tarczy-Hornoch's rejection of the
"function of a machine" doctrine.
n18 Although the Court did not discuss the mental-steps doctrine in Benson,
some commentators have suggested that the Court implicitly relied upon the
doctrine in that case. See, e. g., Davis, supra n. 2, at 14, and
n. 92. Other commentators have observed that the Court's analysis in Benson
was entirely consistent with the mental-steps doctrine. See, e. g.,
Comment, Computer Program Classification: A Limitation on Program Patentability
as a Process, 53 Or. L. Rev. 501, 517-518, n. 132 (1974).
- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - -
[*202] The Court of Customs and Patent Appeals had its first opportunity to
interpret Benson in In re Christensen, 478 F.2d 1392 (1973). In
Christensen, the claimed invention was a method in which the only novel
element was a mathematical formula. The court resurrected the point-of-novelty
approach abandoned in Musgrave and held that a process claim in which the
point of novelty was a mathematical equation to be solved as the final step of
the process did not define patentable subject matter after Benson. 478
F.2d, at 1394. Accordingly, the court affirmed the Patent Office Board of
Appeals' rejection of the claims under § 101.
The Court of Customs and Patent Appeals in subsequent cases began [***175] to
narrow its interpretation of Benson. In In re Johnston, 502 F.2d
765 (1974), the court held that a recordkeeping machine system which comprised a
programmed digital computer was patentable subject matter under § 101. Id.,
at 771. The majority dismissed Benson with the observation that Benson
involved only process, not apparatus, claims. 502 F.2d, at 771. Judge Rich
dissented, arguing that to limit Benson only to process claims [**1065]
would make patentability turn upon the form in which a program invention was
claimed. 502 F.2d, at 773-774. n19 The court again construed Benson as
limited only to process claims in In re Noll, 545 F.2d 141 (1976), cert.
denied, 434 U.S. 875 (1977); 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. 545 F.2d, at 148. 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. 545 F.2d, at 151-152. Judge Lane's interpretation of
Benson was rejected by the majority [*203] in In re Chatfield, 545
F.2d 152 (1976), cert. denied, 434 U.S. 875 (1977), decided on the same day as
Noll. In that case, the court construed Benson to preclude the
patenting of program inventions claimed as processes only where the claims would
pre-empt all uses of an algorithm or mathematical formula. 545 F.2d, at 156,
158-159. n20 The dissenting judges argued, as they had in Noll, that
Benson held that programs for general-purpose digital computers are not
patentable subject matter. 545 F.2d, at 161.
- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -
n19 The decision of the Court of Customs and Patent Appeals was reversed by this
Court on other grounds in Dann v. Johnston, 425 U.S. 219 (1976).
n20 In addition to interpreting Benson, the majority also maintained that
Christensen, despite its point-of-novelty language, had not signalled a
return to that form of claim analysis. 545 F.2d, at 158. The court would
reaffirm this proposition consistently thereafter. See, e. g., In re de
Castelet, 562 F.2d 1236, 1240 (1977); In re Richman, 563 F.2d 1026,
1029-1030 (1977); In re Freeman, 573 F.2d 1237, 1243-1244 (1978); In
re Toma, 575 F.2d 872, 876 (1978); In re Walter, 618 F.2d 758,
766-767 (1980).
- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - -
Following Noll and Chatfield, the Court 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. One of the cases adopting this view was In re
Flook, 559 F.2d 21 (1977), n21 which was reversed in Parker v.
Flook, 437 U.S. 584 (1978). Before this Court decided Flook, however,
the lower court developed a two-step procedure for analyzing program-related
inventions in light of Benson. In In re Freeman, 573 F.2d 1237
(1978), the court held that such inventions must first be examined to determine
whether a mathematical algorithm is directly or indirectly claimed; if an
algorithm is recited, the court must then determine whether the claim would
wholly pre-empt that algorithm. Only if a claim satisfied both inquiries was
Benson considered applicable. 573 F.2d, at 1245. [***176] See also In
re Toma, 575 F.2d 872, 877 (CCPA 1978).
- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -
n21 See also In re Deutsch, 553 F.2d 689, 692-693 (CCPA 1977); In re
Waldbaum, 559 F.2d 611, 616-617 (CCPA 1977); In re de Castelet, supra,
at 1243-1245.
