U.S. Supreme Court
Diamond v. Diehr,450U.S. 175 (1981)Diamond v. DiehrNo. 79-1112Argued October 14,1980Decided March 3, 1981450U.S. 175CERTIORARI TO TIE UNITED STATESCOURT OFCUSTOMS AND PATENTAPPEALSSyllabusRespondents filed a patent application claiming invention for aprocess for molding raw, uncured synthetic rubber into curedprecision products. While it was possible, by using well-knowntime, temperature, and cure relationships, to calculate by means ofan established mathematical equation when to open the molding pressand remove the cured product, according to respondents, theindustry had not been able to measure precisely the temperatureinside the press, thus making it difficult to make the necessarycomputations to determine the proper cure time. Respondentscharacterized their contribution to the art to reside in theprocess of constantly measuring the temperature inside the mold andfeeding the temperature measurements into a computer thatrepeatedly recalculates the cure time by use of the mathematicalequation and then signals a device to open the press at the propertime. The patent examiner rejected respondents' claims on theground that they were drawn to nonstatutory subject matter under 35U.S.C. § 101, which provides for the issuance of patents to"[w]hoever invents or discovers any new and useful process,machine, manufacture, or composition of matter, or any new anduseful improvement thereof. . . ."The Patent and Trademark Office Board of Appeals agreed, but theCourt of Customs and Patent Appeals reversed.
Held: Respondents' claims recited subject matter thatwas eligible for patent protection under § 101. Pp.
450 U. S.181-193.(a) For purposes of § 101, a "process" is"an act, or a series of acts, performed upon the subject matterto be transformed and reduced to a different state or thing. If newand useful, it is just as patentable as is a piece of machinery. .. . The machinery pointed out as suitable to perform the processmay or may not be new or patentable."
Cochrane v. Deener,94 U. S. 780,
94 U. S. 788.Industrial processes such as respondents' claims for transformingraw, uncured synthetic rubber into a different state or thing arethe types which have historically been eligible to receive patentlaw protection. Pp.
450 U. S.181-184.(b) While a mathematical formula, like a law of nature, cannotbe the subject of a patent,
cf. Gottschalk v. Benson,409 U. S. 63;
Parker v.Page 450 U. S. 176Flook,437 U. S. 54,respondents do not seek to patent a mathematical formula, butinstead seek protection for a process of curing synthetic rubber.Although their process employs a well-known mathematical equation,they do not seek to preempt the use of that equation, except inconjunction with all of the other steps in their claimed process. Aclaim drawn to subject matter otherwise statutory does not becomenonstatutory simply because it uses a mathematical formula,computer program, or digital computer. Respondents' claims must beconsidered as a whole, it being inappropriate to dissect the claimsinto old and new elements and then to ignore the presence of theold elements in the analysis. The questions of whether a particularinvention meets the "novelty" requirements of 35 U.S.C. § 102 orthe "nonobviousness" requirements of § 103 do not affect thedetermination of whether the invention falls into a category ofsubject matter that is eligible for patent protection under § 101.Pp.
450 U. S.185-191.(c) When a claim containing a mathematical formula implements orapplies the formula in a structure or process which, whenconsidered as a whole, is performing a function which the patentlaws were designed to protect (
e.g., transforming orreducing an article to a different state or thing), then the claimsatisfies § 101's requirements. Pp.
450 U. S.191-193.602 F.2d 982, affirmed.REHNQUIST, J., delivered the opinion of the Court, in whichBURGER, C.J., and STEWART, WHITE, and POWELL, JJ., joined. STEVENS,J., filed a dissenting opinion, in which BRENNAN, MARSHALL, andBLACKMUN, JJ., joined,
post, p.
450 U. S.193.
Page 450 U. S. 177JUSTICE REHNQUIST delivered the opinion of the Court.We granted certiorari to determine whether a process for curingsynthetic rubber which includes in several of its steps the use ofa mathematical formula and a programmed digital computer ispatentable subject matter under 35 U.S.C. § 101.
IThe patent application at issue was filed by the respondents onAugust 6, 1975. The claimed invention is a process for molding raw,uncured synthetic rubber into cured precision products. The processuses a mold for precisely shaping the uncured material under heatand pressure and then curing the synthetic rubber in the mold sothat the product will retain its shape and be functionallyoperative after the molding is completed. [
Footnote 1]Respondents claim that their process ensures the production ofmolded articles which are properly cured. Achieving the perfectcure depends upon several factors, including the thickness of thearticle to be molded, the temperature of the molding process, andthe amount of time that the article is allowed to remain in thepress. It is possible, using well-known time, temperature, and curerelationships, to calculate by means of the Arrhenius equation[
Footnote 2] when to open thepress
Page 450 U. S. 178and remove the cured product. Nonetheless, according to therespondents, the industry has not been able to obtain uniformlyaccurate cures, because the temperature of the molding press couldnot be precisely measured, thus making it difficult to do thenecessary computations to determine cure time. [
Footnote 3] Because the temperature
inside the press has heretofore been viewed as anuncontrollable variable, the conventional industry practice hasbeen to calculate the cure time as the shortest time in which allparts of the product will definitely be cured, assuming areasonable amount of mold-opening time during loading andunloading. But the shortcoming of this practice is that operatingwith an uncontrollable variable inevitably led in some instances tooverestimating the mold-opening time and overcuring the rubber, andin other instances to underestimating that time and undercuring theproduct. [
Footnote 4]Respondents characterize their contribution to the art to residein the process of constantly measuring the actual temperatureinside the mold. These temperature measurements are thenautomatically fed into a computer which repeatedly recalculates thecure time by use of the Arrhenius equation.
Page 450 U. S. 179When the recalculated time equals the actual time that haselapsed since the press was closed, the computer signals a deviceto open the press. According to the respondents, the continuousmeasuring of the temperature inside the mold cavity, the feeding ofthis information to a digital computer which constantlyrecalculates the cure time, and the signaling by the computer toopen the press are all new in the art.The patent examiner rejected the respondents' claims on the soleground that they were drawn to nonstatutory subject matter under 35U.S.C. § 101. [
Footnote 5] Hedetermined that those
Page 450 U. S. 180steps in respondents' claims that are carried out by a computerunder control of a stored program constituted nonstatutory subjectmatter under this Court's decision in
Gottschalk v.Benson,409 U. S. 63(1972). The remaining steps -- installing rubber in the press andthe subsequent closing of the
Page 450 U. S. 181press -- were "conventional and necessary to the process, andcannot be the basis of patentability." The examiner concluded thatrespondents' claims defined and sought protection of a computerprogram for operating a rubber-molding press.The Patent and Trademark Office Board of Appeals agreed with theexaminer, but the Court of Customs and Patent Appeals reversed.
In re Diehr, 602 F.2d 892 (1979). The court noted that aclaim drawn to subject matter otherwise statutory does not becomenonstatutory because a computer is involved. The respondents'claims were not directed to a mathematical algorithm or an improvedmethod of calculation, but rather recited an improved process formolding rubber articles by solving a practical problem which hadarisen in the molding of rubber products.The Commissioner of Patents and Trademarks sought certiorari,arguing that the decision of the Court of Customs and PatentAppeals was inconsistent with prior decisions of this Court.Because of the importance of the question presented, we granted thewrit. 445 U.S. 926 (1980).
IILast Term, in
Diamond v. Chakrabarty,447 U.S. 303 (1980), this Court discussed the historicalpurposes 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 anduseful improvement thereof, may obtain a patent therefor, subjectto the conditions and requirements of this title. [
Footnote 6] "
Page 450 U. S. 182In cases of statutory construction, we begin with the languageof the statute. Unless otherwise defined, "words will beinterpreted as taking their ordinary, contemporary common meaning,"
Perrin v. United States,444 U. S. 37,
444 U. S. 42(1979), and, in dealing with the patent laws, we have more thanonce cautioned that "courts
should not read into the patentlaws limitations and conditions which the legislature has notexpressed.'"Diamond v. Chakrabarty, supra, at447 U. S. 308,quotingUnited States v. Dubilier Condenser Corp.,289 U. S. 178,289 U. S. 199(1933).The Patent Act of 1793 defined statutory subject matter as "anynew 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 recodifiedin 1952 did Congress replace the word "art" with the word"process." It is that latter word which we confront today, and, inorder to determine its meaning, we may not be unmindful of theCommittee Reports accompanying the 1952 Act which inform us thatCongress intended statutory subject matter to "include anythingunder the sun that is made by man." S.Rep. No.1979, 82d Cong., 2dSess., 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. § 101until 1952, a process has historically enjoyed patent protectionbecause it was considered a form of "art" as that term was used inthe 1793 Act. [
Footnote 7] Indefining the nature of a patentable process, the Court stated:"That a process may be patentable, irrespective of the
Page 450 U. S. 183particular form of the instrumentalities used, cannot bedisputed. . . . A process is a mode of treatment of certainmaterials to produce a given result. It is an act, or a series ofacts, performed upon the subject matter to be transformed andreduced to a different state or thing. If new and useful, it isjust as patentable as is a piece of machinery. In the language ofthe patent law, it is an art. The machinery pointed out as suitableto perform the process may or may not be new or patentable; whilstthe process itself may be altogether new, and produce an entirelynew result. The process requires
Page 450 U. S. 184that certain things should be done with certain substances, andin a certain order; but the tools to be used in doing this may beof secondary consequence."
Cochrane v. Deener,94 U. S. 780,
94 U. S.787-788 (1877).Analysis of the eligibility of a claim of patent protection fora "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 differentstate or thing' is the clue to the patentability of a process claimthat does not include particular machines."409 U.S. at
409 U. S.70.Analyzing respondents' claims according to the above statementsfrom our cases, we think that a physical and chemical process formolding precision synthetic rubber products falls within the § 101categories 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 bedisputed. The respondents' claims describe in detail a step-by-stepmethod for accomplishing such, beginning with the loading of a moldwith raw, uncured rubber and ending with the eventual opening ofthe press at the conclusion of the cure. Industrial processes suchas this are the types which have historically been eligible toreceive the protection of our patent laws. [
Footnote 8]
Page 450 U. S. 185IIIOur conclusion regarding respondents' claims is not altered bythe fact that, in several steps of the process, a mathematicalequation and a programmed digital computer are used. This Court hasundoubtedly recognized limits to § 101, and every discovery is notembraced within the statutory terms. Excluded from such patentprotection are laws of nature, natural phenomena, and abstractideas.
