Washington, D.C. Location
Washington, DC 20015
Princeton, NJ Location
Princeton, NJ 08540
U.S. Supreme Court
DIAMOND v. DIEHR, 450 U.S. 175 (1981)
450 U.S. 175DIAMOND, COMMISSIONER OF PATENTS AND TRADEMARKS v. DIEHR ET AL.
CERTIORARI TO THE UNITED STATES COURT OF CUSTOMS AND PATENT APPEALS.
Argued October 14, 1980.
Decided March 3, 1981.
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.
Respondents’ claims recited subject matter that was eligible for patent protection under 101. Pp. 181-193.
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. 193.
Deputy Solicitor General Wallace argued the cause for petitioner. With him on the briefs were Solicitor General McCree, Assistant Attorney General Litvack, Harriet S. Shapiro, Robert B. Nicholson, Frederic Freilicher, Joseph F. Nakamura, and Thomas E. Lynch.
Robert E. Wichersham argued the cause for respondents. With him on the brief were Robert F. Hess, Jay M. Cantor, and Thomas M. Freiburger. *
[ Footnote * ] Edward S. Irons, Mary Helen Sears, and Robert P. Beshar filed a brief for National Semiconductor Corp. as amicus curiae urging reversal.
Briefs of amici curiae urging affirmance were filed by Donald R. Dunner, Kenneth E. Kuffner, and Travis Gordon White for the American Patent [450 U.S. 175, 177] Law Association, Inc.; by Morton C. Jacobs for Applied Data Research, Inc.; by William L. Mathis and Harold D. Messner for Chevron Research Co.; and by Reed C. Lawlor and James W. Geriak for the Los Angeles Patent Law Association. [450 U.S. 175, 177]
JUSTICE REHNQUIST delivered the opinion of the Court.
We granted certiorari to determine whether a process for curing synthetic rubber which includes in several of its steps the use of a mathematical formula and a programmed digital computer is patentable subject matter under 35 U.S.C. 101.
The patent application at issue was filed by the respondents on August 6, 1975. The claimed invention is a process for molding raw, uncured synthetic rubber into cured precision products. The process uses a mold for precisely shaping the uncured material under heat and pressure and then curing the synthetic rubber in the mold so that the product will retain its shape and be functionally operative after the molding is completed. 1
Respondents claim that their process ensures the production of molded articles which are properly cured. Achieving the perfect cure depends upon several factors including the thickness of the article to be molded, the temperature of the molding process, and the amount of time that the article is allowed to remain in the press. It is possible using well-known time, temperature, and cure relationships to calculate by means of the Arrhenius equation 2 when to open the press [450 U.S. 175, 178] and remove the cured product. Nonetheless, according to the respondents, the industry has not been able to obtain uniformly accurate cures because the temperature of the molding press could not be precisely measured, thus making it difficult to do the necessary computations to determine cure time. 3 Because the temperature inside the press has heretofore been viewed as an uncontrollable variable, the conventional industry practice has been to calculate the cure time as the shortest time in which all parts of the product will definitely be cured, assuming a reasonable amount of mold-opening time during loading and unloading. But the shortcoming of this practice is that operating with an uncontrollable variable inevitably led in some instances to overestimating the mold-opening time and overcuring the rubber, and in other instances to underestimating that time and undercuring the product. 4
Respondents characterize their contribution to the art to reside in the process of constantly measuring the actual temperature inside the mold. These temperature measurements are then automatically fed into a computer which repeatedly recalculates the cure time by use of the Arrhenius equation. [450 U.S. 175, 179] When the recalculated time equals the actual time that has elapsed since the press was closed, the computer signals a device to open the press. According to the respondents, the continuous measuring of the temperature inside the mold cavity, the feeding of this information to a digital computer which constantly recalculates the cure time, and the signaling by the computer to open the press, are all new in the art.
The patent examiner rejected the respondents’ claims on the sole ground that they were drawn to nonstatutory subject matter under 35 U.S.C. 101. 5 He determined that those [450 U.S. 175, 180] steps in respondents’ claims that are carried out by a computer under control of a stored program constituted nonstatutory subject matter under this Court’s decision in Gottschalk v. Benson, 409 U.S. 63 (1972). The remaining steps – installing rubber in the press and the subsequent closing of the [450 U.S. 175, 181] press – were “conventional and necessary to the process and cannot be the basis of patentability.” The examiner concluded that respondents’ claims defined and sought protection of a computer program for operating a rubber-molding press.
The Patent and Trademark Office Board of Appeals agreed with the examiner, but the Court of Customs and Patent Appeals reversed. In re Diehr, 602 F.2d 892 (1979). The court noted that a claim drawn to subject matter otherwise statutory does not become nonstatutory because a computer is involved. The respondents’ claims were not directed to a mathematical algorithm or an improved method of calculation but rather recited an improved process for molding rubber articles by solving a practical problem which had arisen in the molding of rubber products.
The Commissioner of Patents and Trademarks sought certiorari arguing that the decision of the Court of Customs and Patent Appeals was inconsistent with prior decisions of this Court. Because of the importance of the question presented, we granted the writ. 445 U.S. 926 (1980).II
Last Term in Diamond v. Chakrabarty, 447 US 303 (1980) , this Court discussed the historical purposes of the patent laws and in particular 35 U.S.C. 101. As in Chakrabarty, we must here construe 35 U.S.C. 101 which provides:
In cases of statutory construction, we begin with the language of the statute. Unless otherwise defined, “words will be interpreted as taking their ordinary, contemporary, common meaning,” Perrin v. United States, 444 US 37, 42 (1979), and, in dealing with the patent laws, we have more than once cautioned that “courts `should not read into the patent laws limitations and conditions which the legislature has not expressed.'” Diamond v. Chakrabarty, supra, at 308, quoting United States v. Dubilier Condenser Corp.,289 U.S. 178, 199 (1933).
The Patent Act of 1793 defined statutory subject matter as “any new and useful art, machine, manufacture or composition of matter, or any new or useful improvement [thereof].” Act of Feb. 21, 1793, ch. 11, 1, 1 Stat. 318. Not until the patent laws were recodified in 1952 did Congress replace the word “art” with the word “process.” It is that latter word which we confront today, and in order to determine its meaning we may not be unmindful of the Committee Reports accompanying the 1952 Act which inform us that Congress intended statutory subject matter to “include anything under the sun that is made by man.” S. Rep. No. 1979, 82d Cong., 2d Sess., 5 (1952); H. R. Rep. No. 1923, 82d Cong., 2d Sess., 6 (1952).
Although the term “process” was not added to 35 U.S.C. 101 until 1952, a process has historically enjoyed patent protection because it was considered a form of “art” as that term was used in the 1793 Act. 7 In defining the nature of a patentable process, the Court stated:
Analysis of the eligibility of a claim of patent protection for a “process” did not change with the addition of that term to 101. Recently, in Gottschalk v. Benson, 409 U.S. 63 (1972), we repeated the above definition recited in Cochrane v. Deener, adding: “Transformation and reduction of an article `to a different state or thing’ is the clue to the patentability of a process claim that does not include particular machines.” 409 U.S., at 70.