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[*204] In Flook, this Court clarified Benson in three
significant respects. First, Flook held that the Benson rule of
unpatentable subject matter was not limited, as the lower court believed, to
claims which wholly pre-empted an algorithm or amounted to a patent on the
algorithm itself. 437 U.S., at 589-590. Second, the Court made it clear that an
improved method of calculation, even when employed as part of a physical
process, is not patentable subject matter under § 101. Id., at 595, n.
18. Finally, the Court explained the correct procedure for analyzing a patent
claim employing a mathematical algorithm. Under this procedure, the algorithm is
treated for § 101 purposes as though it were a familiar part of the prior art;
the claim is then examined to determine whether it discloses "some other
inventive concept." Id., at 591-595. n22
- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -
n22 This form of claim analysis did not originate with Flook. Rather, the
Court derived it from the landmark decision of O'Reilly v. Morse,
15 How. 62, 115 (1854). In addition, this analysis is functionally the same as
the point-of-novelty analysis used in conjunction with the mental-steps
doctrine. In fact, the Patent Office in the past occasionally phrased its
mental-steps rejections in essentially the terms later employed in Flook.
See nn. 13-15, supra. See generally Comment, 35 U. S. C. 101 Claim
Analysis -- The Point of Novelty Approach, 62 J. Pat. Off. Soc. 521 (1980).
- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - - [**1066]
Although the Court of Customs and Patent Appeals in several post-Flook
decisions held that program-related inventions were not patentable subject
matter under § 101, see, e. g., In re Sarkar, 588 F.2d 1330 (1978); In
re Gelnovatch, 595 F.2d 32 (1979), in general Flook was not
enthusiastically received by that court. In In re Bergy, 596 F.2d 952
(1979), the majority engaged in an extensive critique of Flook,
concluding that this Court had erroneously commingled "distinct statutory
provisions which are conceptually unrelated." 596 F.2d, at 959. n23 In
subsequent cases, the court construed [*205] Flook as resting on
nothing more than the way in which the patent claims had been drafted, and it
expressly declined to use the method of claim analysis spelled out in that
decision. The Court of Customs and Patent Appeals has taken the position that,
if an application is drafted in a way that discloses an entire process as novel,
it defines patentable subject matter even if the only novel element that the
inventor claims to have discovered is a new computer program. n24 The court
interpreted Flook in this manner in its opinion in this case. See In
re Diehr, 602 F.2d 982, 986-989 (1979). In my judgment, this reading of
Flook -- although entirely consistent with the lower court's expansive
approach to § 101 during the past 12 years -- trivializes the holding in
Flook, the principle that underlies [***177] Benson, and the
settled line of authority reviewed in those opinions.
- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -
n23 The Court of Customs and Patent Appeals suggested that the cause of this
Court's error was the argument presented by the Solicitor General in Flook.
According to the majority, the Solicitor General's briefs "badly, and with a
seeming sense of purpose" confused the statutory requirements. 596 F.2d, at 962.
The court went on to describe part of the Solicitor General's argument in
Flook as "subversive nonsense." 596 F.2d, at 963.
n24 See, e. g., In re Johnson, 589 F.2d 1070 (1978); In re Phillips,
608 F.2d 879 (1979); In re Sherwood, 613 F.2d 809 (1980), cert. pending,
No. 79-1941.
- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - -
II
As I stated at the outset, the starting point in the proper adjudication of
patent litigation is an understanding of what the inventor claims to have
discovered. Indeed, the outcome of such litigation is often determined by the
judge's understanding of the patent application. This is such a case.
In the first sentence of its opinion, the Court states the question presented as
"whether a process for curing synthetic rubber . . . is patentable subject
matter." Ante, at 177. Of course, that question was effectively answered
many years ago when Charles Goodyear obtained his patent on the vulcanization
process. n25 The patent application [**1067] filed by Diehr [*206] and
Lutton, however, teaches nothing about the chemistry of the synthetic
rubber-curing process, nothing about the raw materials to be used in curing
synthetic rubber, nothing about the equipment to be used in the process, and
nothing about the significance or effect of any process variable such as
temperature, curing time, particular compositions of material, or mold
configurations. In short, Diehr and Lutton do not claim to have discovered
anything new about the process for curing synthetic rubber.
- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -
n25 In an opinion written over a century ago, the Court noted:
"A manufacturing process is clearly an art, within the meaning of the law.
Goodyear's patent was for a process, namely, the process of vulcanizing
india-rubber by subjecting it to a high degree of heat when mixed with sulphur
and a mineral salt.
. . . .