See Parker v. Flook,437 U.S. 584 (1978);
Gottschalk v. Benson, supra at
409 U. S. 67;
Funk Bros. Seed Co. v. Kalo Inoculant Co.,333 U.S. 127,
333 U. S. 130(1948). "An idea of itself is not patentable,"
Rubber-TipPencil Co. v. Howard, 20 Wall. 498,
87 U. S. 507(1874)."A principle, in the abstract, is a fundamental truth; anoriginal cause; a motive; these cannot be patented, as no one canclaim in either of them an exclusive right."
Le Roy v.Tatham, 14 How. 156,
55 U. S. 175(1853). Only last Term, we explained:"[A] new mineral discovered in the earth or a new plant found inthe wild is not patentable subject matter|""[A] new mineral discovered in the earth or a new plant found inthe wild is not patentable subject matter. Likewise, Einstein couldnot patent his celebrated law that E=mc^2; nor could Newton havepatented the law of gravity. Such discoveries are 'manifestationsof . . . nature, free to all men and reserved exclusively tonone.'"
Diamond v. Chakrabarty, 447 U.S. at
447 U. S. 309,quoting
Funk Bros. Seed Co. v. Kalo Inoculant Co., supraat
333 U. S.130.Our recent holdings in
Gottschalk v. Benson, supra, and
Parker v. Flook, supra, both of which arecomputer-related, stand for no more than these long-establishedprinciples. In
Benson, we held unpatentable claims for analgorithm used to convert binary code decimal numbers to equivalentpure binary numbers. The sole practical application of thealgorithm was in connection with the programming of a
Page 450 U. S. 186general purpose digital computer. We defined "algorithm" as a"procedure for solving a given type of mathematical problem," andwe concluded that such an algorithm, or mathematical formula, islike a law of nature, which cannot be the subject of a patent.[
Footnote 9]
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 thatthe application sought to protect a formula for computing thisnumber. Using this formula, the updated alarm limit could becalculated if several other variables were known. The application,however, did not purport to explain how these other variables wereto be determined, [
Footnote10] nor
Page 450 U. S. 187did it purport"to contain any disclosure relating to the chemical processes atwork, the monitoring of process variables, or the means of settingoff an alarm or adjusting an alarm system. All that it provides isa formula for computing an updated alarm limit."437 U.S. at
437 U. S.586.In contrast, the respondents here do not seek to patent amathematical formula. Instead, they seek patent protection for aprocess of curing synthetic rubber. Their process admittedlyemploys a well-known mathematical equation, but they do not seek topreempt the use of that equation. Rather, they seek only toforeclose from others the use of that equation in conjunction withall of the other steps in their claimed process. These includeinstalling rubber in a press, closing the mold, constantlydetermining the temperature of the mold, constantly recalculatingthe appropriate cure time through the use of the formula and adigital computer, and automatically opening the press at the propertime. Obviously, one does not need a "computer" to cure natural orsynthetic rubber, but if the computer use incorporated in theprocess patent significantly lessens the possibility of"overcuring" or "undercuring," the process as a whole does notthereby become unpatentable subject matter.Our earlier opinions lend support to our present conclusion thata claim drawn to subject matter otherwise statutory does not becomenonstatutory 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 apatent for any program servicing a computer. We do not 90 hold."409 U.S. at
409 U. S. 71.Similarly, in
Parker v. Flook, we stated that "a processis not unpatentable simply because it contains a law of nature or amathematical algorithm." 437 U.S. at
437 U. S. 590.It is now commonplace that an application of a law of nature ormathematical formula to a known structure or process may well bedeserving of patent protection.
See, e.g.,333 U.S. SeedPage 450 U. S. 188Co. v. Kalo Inoculant Co.,333 U.S. 127 (1948);
Ebel 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 Stoneexplained four decades ago:"While a scientific truth, or the mathematical expression of it,is not a patentable invention, a novel and useful structure createdwith the aid of knowledge of scientific truth may be."
Mackay Radio & Telegraph Co. v. Radio Corp. ofAmerica,306 U. S. 86,
306 U. S. 94(1939). [
Footnote 11]We think this statement in
Mackay takes us a long waytoward the correct answer in this case. Arrhenius' equation is notpatentable in isolation, but when a process for curing rubber isdevised which incorporates in it a more efficient solution of theequation, that process is, at the very least, not barred at thethreshold by § 101.In determining the eligibility of respondents' claimed processfor patent protection under § 101, their claims must be consideredas a whole. It is inappropriate to dissect the claims into old andnew elements and then to ignore the presence of the old elements inthe analysis. This is particularly true in a process claim, becausea new combination of steps in a process may be patentable eventhough all the constituents of the combination were well known andin common use before the combination was made. The "novelty" of anyelement or steps in a process, or even of the
Page 450 U. S. 189process itself, is of no relevance in determining whether thesubject matter of a claim falls within the § 101 categories ofpossibly patentable subject matter. [
Footnote 12]It has been urged that novelty is an appropriate considerationunder § 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 subjectmatter that is eligible for patent protection "subject to theconditions and requirements of this title." Specific conditions forpatentability follow, and § 102 covers in detail the conditionsrelating to novelty. [
Footnote13]
Page 450 U. S. 190The question, therefore, of whether a particular invention isnovel is "wholly apart from whether the invention falls into acategory of statutory subject matter."
In re Bergy, 596F.2d 952, 961 (CCPA 1979) (emphasis deleted).
See also Nickolav. Peterson, 580 F.2d 898 (CA6 1978). The legislative historyof the 1952 Patent Act is in accord with this reasoning. The SenateReport stated:"Section 101 sets forth the subject matter that can be patented,'subject to the conditions and requirements of this title.' Theconditions under which a patent may be obtained follow, and
Section 102 covers the conditions relating tonovelty."S.Rep. No.1979, 82d Cong., 2d Sess., 5 (1952) (emphasissupplied). It is later stated in the same Report:"Section 102, in general, may be said to describe the statutorynovelty required for patentability, and includes,
Page 450 U. S. 191in effect, an amplification and definition of 'new' in section101."
Id. at 6. Finally, it is stated in the "RevisionNotes":"The corresponding section of [the] existing statute is splitinto two sections, section 101 relating to the subject matter forwhich patents may be obtained, and section 102 defining statutorynovelty and stating other conditions for patentability."
Id. at 17.
See also H.R.Rep. No.1923, 82dCong., 2d Sess., 6, 7, and 17 (1952).In this case, it may later be determined that the respondents'process is not deserving of patent protection because it fails tosatisfy the statutory conditions of novelty under § 102 ornonobviousness under § 103. A rejection on either of these groundsdoes not affect the determination that respondents' claims recitedsubject matter which was eligible for patent protection under §101.
IVWe have before us today only the question of whetherrespondents' claims fall within the § 101 categories of possiblypatentable subject matter. We view respondents' claims as nothingmore than a process for molding rubber products, and not as anattempt to patent a mathematical formula. We recognize, of course,that, when a claim recites a mathematical formula (or scientificprinciple or phenomenon of nature), an inquiry must be made intowhether the claim is seeking patent protection for that formula inthe abstract. A mathematical formula, as such, is not accorded theprotection of our patent laws,
Gottschalk v. Benson,409 U. S. 63(1972), and this principle cannot be circumvented by attempting tolimit the use of the formula to a particular technologicalenvironment.
Parker v. Flook,437 U.S. 584 (1978). Similarly, insignificant post-solutionactivity will not transform
Page 450 U. S. 192an unpatentable principle into a patentable process.
Ibid. [
Footnote 14]To hold otherwise would allow a competent draftsman to evade therecognized limitations on the type of subject matter eligible forpatent protection. On the other hand, when a claim containing amathematical formula implements or applies that formula in astructure or process which, when considered as a whole, isperforming a function which the patent laws were designed toprotect (
e.g., transforming or reducing an article to adifferent state or thing), then the claim satisfies therequirements of § 101. Because we do not view respondents' claimsas an attempt to patent a mathematical formula, but rather to bedrawn to an industrial process
Page 450 U. S. 193for the molding of rubber products, we affirm the judgment ofthe Court of Customs and Patent Appeals. [
Footnote 15]
It is so ordered.[
Footnote 1]A "cure" is obtained by mixing curing agents into the uncuredpolymer in advance of molding, and then applying heat over a periodof time. If the synthetic rubber is cured for the right length oftime at the right temperature, it becomes a usable product.[
Footnote 2]The equation is named after its discoverer, Svante Arrhenius,and has long been used to calculate the cure time in rubber-moldingpresses. The equation can be expressed as follows:ln v = CZ + xwherein ln v is the natural logarithm of v, the total requiredcure time; C is the activation constant, a unique figure for eachbatch of each compound being molded, determined in accordance withrheometer measurements of each batch; Z is the temperature in themold; and x is a constant dependent on the geometry of theparticular mold in the press. A rheometer is an instrument tomeasure flow of viscous substances.[
Footnote 3]During the time a press is open for loading, it will cool. Thelonger it is open, the cooler it becomes and the longer it takes toreheat the press to the desired temperature range. Thus, the timenecessary to raise the mold temperature to curing temperature is anunpredictable variable. The respondents claim to have overcome thisproblem by continuously measuring the actual temperature in theclosed press through the use of a thermocouple.[
Footnote 4]We note that the petitioner does not seriously contest therespondents' assertions regarding the inability of the industry toobtain accurate cures on a uniform basis.
See Brief forPetitioner 3.[
Footnote 5]Respondents' application contained 11 different claims. Threeexamples are claims 1, 2, and 11, which provide:"1. A method of operating a rubber-molding press for precisionmolded compounds with the aid of a digital computer,comprising:""providing said computer with a database for said press,including at least,""natural logarithm conversion data (ln),""the activation energy constant (C) unique to each batch of saidcompound being molded, and""a constant (x) dependent upon the geometry of the particularmold of the press,""initiating an interval timer in said computer upon the closureof the press for monitoring the elapsed time of said closure,""constantly determining the temperature (Z) of the mold at alocation closely adjacent to the mold cavity in the press duringmolding,""constantly providing the computer with the temperature(Z),""repetitively calculating in the computer, at frequent intervalsduring each cure, the Arrhenius equation for reaction time duringthe cure, which is""ln v = CZ + x""where
v is the total required cure time,""repetitively comparing in the computer at said frequentintervals during the cure each said calculation of the totalrequired cure time calculated with the Arrhenius equation and saidelapsed time, and""opening the press automatically when a said comparisonindicates equivalence.""2. The method of claim 1 including measuring the activationenergy constant for the compound being molded in the press with arheometer and automatically updating said data base within thecomputer in the event of changes in the compound being molded insaid press as measured by said rheometer.""