Analyzing respondents’ claims according to the above statements from our cases, we think that a physical and chemical process for molding precision synthetic rubber products falls within the 101 categories of possibly patentable subject matter. That respondents’ claims involve the transformation of an article, in this case raw, uncured synthetic rubber, into a different state or thing cannot be disputed. The respondents’ claims describe in detail a step-by-step method for accomplishing such, beginning with the loading of a mold with raw, uncured rubber and ending with the eventual opening of the press at the conclusion of the cure. Industrial processes such as this are the types which have historically been eligible to receive the protection of our patent laws. 8 [450 U.S. 175, 185]
Our conclusion regarding respondents’ claims is not altered by the fact that in several steps of the process a mathematical equation and a programmed digital computer are used. This Court has undoubtedly recognized limits to 101 and every discovery is not embraced within the statutory terms. Excluded from such patent protection are laws of nature, natural phenomena, and abstract ideas. See Parker v. Flook, 437 US 584 (1978); Gottschalk v. Benson, supra, at 67; Funk Bros. Seed Co. v. Kalo Inoculant Co., 333 US 127, 130 (1948) . “An idea of itself is not patentable,” Rubber-Tip Pencil Co. v. Howard, 20 Wall. 498, 507 (1874). “A principle, in the abstract, is a fundamental truth; an original cause; a motive; these cannot be patented, as no one can claim in either of them an exclusive right.” Le Roy v. Tatham, 14 How. 156, 175 (1853). Only last Term, we explained:
Our recent holdings in Gottschalk v. Benson, supra, and Parker v. Flook, supra, both of which are computer-related, stand for no more than these long-established principles. In Benson, we held unpatentable claims for an algorithm used to convert binary code decimal numbers to equivalent pure binary numbers. The sole practical application of the algorithm was in connection with the programming of a [450 U.S. 175, 186] general purpose digital computer. We defined “algorithm” as a “procedure for solving a given type of mathematical problem,” and we concluded that such an algorithm, or mathematical formula, is like a law of nature, which cannot be the subject of a patent. 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 that the application sought to protect a formula for computing this number. Using this formula, the updated alarm limit could be calculated if several other variables were known. The application, however, did not purport to explain how these other variables were to be determined, 10 nor [450 U.S. 175, 187] did it purport “to contain any disclosure relating to the chemical processes at work, the monitoring of process variables, or the means of setting off an alarm or adjusting an alarm system. All that it provides is a formula for computing an updated alarm limit.” 437 U.S., at 586.
In contrast, the respondents here do not seek to patent a mathematical formula. Instead, they seek patent protection for a process of curing synthetic rubber. Their process admittedly employs a well-known mathematical equation, but they do not seek to pre-empt the use of that equation. Rather, they seek only to foreclose from others the use of that equation in conjunction with all of the other steps in their claimed process. These include installing rubber in a press, closing the mold, constantly determining the temperature of the mold, constantly recalculating the appropriate cure time through the use of the formula and a digital computer, and automatically opening the press at the proper time. Obviously, one does not need a “computer” to cure natural or synthetic rubber, but if the computer use incorporated in the process patent significantly lessens the possibility of “overcuring” or “undercuring,” the process as a whole does not thereby become unpatentable subject matter.
Our earlier opinions lend support to our present conclusion that a claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula, computer program, or digital computer. In Gottschalk v. Benson we noted: “It is said that the decision precludes a patent for any program servicing a computer. We do not so hold.” 409 U.S., at 71. Similarly, in Parker v. Flook we stated that “a process is not unpatentable simply because it contains a law of nature or a mathematical algorithm.” 437 U.S., at 590. It is now commonplace that an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection. See, e. g., Funk Bros. Seed See, e. g., Funk Bros. Seed [450 U.S. 175, 188] Co. v. Kalo Inoculant Co., 333 U.S. 127 (1948); Eibel Process Co. v. Minnesota & Ontario Paper Co., 261 U.S. 45 (1923); Cochrane v. Deener, 94 U.S. 780 (1877); O’Reilly v. Morse, 15 How. 62 (1854); and Le Roy v. Tatham, 14 How. 156 (1853). As Justice Stone explained four decades ago:
We think this statement in Mackay takes us a long way toward the correct answer in this case. Arrhenius’ equation is not patentable in isolation, but when a process for curing rubber is devised which incorporates in it a more efficient solution of the equation, that process is at the very least not barred at the threshold by 101.
In determining the eligibility of respondents’ claimed process for patent protection under 101, their claims must be considered as a whole. It is inappropriate to dissect the claims into old and new elements and then to ignore the presence of the old elements in the analysis. This is particularly true in a process claim because a new combination of steps in a process may be patentable even though all the constituents of the combination were well known and in common use before the combination was made. The “novelty” of any element or steps in a process, or even of the [450 U.S. 175, 189] process itself, is of no relevance in determining whether the subject matter of a claim falls within the 101 categories of possibly patentable subject matter. 12
It has been urged that novelty is an appropriate consideration under 101. Presumably, this argument results from the language in 101 referring to any “new and useful” process, machine, etc. Section 101, however, is a general statement of the type of subject matter that is eligible for patent protection “subject to the conditions and requirements of this title.” Specific conditions for patentability follow and 102 covers in detail the conditions relating to novelty. 13 [450 U.S. 175, 190] The question therefore of whether a particular invention is novel is “wholly apart from whether the invention falls into a category of statutory subject matter.” In re Bergy, 596 F.2d 952, 961 (CCPA 1979) (emphasis deleted). See also Nickola v. Peterson, 580 F.2d 898 (CA6 1978). The legislative history of the 1952 Patent Act is in accord with this reasoning. The Senate Report stated:
It is later stated in the same Report:
Finally, it is stated in the “Revision Notes”:
See also H. R. Rep. No. 1923, 82d Cong., 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 to satisfy the statutory conditions of novelty under 102 or nonobviousness under 103. A rejection on either of these grounds does not affect the determination that respondents’ claims recited subject matter which was eligible for patent protection under 101.
We have before us today only the question of whether respondents’ claims fall within the 101 categories of possibly patentable subject matter. We view respondents’ claims as nothing more than a process for molding rubber products and not as an attempt to patent a mathematical formula. We recognize, of course, that when a claim recites a mathematical formula (or scientific principle or phenomenon of nature), an inquiry must be made into whether the claim is seeking patent protection for that formula in the abstract. A mathematical formula as such is not accorded the protection of our patent laws, Gottschalk v. Benson, 409 U.S. 63 (1972), and this principle cannot be circumvented by attempting to limit the use of the formula to a particular technological environment. Parker v. Flook, 437 U.S. 584 (1978). Similarly, insignificant postsolution activity will not transform [450 U.S. 175, 192] an unpatentable principle into a patentable process. Ibid. 14 To hold otherwise would allow a competent draftsman to evade the recognized limitations on the type of subject matter eligible for patent protection. On the other hand, when a claim containing a mathematical formula implements or applies that formula in a structure or process which, when considered as a whole, is performing a function which the patent laws were designed to protect (e. g., transforming or reducing an article to a different state or thing), then the claim satisfies the requirements of 101. Because we do not view respondents’ claims as an attempt to patent a mathematical formula, but rather to be drawn to an industrial process [450 U.S. 175, 193] for the molding of rubber products, we affirm the judgment of the Court of Customs and Patent Appeals. 15
[ Footnote 1 ] A “cure” is obtained by mixing curing agents into the uncured polymer in advance of molding, and then applying heat over a period of time. If the synthetic rubber is cured for the right length of time at the right temperature, it becomes a usable product.