"The mixing of certain substances together, or the heating of a substance to a
certain temperature, is a process." Tilghman v. Proctor, 102 U.S.
707, 722, 728 (1881).
See also Corning v. Burden, 15 How. 252, 267 (1854). Modern rubber
curing methods apparently still are based in substantial part upon the concept
discovered by Goodyear:
"Since the day 120 years ago when Goodyear first heated a mixture of rubber and
sulphur on a domestic stove and so discovered vulcanisation, this action of heat
and sulphur has remained the standard method of converting crude rubber, with
all its limitations, into a commercially usable product, giving it the qualities
of resistance to heat and cold in addition to considerable mechanical strength.
"Goodyear also conjured up the word 'cure' for vulcanisation, and this has
become the recognized term in production circles." Mernagh, Practical
Vulcanisation, in The Applied Science of Rubber 1053 (W. Naunton ed. 1961).
See generally Kimmich, Making Rubber Products for Engineering Uses, in
Engineering Uses of Rubber 18, 28-34 (A. McPherson & A. Klemin eds. 1956)
- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - -
As the Court reads the claims in the Diehr and Lutton patent application, the
inventors' discovery is a method of constantly measuring the actual temperature
inside a rubber molding press. n26 As I read the claims, their discovery is an
[*207] improved method of calculating the time that the mold should remain
closed during the curing process. n27 If [***178] the Court's reading of the
claims were correct, I would agree that they disclose patentable subject matter.
On the other hand, if the Court accepted my reading, I feel confident that the
case would be decided differently.
- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -
n26 "Respondents characterize their contribution to the art to reside in the
process of constantly measuring the actual temperature inside the mold." See
ante, at 178.
n27 Claim 1 is quoted in full in n. 5 of the Court's opinion, ante, at
179. It describes a "method of operating a rubber-molding press for precision
molded compounds with the aid of a digital computer." As the Court of Customs
and Patent Appeals noted, the improvement claimed in the application consists of
"opening the mold at precisely the correct time rather than at a time which has
been determined by approximation or guesswork." In re Diehr, 602 F.2d
982, 988 (1979).
- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - -
There are three reasons why I cannot accept the Court's conclusion that Diehr
and Lutton claim to have discovered a new method of constantly measuring the
temperature inside a mold. First, there is not a word in the patent application
that suggests that there is anything unusual about the temperature-reading
devices used in this process -- or indeed that any particular species of
temperature-reading device should be used in it. n28 Second, since devices for
constantly [*208] measuring actual temperatures -- on a back porch, for
example -- have been familiar articles for quite some time, I find it difficult
to believe that a patent application filed in 1975 was premised on the notion
that a "process of constantly measuring the actual temperature" had just been
discovered. Finally, the Patent and Trademark Office Board of Appeals expressly
found that "the only difference between the conventional methods of operating a
molding press and that claimed in [the] application rests in those steps of the
claims which relate to the calculation incident to the solution of the
mathematical problem or formula used to control the [**1068] mold heater and
the automatic opening of the press." n29 This finding was not disturbed by the
Court of Customs and Patent Appeals and is clearly correct.
- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -
n28 In the portion of the patent application entitled "Abstract of the
Disclosure," the following reference to monitoring the temperature is found:
"An interval timer starts running from the time of mold closure, and the
temperature within the mold cavity is measured often, typically every ten
seconds. The temperature is fed to a computer . . . ." App. to Pet. for Cert.
38a.
In the portion of the application entitled "Background of the Invention," the
following statement is found:
"By accurate and constant calculation and recalculation of the correct mold time
under the temperatures actually present in the mold, the material can be cured
accurately and can be relied upon to produce very few rejections, perhaps
completely eliminating all rejections due to faulty mold cure." Id., at
41a.
And, in the "Summary of the Invention," this statement appears:
"A surveillance system is maintained over the mold to determine the actual mold
temperature substantially continuously, for example, every ten seconds, and to
feed that information to the computer along with the pertinent stored data and
along with the elapsed time information." Ibid.
Finally, in a description of a simple hypothetical application using the
invention described in Claim 1, this is the reference to the temperature-reading
device:
"Thermocouples, or other temperature-detecting devices, located directly within
the mold cavity may read the temperature at the surface where the molding
compound touches the mold, so that it actually gets the temperature of the
material at that surface." Id., at 45a.
n29 Id., at 24a.
- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - -
A fair reading of the entire patent application, as well as the specific claims,
makes it perfectly clear that what Diehr and Lutton claim to have discovered is
a method of using a digital computer to determine the amount of time that a
rubber molding press should remain closed during the synthetic rubber-curing
process. There is no suggestion that there is anything novel in the
instrumentation of the mold, in actuating a timer when the press is closed, or
in automatically opening the press when the computed time [***179] expires.
n30 Nor does the [*209] application suggest that Diehr and Lutton have
discovered anything about the temperatures in the mold or the amount of curing
time that will produce the best cure. What they claim to have discovered, in
essence, is a method of updating the original estimated curing time by
repetitively recalculating that time pursuant to a well-known mathematical
formula in response to variations in temperature within the mold. Their method
of updating the curing time calculation is strikingly reminiscent of the method
of updating alarm limits that Dale Flook sought to patent.
- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -
n30 These elements of the rubber-curing process apparently have been well known
for years. The following description of the vulcanization process appears in a
text published in 1961:
"Vulcanisation is too important an operation to be left to human control,
however experienced and conscientious. Instrumentation makes controlled cure
possible, and in consequence instrument engineering is a highly important
function in the modern rubber factory, skilled attention being necessary, not
only in the maintenance of the instruments but also in their siting. There are
instruments available which will indicate, record or control all the services
involved in vulcanisation, including time, temperature and pressure, and are
capable of setting in motion such operations as the opening and closing of
moulds and, in general, will control any process variable which is capable of
being converted into an electric charge or pneumatic or hydraulic pressure
impulse." Mernagh, supra n. 25, at 1091-1092.
- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - -
Parker v. Flook, 437 U.S. 584 (1978), involved the use of a
digital computer in connection with a catalytic conversion process. During the
conversion process, variables such as temperature, pressure, and flow rates were
constantly monitored and fed into the computer; in this case, temperature in the
mold is the variable that is monitored and fed into the computer. In Flook,
the digital computer repetitively recalculated the "alarm limit" -- a number
that might signal the need to terminate or modify the catalytic conversion
process; in this case, the digital computer repetitively recalculates the
correct curing time -- a number that signals the time when the synthetic rubber
molding press should open.
The essence of the claimed discovery in both cases was an algorithm that could
be programmed on a digital computer. n31 [*210] In Flook, the algorithm
made use of multiple process variables; in this case, it makes use of only one.
In Flook, the algorithm was expressed in a newly developed mathematical
formula; in this case, the algorithm makes use of a well-known mathematical
formula. Manifestly, neither of these differences can explain today's holding.
n32 [**1069] What I [***180] believe [*211] does explain today's holding
is a misunderstanding of the applicants' claimed invention and a failure to
recognize the critical difference between the "discovery" requirement in § 101
and the "novelty" requirement in § 102. n33
- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -
n31 Commentators critical of the Flook decision have noted the essential
similarity of the two inventions:
"The Diehr invention improved the control system by continually
remeasuring the temperature and recalculating the proper cure time. The computer
would simultaneously keep track of the elapsed time. When the elapsed time
equalled the proper cure time, the rubber would be released automatically from
the mold.
"The facts are difficult to distinguish from those in Flook. Both
processes involved (1) an initial calculation, (2) continual remeasurement and
recalculation, and (3) some control use of the value obtained from the
calculation." Novick & Wallenstein, supra n. 5, at 326 (footnotes
omitted).
n32 Indeed, the most significant distinction between the invention at issue in
Flook and that at issue in this case lies not in the characteristics of
the inventions themselves, but rather in the drafting of the claims. After
noting that "[the] Diehr claims are reminiscent of the claims in Flook,"
Blumenthal & Riter, supra n. 15, at 502-503 (footnote omitted), the
authors of a recent article on the subject observe that the Court of Customs and
Patent Appeals' analysis in this case "lends itself to an interesting exercise
in claim drafting." Id., at 505. To illustrate their point, the authors
redrafted the Diehr and Lutton claims into the format employed in the Flook
application:
"An improved method of calculating the cure time of a rubber molding process
utilizing a digital computer comprising the steps of:
"a. inputting into said computer input values including
"1. natural logarithm conversion data ([l]n),
"2. an activation energy constant (C) unique to each batch of rubber being
molded,
"3. a constant (X) dependent upon the geometry of the particular mold of the
press, and
"4. continuous temperature values (Z) of the mold during molding;
"b. operating said computer for
"1. counting the elapsed cure time,
"2. calculating the cure time from the input values using the Arrhenius equation
[l]n V <v1>equ CZ+X, where V is the total cure time, and
"c. providing output signals from said computer when said calculated cure time
is equal to said elapsed cure time." Ibid.