* * * *""11. A method of manufacturing precision molded articles fromselected synthetic rubber compounds in an openable rubber moldingpress having at least one heated precision mold, comprising:""(a) heating said mold to a temperature range approximating apredetermined rubber curing temperature,""(b) installing prepared unmolded synthetic rubber of a knowncompound in a molding cavity of predetermined geometry as definedby said mold,""(c) closing said press to mold said rubber to occupy saidcavity in conformance with the contour of said mold and to curesaid rubber by transfer of heat thereto from said mold,""(d) initiating an interval timer upon the closure of said pressfor monitoring the elapsed time of said closure,""(e) heating said mold during said closure to maintain thetemperature thereof within said range approximating said rubbercuring temperature,""(f) constantly determining the temperature of said mold at alocation closely adjacent said cavity thereof throughout closure ofsaid press,""(g) repetitively calculating at frequent periodic intervalsthroughout closure of said press the Arrhenius equation forreaction time of said rubber to determine total required cure time
v as follows:""ln v = cz + x""wherein c is an activation energy constant determined for saidrubber being molded and cured in said press, z is the temperatureof said mold at the time of each calculation of said Arrheniusequation, and x is a constant which is a function of saidpredetermined geometry of said mold,""(h) for each repetition of calculation of said Arrheniusequation herein, comparing the resultant calculated total requiredcure time with the monitored elapsed time measured by said intervaltimer,""(i) opening said press when a said comparison of calculatedtotal required cure time and monitored elapsed time indicatesequivalence, and""(j) removing from said mold the resultant precision molded andcured rubber article."[
Footnote 6]The word "process" is defined in 35 U.S.C. § 100(b):"The term 'process' means process, art or method, and includes anew use of a known process, machine, manufacture, composition ofmatter, or material."[
Footnote 7]In
Corning v.Burden, 15 How. 252,
56 U. S.267-268 (1854), this Court explained:"A process,
eo nomine, is not made the subject of apatent in our act of congress. It is included under the generalterm 'useful art.' An art may require one or more processes ormachines in order to produce a certain result or manufacture. Theterm machine includes every mechanical device or combination ofmechanical powers and devices to perform some function and producea certain effect or result. But where the result or effect isproduced by chemical action, by the operation or application ofsome element or power of nature, or of one substance to another,such modes, methods, or operations are called processes. A newprocess is usually the result of discovery; a machine, ofinvention. The arts of tanning, dyeing, making waterproof cloth,vulcanizing India rubber, smelting ores, and numerous others areusually carried on by processes, as distinguished from machines.One may discover a new and useful improvement in the process oftanning, dyeing, &c. irrespective of any particular form ofmachinery or mechanical device. And another may invent alabor-saving machine by which this operation or process may beperformed, and each may be entitled to his patent. As, forinstance, A has discovered that, by exposing India rubber to acertain degree of heat, in mixture or connection with certainmetalic salts, he can produce a valuable product, or manufacture;he is entitled to a patent for his discovery, as a process orimprovement in the art, irrespective of any machine or mechanicaldevice. B, on the contrary, may invent a new furnace or stove, orsteam apparatus, by which this process may be carried on with muchsaving of labor and expense of fuel, and he will be entitled to apatent for his machine as an improvement in the art. Yet A couldnot have a patent for a machine, or B for a process; but each wouldhave a patent for the means or method of producing a certainresult, or effect, and not for the result or effect produced. It isfor the discovery or invention of some practical method or means ofproducing a beneficial result or effect that a patent is granted,and not for the result or effect itself. It is when the termprocess is used to represent the means or method of producing aresult that it is patentable, and it will include all methods ormeans which are not effected by mechanism or mechanicalcombinations."[
Footnote 8]We note that, as early as 1854, this Court approvingly referredto patent eligibility of processes for curing rubber.
Seeid. at
56 U. S. 267;n. 7,
supra. In
Tilghman v. Proctor,102 U.S. 707 (1881), we referred to the original patentCharles Goodyear received on his process for "vulcanizing" orcuring rubber. We stated:"That a patent can be granted for a process there can be nodoubt. The patent law is not confined to new machines and newcompositions of matter, but extends to any new and useful art ormanufacture. A manufacturing process is clearly an art within themeaning of the law. Goodyear's patent was for a process, namely,the process of vulcanizing india rubber by subjecting it to a highdegree of heat when mixed with sulphur and a mineral salt. Theapparatus for performing the process was not patented, and was notmaterial. The patent pointed out how the process could be effected,and that was deemed sufficient."
Id. at
102 U. S.722.[
Footnote 9]The term "algorithm" is subject to a variety of definitions. Thepetitioner defines the term to mean:"'1. A fixed step-by-step procedure for accomplishing a givenresult; usually a simplified procedure for solving a complexproblem, also a full statement of a finite number of steps. 2. Adefined process or set of rules that leads [
sic] andassures development of a desired output from a given input. Asequence of formulas and/or algebraic/logical steps to calculate ordetermine 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, ComputerDictionary and Handbook 23 (2d ed.1972). This definition issignificantly broader than the definition this Court employed in
Benson and
Flook. Our previous decisionsregarding the patentability of "algorithms" are necessarily limitedto the more narrow definition employed by the Court, and we do notpass judgment on whether processes falling outside the definitionpreviously used by this Court, but within the definition offered bythe petitioner, would be patentable subject matter.[
Footnote 10]As we explained in
Flook, in order for an operatorusing the formula to calculate an updated alarm limit, the operatorwould need to know the original alarm base, the appropriate marginof safety, the time interval that should elapse between eachupdating, the current temperature (or other process variable), andthe appropriate weighing factor to be used to average the alarmbase and the current temperature. 437 U.S. at
437 U. S. 586.The patent application did not "explain how to select theapproximate margin of safety, the weighing factor, or any of theother variables."
Ibid.[
Footnote 11]We noted in
Funk Bros. Seed Co. v. Kalo Inoculant Co.,333 U. S. 127,
333 U. S. 130(1948):"He who discovers a hitherto unknown phenomenon of nature has noclaim to a monopoly of it which the law recognizes. If there is tobe invention from such a discovery, it must come from theapplication of the law of nature to a new and useful end."Although we were dealing with a "product" claim in
FunkBros., the same principle applies to a process claim.
Gottschalk v. Benson,409 U. S. 63,
409 U. S. 68(1972).[
Footnote 12]It is argued that the procedure of dissecting a claim into oldand new elements is mandated by our decision in
Flook,which noted that a mathematical algorithm must be assumed to bewithin the "prior art." It is from this language that thepetitioner premises his argument that, if everything other than thealgorithm is determined to be old in the art, then the claim cannotrecite statutory subject matter. The fallacy in this argument isthat we did not hold in
Flook that the mathematicalalgorithm could not be considered at all when making the § 101determination. To accept the analysis proffered by the petitionerwould, if carried to its extreme, make all inventions unpatentable,because all inventions can be reduced to underlying principles ofnature which, once known, make their implementation obvious. Theanalysis suggested by the petitioner would also undermine ourearlier decisions regarding the criteria to consider in determiningthe eligibility of a process for patent protection.
See, e.g.,Gottschalk v. Benson, supra; and
Cochrane v. Deener,94 U. S. 780(1877).[
Footnote 13]Section 102 is titled "Conditions for patentability; novelty andloss 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 aforeign country, before the invention thereof by the applicant forpatent, or""(b) the invention was patented or described in a printedpublication in this or a foreign country or in public use or onsale in this country more than one year prior to the date of theapplication 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 applicantor his legal representatives or assigns in a foreign country priorto the date of the application for patent in this country on anapplication for patent or inventor's certificate filed more thantwelve months before the filing of the application in the UnitedStates, or""(e) the invention was described in a patent granted on anapplication for patent by another filed in the United States beforethe invention thereof by the applicant for patent, or on aninternational application by another who has fulfilled therequirements of paragraphs (1), (2), and (4) of section 371(c) ofthis title before the invention thereof by the applicant forpatent, or""(f) he did not himself invent the subject matter sought to bepatented, or""(g) before the applicant's invention thereof the invention wasmade in this country by another who had not abandoned, suppressed,or concealed it. In determining priority of invention there shallbe considered not only the respective dates of conception andreduction to practice of the invention, but also the reasonablediligence of one who was first to conceive and last to reduce topractice, from a time prior to conception by the other."[
Footnote 14]Arguably, the claims in
Flook did more than present amathematical formula. The claims also solved the calculation inorder to produce a new number or "alarm limit" and then replacedthe old number with the number newly produced. The claims coveredall uses of the formula in processes "comprising the catalyticchemical conversion of hydrocarbons." There are numerous suchprocesses in the petrochemical and oil refinery industries, and theclaims therefore covered a broad range of potential uses. 437 U.S.at
437 U. S. 586.The claims, however, did not cover every conceivable application ofthe formula. We rejected in
Flook the argument that,because all possible uses of the mathematical formula were notpreempted, the claim should be eligible for patent protection. Ourreasoning in
Flook is in no way inconsistent with ourreasoning here. A mathematical formula does not suddenly becomepatentable subject matter simply by having the applicant acquiesceto limiting the reach of the patent for the formula to a particulartechnological use. A mathematical formula, in the abstract, isnonstatutory subject matter regardless of whether the patent isintended to cover all uses of the formula or only limited uses.Similarly, a mathematical formula does not become patentablesubject matter merely by including in the claim for the formulatoken post-solution activity such as the type claimed in
Flook. We were careful to note in
Flook that thepatent application did not purport to explain how the variablesused in the formula were to be selected, nor did the applicationcontain any disclosure relating to chemical processes at work orthe means of setting off an alarm or adjusting the alarm limit.
Ibid. All the application provided was a "formula forcomputing an updated alarm limit."
Ibid.[
Footnote 15]The dissent's analysis rises and falls on its characterizationof respondents' claims as presenting nothing more than "an improvedmethod of calculating the time that the mold should remain closedduring the curing process."
Post at
450 U. S.206-207. The dissent states that respondents claim onlyto have developed "a new method of programming a digital computerin order to calculate -- promptly and repeatedly -- the correctcuring time in a familiar process."
Post at
450 U. S. 213.Respondents' claims, however, are not limited to the isolated stepof "programming a digital computer." Rather, respondents' claimsdescribe a process of curing rubber beginning with the loading ofthe mold and ending with the opening of the press and theproduction of a synthetic rubber product that has been perfectlycured -- a result heretofore unknown in the art.