[ Footnote 2 ] The equation is named after its discoverer Svante Arrhenius and has long been used to calculate the cure time in rubber-molding presses. The equation can be expressed as follows:
wherein ln v is the natural logarithm of v, the total required cure time; [450 U.S. 175, 178] C is the activation constant, a unique figure for each batch of each compound being molded, determined in accordance with rheometer measurements of each batch; Z is the temperature in the mold; and x is a constant dependent on the geometry of the particular mold in the press. A rheometer is an instrument to measure flow of viscous substances.
[ Footnote 3 ] During the time a press is open for loading, it will cool. The longer it is open, the cooler it becomes and the longer it takes to reheat the press to the desired temperature range. Thus, the time necessary to raise the mold temperature to curing temperature is an unpredictable variable. The respondents claim to have overcome this problem by continuously measuring the actual temperature in the closed press through the use of a thermocouple.
[ Footnote 4 ] We note that the petitioner does not seriously contest the respondents’ assertions regarding the inability of the industry to obtain accurate cures on a uniform basis. See Brief for Petitioner 3.
[ Footnote 5 ] Respondents’ application contained 11 different claims. Three examples are claims 1, 2, and 11 which provide:
“2. The method of claim 1 including measuring the activation energy constant for the compound being molded in the press with a rheometer and automatically updating said data base within the computer in the [450 U.S. 175, 180] event of changes in the compound being molded in said press as measured by said rheometer.
[ Footnote 6 ] The word “process” is defined in 35 U.S.C. 100 (b):
[ Footnote 7 ] In Corning v. Burden, 15 How. 252, 267-268 (1854), this Court explained:
[ Footnote 8 ] We note that as early as 1854 this Court approvingly referred to patent eligibility of processes for curing rubber. See id., at 267; n. 7, supra. In Tilghman v. Proctor, 102 U.S. 707 (1881), we referred to the original patent Charles Goodyear received on his process for “vulcanizing” or curing rubber. We stated:
[ Footnote 9 ] The term “algorithm” is subject to a variety of definitions. The petitioner defines the term to mean:
This definition is significantly broader than the definition this Court employed in Benson and Flook. Our previous decisions regarding the patentability of “algorithms” are necessarily limited to the more narrow definition employed by the Court, and we do not pass judgment on whether processes falling outside the definition previously used by this Court, but within the definition offered by the petitioner, would be patentable subject matter.
[ Footnote 10 ] As we explained in Flook, in order for an operator using the formula to calculate an updated alarm limit the operator would need to know the original alarm base, the appropriate margin of safety, the time interval that should elapse between each updating, the current temperature (or other process variable), and the appropriate weighing factor to be used to average the alarm base and the current temperature. 437 U.S., at 586. The patent application did not “explain how to select the approximate margin of safety, the weighing factor, or any of the other variables.” Ibid.
[ Footnote 11 ] We noted in Funk Bros. Seed Co. v. Kalo Inoculant Co., 333 U.S. 127, 130 (1948):
Although we were dealing with a “product” claim in Funk Bros., the same principle applies to a process claim. Gottschalk v. Benson, 409 U.S. 63, 68 (1972).
[ Footnote 12 ] It is argued that the procedure of dissecting a claim into old and new elements is mandated by our decision in Flook which noted that a mathematical algorithm must be assumed to be within the “prior art.” It is from this language that the petitioner premises his argument that if everything other than the algorithm is determined to be old in the art, then the claim cannot recite statutory subject matter. The fallacy in this argument is that we did not hold in Flook that the mathematical algorithm could not be considered at all when making the 101 determination. To accept the analysis proffered by the petitioner would, if carried to its extreme, make all inventions unpatentable because all inventions can be reduced to underlying principles of nature which, once known, make their implementation obvious. The analysis suggested by the petitioner would also undermine our earlier decisions regarding the criteria to consider in determining the eligibility of a process for patent protection. See, e. g., Gottschalk v. Benson, supra; and Cochrane v. Deener, 94 U.S. 780 (1877).
[ Footnote 13 ] Section 102 is titled “Conditions for patentability; novelty and loss of right to patent,” and provides:
[ Footnote 14 ] Arguably, the claims in Flook did more than present a mathematical formula. The claims also solved the calculation in order to produce a new number or “alarm limit” and then replaced the old number with the number newly produced. The claims covered all uses of the formula in processes “comprising the catalytic chemical conversion of hydrocarbons.” There are numerous such processes in the petrochemical and oil refinery industries and the claims therefore covered a broad range of potential uses.437 U.S., at 586. The claims, however, did not cover every conceivable application of the formula. We rejected in Flook the argument that because all possible uses of the mathematical formula were not pre-empted, the claim should be eligible for patent protection. Our reasoning in Flook is in no way inconsistent with our reasoning here. A mathematical formula does not suddenly become patentable subject matter simply by having the applicant acquiesce to limiting the reach of the patent for the formula to a particular technological use. A mathematical formula in the abstract is nonstatutory subject matter regardless of whether the patent is intended to cover all uses of the formula or only limited uses. Similarly, a mathematical formula does not become patentable subject matter merely by including in the claim for the formula token postsolution activity such as the type claimed in Flook. We were careful to note in Flook that the patent application did not purport to explain how the variables used in the formula were to be selected, nor did the application contain any disclosure relating to chemical processes at work or the means of setting off an alarm or adjusting the alarm limit. Ibid. All the application provided was a “formula for computing an updated alarm limit.” Ibid.
[ Footnote 15 ] The dissent’s analysis rises and falls on its characterization of respondents’ claims as presenting nothing more than “an improved method of calculating the time that the mold should remain closed during the curing process.” Post, at 206-207. The dissent states that respondents claim only to have developed “a new method of programming a digital computer in order to calculate – promptly and repeatedly – the correct curing time in a familiar process.” Post, at 213. Respondents’ claims, however, are not limited to the isolated step of “programming a digital computer.” Rather, respondents’ claims describe a process of curing rubber beginning with the loading of the mold and ending with the opening of the press and the production of a synthetic rubber product that has been perfectly cured – a result heretofore unknown in the art. See n. 5, supra. The fact that one or more of the steps in respondents’ process may not, in isolation, be novel or independently eligible for patent protection is irrelevant to the question of whether the claims as a whole recite subject matter eligible for patent protection under 101. As we explained when discussing machine patents in Deepsouth Packing Co. v. Laitram Corp., 406 U.S. 518(1972):
In order for the dissent to reach its conclusion it is necessary for it to read out of respondents’ patent application all the steps in the claimed process which it determined were not novel or “inventive.” That is not the purpose of the 101 inquiry and conflicts with the proposition recited above that a claimed invention may be entitled to patent protection even though some or all of its elements are not “novel.”
JUSTICE STEVENS, with whom JUSTICE BRENNAN, JUSTICE MARSHALL, and JUSTICE BLACKMUN join, dissenting.
The starting point in the proper adjudication of patent litigation is an understanding of what the inventor claims [450 U.S. 175, 194] to have discovered. The Court’s decision in this case rests on a misreading of the Diehr and Lutton patent application. Moreover, the Court has compounded its error by ignoring the critical distinction between the character of the subject matter that the inventor claims to be novel – the 101 issue – and the question whether that subject matter is in fact novel – the 102 issue.