The authors correctly conclude that even the lower court probably would have
found that this claim was drawn to unpatentable subject matter under § 101.
Id., at 505-506.
n33 In addition to confusing the requirements of §§ 101 and 102, the Court also
misapprehends the record in this case when it suggests that the Diehr and Lutton
patent application may later be challenged for failure to satisfy the
requirements of §§ 102 and 103. See ante, at 191. This suggestion
disregards the fact that the applicants overcame all objections to issuance of
the patent except the objection predicated on § 101. The Court seems to assume
that §§ 102 and 103 issues of novelty and obviousness remain open on remand. As
I understand the record, however, those issues have already been resolved. See
Brief for Respondents 11-14; Reply Memorandum for Petitioner 3-4, and n. 4.
Therefore, the Court is now deciding that the patent will issue.
- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - -
III
The Court misapplies Parker v. Flook because, like the Court of
Customs and Patent Appeals, it fails to understand or completely disregards the
distinction between the subject matter of what the inventor claims to
have discovered -- the § 101 issue -- and the question whether that claimed
discovery is in fact novel -- the § 102 issue. n34 If there is not even a
[*212] claim that anything constituting patentable subject matter has been
discovered, there is no occasion to address the novelty issue. n35 Or, as
[***181] was true in Flook, if the only concept that the inventor
claims to have discovered is not patentable subject matter, § 101 requires that
the application be rejected without reaching any issue under § 102; for it is
irrelevant that unpatentable subject matter -- in that case a formula for
updating alarm limits -- may in fact be novel.
- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -
n34 The early cases that the Court of Customs and Patent Appeals refused to
follow in Prater, Musgrave, and Benson had recognized the
distinction between the § 101 requirement that what the applicant claims to have
invented must be patentable subject matter and the § 102 requirement that the
invention must actually be novel. See, e. g., In re Shao Wen Yuan, 38 C.
C. P. A. (Pat.), at 973-976, 188 F.2d, at 382-383; In re Abrams, 38 C. C.
P. A. (Pat.), at 951-952, 188 F.2d, at 169; In re Heritage, 32 C. C. P.
A. (Pat.), at 1173-1174, 1176-1177, 150 F.2d, at 556, 558; Halliburton Oil
Well Cementing Co. v. Walker, 146 F.2d, at 821, 823. The lower
court's error in this case, and its unenthusiastic reception of Gottschalk
v. Benson and Parker v. Flook, is, of course, consistent
with its expansive reading of § 101 in Tarczy-Hornoch, Prater, and their
progeny.
n35 The Court's opinion in Flook itself pointed out this distinction:
"The obligation to determine what type of discovery is sought to be patented
must precede the determination of whether that discovery is, in fact, new or
obvious." 437 U.S., at 593.
As the Court of Customs and Patent Appeals noted in this case, "for the claim to
be statutory, there must be some substance to it other than the recitation and
solution of the equation or formula." 602 F.2d, at 988. See Comment, 62 J. Pat.
Off. Soc., supra n. 22, at 522-523.
- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - -
Proper analysis, therefore, must start with an understanding of what the
inventor claims to have discovered -- or phrased [**1070] somewhat differently
-- what he considers his inventive concept to be. n36 It seems clear to me that
Diehr and [*213] Lutton claim to have developed a new method of programming a
digital computer in order to calculate -- promptly and repeatedly -- the correct
curing time in a familiar process. n37 In the § 101 analysis, we must assume
that the sequence of steps in this programming method is novel, unobvious, and
useful. The threshold question of whether such a method is patentable subject
matter remains.
- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -
n36 The Court fails to focus upon what Diehr and Lutton claim to have discovered
apparently because it believes that this method of analysis would improperly
import novelty considerations into § 101. See ante, at 188-191, 193, n.
15. Rather than directing its attention to the applicants' claimed discovery,
the Court instead focuses upon the general industrial context in which the
applicants intend their discovery to be used. Implicit in this interpretation of
the patent application is the assumption that, as long as the claims describe a
specific implication of the applicants' discovery, patentable subject matter is
defined. This assumption was expressly rejected in Flook:
"This assumption is based on respondent's narrow reading of Benson, and
is as untenable in the context of § 101 as it is in the context of that case. It
would make the determination of patentable subject matter depend simply on the
draftsman's art and would ill serve the principles underlying the prohibition
against patents for 'ideas' or phenomena of nature. The rule that the discovery
of a law of nature cannot be patented rests, not on the notion that natural
phenomena are not processes, but rather on the more fundamental understanding
that they are not the kind of 'discoveries' that the statute was enacted to
protect." 437 U.S., at 593 (footnote omitted).
n37 A few excerpts from the original patent application will emphasize this
point:
"The invention will probably best be understood by first describing a simple
example, in which a single mold is involved and in which the information is
relatively static.