Seen 5,
supra. The factthat one or more of the steps in respondents' process may not, inisolation, be novel or independently eligible for patent protectionis irrelevant to the question of whether the claims as a wholerecite 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 theirelements, but by the novelty of the combination they represented.Invention was recognized because Laitram's assignors combinedordinary elements in an extraordinary way -- a novel union of oldmeans was designed to achieve new ends. Thus, for both inventions,'the whole in some way exceed[ed] the sum of its parts.'
GreatA. & P. Tea Co. v. Supermarket Equipment Corp.,340 U. S.147,
340 U. S. 152 (1950)."
Id. at
406 U. S.521-522 (footnote omitted).In order for the dissent to reach its conclusion, it isnecessary for it to read out of respondents' patent application allthe steps in the claimed process which it determined were not novelor "inventive." That is not the purpose of the § 101 inquiry, andconflicts with the proposition, recited above, that a claimedinvention may be entitled to patent protection even though some orall of its elements are not "novel."JUSTICE STEVENS, with whom JUSTICE BRENNAN, JUSTICE MARSHALL,and JUSTICE BLACKMUN join, dissenting.The starting point in the proper adjudication of patentlitigation is an understanding of what the inventor claims
Page 450 U. S. 194to have discovered. The Court's decision in this case rests on amisreading of the Diehr and Lutton patent application. Moreover,the Court has compounded its error by ignoring the criticaldistinction between the character of the subject matter that theinventor claims to be novel -- the § 101 issue -- and the questionwhether that subject matter is in fact novel -- the § 102issue.
IBefore discussing the major flaws in the Court's opinion, a wordof history may be helpful. As the Court recognized in
Parker v.Flook,437 U. S. 584,
437 U. S. 595(1978), the computer industry is relatively young. Althoughcomputer technology seems commonplace today, the first digitalcomputer capable of utilizing stored programs was developed lessthan 30 years ago. [
Footnote 2/1]Patent law developments in response to this new technology are ofeven more recent vintage. The subject of legal protection forcomputer programs did not begin to receive serious considerationuntil over a decade after completion of the first programmabledigital computer. [
Footnote 2/2] Itwas 1968 before
Page 450 U. S. 195the federal courts squarely addressed the subject, [
Footnote 2/3] and 1972 before this Courtannounced its first decision in the area. [
Footnote 2/4]Prior to 1968, well-established principles of patent lawprobably would have prevented the issuance of a valid patent onalmost any conceivable computer program. Under the "mental steps"doctrine, processes involving mental operations were consideredunpatentable.
See, e.g., In re Heritage, 32 C.C.P.A.(Pat.) 1170, 1173-1177, 150 F.2d 554, 556-558 (1945);
In reShao 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 thefamiliar principle that a scientific concept or mere idea cannot bethe subject of a valid patent.
See In re Bolongaro, 20C.C.P.A. (Pat.) 845, 846-847, 62 F.2d 1059, 1060 (1933). [
Footnote 2/5] The doctrine was regularlyinvoked to deny patents to inventions consisting primarily ofmathematical formulae or methods of computation. [
Footnote 2/6] It was also applied against patentclaims in which a mental operation or mathematical computation wasthe sole novel element or inventive contribution; it was clear thatpatentability
Page 450 U. S. 196could not be predicated upon a mental step. [
Footnote 2/7] Under the "function of a machine"doctrine, a process which amounted to nothing more than adescription of the function of a machine was unpatentable. Thisdoctrine had its origin in several 19th-century decisions of thisCourt, [
Footnote 2/8] and it hadbeen consistently followed thereafter by the lower federal courts.[
Footnote 2/9]
Page 450 U. S. 197Finally, the definition of "process" announced by this Court in
Cochrane v. Deener,94 U. S. 780,
94 U. S.787-788 (1877), seemed to indicate that a patentableprocess must cause a physical transformation in the materials towhich the process is applied.
See ante at
450 U. S.182-184.Concern with the patent system's ability to deal with rapidlychanging technology in the computer and other fields led to theformation in 1965 of the President's Commission on the PatentSystem. After studying the question of computer programpatentability, the Commission recommended that computer programs beexpressly excluded from the coverage of the patent laws; thisrecommendation was based primarily upon the Patent Office'sinability to deal with the administrative burden of examiningprogram applications. [
Footnote2/10] At approximately the time that the Commission issued itsreport, the Patent Office published notice of its intention toprescribe guidelines for the examination of applications forpatents 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.[
Footnote 2/11] The Patent Officeindicated, however,
Page 450 U. S. 198that a programmed computer could be a component of a patentableprocess if combined with unobvious elements to produce a physicalresult. The Patent Office formally adopted the guidelines in 1968.
See 33 Fed.Reg. 15609 (1968).The new guidelines were to have a short life. Beginning with twodecisions in 1968, a dramatic change in the law as understood bythe Court of Customs and Patent Appeals took place. By repudiatingthe well-settled "function of a machine" and "mental steps"doctrines, that court reinterpreted § 101 of the Patent Code toenlarge drastically the categories of patentable subject matter.This reinterpretation would lead to the conclusion that computerprograms were within the categories of inventions to which Congressintended to extend patent protection.In
In re Tarczy-Hornoch, 55 C.C.P.A. (Pat.) 1441, 397F.2d 856 (1968), a divided Court of Customs and Patent Appealsoverruled the line of cases developing and applying the "functionof a machine" doctrine. The majority acknowledged that the doctrinehad originated with decisions of this Court, and that the lowerfederal 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 amisinterpretation of the precedents, and that it was contrary to"the basic purposes of the patent system and productive of a rangeof undesirable results from the harshly inequitable to the silly."
Id. at 1454, 397 F.2d at 867. [
Footnote 2/12] Shortly thereafter, a similar
Page 450 U. S. 199fate befell the "mental steps" doctrine. In
In rePrater, 56 C.C.P.A. (Pat.) 1360, 415 F.2d 1378 (1968),
modified on rehearing, 56 C.C.A.P. (Pat.) 1381, 415 F.2d1393 (1969), the court found that the precedents on which thatdoctrine was based either were poorly reasoned or had beenmisinterpreted over the years. 56 C.C.P.A. (Pat.) at 1366-1372, 415F.2d at 1382-1387. The court concluded that the fact that a processmay be performed mentally should not foreclose patentability if theclaims reveal that the process also may be performed without mentaloperations.
Id. at 1374-1375, 415 F.2d at 1389. [
Footnote 2/13] This aspect of theoriginal
Prater opinion was substantially undisturbed bythe opinion issued after rehearing. However, the second
Prater opinion clearly indicated that patent claims broadenough to encompass the operation of a programmed computer wouldnot 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. [
Footnote 2/14]
Page 450 U. S. 200The Court of Customs and Patent Appeals soon replaced theoverruled doctrines with more expansive principles formulated withcomputer technology in mind. In
In re Bernhart, 57C.C.P.A. (Pat.) 737, 417 F.2d 1395 (1969), the court reaffirmed
Prater, and indicated that all that remained of the mentalsteps doctrine was a prohibition on the granting of a patent thatwould confer a monopoly on all uses of a scientific principle ormathematical equation.
Id. at 743, 417 F.2d at 1399. Thecourt also announced that a computer programmed with a new andunobvious program was physically different from the same computerwithout that program; the programmed computer was a new machine, orat least a new improvement over the unprogrammed computer.
Id. at 744, 417 F.2d at 1400. Therefore, patent protectioncould be obtained for new computer programs if the patent claimswere drafted in apparatus form.The Court of Customs and Patent Appeals turned its attention toprocess claims encompassing computer programs in
In reMusgrave, 57 C.C.P.A. (Pat.) 1352, 431 F.2d 882 (1970). Inthat case, the court emphasized the fact that
Prater haddone away with the mental steps doctrine; in particular, the courtrejected the Patent Office's continued reliance upon the "point ofnovelty" approach to claim analysis.
Id. at 1362, 431 F.2dat 889. [
Footnote 2/15] The courtalso announced a new standard for evaluating process claims under §101: any sequence of operational steps was a patentable processunder § 101 as long as it was within the "technological arts."
Id. at 1366-1367, 431 F.2d at 893. This standardeffectively disposed of any vestiges of the mental steps doctrineremaining
Page 450 U. S. 201after
Prater and
Bernhart. [
Footnote 2/16] The "technological arts" standardwas refined in
In re Benson, 58 C.C.P.A. (Pat.) 1134, 441F.2d 682 (1971), in which the court held that computers, regardlessof the uses to which they are put, are within the technologicalarts for purposes of § 101.
Id. at 1142, 441 F.2d at688.
In re Benson, of course, was reversed by this Court in
Gottschalk v. Benson,409 U. S. 63(1972). [
Footnote 2/17] JusticeDouglas' opinion for a unanimous Court made no reference to thelower court's rejection of the mental steps doctrine or to the newtechnological arts standard. [
Footnote 2/18] Rather, the Court clearly held that newmathematical procedures that can be conducted in old computers,like mental processes and abstract intellectual concepts,
seeid. at
409 U. S. 67,are not patentable processes within the meaning of § 101.
Page 450 U. S. 202The Court of Customs and Patent Appeals had its firstopportunity to interpret
Benson in
In reChristensen, 478 F.2d 1392 (1973). In
Christensen,the claimed invention was a method in which the only novel elementwas a mathematical formula. The court resurrected the "point ofnovelty" approach abandoned in
Musgrave and held that aprocess claim in which the point of novelty was a mathematicalequation to be solved as the final step of the process did notdefine patentable subject matter after
Benson. 478 F.2d at1394. Accordingly, the court affirmed the Patent Office Board ofAppeals' rejection of the claims under § 101.The Court of Customs and Patent Appeals, in subsequent cases,began to narrow its interpretation of
Benson. In
In reJohnston, 502 F.2d 765 (1974), the court held that arecordkeeping machine system which comprised a programmed digitalcomputer was patentable subject matter under § 101.