Before discussing the major flaws in the Court’s opinion, a word of history may be helpful. As the Court recognized in Parker v. Flook, 437 U.S. 584, 595 (1978), the computer industry is relatively young. Although computer technology seems commonplace today, the first digital computer capable of utilizing stored programs was developed less than 30 years ago. 1 Patent law developments in response to this new technology are of even more recent vintage. The subject of legal protection for computer programs did not begin to receive serious consideration until over a decade after completion of the first programmable digital computer. 2 It was 1968 before [450 U.S. 175, 195] the federal courts squarely addressed the subject, 3 and 1972 before this Court announced its first decision in the area. 4
Prior to 1968, well-established principles of patent law probably would have prevented the issuance of a valid patent on almost any conceivable computer program. Under the “mental steps” doctrine, processes involving mental operations were considered unpatentable. See, e. g., In re Heritage, 32 C. C. P. A. (Pat.) 1170, 1173-1177, 150 F.2d 554, 556-558 (1945); In re Shao Wen Yuan, 38 C. C. P. A. (Pat.) 967, 972-976, 188 F.2d 377, 380-383 (1951). The mental-steps doctrine was based upon the familiar principle that a scientific concept or mere idea cannot be the subject of a valid patent. See In re Bolongaro, 20 C. C. P. A. (Pat.) 845, 846-847, 62 F.2d 1059, 1060 (1933). 5 The doctrine was regularly invoked to deny patents to inventions consisting primarily of mathematical formulae or methods of computation. 6 It was also applied against patent claims in which a mental operation or mathematical computation was the sole novel element or inventive contribution; it was clear that patentability [450 U.S. 175, 196] could not be predicated upon a mental step. 7 Under the “function of a machine” doctrine, a process which amounted to nothing more than a description of the function of a machine was unpatentable. This doctrine had its origin in several 19th-century decisions of this Court, 8 and it had been consistently followed thereafter by the lower federal courts. 9 [450 U.S. 175, 197] Finally, the definition of “process” announced by this Court in Cochrane v. Deener, 94 U.S. 780, 787-788 (1877), seemed to indicate that a patentable process must cause a physical transformation in the materials to which the process is applied. See ante, at 182-184.
Concern with the patent system’s ability to deal with rapidly changing technology in the computer and other fields led to the formation in 1965 of the President’s Commission on the Patent System. After studying the question of computer program patentability, the Commission recommended that computer programs be expressly excluded from the coverage of the patent laws; this recommendation was based primarily upon the Patent Office’s inability to deal with the administrative burden of examining program applications. 10 At approximately the time that the Commission issued its report, the Patent Office published notice of its intention to prescribe guidelines for the examination of applications for patents on computer programs. See 829 Off. Gaz. Pat. Off. 865 (Aug. 16, 1966). Under the proposed guidelines, a computer program, whether claimed as an apparatus or as a process, was unpatentable. 11 The Patent Office indicated, however, [450 U.S. 175, 198] that a programmed computer could be a component of a patentable process if combined with unobvious elements to produce a physical result. The Patent Office formally adopted the guidelines in 1968. See 33 Fed. Reg. 15609 (1968).
The new guidelines were to have a short life. Beginning with two decisions in 1968, a dramatic change in the law as understood by the Court of Customs and Patent Appeals took place. By repudiating the well-settled “function of a machine” and “mental steps” doctrines, that court reinterpreted 101 of the Patent Code to enlarge drastically the categories of patentable subject matter. This reinterpretation would lead to the conclusion that computer programs were within the categories of inventions to which Congress intended to extend patent protection.
In In re Tarczy-Hornoch, 55 C. C. P. A. (Pat.) 1441, 397 F.2d 856 (1968), a divided Court of Customs and Patent Appeals overruled the line of cases developing and applying the “function of a machine” doctrine. The majority acknowledged that the doctrine had originated with decisions of this Court and that the lower federal courts, including the Court of Customs and Patent Appeals, had consistently adhered to it during the preceding 70 years. Nonetheless, the court concluded that the doctrine rested on a misinterpretation of the precedents and that it was contrary to “the basic purposes of the patent system and productive of a range of undesirable results from the harshly inequitable to the silly.” Id., at 1454, 397 F.2d, at 867. 12 Shortly thereafter, a similar [450 U.S. 175, 199] fate befell the “mental steps” doctrine. In In re Prater, 56 C. C. P. A. (Pat.) 1360, 415 F.2d 1378 (1968), modified on rehearing, 56 C. C. A. P. (Pat.) 1381, 415 F.2d 1393 (1969), the court found that the precedents on which that doctrine was based either were poorly reasoned or had been misinterpreted over the years. 56 C. C. P. A. (Pat.), at 1366-1372, 415 F.2d, at 1382-1387. The court concluded that the fact that a process may be performed mentally should not foreclose patentability if the claims reveal that the process also may be performed without mental operations. Id., at 1374-1375, 415 F.2d, at 1389. 13 This aspect of the original Prater opinion was substantially undisturbed by the opinion issued after rehearing. However, the second Prater opinion clearly indicated that patent claims broad enough to encompass the operation of a programmed computer would not be rejected for lack of patentable subject matter. 56 C. C. P. A. (Pat.), at 1394, n. 29, 415 F.2d, at 1403, n. 29. 14 [450 U.S. 175, 200]
The Court of Customs and Patent Appeals soon replaced the overruled doctrines with more expansive principles formulated with computer technology in mind. In In re Bernhart, 57 C. C. P. A. (Pat.) 737, 417 F.2d 1395 (1969), the court reaffirmed Prater, and indicated that all that remained of the mental-steps doctrine was a prohibition on the granting of a patent that would confer a monopoly on all uses of a scientific principle or mathematical equation. Id., at 743, 417 F.2d, at 1399. The court also announced that a computer programmed with a new and unobvious program was physically different from the same computer without that program; the programmed computer was a new machine or at least a new improvement over the unprogrammed computer. Id., at 744, 417 F.2d, at 1400. Therefore, patent protection could be obtained for new computer programs if the patent claims were drafted in apparatus form.
The Court of Customs and Patent Appeals turned its attention to process claims encompassing computer programs in In re Musgrave, 57 C. C. P. A. (Pat.) 1352, 431 F.2d 882 (1970). In that case, the court emphasized the fact that Prater had done away with the mental-steps doctrine; in particular, the court rejected the Patent Office’s continued reliance upon the “point of novelty” approach to claim analysis. Id., at 1362, 431 F.2d, at 889. 15 The court also announced a new standard for evaluating process claims under 101: any sequence of operational steps was a patentable process under 101 as long as it was within the “technological arts.” Id., at 1366-1367, 431 F.2d, at 893. This standard effectively disposed of any vestiges of the mental-steps doctrine remaining [450 U.S. 175, 201] after Prater and Bernhart. 16 The “technological arts” standard was refined in In re Benson, 58 C. C. P. A. (Pat.) 1134, 441 F.2d 682 (1971), in which the court held that computers, regardless of the uses to which they are put, are within the technological arts for purposes of 101. Id., at 1142, 441 F.2d, at 688.
In re Benson, of course, was reversed by this Court in Gottschalk v. Benson, 409 U.S. 63 (1972). 17 Justice Douglas’ opinion for a unanimous Court made no reference to the lower court’s rejection of the mental-steps doctrine or to the new technological-arts standard. 18 Rather, the Court clearly held that new mathematical procedures that can be conducted in old computers, like mental processes and abstract intellectual concepts, see id., at 67, are not patentable processes within the meaning of 101. [450 U.S. 175, 202]
The Court of Customs and Patent Appeals had its first opportunity to interpret Benson in In re Christensen, 478 F.2d 1392 (1973). In Christensen, the claimed invention was a method in which the only novel element was a mathematical formula. The court resurrected the point-of-novelty approach abandoned in Musgrave and held that a process claim in which the point of novelty was a mathematical equation to be solved as the final step of the process did not define patentable subject matter after Benson. 478 F.2d, at 1394. Accordingly, the court affirmed the Patent Office Board of Appeals’ rejection of the claims under 101.