. . . .
"A standard digital computer may be employed in this method. It has a data
storage bank of suitable size which, of course, may vary when many molds are
used and when more refinements are employed. However, Fig. 1 shows a relatively
simple case which achieves results that are vast improvements over what has been
done up to now. . . .
"The data bank of the computer is provided with a digital input into which the
time-temperature cure data for the compound involved is fed, as shown in Fig. 1.
All the data is available to the computer upon call, by random access, and the
call can be automatic depending upon the temperature actually involved. In other
words, the computer over and over questions the data storage, asking, what is
the proper time of cure for the following summation of temperatures? The
question may be asked each second, and the answer is readily provided.
. . . .
"Recalculation continues until the time that has elapsed since mold closure
corresponds with the calculated time. Then, the computer actuates the
mold-opening device and the mold is automatically opened." App. to Pet. for
Cert. 43a-45a.
The Figure 1 referred to in the application is as follows:
[SEE ILLUSTRATION IN ORIGINAL]
Id., at 53a.
- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - -
If that method is regarded as an "algorithm" as that term was used in
Gottschalk v. Benson, 409 U.S. 63 (1972), [***182] and in [*214]
Parker v. Flook, 437 U.S. 584 (1978), n38 and if no other
inventive concept is disclosed in the patent application, the question must be
answered in the negative. In [**1071] both Benson and Flook, the
parties apparently agreed that the inventor's discovery was properly regarded as
an algorithm; the holding that an algorithm was a "law of nature" that could not
be [*215] patented therefore determined that those discoveries were not
patentable processes within the meaning of § 101.
- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -
n38 In Benson, we explained the term "algorithm" in the following
paragraph:
"The patent sought is on a method of programming a general-purpose digital
computer to convert signals from binary-coded decimal form into pure binary
form. A procedure for solving a given type of mathematical problem is known as
an 'algorithm.' The procedures set forth in the present claims are of that kind;
that is to say, they are a generalized formulation for programs to solve
mathematical problems of converting one form of numerical representation to
another. From the generic formulation, programs may be developed as specific
applications." 409 U.S., at 65.
- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - -
As the Court recognizes today, Flook also rejected the argument that
patent protection was available if the inventor did not claim a monopoly on
every conceivable use of the algorithm but instead limited his claims by
describing a specific postsolution activity -- in that case setting off an alarm
in a catalytic conversion process. In its effort to distinguish Flook
from the instant case, the Court characterizes that postsolution activity as
"insignificant," ante, at 191, or as merely "token" activity, ante,
at 192, n. 14. As a practical matter, however, the postsolution activity
described in the Flook application was no less significant than the
automatic opening of the curing mold involved in this case. For setting off an
alarm limit at the appropriate time is [***183] surely as important to the
safe and efficient operation of a catalytic conversion process as is actuating
the mold-opening device in a synthetic rubber-curing process. In both cases, the
post-solution activity is a significant part of the industrial process. But in
neither case should that activity have any legal significance because it
does not constitute a part of the inventive concept that the applicants claimed
to have discovered. n39
- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -
n39 In Flook, the Court's analysis of the postsolution activity recited
in the patent application turned, not on the relative significance of that
activity in the catalytic conversion process, but rather on the fact that that
activity was not a part of the applicant's discovery:
"The notion that post-solution activity, no matter how conventional or obvious
in itself, can transform an unpatentable principle into a patentable process
exalts form over substance. A competent draftsman could attach some form of
post-solution activity to almost any mathematical formula; the Pythagorean
theorem would not have been patentable, or partially patentable, because a
patent application contained a final step indicating that the formula, when
solved, could be usefully applied to existing surveying techniques. The concept
of patentable subject matter under § 101 is not 'like a nose of wax which may be
turned and twisted in any direction . . . .' White v. Dunbar, 119
U.S. 47, 51." 437 U.S., at 590 (footnote omitted).
- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - -
In Gottschalk v. Benson, we held that a program for the [*216]
solution by a digital computer of a mathematical problem was not a patentable
process within the meaning of § 101. In Parker v. Flook, we
further held that such a computer program could not be transformed into a
patentable process by the addition of postsolution activity that was not claimed
to be novel. That holding plainly requires the rejection of Claims 1 and 2 of
the Diehr and Lutton application quoted in the Court's opinion. Ante, at
179-180, n. 5. In my opinion, it equally requires rejection of Claim 11 because
the presolution activity described in that claim is admittedly a familiar part
of the prior art. n40
- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -
n40 Although the Court of Customs and Patent Appeals erred because it ignored
the distinction between the § 101 requirement that the applicant must claim to
have discovered a novel process and the § 102 requirement that the discovery
must actually be novel, that court correctly rejected the argument that any
difference between Claim 11 and the earlier claims was relevant to the § 101
inquiry. See 602 F.2d, at 984, 987-988.
- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - -
Even the Court does not suggest that the computer program developed by Diehr and
Lutton is a patentable discovery. Accordingly, if we treat the program as though
it were a familiar part of the prior art -- as well-established precedent
requires n41 -- it is absolutely clear that their application contains no claim
of patentable invention. Their application was therefore properly rejected under
§ 101 by the Patent Office and the Board of Appeals.
- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -
n41 This well-established precedent was reviewed in Parker v. Flook:
"Mackay Radio and Funk Bros. point to the proper analysis for this
case: The process itself, not merely the mathematical algorithm, must be new and
useful. Indeed, the novelty of the mathematical algorithm is not a determining
factor at all. Whether the algorithm was in fact known or unknown at the time of
the claimed invention, as one of the 'basic tools of scientific and
technological work,' see Gottschalk v. Benson, 409 U.S., at 67, it
is treated as though it were a familiar part of the prior art." 437 U.S., at
591-592.
- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - -
IV
[**1072] The broad question whether computer programs should be given patent
[***184] protection involves policy considerations that [*217] this Court is
not authorized to address. See Gottschalk v. Benson, 409 U.S., at
72-73; Parker v. Flook, 437 U.S., at 595-596. As the numerous
briefs amicus curiae filed in Gottschalk v. Benson, supra, Dann
v. Johnston, 425 U.S. 219 (1976), Parker v. Flook, supra,
and this case demonstrate, that question is not only difficult and important,
but apparently also one that may be affected by institutional bias. In each of
those cases, the spokesmen for the organized patent bar have uniformly favored
patentability and industry representatives have taken positions properly
motivated by their economic self-interest. Notwithstanding fervent argument that
patent protection is essential for the growth of the software industry, n42
commentators have noted that "this industry is growing by leaps and bounds
without it." n43 In addition, even [*218] some commentators who believe that
legal protection for computer programs is desirable have expressed doubts that
the present patent system can provide the needed protection. n44
- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -
n42 For example, the Association of Data Processing Service Organizations,
appearing as amicus curiae in Flook, made the following policy
argument:
"The need of the incentive of patents for software is at least as great as that
of the incentive available for hardware, because: 'Today, providing computer
software involves greater . . . risk than providing computer . . . hardware. . .
.'
"To a financial giant, the economic value of a patent may not loom large; to the
small software products companies upon which the future of the development of
quality software depends, the value of the patent in financing a small company
may spell the difference between life and death. To banks and financial
institutions the existence of a patent or even the potentiality of obtaining one
may well be a decisive factor in determining whether a loan should be granted.
To prospective investors a patent or the possibility of obtaining one may be the
principal element in the decision whether to invest.
"Making clear that patents may be available for inventions in software would
unleash important innovative talent. It would have the direct opposite effect
forecast by the . . . hardware manufacturers; it would enable competition with
those companies and provide the needed incentive to stimulate innovation." Brief
for ADAPSO as Amicus Curiae in Parker v. Flook, O. T. 1977,
No. 77-642, p. 44 (footnote omitted).
n43 Gemignani, supra n. 1, at 309. In a footnote to that comment,
Professor Gemignani added that the rate of growth of the software industry "has
been even faster lately than that of the hardware industry which does enjoy
patent protections." Id., at 309, n. 259. Other commentators are in
accord. See Nycum, Legal Protection for Computer Programs, 1 Computer L. J. 1,
55-58 (1978); Note, Protection of Computer Programs: Resurrection of the
Standard, 50 Notre Dame Law. 333, 344 (1974).
n44 See, e. g., Gemignani, supra n. 1, at 301-312; Keefe & Mahn,
Protecting Software: Is It Worth All the Trouble?, 62 A. B. A. J. 906, 907
(1976).
- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - -
Within the Federal Government, patterns of decision have also emerged.
Gottschalk, Dann, Parker, and Diamond were not ordinary litigants -- each was
serving as Commissioner of Patents and Trademarks when he opposed the
availability of patent protection for a program-related invention. No doubt each
may have been motivated by a concern about the ability of the Patent Office to
process effectively the flood of applications that would inevitably flow from a
decision that computer programs are patentable. n45 The consistent [***185]
concern evidenced by the Commissioner of Patents and Trademarks and by the Board
of Appeals of the Patent and Trademark Office has not been shared by the Court
of Customs and Patent Appeals, which reversed the Board in Benson, Johnston,
and Flook, and was in [**1073] turn reversed by this Court in each of
those cases. n46
- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -
n45 This concern influenced the President's Commission on the Patent System when
it recommended against patent protection for computer programs. In its report,
the President's Commission stated:
"The Patent Office now cannot examine applications for programs because of the
lack of a classification technique and the requisite search files. Even if these
were available, reliable searches would not be feasible or economic because of
the tremendous volume of prior art being generated. Without this search, the
patenting of programs would be tantamount to mere registration and the
presumption of validity would be all but nonexistent." Report of the President's
Commission, supra n. 10, at 13.
n46 It is noteworthy that the position of the Court of Customs and Patent
Appeals in the process patent area had been consistent with that of the
Commissioner of Patents and Trademarks for decades prior to 1968. As discussed
in Part I, supra, in that year the court rejected two longstanding
doctrines that would have foreclosed patentability for most computer programs
under § 101.
- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - -
[*219] Scholars have been critical of the work of both tribunals. Some of that
criticism may stem from a conviction about the merits of the broad underlying
policy question; such criticism may be put to one side. Other criticism,
however, identifies two concerns to which federal judges have a duty to respond.
First, the cases considering the patentability of program-related inventions do
not establish rules that enable a conscientious patent lawyer to determine with
a fair degree of accuracy which, if any, program-related inventions will be
patentable. Second, the inclusion of the ambiguous concept of an "algorithm"
within the "law of nature" category of unpatentable subject matter has given
rise to the concern that almost any process might be so described and therefore
held unpatentable.
In my judgment, today's decision will aggravate the first concern and will not
adequately allay the second. I believe both concerns would be better addressed
by (1) an unequivocal holding that no program-related invention is a patentable
process under § 101 unless it makes a contribution to the art that is not
dependent entirely on the utilization of a computer, and (2) an unequivocal
explanation that the term "algorithm" as used in this case, as in Benson
and Flook, is synonymous with the term "computer program." n47 Because
[*220] the invention claimed in the patent application at issue in this case
makes no contribution to the art that is not entirely dependent upon the
utilization of a computer in a familiar process, I would reverse the decision of
the Court of Customs and Patent Appeals.
- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -
n47 A number of authorities have drawn the conclusion that the terms are in fact
synonymous. See, e. g., Novick & Wallenstein, supra n. 5, at 333,
n. 172; Anderson, Algorithm, 1 Encyclopedia of Computer Science & Technology
364, 369 (J. Belzer, A. Holzman & A. Kent eds. 1975); E. Horowitz & S. Sahni,
Fundamentals of Computer Algorithms 2 (1978); A. Tanenbaum, Structured Computer
Organization 10 (1976). Cf. Blumenthal & Riter, supra n. 15, at 455-456;
Gemignani, supra n. 1, at 271-273, 276, n. 37.
- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - -
REFERENCES:
Return To Full Text Opinion
Go to Supreme Court Briefs
Go to Oral Argument Transcript
60 Am Jur 2d, Patents 7, 8
13 Federal Procedural Forms L Ed, Patents 52:1 et seq.
19 Am Jur Pl & Pr Forms (Rev), Patents, Forms 1-6
14 Am Jur Legal Forms 2d, Patents 196:11 et seq.
35 USCS 101
US L Ed Digest, Patents 45
L Ed Index to Annos, Computers; Patents
ALR Quick Index, Computers; Patents
Federal Quick Index, Computers; Patents
Annotation References:
Supreme Court's views as to what is patentable subject matter under federal law
or "process," "machine," "manufacture," or "composition of matter." 65 L Ed 2d
1197.
Patentability of computer programs. 6 ALR Fed 156.