Id. at771. The majority dismissed
Benson with the observationthat
Benson involved only process, not apparatus, claims.502 F.2d at 771. Judge Rich dissented, arguing that to limit
Benson only to process claims would make patentabilityturn upon the form in which a program invention was claimed. 502F.2d at 773-774. [
Footnote 2/19]The court again construed
Benson as limited only toprocess claims in
In re Noll, 545 F.2d 141 (1976),
cert. denied, 434 U.S. 875 (1977); apparatus claims weregoverned by the court's pre-
Benson conclusion that aprogrammed computer was structurally different from the samecomputer without that particular program. 545 F.2d at 148. Indissent, Judge Lane, joined by Judge Rich, argued that
Benson should be read as a general proscription of thepatenting of computer programs regardless of the form of theclaims. 545 F.2d at 151-152. Judge Lane's interpretation of
Benson was rejected by the majority
Page 450 U. S. 203in
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 topreclude the patenting of program inventions claimed as processesonly where the claims would preempt all uses of an algorithm ormathematical formula. 545 F.2d at 156, 158-159. [
Footnote 2/20] The dissenting judges argued, asthey had in
Noll, that
Benson held that programsfor general purpose digital computers are not patentable subjectmatter. 545 F.2d at 161.Following
Noll and
Chatfield, the Court ofCustoms and Patent Appeals consistently interpreted
Bensonto preclude the patenting of a program-related process inventiononly when the claims, if allowed, would wholly preempt thealgorithm itself. One of the cases adopting this view was
In reFlook, 559 F.2d 21 (1977), [
Footnote 2/21] which was reversed in
Parker v.Flook,437 U. S. 584(1978). Before this Court decided
Flook, however, thelower court developed a two-step procedure for analyzingprogram-related inventions in light of
Benson. In
Inre Freeman, 573 F.2d 1237 (1978), the court held that suchinventions must first be examined to determine whether amathematical algorithm is directly or indirectly claimed; if analgorithm is recited, the court must then determine whether theclaim would wholly preempt that algorithm. Only if a claimsatisfied both inquiries was
Benson considered applicable.573 F.2d at 1245.
See also In re Toma, 575 F.2d 872, 877(CCPA 1978).
Page 450 U. S. 204In
Flook, this Court clarified
Benson in threesignificant respects. First,
Flook held that the
Benson rule of unpatentable subject matter was notlimited, as the lower court believed, to claims which whollypreempted an algorithm or amounted to a patent on the algorithmitself. 437 U.S. at
437 U. S.589-590. Second, the Court made it clear that animproved method of calculation, even when employed as part of aphysical process, is not patentable subject matter under § 101.
Id. at
437 U. S. 595,n. 18. Finally, the Court explained the correct procedure foranalyzing a patent claim employing a mathematical algorithm. Underthis procedure, the algorithm is treated for § 101 purposes asthough it were a familiar part of the prior art; the claim is thenexamined to determine whether it discloses "some other inventiveconcept."
Id. at
437 U. S.591-595. [
Footnote2/22]Although the Court of Customs and Patent Appeals in severalpost-
Flook decisions held that program-related inventionswere not patentable subject matter under § 101,
see, e.g., Inre Sarkar, 588 F.2d 1330 (1978);
In re Gelnovatch,595 F.2d 32 (1979), in general
Flook was notenthusiastically received by that court. In
In re Bergy,596 F.2d 952 (1979), the majority engaged in an extensive critiqueof
Flook, concluding that this Court had erroneouslycommingled "distinct statutory provisions which are conceptuallyunrelated." 596 F.2d at 959. [
Footnote 2/23] In subsequent cases, the courtconstrued
Page 450 U. S. 205Flook as resting on nothing more than the way in whichthe patent claims had been drafted, and it expressly declined touse the method of claim analysis spelled out in that decision. TheCourt of Customs and Patent Appeals has taken the position that, ifan application is drafted in a way that discloses an entire processas novel, it defines patentable subject matter even if the onlynovel element that the inventor claims to have discovered is a newcomputer program. [
Footnote 2/24]The court interpreted
Flook in this manner in its opinionin this case.
See In re Diehr, 602 F.2d 982, 986-989(1979). In my judgment, this reading of
Flook -- althoughentirely consistent with the lower court's expansive approach to §101 during the past 12 years -- trivializes the holding in
Flook, the principle that underlies
Benson, andthe settled line of authority reviewed in those opinions.
IIAs I stated at the outset, the starting point in the properadjudication of patent litigation is an understanding of what theinventor claims to have discovered. Indeed, the outcome of suchlitigation is often determined by the judge's understanding of thepatent application. This is such a case.In the first sentence of its opinion, the Court states thequestion presented as "whether a process for curing syntheticrubber . . . is patentable subject matter."
Ante at
450 U. S. 177.Of course, that question was effectively answered many years agowhen Charles Goodyear obtained his patent on the vulcanizationprocess. [
Footnote 2/25] Thepatent application filed by Diehr
Page 450 U. S. 206and Lutton, however, teaches nothing about the chemistry of thesynthetic rubber curing process, nothing about the raw materials tobe used in curing synthetic rubber, nothing about the equipment tobe used in the process, and nothing about the significance oreffect of any process variable such as temperature, curing time,particular compositions of material, or mold configurations. Inshort, Diehr and Lutton do not claim to have discovered anythingnew about the process for curing synthetic rubber.As the Court reads the claims in the Diehr and Lutton patentapplication, the inventors' discovery is a method of constantlymeasuring the actual temperature inside a rubber molding press.[
Footnote 2/26] As I read theclaims, their discovery is an
Page 450 U. S. 207improved method of calculating the time that the mold shouldremain closed during the curing process. [
Footnote 2/27] If the Court's reading of the claimswere correct, I would agree that they disclose patentable subjectmatter. On the other hand, if the Court accepted my reading, I feelconfident that the case would be decided differently.There are three reasons why I cannot accept the Court'sconclusion that Diehr and Lutton claim to have discovered a newmethod of constantly measuring the temperature inside a mold.First, there is not a word in the patent application that suggeststhat there is anything unusual about the temperature readingdevices used in this process -- or indeed that any particularspecies of temperature reading device should be used in it.[
Footnote 2/28] Second, sincedevices for constantly
Page 450 U. S. 208measuring actual temperatures -- on a back porch, for example --have been familiar articles for quite some time, I find itdifficult to believe that a patent application filed in 1975 waspremised on the notion that a "process of constantly measuring theactual temperature" had just been discovered. Finally, the Patentand Trademark Office Board of Appeals expressly found that"the only difference between the conventional methods ofoperating a molding press and that claimed in [the] applicationrests in those steps of the claims which relate to the calculationincident to the solution of the mathematical problem or formulaused to control the mold heater and the automatic opening of thepress. [
Footnote 2/29] Thisfinding was not disturbed by the Court of Customs and PatentAppeals, and is clearly correct."A fair reading of the entire patent application, as well as thespecific claims, makes it perfectly clear that what Diehr andLutton claim to have discovered is a method of using a digitalcomputer to determine the amount of time that a rubber moldingpress should remain closed during the synthetic rubber curingprocess. There is no suggestion that there is anything novel in theinstrumentation of the mold, in actuating a timer when the press isclosed, or in automatically opening the press when the computedtime expires. [
Footnote 2/30] Nordoes the
Page 450 U. S. 209application suggest that Diehr and Lutton have discoveredanything about the temperatures in the mold or the amount of curingtime that will produce the best cure. What they claim to havediscovered, in essence, is a method of updating the originalestimated curing time by repetitively recalculating that timepursuant to a well-known mathematical formula in response tovariations in temperature within the mold. Their method of updatingthe curing time calculation is strikingly reminiscent of the methodof updating alarm limits that Dale Flook sought to patent.
Parker v. Flook,437 U. S. 584(1978), involved the use of a digital computer in connection with acatalytic conversion process. During the conversion process,variables such as temperature, pressure, and flow rates wereconstantly monitored and fed into the computer; in this case,temperature in the mold is the variable that is monitored and fedinto the computer. In
Flook, the digital computerrepetitively recalculated the "alarm limit" -- a number that mightsignal the need to terminate or modify the catalytic conversionprocess; in this case, the digital computer repetitivelyrecalculates the correct curing time -- a number that signals thetime when the synthetic rubber molding press should open.The essence of the claimed discovery in both cases was analgorithm that could be programmed on a digital computer. [
Footnote 2/31]
Page 450 U. S. 210In
Flook, the algorithm made use of multiple processvariables; in this case, it makes use of only one. In
Flook, the algorithm was expressed in a newly developedmathematical formula; in this case, the algorithm makes use of awell known mathematical formula. Manifestly, neither of thesedifferences can explain today's holding. [
Footnote 2/32] What I believe
Page 450 U. S. 211does explain today's holding is a misunderstanding of theapplicants' claimed invention and a failure to recognize thecritical difference between the "discovery" requirement in § 101and the "novelty" requirement in §102. [
Footnote 2/33]
IIIThe Court misapplies
Parker v. Flook because, like theCourt of Customs and Patent Appeals, it fails to understand orcompletely disregards the distinction between the subject matter ofwhat the inventor claims to have discovered -- the § 101 issue --and the question whether that claimed discovery is in fact novel --the § 102 issue. [
Footnote 2/34]If there is not even a
Page 450 U. S. 212claim that anything constituting patentable subject matter hasbeen discovered, there is no occasion to address the novelty issue.[
Footnote 2/35] Or, as was truein
Flook, if the only concept that the inventor claims tohave discovered is not patentable subject matter, § 101 requiresthat the application be rejected without reaching any issue under §102; for it is irrelevant that unpatentable subject matter -- inthat case, a formula for updating alarm limits -- may in fact benovel.Proper analysis, therefore, must start with an understanding ofwhat the inventor claims to have discovered -- or, phrased somewhatdifferently -- what he considers his inventive concept to be.[
Footnote 2/36] It seems clear tome that Diehr and
Page 450 U. S. 213Lutton claim to have developed a new method of programming adigital computer in order to calculate -- promptly and repeatedly-- the correct curing time in a familiar process. [
Footnote 2/37] In the § 101 analysis, we mustassume that the sequence of steps in this programming method isnovel, unobvious, and useful. The threshold question of whethersuch a method is patentable subject matter remains.If that method is regarded as an "algorithm" as that term wasused in
Glottschalk v. Benson,409 U. S.63 (1972), and in
Page 450 U. S. 214Parker v. Flook,437 U. S. 584(1978), [
Footnote 2/38] and if noother inventive concept is disclosed in the patent application, thequestion must be answered in the negative. In both
Bensonand
Flook, the parties apparently agreed that theinventor's discovery was properly regarded as an algorithm; theholding that an algorithm was a "law of nature" that could notbe
Page 450 U. S. 215patented therefore determined that those discoveries were notpatentable processes within the meaning of § 101As the Court recognizes today
Flook also rejected theargument that patent protection was available if the inventor didnot claim a monopoly on every conceivable use of the algorithm, butinstead limited his claims by describing a specific post-solutionactivity -- in that case, setting off an alarm in a catalyticconversion process. In its effort to distinguish
Flookfrom the instant case, the Court characterizes that post-solutionactivity as "insignificant,"
ante at
450 U. S. 191,or as merely "token" activity,
ante at
450 U. S. 192,n. 14. As a practical matter, however, the post-solution activitydescribed in the
Flook application was no less significantthan the automatic opening of the curing mold involved in thiscase. For setting off an alarm limit at the appropriate time issurely as important to the safe and efficient operation of acatalytic conversion process as is actuating the mold-openingdevice in a synthetic rubber curing process. In both cases, thepost-solution activity is a significant part of the industrialprocess. But in neither case should that activity have any legalsignificance, because it does not constitute a part of theinventive concept that the applicants claimed to have discovered.[
Footnote 2/39]In
Gottschalk v. Benson, we held that a program forthe
Page 450 U. S. 216solution by a digital computer of a mathematical problem was nota patentable process within the meaning of § 101. In
Parker v.Flook, we further held that such a computer program could notbe transformed into a patentable process by the addition ofpost-solution activity that was not claimed to be novel. Thatholding plainly requires the rejection of Claims 1 and 2 of theDiehr and Lutton application quoted in the Court's opinion.
