Diamond v. Diehr - 450 U.S. 175, 101 S. Ct. 1048 (1981)

Rule:

When a claim recites a mathematical formula, or scientific principle or phenomenon of nature, an inquiry must be made into whether the claim is seeking patent protection for that formula in the abstract. A mathematical formula as such is not accorded the protection of patent laws, and this principle cannot be circumvented by attempting to limit the use of the formula to a particular technological environment. Similarly, insignificant postsolution activity will not transform an unpatentable principle into a patentable process. To hold otherwise would allow a competent draftsman to evade the recognized limitations on the type of subject matter eligible for patent protection. On the other hand, when a claim containing a mathematical formula implements that formula in a structure or process which, when considered as a whole, is performing a function which the patent laws were designed to protect, e. g., transforming or reducing an article to a different state or thing, then the claim satisfies the requirements of 35 U.S.C.S. § 101.

Facts:

Certain individuals filed a patent application for a process for molding raw, uncured synthetic rubber into cured precision products. The individuals claimed that their process insured the production of molded articles which are properly cured. Although it is possible by using well-known time, temperature, and cure relationships to calculate by means of an established mathematical equation when to open the molding press and remove the cured product, the individuals argued that the industry had not been able to obtain uniformly accurate cures because the temperature of the press could not be precisely measured, making it difficult to do the necessary computations to determine cure time. The individuals characterized their contribution to the art as residing in the process of constantly measuring the actual temperature inside the mold, with these temperature measurements being automatically fed into a computer which recalculates the cure time by use of the mathematical equation and ultimately signals a device to open the press at the correct moment. Concluding that the individuals' claims defined and sought protection of a computer program, the patent examiner rejected those claims on the sole ground that they were drawn to nonstatutory subject matter under 35 USCS 101, which provides for the issuance of patents to whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof. The Patent and Trademark Office Board of Appeals agreed with the examiner, but the United States Court of Customs and Patent Appeals reversed, noting that a claim drawn to subject matter otherwise statutory does not become nonstatutory because a computer is involved.

Issue:

Was the process for curing synthetic rubber employing mathematical formula and programmed digital computer patentable subject matter under 35 USCS 101?

Answer:

Yes.

Conclusion:

The court held that the physical and chemical process for molding precision synthetic rubber products fell within the categories of subject matter eligible for patent protection under 35 USCS 101, and this result was not altered by the fact that in several steps of the process a mathematical equation and programmed digital computer were used, since (1) no attempt was being made to preempt the use of the equation but only to foreclose others from the use of that equation in conjunction with all of the other steps in the claimed process, and (2) use of the computer in the process did not render the process as a whole unpatentable subject matter in view of the fact that the computer was used to achieve a result previously unknown in the art, the fact that one or more of the steps in the process might not, in isolation, be novel or independently eligible for patent protection being irrelevant to the question of whether the claims as a whole recited subject matter eligible for patent protection under 101.