The Court of Customs and Patent Appeals in subsequent cases began to narrow its interpretation of Benson. In In re Johnston, 502 F.2d 765 (1974), the court held that a record-keeping machine system which comprised a programmed digital computer was patentable subject matter under 101. Id., at 771. The majority dismissed Benson with the observation that Benson involved only process, not apparatus, claims. 502 F.2d, at 771. Judge Rich dissented, arguing that to limit Benson only to process claims would make patentability turn upon the form in which a program invention was claimed. 502 F.2d, at 773-774. 19 The court again construed Benson as limited only to process claims in In re Noll, 545 F.2d 141 (1976), cert. denied, 434 U.S. 875 (1977); apparatus claims were governed by the court’s pre-Benson conclusion that a programmed computer was structurally different from the same computer without that particular program. 545 F.2d, at 148. In dissent, Judge Lane, joined by Judge Rich, argued that Benson should be read as a general proscription of the patenting of computer programs regardless of the form of the claims. 545 F.2d, at 151-152. Judge Lane’s interpretation of Benson was rejected by the majority [450 U.S. 175, 203] in In re Chatfield, 545 F.2d 152 (1976), cert. denied, 434 U.S. 875 (1977), decided on the same day as Noll. In that case, the court construed Benson to preclude the patenting of program inventions claimed as processes only where the claims would pre-empt all uses of an algorithm or mathematical formula. 545 F.2d, at 156, 158-159. 20 The dissenting judges argued, as they had in Noll, that Benson held that programs for general-purpose digital computers are not patentable subject matter. 545 F.2d, at 161.
Following Noll and Chatfield, the Court of Customs and Patent Appeals consistently interpreted Benson to preclude the patenting of a program-related process invention only when the claims, if allowed, would wholly pre-empt the algorithm itself. One of the cases adopting this view was In re Flook, 559 F.2d 21 (1977), 21 which was reversed in Parker v. Flook, 437 U.S. 584 (1978). Before this Court decided Flook, however, the lower court developed a two-step procedure for analyzing program-related inventions in light of Benson. In In re Freeman, 573 F.2d 1237 (1978), the court held that such inventions must first be examined to determine whether a mathematical algorithm is directly or indirectly claimed; if an algorithm is recited, the court must then determine whether the claim would wholly pre-empt that algorithm. Only if a claim satisfied both inquiries was Benson considered applicable. 573 F.2d, at 1245. See also In re Toma, 575 F.2d 872, 877 (CCPA 1978). [450 U.S. 175, 204]
In Flook, this Court clarified Benson in three significant respects. First, Flook held that the Benson rule of unpatentable subject matter was not limited, as the lower court believed, to claims which wholly pre-empted an algorithm or amounted to a patent on the algorithm itself. 437 U.S., at 589-590. Second, the Court made it clear that an improved method of calculation, even when employed as part of a physical process, is not patentable subject matter under 101. Id., at 595, n. 18. Finally, the Court explained the correct procedure for analyzing a patent claim employing a mathematical algorithm. Under this procedure, the algorithm is treated for 101 purposes as though it were a familiar part of the prior art; the claim is then examined to determine whether it discloses “some other inventive concept.” Id., at 591-595. 22
Although the Court of Customs and Patent Appeals in several post-Flook decisions held that program-related inventions were not patentable subject matter under 101, see, e. g., In re Sarkar, 588 F.2d 1330 (1978); In re Gelnovatch, 595 F.2d 32 (1979), in general Flook was not enthusiastically received by that court. In In re Bergy, 596 F.2d 952 (1979), the majority engaged in an extensive critique of Flook, concluding that this Court had erroneously commingled “distinct statutory provisions which are conceptually unrelated.” 596 F.2d, at 959. 23 In subsequent cases, the court construed [450 U.S. 175, 205] Flook as resting on nothing more than the way in which the patent claims had been drafted, and it expressly declined to use the method of claim analysis spelled out in that decision. The Court of Customs and Patent Appeals has taken the position that, if an application is drafted in a way that discloses an entire process as novel, it defines patentable subject matter even if the only novel element that the inventor claims to have discovered is a new computer program. 24 The court interpreted Flook in this manner in its opinion in this case. See In re Diehr, 602 F.2d 982, 986-989 (1979). In my judgment, this reading of Flook – although entirely consistent with the lower court’s expansive approach to 101 during the past 12 years – trivializes the holding in Flook, the principle that underlies Benson, and the settled line of authority reviewed in those opinions.
As I stated at the outset, the starting point in the proper adjudication of patent litigation is an understanding of what the inventor claims to have discovered. Indeed, the outcome of such litigation is often determined by the judge’s understanding of the patent application. This is such a case.
In the first sentence of its opinion, the Court states the question presented as “whether a process for curing synthetic rubber . . . is patentable subject matter.” Ante, at 177. Of course, that question was effectively answered many years ago when Charles Goodyear obtained his patent on the vulcanization process. 25The patent application filed by Diehr [450 U.S. 175, 206] and Lutton, however, teaches nothing about the chemistry of the synthetic rubber-curing process, nothing about the raw materials to be used in curing synthetic rubber, nothing about the equipment to be used in the process, and nothing about the significance or effect of any process variable such as temperature, curing time, particular compositions of material, or mold configurations. In short, Diehr and Lutton do not claim to have discovered anything new about the process for curing synthetic rubber.
As the Court reads the claims in the Diehr and Lutton patent application, the inventors’ discovery is a method of constantly measuring the actual temperature inside a rubber molding press. 26 As I read the claims, their discovery is an [450 U.S. 175, 207] improved method of calculating the time that the mold should remain closed during the curing process. 27 If the Court’s reading of the claims were correct, I would agree that they disclose patentable subject matter. On the other hand, if the Court accepted my reading, I feel confident that the case would be decided differently.
There are three reasons why I cannot accept the Court’s conclusion that Diehr and Lutton claim to have discovered a new method of constantly measuring the temperature inside a mold. First, there is not a word in the patent application that suggests that there is anything unusual about the temperature-reading devices used in this process – or indeed that any particular species of temperature-reading device should be used in it. 28 Second, since devices for constantly [450 U.S. 175, 208] measuring actual temperatures – on a back porch, for example – have been familiar articles for quite some time, I find it difficult to believe that a patent application filed in 1975 was premised on the notion that a “process of constantly measuring the actual temperature” had just been discovered. Finally, the Patent and Trademark Office Board of Appeals expressly found that “the only difference between the conventional methods of operating a molding press and that claimed in [the] application rests in those steps of the claims which relate to the calculation incident to the solution of the mathematical problem or formula used to control the mold heater and the automatic opening of the press.” 29 This finding was not disturbed by the Court of Customs and Patent Appeals and is clearly correct.