Ante at
450 U. S.179-180, n. 5. In my opinion, it equally requiresrejection of Claim 11, because the pre-solution activity describedin that claim is admittedly a familiar part of the prior art.[
Footnote 2/40]Even the Court does not suggest that the computer programdeveloped by Diehr and Lutton is a patentable discovery.Accordingly, if we treat the program as though it were a familiarpart of the prior art -- as well established precedent requires[
Footnote 2/41] -- it isabsolutely clear that their application contains no claim ofpatentable invention. Their application was therefore properlyrejected under § 101 by the Patent Office and the Board ofAppeals.
IVThe broad question whether computer programs should be givenpatent protection involves policy considerations that
Page 450 U. S. 217this Court is not authorized to address.
See Gottschalk v.Benson, 409 U.S. at
409 U. S. 72-73;
Parker v. Flook, 437 U.S. at
437 U. S.595-596. As the numerous briefs
amicus curiaefiled 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 apparentlyalso one that may be affected by institutional bias. In each ofthose cases, the spokesmen for the organized patent bar haveuniformly favored patentability and industry representatives havetaken positions properly motivated by their economic self-interest.Notwithstanding fervent argument that patent protection isessential for the growth of the software industry, [
Footnote 2/42] commentators have notedthat "this industry is growing by leaps and bounds without it."[
Footnote 2/43] In addition,even
Page 450 U. S. 218some commentators who believe that legal protection for computerprograms is desirable have expressed doubts that the present patentsystem can provide the needed protection. [
Footnote 2/44]Within the Federal Government, pattern of decision have alsoemerged.
Gottschalk, Dann, Parker, and
Diamondwere not ordinary litigants -- each was serving as Commissioner ofPatents and Trademarks when he opposed the availability of patentprotection for a program-related invention. No doubt each may havebeen motivated by a concern about the ability of the Patent Officeto process effectively the flood of applications that wouldinevitably flow from a decision that computer programs arepatentable. [
Footnote 2/45] Theconsistent concern evidenced by the Commissioner of Patents andTrademarks and by the Board of Appeals of the Patent and TrademarkOffice has not been shared by the Court of Customs and PatentAppeals, which reversed the Board in
Benson, Johnston, and
Flook, and was, in turn, reversed by this Court in each ofthose cases. [
Footnote 2/46]
Page 450 U. S. 219Scholars have been critical of the work of both tribunals. Someof that criticism may stem from a conviction about the merits ofthe broad underlying policy question; such criticism may be put toone side. Other criticism, however, identifies two concerns towhich federal judges have a duty to respond. First, the casesconsidering the patentability of program-related inventions do notestablish rules that enable a conscientious patent lawyer todetermine with a fair degree of accuracy which, if any,program-related inventions will be patentable. Second, theinclusion of the ambiguous concept of an "algorithm" within the"law of nature" category of unpatentable subject matter has givenrise to the concern that almost any process might be so described,and therefore held unpatentable.In my judgment, today's decision will aggravate the firstconcern and will not adequately allay the second. I believe bothconcerns would be better addressed by (1) an unequivocal holdingthat no program-related invention is a patentable process under §101 unless it makes a contribution to the art that is not dependententirely on the utilization of a computer, and (2) an unequivocalexplanation that the term "algorithm" as used in this case, as in
Benson and
Flook, is synonymous with the term"computer program." [
Footnote2/47] Because
Page 450 U. S. 220the invention claimed in the patent application at issue in thiscase makes no contribution to the art that is not entirelydependent upon the utilization of a computer in a familiar process,I would reverse the decision of the Court of Customs and PatentAppeals.[
Footnote 2/1]ENIAC, the first general purpose electronic digital computer,was built in 1946. Unlike modern computers, this machine wasexternally programmed; its circuitry had to be manually rewiredeach time it was used to perform a new task.
SeeGemignani, Legal Protection for Computer Software: The View From'79, 7 Rutgers J. Computers, Tech. & L. 269, 270 (1980). In1952, a group of scientists at the Institute for Advanced Studycompleted MANIAC I, the first digital computer capable of operatingupon stored programs, as opposed to hard-wired circuitry.
See Ulam, Computers, 211 Scientific American 203(1964).[
Footnote 2/2]The subject received some scholarly attention prior to 1964.
See, e.g., Seidel, Antitrust Patent and Copyright LawImplications 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 registeringcomputer programs.
See 11 Copyright Soc.Bull. 361 (1964);Davis, Computer Programs and Subject Matter Patentability, 6Rutgers J.Computers, Tech. & L.J., 5 (1977). Also in 1964, thePatent Office Board of Appeals issued what appears to be the firstpublished opinion concerning the patentability of acomputer-related invention.
See Ex parte King, 146 USPQ590.[
Footnote 2/3]
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 firstsignificant judicial decision to consider the subject matterpatentability of computer program-related inventions. The Court ofCustoms and Patent Appeals earlier decided
In re Naquin,55 C.C.P.A. (Pat.) 1428, 398 F.2d 863 (1968), in which it rejecteda challenge to an application for a patent on a program-relatedinvention on grounds of inadequate disclosure under § 112.[
Footnote 2/4]
See Gottschalk v. Benson,409 U. S.63 (1972) .[
Footnote 2/5]
See also Novick & Wallenstein, The Algorithm andComputer Software Patentability: A Scientific View of a LegalProblem, 7 Rutgers J.Computers, Tech. & L. 313, 316-317(1980).[
Footnote 2/6]
See, e.g., Don Lee, Inc. v. Walker, 61 F.2d 58, 67 (CA91932);
In re Bolonaro, 20 C.C.P.A. (Pat.) 845, 846-847, 62F.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).[
Footnote 2/7]
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 othergrounds,329 U. S. 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, 38C.C.P.A. (Pat.) 945, 950-953, 188 F.2d 165, 168-170 (1951);
Inre Shao Wen Yuan, supra at 975-976, 188 F.2d at 383;
In reLundberg, 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, 262F.2d 91, 95 (1958).[
Footnote 2/8]The "function of a machine" doctrine is generally traced to
Corning v.Burden, 15 How. 252,
56 U. S. 268(1854), in which the Court stated: "[I]t is well settled that a mancannot have a patent for the function or abstract effect of amachine, but only for the machine which produces it." The doctrinewas subsequently reaffirmed on several occasions.
See, e.g.,Risdon Iron & Locomotive Works v. Medart,158 U. S.68,
158 U. S. 78-79,84 (1895);
Westinghouse v. Boyden Power Brake Co.,170 U. S. 537,
170 U. S.554-557 (1898);
Busch v. Jones,184 U.S. 598,
184 U. S. 607(1902);
Expanded Metal Co. v. Bradford,214 U.S. 366,
214 U. S. 383(1909).[
Footnote 2/9]
See, e.g., In re Weston, 17 App.D.C. 431, 436-442(1901);
Chisholm-Ryder Co. v. Buck, 65 F.2d 735, 736 (CA41933);
In re Ernst, 21 C.C.P.A. (Pat.) 1235, 1238-1240, 71F.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 reParker, 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, 25C.C.P.A. (Pat.) 936, 943-944, 94 F.2d 993, 998 (1938);
In reMead, 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.2d404, 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.2d273, 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).[
Footnote 2/10]The Commission's report contained the following evaluation ofthe current state of the law with respect to computer programpatentability:"Uncertainty now exists as to whether the statute permits avalid patent to be granted on programs. Direct attempts to patentprograms have been rejected on the ground of nonstatutory subjectmatter. Indirect attempts to obtain patents and avoid therejection, by drafting claims as a process, or a machine orcomponents thereof programmed in a given manner, rather than as aprogram itself, have confused the issue further, and should not bepermitted."Report of the President's Commission on the Patent System, "ToPromote the Progress of . . . Useful Arts" in an Age of ExplodingTechnology 14 (1966).[
Footnote 2/11]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).[
Footnote 2/12]Judge Kirkpatrick, joined by Chief Judge Worley, wrote avigorous dissent objecting to the majority's decision to abandon "arule which is about as solidly established as any rule of thepatent law." 55 C.C.P.A. (Pat.) at 1457, 397 F.2d at 868. Unlikethe majority, the dissenting judges did not consider the doctrineinequitable or silly, and they observed that it had functioned in asatisfactory manner in the past.
Id. at 1457-1458, 397F.2d at 869. In addition, they considered the doctrine to be sowell established that it had been adopted by implication in thePatent Act of 1952.
Id. at 1458, 397 F.2d at 869.[
Footnote 2/13]In
Prater, the patent application claimed an improvedmethod for processing spectrographic data. The method analyzedconventionally obtained data by using well-known equations. Theinventors had discovered a particular mathematical characteristicof the equations which enabled them to select the specific subsetof equations that would yield optimum results. The applicationdisclosed an analog computer as the preferred embodiment of theinvention, but indicated that a programmed digital computer couldalso be used. 56 C.C.P.A. (Pat.) at 1361-1363, 415 F.2d at1379-1380. The Patent Office had rejected the process claims on amental steps theory because the only novel aspect of the claimedmethod was the discovery of an unpatentable mathematical principle.The apparatus claim was rejected essentially because, when themathematical principle was assumed to be within the prior art, theclaim disclosed no invention entitled to patent protection.
