Diamond v. Diehr - 450 U.S. 175 (1981)


U.S. Supreme Court

Diamond v. Diehr, 450 U.S. 175 (1981)

Diamond v. Diehr

No. 79-1112

Argued October 14, 1980

Decided March 3, 1981

450 U.S. 175

Syllabus

Respondents filed a patent application claiming invention for a process for molding raw, uncured synthetic rubber into cured precision products. While it was possible, by using well-known time, temperature, and cure relationships, to calculate by means of an established mathematical equation when to open the molding press and remove the cured product, according to respondents, the industry had not been able to measure precisely the temperature inside the press, thus making it difficult to make the necessary computations to determine the proper cure time. Respondents characterized their contribution to the art to reside in the process of constantly measuring the temperature inside the mold and feeding the temperature measurements into a computer that repeatedly recalculates the cure time by use of the mathematical equation and then signals a device to open the press at the proper time. The patent examiner rejected respondents' claims on the ground that they were drawn to nonstatutory subject matter under 35 U.S.C. § 101, which provides for the issuance of patents to

"[w]hoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof. . . ."

The Patent and Trademark Office Board of Appeals agreed, but the Court of Customs and Patent Appeals reversed.

Held: Respondents' claims recited subject matter that was eligible for patent protection under § 101. Pp. 450 U. S. 181-193.

(a) For purposes of § 101, a "process" is

"an act, or a series of acts, performed upon the subject matter to be transformed and reduced to a different state or thing. If new and useful, it is just as patentable as is a piece of machinery. . . . The machinery pointed out as suitable to perform the process may or may not be new or patentable."

Cochrane v. Deener, 94 U. S. 780, 94 U. S. 788. Industrial processes such as respondents' claims for transforming raw, uncured synthetic rubber into a different state or thing are the types which have historically been eligible to receive patent law protection. Pp. 450 U. S. 181-184.

(b) While a mathematical formula, like a law of nature, cannot be the subject of a patent, cf. Gottschalk v. Benson, 409 U. S. 63; Parker v.

Page 450 U. S. 176

Flook, 437 U. S. 54, respondents do not seek to patent a mathematical formula, but instead seek protection for a process of curing synthetic rubber. Although their process employs a well-known mathematical equation, they do not seek to preempt the use of that equation, except in conjunction with all of the other steps in their claimed process. A claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula, computer program, or digital computer. Respondents' claims must be considered as a whole, it being inappropriate to dissect the claims into old and new elements and then to ignore the presence of the old elements in the analysis. The questions of whether a particular invention meets the "novelty" requirements of 35 U.S.C. § 102 or the "nonobviousness" requirements of § 103 do not affect the determination of whether the invention falls into a category of subject matter that is eligible for patent protection under § 101. Pp. 450 U. S. 185-191.

(c) When a claim containing a mathematical formula implements or applies the formula in a structure or process which, when considered as a whole, is performing a function which the patent laws were designed to protect (e.g., transforming or reducing an article to a different state or thing), then the claim satisfies § 101's requirements. Pp. 450 U. S. 191-193.

602 F.2d 982, affirmed.

REHNQUIST, J., delivered the opinion of the Court, in which BURGER, C.J., and STEWART, WHITE, and POWELL, JJ., joined. STEVENS, J., filed a dissenting opinion, in which BRENNAN, MARSHALL, and BLACKMUN, JJ., joined, post, p. 450 U. S. 193.

Page 450 U. S. 177



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