A fair reading of the entire patent application, as well as the specific claims, makes it perfectly clear that what Diehr and Lutton claim to have discovered is a method of using a digital computer to determine the amount of time that a rubber molding press should remain closed during the synthetic rubber-curing process. There is no suggestion that there is anything novel in the instrumentation of the mold, in actuating a timer when the press is closed, or in automatically opening the press when the computed time expires. 30 Nor does the [450 U.S. 175, 209] application suggest that Diehr and Lutton have discovered anything about the temperatures in the mold or the amount of curing time that will produce the best cure. What they claim to have discovered, in essence, is a method of updating the original estimated curing time by repetitively recalculating that time pursuant to a well-known mathematical formula in response to variations in temperature within the mold. Their method of updating the curing time calculation is strikingly reminiscent of the method of updating alarm limits that Dale Flook sought to patent.
Parker v. Flook, 437 U.S. 584 (1978), involved the use of a digital computer in connection with a catalytic conversion process. During the conversion process, variables such as temperature, pressure, and flow rates were constantly monitored and fed into the computer; in this case, temperature in the mold is the variable that is monitored and fed into the computer. In Flook, the digital computer repetitively recalculated the “alarm limit” – a number that might signal the need to terminate or modify the catalytic conversion process; in this case, the digital computer repetitively recalculates the correct curing time – a number that signals the time when the synthetic rubber molding press should open.
The essence of the claimed discovery in both cases was an algorithm that could be programmed on a digital computer. 31 [450 U.S. 175, 210] In Flook, the algorithm made use of multiple process variables; in this case, it makes use of only one. In Flook, the algorithm was expressed in a newly developed mathematical formula; in this case, the algorithm makes use of a well-known mathematical formula. Manifestly, neither of these differences can explain today’s holding. 32 What I believe [450 U.S. 175, 211] does explain today’s holding is a misunderstanding of the applicants’ claimed invention and a failure to recognize the critical difference between the “discovery” requirement in 101 and the “novelty” requirement in 102. 33
The Court misapplies Parker v. Flook because, like the Court of Customs and Patent Appeals, it fails to understand or completely disregards the distinction between the subject matter of what the inventor claims to have discovered – the 101 issue – and the question whether that claimed discovery is in fact novel – the 102 issue. 34 If there is not even a [450 U.S. 175, 212] claim that anything constituting patentable subject matter has been discovered, there is no occasion to address the novelty issue. 35 Or, as was true in Flook, if the only concept that the inventor claims to have discovered is not patentable subject matter, 101 requires that the application be rejected without reaching any issue under 102; for it is irrelevant that unpatentable subject matter – in that case a formula for updating alarm limits – may in fact be novel.
Proper analysis, therefore, must start with an understanding of what the inventor claims to have discovered – or phrased somewhat differently – what he considers his inventive concept to be. 36 It seems clear to me that Diehr and [450 U.S. 175, 213] Lutton claim to have developed a new method of programming a digital computer in order to calculate – promptly and repeatedly – the correct curing time in a familiar process. 37 In the 101 analysis, we must assume that the sequence of steps in this programming method is novel, unobvious, and useful. The threshold question of whether such a method is patentable subject matter remains.
If that method is regarded as an “algorithm” as that term was used in Gottschalk v. Benson, 409 U.S. 63(1972), and in [450 U.S. 175, 214] Parker v. Flook, 437 U.S. 584 (1978), 38 and if no other inventive concept is disclosed in the patent application, the question must be answered in the negative. In both Benson and Flook, the parties apparently agreed that the inventor’s discovery was properly regarded as an algorithm; the holding that an algorithm was a “law of nature” that could not be [450 U.S. 175, 215] patented therefore determined that those discoveries were not patentable processes within the meaning of 101.
As the Court recognizes today, Flook also rejected the argument that patent protection was available if the inventor did not claim a monopoly on every conceivable use of the algorithm but instead limited his claims by describing a specific postsolution activity – in that case setting off an alarm in a catalytic conversion process. In its effort to distinguish Flook from the instant case, the Court characterizes that postsolution activity as “insignificant,” ante, at 191, or as merely “token” activity, ante, at 192, n. 14. As a practical matter, however, the postsolution activity described in the Flook application was no less significant than the automatic opening of the curing mold involved in this case. For setting off an alarm limit at the appropriate time is surely as important to the safe and efficient operation of a catalytic conversion process as is actuating the mold-opening device in a synthetic rubber-curing process. In both cases, the post-solution activity is a significant part of the industrial process. But in neither case should that activity have any legal significance because it does not constitute a part of the inventive concept that the applicants claimed to have discovered. 39
In Gottschalk v. Benson, we held that a program for the [450 U.S. 175, 216] solution by a digital computer of a mathematical problem was not a patentable process within the meaning of 101. In Parker v. Flook, we further held that such a computer program could not be transformed into a patentable process by the addition of postsolution activity that was not claimed to be novel. That holding plainly requires the rejection of Claims 1 and 2 of the Diehr and Lutton application quoted in the Court’s opinion. Ante, at 179-180, n. 5. In my opinion, it equally requires rejection of Claim 11 because the presolution activity described in that claim is admittedly a familiar part of the prior art. 40
Even the Court does not suggest that the computer program developed by Diehr and Lutton is a patentable discovery. Accordingly, if we treat the program as though it were a familiar part of the prior art – as well-established precedent requires 41 – it is absolutely clear that their application contains no claim of patentable invention. Their application was therefore properly rejected under 101 by the Patent Office and the Board of Appeals.
The broad question whether computer programs should be given patent protection involves policy considerations that [450 U.S. 175, 217] this Court is not authorized to address. See Gottschalk v. Benson, 409 U.S., at 72-73; Parker v. Flook, 437 U.S., at 595-596. As the numerous briefs amicus curiae filed in Gottschalk v. Benson, supra, Dann v. Johnston, 425 U.S. 219(1976) , Parker v. Flook, supra, and this case demonstrate, that question is not only difficult and important, but apparently also one that may be affected by institutional bias. In each of those cases, the spokesmen for the organized patent bar have uniformly favored patentability and industry representatives have taken positions properly motivated by their economic self-interest. Notwithstanding fervent argument that patent protection is essential for the growth of the software industry, 42 commentators have noted that “this industry is growing by leaps and bounds without it.”43 In addition, even [450 U.S. 175, 218] some commentators who believe that legal protection for computer programs is desirable have expressed doubts that the present patent system can provide the needed protection. 44
Within the Federal Government, patterns of decision have also emerged. Gottschalk, Dann, Parker, and Diamond were not ordinary litigants – each was serving as Commissioner of Patents and Trademarks when he opposed the availability of patent protection for a program-related invention. No doubt each may have been motivated by a concern about the ability of the Patent Office to process effectively the flood of applications that would inevitably flow from a decision that computer programs are patentable. 45 The consistent concern evidenced by the Commissioner of Patents and Trademarks and by the Board of Appeals of the Patent and Trademark Office has not been shared by the Court of Customs and Patent Appeals, which reversed the Board in Benson, Johnston, and Flook, and was in turn reversed by this Court in each of those cases. 46 [450 U.S. 175, 219]
Scholars have been critical of the work of both tribunals. Some of that criticism may stem from a conviction about the merits of the broad underlying policy question; such criticism may be put to one side. Other criticism, however, identifies two concerns to which federal judges have a duty to respond. First, the cases considering the patentability of program-related inventions do not establish rules that enable a conscientious patent lawyer to determine with a fair degree of accuracy which, if any, program-related inventions will be patentable. Second, the inclusion of the ambiguous concept of an “algorithm” within the “law of nature” category of unpatentable subject matter has given rise to the concern that almost any process might be so described and therefore held unpatentable.