Id. at 1364-1365, 1375, 415 F.2d at 1381, 1399.[
Footnote 2/14]It is interesting to note that the Court of Customs and PatentAppeals, in the second
Prater opinion, expressly rejectedthe Patent Office's procedure for analyzing the apparatus claimpursuant to which the mathematical principle was treated as thoughit were within the prior art. 56 C.C.P.A. (Pat.) at 1397, 415 F.2dat 1405-1406. This precise procedure, of course, was later employedby this Court in
Parker v. Flook,437 U.S. 584 (1978).[
Footnote 2/15]Under the "point of novelty" approach, if the novelty oradvancement in the art claimed by the inventor resided solely in astep of the process embodying a mental operation or otherunpatentable element, the claim was rejected under § 101 as beingdirected to nonstatutory subject matter.
See Blumenthal& Riter, Statutory or Non-Statutory?: An Analysis of thePatentability of Computer Related Inventions, 62 J.Pat.Off.Soc.454, 457, 461, 470 (1980).[
Footnote 2/16]The author of the second
Prater opinion, Judge Baldwin,disagreed with the
Musgrave "technological arts" standardfor process claims. He described that standard as "a major andradical 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 topatent protection.
Id. at 1369, 431 F.2d at 895-896. JudgeBaldwin's understanding of
Musgrave seems to have beenconfirmed in
In re Foster, 58 C.C.P.A. (Pat.) 1001,1004-1005, 438 F.2d 1011, 1014-1015 (1971).[
Footnote 2/17]In the interval between the two
Benson decisions, theCourt of Customs and Patent Appeals decided several cases in whichit 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, 457F.2d 997 (1972), the court relied primarily upon
Musgraveand
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.[
Footnote 2/18]Although the Court did not discuss the mental steps doctrine in
Benson, some commentators have suggested that the Courtimplicitly relied upon the doctrine in that case.
See,e.g., Davis,
supra,450U.S. 175fn2/2|>n. 2, at 14, and n. 92. Other commentatorshave observed that the Court's analysis in
Benson wasentirely consistent with the mental steps doctrine.
See,e.g., Comment, Computer Program Classification: A Limitationon Program Patentability as a Process, 53 Or.L.Rev. 501, 517-518,n. 132 (1974).[
Footnote 2/19]The decision of the Court of Customs and Patent Appeals wasreversed by this Court on other grounds in
Dann v.Johnston,425 U. S. 219(1976).[
Footnote 2/20]In addition to interpreting
Benson, the majority alsomaintained that
Christensen, despite its "point ofnovelty" language, had not signalled a return to that form of claimanalysis. 545 F.2d at 158. The court would reaffirm thisproposition consistently thereafter.
See, e.g., In re deCastelet, 562 F.2d 1236, 1240 (1977);
In re Richman,563 F.2d 1026, 1029-1030 (1977);
In re Freeman, 573 F.2d1237, 1243-1244 (1978);
In re Toma, 575 F.2d 872, 876(1978);
In re Walter, 618 F.2d 758, 766-767 (1980).[
Footnote 2/21]
See also In re Deutsch, 553 F.2d 689, 692-693 (CCPA1977);
In re Waldbaum, 559 F.2d 611, 616-617 (CCPA 1977);
In re de Castelet, supra at 1243-1245.[
Footnote 2/22]This form of claim analysis did not originate with
Flook. Rather, the Court derived it from the landmarkdecision of
O'Reilly v.More, 15 How. 62,
56 U. S. 115(1854). In addition, this analysis is functionally the same as the"point of novelty" analysis used in conjunction with the mentalsteps doctrine. In fact, the Patent Office in the past occasionallyphrased its mental steps rejections in essentially the terms lateremployed in
Flook.See nn.
450U.S. 175fn2/13|>13-15,
supra.Seegenerally Comment, 35 U.S.C. 101 Claim Analysis -- The Pointof Novelty Approach, 62 J.Pat.Off.Soc. 521 (1980).[
Footnote 2/23]The Court of Customs and Patent Appeals suggested that the causeof this Court's error was the argument presented by the SolicitorGeneral in
Flook. According to the majority, the SolicitorGeneral's briefs "badly, and with a seeming sense of purpose"confused the statutory requirements. 596 F.2d at 962. The courtwent on to describe part of the Solicitor General's argument in
Flook as "subversive nonsense." 596 F.2d at 963.[
Footnote 2/24]
See, e.g., In re Johnson, 589 F.2d 1070 (1978);
Inre Phillips, 608 F.2d 879 (1979);
In re Sherwood, 613F.2d 809 (1980),
cert. pending, No. 79-1941.[
Footnote 2/25]In an opinion written over a century ago, the Court noted:"A manufacturing process is clearly an art, within the meaningof the law. Goodyear's patent was for a process, namely, theprocess of vulcanizing india rubber by subjecting it to a highdegree of heat when mixed with sulphur and a mineral salt.""
* * * *""The mixing of certain substances together, or the heating of asubstance to a certain temperature, is a process."
Tilghman v. Proctor,102 U. S. 707,
102 U. S. 722,728 (1881).
See alsoCorning v.Burden, 15 How. 252,
56 U. S. 267(1854). Modern rubber curing methods apparently still are based insubstantial part upon the concept discovered by Goodyear:"Since the day 120 years ago when Goodyear first heated amixture of rubber and sulphur on a domestic stove and so discoveredvulcanisation, this action of heat and sulphur has remained thestandard method of converting crude rubber, with all itslimitations, into a commercially usable product, giving it thequalities of resistance to heat and cold in addition toconsiderable mechanical strength.""Goodyear also conjured up the word 'cure' for vulcanisation,and this has become the recognised term in production circles."Mernagh, Practical Vulcanisation, in The Applied Science ofRubber 1053 (W. Naunton ed.1961).
See generally Kimmich,Making Rubber Products for Engineering Uses, in Engineering Uses ofRubber 18, 28-34 (A. McPherson & A. Klemin eds.1956)[
Footnote 2/26]"Respondents characterize their contribution to the art toreside in the process of constantly measuring the actualtemperature inside the mold."
See ante at
450 U. S.178.[
Footnote 2/27]Claim 1 is quoted in full in
n 5 of the Court's opinion,
ante at 179. Itdescribes a "method of operating a rubber-molding press forprecision molded compounds with the aid of a digital computer." Asthe Court of Customs and Patent Appeals noted, the improvementclaimed in the application consists of "opening the mold atprecisely the correct time, rather than at a time which has beendetermined by approximation or guesswork."
In re Diehr,602 F.2d 982, 988 (1979)[
Footnote 2/28]In the portion of the patent application entitled "Abstract ofthe Disclosure," the following reference to monitoring thetemperature 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 applicationentitled "Background of the Invention," the following statement isfound:"By accurate and constant calculation and recalculation of thecorrect mold time under the temperatures actually present in themold, the material can be cured accurately, and can be relied uponto produce very few rejections, perhaps completely eliminating allrejections 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 determinethe actual mold temperature substantially continuously, forexample, every ten seconds, and to feed that information to thecomputer along with the pertinent stored data and along with theelapsed time information."
Ibid. Finally, in a description of a simplehypothetical application using the invention described in Claim 1,this is the reference to the temperature reading device:"Thermocouples, or other temperature detecting devices locateddirectly within the mold cavity may read the temperature at thesurface where the molding compound touches the mold, so that itactually gets the temperature of the material at that surface."
Id. at 45a.[
Footnote 2/29]
Id. at 24a.[
Footnote 2/30]These elements of the rubber curing process apparently have beenwell known for years. The following description of thevulcanization process appears in a text published in 1961:"Vulcanisation is too important an operation to be left to humancontrol, however experienced and conscientious. Instrumentationmakes controlled cure possible, and, in consequence, instrumentengineering is a highly important function in the modern rubberfactory, skilled attention being necessary not only in themaintenance of the instruments, but also in their siting. There areinstruments available which will indicate, record or control allthe services involved in vulcanisation, including time, temperatureand pressure, and are capable of setting in motion such operationsas the opening and closing of moulds and, in general, will controlany process variable which is capable of being converted into anelectric charge or pneumatic or hydraulic pressure impulse."Mernagh,
supra,450U.S. 175fn2/25|>n. 25, at 1091-1092.[
Footnote 2/31]Commentators critical of the
Flook decision have notedthe essential similarity of the two inventions:"The
Diehr invention improved the control system bycontinually remeasuring the temperature and recalculating theproper cure time. The computer would simultaneously keep track ofthe elapsed time. When the elapsed time equalled the proper curetime, the rubber would be released automatically from themold.""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 controluse of the value obtained from the calculation."Novick & Wallenstein,
supra,450U.S. 175fn2/5|>n. 5, at 326 (footnotes omitted) .[
Footnote 2/32]Indeed, the most significant distinction between the inventionat issue in
Flook and that at issue in this case lies notin the characteristics of the inventions themselves, but rather inthe drafting of the claims. After noting that "[t]he Diehr claimsare reminiscent of the claims in
Flook," Blumenthal &Riter,
supra,450U.S. 175fn2/15|>n. 15, at 502-503 (footnote omitted), theauthors of a recent article on the subject observe that the Courtof Customs and Patent Appeals' analysis in this case "lends itselfto an interesting exercise in claim drafting."
Id. at 505.To illustrate their point, the authors redrafted the Diehr andLutton claims into the format employed in the
Flookapplication:"An improved method of calculating the cure time of a rubbermolding process utilizing a digital computer comprising the stepsof:""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 ofrubber being molded,""3. a constant (X) dependent upon the geometry of the particularmold of the press, and""4. continuous temperature values (Z) of the mold duringmolding;""b. operating said computer for""1. counting the elapsed cure time,""2. calculating the cure time from the input values using theArrhenius equation [l]n V = CZ + X, where V is the total cure time,and""c. providing output signals from said computer when saidcalculated cure time is equal to said elapsed cure time."
Ibid. The authors correctly conclude that even thelower court probably would have found that this claim was drawn tounpatentable subject matter under § 101.
Id. at505-506.[
Footnote 2/33]In addition to confusing the requirements of §§ 101 and 102, theCourt also misapprehends the record in this case when it suggeststhat the Diehr and Lutton patent application may later bechallenged for failure to satisfy the requirements of §§ 102 and103.
See ante at
450 U. S. 191.This suggestion disregards the fact that the applicants overcameall objections to issuance of the patent except the objectionpredicated on § 101. The Court seems to assume that §§ 102 and 103issues of novelty and obviousness remain open on remand. As Iunderstand the record, however, those issues have already beenresolved.
See Brief for Respondents 11-14; ReplyMemorandum for Petitioner 3-4, and n. 4. Therefore, the Court isnow deciding that the patent will issue.[
Footnote 2/34]The early cases that the Court of Customs and Patent Appealsrefused to follow in
Prater, Musgrave, and
Bensonhad recognized the distinction between the § 101 requirement thatwhat the applicant claims to have invented must be patentablesubject matter and the § 102 requirement that the invention mustactually be novel.
See, e.g., In re Shao Wen Yuan, 38C.C.P.A. (Pat.) at 973-976, 188 F.2d at 382-383;
In reAbrams, 38 C.C.P.A. (Pat.) at 951-952, 188 F.2d at 169;
Inre Heritage, 32 C.C.P.A. (Pat.) at 1173-1174, 1176-1177, 150F.2d at 556, 558;
Halliburton Oil Well Cementing Co. v.Walker, 146 F.2d at 821, 823. The lower court's error in thiscase, and its unenthusiastic reception of
Gottschalk v.Benson and
Parker v. Flook is, of course, consistentwith its expansive reading of § 101 in
Tarczy-Hornoch,Prater, and their progeny.[
Footnote 2/35]The Court's opinion in
Flook itself pointed out thisdistinction:"The obligation to determine what type of discovery is sought tobe patented must precede the determination of whether thatdiscovery is, in fact, new or obvious."437 U.S. at
437 U. S. 593.As the Court of Customs and Patent Appeals noted in this case, "forthe claim to be statutory, there must be some substance to it otherthan the recitation and solution of the equation or formula." 602F.2d at 988.
See Comment, 62 J.Pat.Off.Soc.,
supra450U.S. 175fn2/22|>n. 22, at 522-523.[
Footnote 2/36]The Court fails to focus upon what Diehr and Lutton claim tohave discovered, apparently because it believes that this method ofanalysis would improperly import novelty considerations into § 101.
See ante at
450 U. S.188-191,
450 U. S. 193,
450U.S. 175fn2/15|>n. 15. Rather than directing its attentionto the applicants' claimed discovery, the Court instead focusesupon the general industrial context in which the applicants intendtheir discovery to be used. Implicit in this interpretation of thepatent application is the assumption that, as long as the claimsdescribe a specific implication of the applicants' discovery,patentable subject matter is defined. This assumption was expresslyrejected in
Flook:"This assumption is based on respondent's narrow reading of
Benson, and is as untenable in the context of § 101 as itis in the context of that case. It would make the determination ofpatentable subject matter depend simply on the draftsman's art, andwould ill-serve the principles underlying the prohibition againstpatents for 'ideas' or phenomena of nature. The rule that thediscovery of a law of nature cannot be patented rests not on thenotion that natural phenomena are not processes, but rather on themore fundamental understanding that they are not the kind of'discoveries' that the statute was enacted to protect."437 U.S. at
437 U. S. 593(footnote omitted).[
Footnote 2/37]A few excerpts from the original patent application willemphasize this point:"The invention will probably best be understood by firstdescribing a simple example, in which a single mold is involved andin which the information is relatively static.""
* * * *""A standard digital computer may be employed in this method. Ithas a data storage bank of suitable size which, of course, may varywhen many molds are used and when more refinements are employed.However, Fig. 1 shows a relatively simple case which achievesresults that are vast improvements over what has been done up tonow. . . .""The data bank of the computer is provided with a digital inputinto which the time-temperature cure data for the compound involvedis fed, as shown in Fig. 1. All the data is available to thecomputer upon call, by random access, and the call can beautomatic, depending upon the temperature actually involved. Inother words, the computer, over and over, questions the datastorage, asking, what is the proper time of cure for the followingsummation of temperatures? The question may be asked each second,and the answer is readily provided.""
* * * *""Recalculation continues until the time that has elapsed sincemold closure corresponds with the calculated time. Then, thecomputer actuates the mold-opening device and the mold isautomatically opened."App. to Pet. for Cert. 43a-45a. The Figure 1 referred to in theapplication is as follows:bwm:____________________ _____________________________________________|Arrhenius Reaction| |Actual Mold | |Compares CalculatedCure||Constants for | |Temperature | |Time with Elapsed Cure ||Compound | |Every 10 Seconds | |Time Every Second ||__________________| |_________________||________________________|| | || | || | || | || | _______________________| | |Actuates Mold Opening |______________ __________ |When Calculated Cure ||Data Storage |-------|Computer |---------|Time Equals Elapsed||_____________| |_________| | | Cure Time || | |______________________|| || ----------------|Input Signal to Start | |--------------------------| || Interim Timing in Computer || || |_____________ ________________________| Close Mold | | Controls Mold Platen || Manually | | Temperature with ||____________| | Proportional Control || Algorithm ||______________________|ewm:
Id. at 53a.[
Footnote 2/38]In
Benson, we explained the term "algorithm" in thefollowing paragraph:"The patent sought is on a method of programming a generalpurpose digital computer to convert signals from binary-codeddecimal form into pure binary form. A procedure for solving a giventype of mathematical problem is known as an 'algorithm.' Theprocedures set forth in the present claims are of that kind; thatis to say, they are a generalized formulation for programs to solvemathematical problems of converting one form of numericalrepresentation to another. From the generic formulation, programsmay be developed as specific applications."409 U.S. at
409 U. S.65.[
Footnote 2/39]In
Flook, the Court's analysis of the post-solutionactivity recited in the patent application turned not on therelative significance of that activity in the catalytic conversionprocess, but rather on the fact that that activity was not a partof the applicant's discovery:"The notion that post-solution activity, no matter howconventional or obvious in itself, can transform an unpatentableprinciple into a patentable process exalts form over substance. Acompetent draftsman could attach some form of post-solutionactivity to almost any mathematical formula; the Pythagoreantheorem would not have been patentable, or partially patentable,because a patent application contained a final step indicating thatthe formula, when solved, could be usefully applied to existingsurveying techniques. The concept of patentable subject matterunder § 101 is not 'like a nose of wax which may be turned andtwisted in any direction. . . .'
White v. Dunbar,119 U. S.47,
119 U. S. 51."437 U.S. at
437 U. S. 590(footnote omitted).[
Footnote 2/40]Although the Court of Customs and Patent Appeals erred becauseit ignored the distinction between the § 101 requirement that theapplicant must claim to have discovered a novel process and the §102 requirement that the discovery must actually be novel, thatcourt correctly rejected the argument that any difference betweenClaim 11 and the earlier claims was relevant to the § 101 inquiry.
See 602 F.2d at 984, 987-988.[
Footnote 2/41]This well established precedent was reviewed in
Parker v.Flook:"
Mackay Radio and
Funk Bros. point to theproper analysis for this case: the process itself, not merely themathematical algorithm, must be new and useful. Indeed, the noveltyof the mathematical algorithm is not a determining factor at all.Whether the algorithm was, in fact, known or unknown at the time ofthe claimed invention, as one of the 'basic tools of scientific andtechnological work,'
see Gottschalk v. Benson, 409 U.S. at
409 U. S. 67, it is treated asthough it were a familiar part of the prior art."437 U.S. at
437 U. S.591-592.[
Footnote 2/42]For example, the Association of Data Processing ServiceOrganizations, appearing as
amicus curiae in
Flook, made the following policy argument:"The need of the incentive of patents for software is at leastas great as that of the incentive available for hardware, because:'Today, providing computer software involves greater . . . riskthan providing computer . . . hardware. . . .'""To a financial giant, the economic value of a patent may notloom large; to the small software products companies upon which thefuture of the development of quality software depends, the value ofthe patent in financing a small company may spell the differencebetween life and death. To banks and financial institutions, theexistence of a patent or even the potentiality of obtaining one maywell be a decisive factor in determining whether a loan should begranted. To prospective investors, a patent or the possibility ofobtaining one may be the principal element in the decision whetherto invest.""Making clear that patents may be available for inventions insoftware would unleash important innovative talent. It would havethe direct opposite effect forecast by the . . . hardwaremanufacturers; it would enable competition with those companies andprovide 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).[
Footnote 2/43]Gemignani,
supra,450U.S. 175fn2/1|>n. 1, at 309. In a footnote to that comment,Professor Gemignani added that the rate of growth of the softwareindustry "has been even faster lately than that of the hardwareindustry, which does enjoy patent protections."
Id. at309, 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 theStandard, 50 Notre Dame Law. 333, 344 (1974).[
Footnote 2/44]
See, e.g., Gemignani,
supra,450U.S. 175fn2/1|>n. 1, at 301-312; Keefe & Mahn,Protecting Software: Is It Worth All the Trouble?, 62 A.B.A.J. 906,907 (1976).[
Footnote 2/45]This concern influenced the President's Commission on the PatentSystem when it recommended against patent protection for computerprograms. In its report, the President's Commission stated:"The Patent Office now cannot examine applications for programsbecause of the lack of a classification technique and the requisitesearch files. Even if these were available, reliable searches wouldnot be feasible or economic, because of the tremendous volume ofprior art being generated. Without this search, the patenting ofprograms would be tantamount to mere registration, and thepresumption of validity would be all but nonexistent."Report of the President's Commission,
supra,450U.S. 175fn2/10|>n. 10, at 13.[
Footnote 2/46]It is noteworthy that the position of the Court of Customs andPatent Appeals in the process patent area had been consistent withthat of the Commissioner of Patents and Trademarks for decadesprior to 1968. As discussed in
450 U. S.supra, in that year, the court rejected two longstandingdoctrines that would have foreclosed patentability for mostcomputer programs under § 101.[
Footnote 2/47]A number of authorities have drawn the conclusion that the termsare, in fact, synonymous.
See, e.g., Novick &Wallenstein,
supra,450U.S. 175fn2/5|>n. 5, at 333, n. 172; Anderson, Algorithm, 1Encyclopedia of Computer Science & Technology 364, 369 (J.Belzer, A. Holzman & A. Kent eds. 1975); E. Horowitz & S.Satani, Fundamentals of Computer Algorithms 2 (1978); A. Tanenbaum,Structured Computer Organization 10 (1976).
Cf. Blumenthal& Riter,
supra,450U.S. 175fn2/15|>n. 15, at 455-456; Gemignani,
supra,450U.S. 175fn2/1|>n. 1, at 271-273, 276, n. 37.