In my judgment, today’s decision will aggravate the first concern and will not adequately allay the second. I believe both concerns would be better addressed by (1) an unequivocal holding that no program-related invention is a patentable process under 101 unless it makes a contribution to the art that is not dependent entirely on the utilization of a computer, and (2) an unequivocal explanation that the term “algorithm” as used in this case, as in Benson and Flook, is synonymous with the term “computer program.” 47 Because[450 U.S. 175, 220] the invention claimed in the patent application at issue in this case makes no contribution to the art that is not entirely dependent upon the utilization of a computer in a familiar process, I would reverse the decision of the Court of Customs and Patent Appeals.
[ Footnote 1 ] ENIAC, the first general purpose electronic digital computer, was built in 1946. Unlike modern computers, this machine was externally programmed; its circuitry had to be manually rewired each time it was used to perform a new task. See Gemignani, Legal Protection for Computer Software: The View From `79, 7 Rutgers J. Computers, Tech. & L. 269, 270 (1980). In 1952, a group of scientists at the Institute for Advanced Study completed MANIAC I, the first digital computer capable of operating upon stored programs, as opposed to hard-wired circuitry. See Ulam, Computers, 211 Scientific American 203 (1964).
[ Footnote 2 ] The subject received some scholarly attention prior to 1964. See, e. g., Seidel, Antitrust, Patent and Copyright Law Implications of Computer Technology, 44 J. Pat. Off. Soc. 116 (1962); Comment, The Patentability of Computer Programs, 38 N. Y. U. L. Rev. 891 (1963). In 1964, the Copyright Office began registering computer programs. See 11 Copyright Soc. Bull. 361 (1964); Davis, Computer Programs and Subject Matter Patentability, 6 Rutgers J. Computers, Tech. & L. 1, 5 (1977). Also in 1964, the Patent Office Board of Appeals issued what appears to be the first published opinion concerning the patentability of a computer-related invention. See Ex parte King, 146 USPQ 590.
[ Footnote 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 first significant judicial decision to consider the subject-matter patentability of computer program-related inventions. The Court of Customs and Patent Appeals earlier decided In re Naquin, 55 C. C. P. A. (Pat.) 1428, 398 F.2d 863 (1968), in which it rejected a challenge to an application for a patent on a program-related invention on grounds of inadequate disclosure under 112.
[ Footnote 4 ] See Gottschalk v. Benson, 409 U.S. 63 (1972).
[ Footnote 5 ] See also Novick & Wallenstein, The Algorithm and Computer Software Patentability: A Scientific View of a Legal Problem, 7 Rutgers J. Computers, Tech. & L. 313, 316-317 (1980).
[ Footnote 6 ] See, e. g., Don Lee, Inc. v. Walker, 61 F.2d 58, 67 (CA9 1932); In re Bolongaro, 20 C. C. P. A. (Pat.) 845, 846-847, 62 F.2d 1059, 1060 (1933); In re Shao Wen Yuan, 38 C. C. P. A. (Pat.) 967, 969-972, 188 F.2d 377, 379-380 (1951); Lyman v. Ladd, 120 U.S. App. D.C. 388, 389, 347 F.2d 482, 483 (1965).
[ Footnote 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 other grounds, 329 U.S. 1 (1946); In re Heritage, 32 C. C. P. A. (Pat.) 1170, 1173-1177, 150 F.2d 554, 556-558 (1945); In re Abrams, 38 C. C. P. A. (Pat.) 945, 950-953, 188 F.2d 165, 168-170 (1951); In re Shao Wen Yuan, supra, at 975-976, 188 F.2d, at 383; In re Lundberg, 39 C. C. P. A. (Pat.) 971, 975, 197 F.2d 336, 339 (1952); In re Venner, 46 C. C. P. A. (Pat.) 754, 758-759, 262 F.2d 91, 95 (1958).
[ Footnote 8 ] The “function of a machine” doctrine is generally traced to Corning v. Burden, 15 How. 252, 268 (1854), in which the Court stated: “[I]t is well settled that a man cannot have a patent for the function or abstract effect of a machine, but only for the machine which produces it.” The doctrine was subsequently reaffirmed on several occasions. See, e. g., Risdon Iron & Locomotive Works v. Medart, 158 U.S. 68, 78-79, 84 (1895); Westinghouse v. Boyden Power Brake Co., 170 U.S. 537, 554-557 (1898); Busch v. Jones,184 U.S. 598, 607 (1902); Expanded Metal Co. v. Bradford, 214 U.S. 366, 383 (1909).
[ Footnote 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 (CA4 1933); In re Ernst, 21 C. C. P. A. (Pat.) 1235, 1238-1240, 71 F.2d 169, 171-172 (1934); In re McCurdy, 22 C. C. P. A. (Pat.) 1140, 1142-1145, 76 F.2d 400, 402-403, (1935); In re Parker, 23 C. C. P. A. (Pat.) 721, 722-725, 79 F.2d 908, 909-910 (1935); Black-Clawson Co. v. Centrifugal Engineering & Patents Corp., 83 F.2d 116, 119-120 (CA6), cert. denied, 299 U.S. 554 (1936); In re Wadman, 25 C. C. P. A. (Pat.) 936, 943-944, 94 F.2d 993, 998 (1938); In re Mead, 29 C. C. P. A. (Pat.) 1001, 1004, 127 F.2d 302, 304 (1942); In re Solakian, 33 C. C. P. A. (Pat.) 1054, 1059, 155 F.2d 404, 407 (1946); In re Middleton, 35 C. C. P. A. (Pat.) 1166, 1167-1168, 167 F.2d 1012, 1013-1014 (1948); In re Nichols, 36 C. C. P. A. (Pat.) 759, 762-763, 171 F.2d 300, 302-303 (1948); In re Ashbaugh, 36 C. C. P. A. (Pat.) 902, 904-905, 173 F.2d 273, 274-275 (1949); In re Horvath, 41 C. C. P. A. (Pat.) 844, 849-851, 211 F.2d 604, 607-608 (1954); In re Gartner, 42 C. C. P. A. (Pat.) 1022, 1025-1026, 223 F.2d 502, 504 (1955).
[ Footnote 10 ] The Commission’s report contained the following evaluation of the current state of the law with respect to computer program patentability:
[ Footnote 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 12 ] Judge Kirkpatrick, joined by Chief Judge Worley, wrote a vigorous dissent objecting to the majority’s decision to abandon “a rule which is about as solidly established as any rule of the patent law.” 55 C. C. P. A. (Pat.), at 1457, 397 F.2d, at 868. Unlike the majority, the dissenting judges did not consider the doctrine inequitable or silly, and they observed that it had functioned in a satisfactory manner in the past. Id., at 1457-1458, 397 F.2d, at 869. In addition, they considered the doctrine to be so well established that it had been adopted by implication in the Patent Act of 1952. Id., at 1458, 397 F.2d, at 869.
[ Footnote 13 ] In Prater, the patent application claimed an improved method for processing spectrographic data. The method analyzed conventionally obtained data by using well-known equations. The inventors had discovered a particular mathematical characteristic of the equations which enabled them to select the specific subset of equations that would yield optimum results. The application disclosed an analog computer as the preferred embodiment of the invention, but indicated that a programmed digital computer could also be used. 56 C. C. P. A. (Pat.), at 1361-1363, 415 F.2d, at 1379-1380. The Patent Office had rejected the process claims on a mental-steps theory because the only novel aspect of the claimed method was the discovery of an unpatentable mathematical principle. The apparatus claim was rejected essentially because, when the mathematical principle was assumed to be within the prior art, the claim disclosed no invention entitled to patent protection. Id., at 1364-1365, 1375, 415 F.2d, at 1381, 1399.
[ Footnote 14 ] It is interesting to note that the Court of Customs and Patent Appeals in the second Prater opinion expressly rejected the Patent Office’s procedure for analyzing the apparatus claim pursuant to which the mathematical principle was treated as though it were within the prior art. 56 C. C. P. A. (Pat.), at 1397, 415 F.2d, at 1405-1406. This precise procedure, of course, was later employed by this Court in Parker v. Flook, 437 U.S. 584 (1978).
[ Footnote 15 ] Under the “point of novelty” approach, if the novelty or advancement in the art claimed by the inventor resided solely in a step of the process embodying a mental operation or other unpatentable element, the claim was rejected under 101 as being directed to nonstatutory subject matter. See Blumenthal & Riter, Statutory or Non-Statutory?: An Analysis of the Patentability of Computer Related Inventions, 62 J. Pat. Off. Soc. 454, 457, 461, 470 (1980).
[ Footnote 16 ] The author of the second Prater opinion, Judge Baldwin, disagreed with the Musgrave “technological arts” standard for process claims. He described that standard as “a major and radical shift in this area of the law.” 57 C. C. P. A. (Pat.), at 1367, 431 F.2d, at 893-894. As Judge Baldwin read the majority opinion, claims drawn solely to purely mental processes were now entitled to patent protection. Id., at 1369, 431 F.2d, at 895-896. Judge Baldwin’s understanding of Musgrave seems to have been confirmed in In re Foster, 58 C. C. P. A. (Pat.) 1001, 1004-1005, 438 F.2d 1011, 1014-1015 (1971).
[ Footnote 17 ] In the interval between the two Benson decisions, the Court of Customs and Patent Appeals decided several cases in which it addressed the patentability of computer-related inventions. In In re McIlroy, 58 C. C. P. A. (Pat.) 1249, 442 F.2d 1397 (1971), and In re Waldbaum, 59 C. C. P. A. (Pat.) 940, 457 F.2d 997 (1972), the court relied primarily upon Musgrave and Benson. In In re Ghiron, 58 C. C. P. A. (Pat.) 1207, 442 F.2d 985 (1971), the court reaffirmed Tarczy-Hornoch’s rejection of the “function of a machine” doctrine.
[ Footnote 18 ] Although the Court did not discuss the mental-steps doctrine in Benson, some commentators have suggested that the Court implicitly relied upon the doctrine in that case. See, e. g., Davis, supra n. 2, at 14, and n. 92. Other commentators have observed that the Court’s analysis in Benson was entirely consistent with the mental-steps doctrine. See, e. g., Comment, Computer Program Classification: A Limitation on Program Patentability as a Process, 53 Or. L. Rev. 501, 517-518, n. 132 (1974).
[ Footnote 19 ] The decision of the Court of Customs and Patent Appeals was reversed by this Court on other grounds in Dann v. Johnston, 425 U.S. 219 (1976).
[ Footnote 20 ] In addition to interpreting Benson, the majority also maintained that Christensen, despite its point-of-novelty language, had not signalled a return to that form of claim analysis. 545 F.2d, at 158. The court would reaffirm this proposition consistently thereafter. See, e. g., In re de Castelet, 562 F.2d 1236, 1240 (1977); In re Richman, 563 F.2d 1026, 1029-1030 (1977); In re Freeman, 573 F.2d 1237, 1243-1244 (1978); In re Toma, 575 F.2d 872, 876 (1978); In re Walter, 618 F.2d 758, 766-767 (1980).
[ Footnote 21 ] See also In re Deutsch, 553 F.2d 689, 692-693 (CCPA 1977); In re Waldbaum, 559 F.2d 611, 616-617 (CCPA 1977); In re de Castelet, supra, at 1243-1245.
[ Footnote 22 ] This form of claim analysis did not originate with Flook. Rather, the Court derived it from the landmark decision of O’Reilly v. Morse, 15 How. 62, 115 (1854). In addition, this analysis is functionally the same as the point-of-novelty analysis used in conjunction with the mental-steps doctrine. In fact, the Patent Office in the past occasionally phrased its mental-steps rejections in essentially the terms later employed in Flook. See nn. 13-15, supra. See generally Comment, 35 U.S.C. 101 Claim Analysis – The Point of Novelty Approach, 62 J. Pat. Off. Soc. 521 (1980).
[ Footnote 23 ] The Court of Customs and Patent Appeals suggested that the cause of this Court’s error was the argument presented by the Solicitor General in Flook. According to the majority, the Solicitor General’s briefs “badly, and with a seeming sense of purpose” confused the statutory requirements. [450 U.S. 175, 205] 596 F.2d, at 962. The court went on to describe part of the Solicitor General’s argument in Flook as “subversive nonsense.” 596 F.2d, at 963.
[ Footnote 24 ] See, e. g., In re Johnson, 589 F.2d 1070 (1978); In re Phillips, 608 F.2d 879 (1979); In re Sherwood, 613 F.2d 809 (1980), cert. pending, No. 79-1941.
[ Footnote 25 ] In an opinion written over a century ago, the Court noted:
“A manufacturing process is clearly an art, within the meaning of the law. Goodyear’s patent was for a process, namely, the process of vulcanizing [450 U.S. 175, 206] india-rubber by subjecting it to a high degree of heat when mixed with sulphur and a mineral salt.
See also Corning v. Burden, 15 How. 252, 267 (1854). Modern rubber curing methods apparently still are based in substantial part upon the concept discovered by Goodyear:
See generally Kimmich, Making Rubber Products for Engineering Uses, in Engineering Uses of Rubber 18, 28-34 (A. McPherson & A. Klemin eds. 1956)
[ Footnote 26 ] “Respondents characterize their contribution to the art to reside in the process of constantly measuring the actual temperature inside the mold.” See ante, at 178.
[ Footnote 27 ] Claim 1 is quoted in full in n. 5 of the Court’s opinion, ante, at 179. It describes a “method of operating a rubber-molding press for precision molded compounds with the aid of a digital computer.” As the Court of Customs and Patent Appeals noted, the improvement claimed in the application consists of “opening the mold at precisely the correct time rather than at a time which has been determined by approximation or guesswork.” In re Diehr, 602 F.2d 982, 988 (1979).
[ Footnote 28 ] In the portion of the patent application entitled “Abstract of the Disclosure,” the following reference to monitoring the temperature is found:
In the portion of the application entitled “Background of the Invention,” the following statement is found:
And, in the “Summary of the Invention,” this statement appears:
Finally, in a description of a simple hypothetical application using the invention described in Claim 1, this is the reference to the temperature-reading device:
[ Footnote 29 ] Id., at 24a.
[ Footnote 30 ] These elements of the rubber-curing process apparently have been well known for years. The following description of the vulcanization process appears in a text published in 1961:
[ Footnote 31 ] Commentators critical of the Flook decision have noted the essential similarity of the two inventions:
[ Footnote 32 ] Indeed, the most significant distinction between the invention at issue in Flook and that at issue in this case lies not in the characteristics of the inventions themselves, but rather in the drafting of the claims. After noting that “[t]he Diehr claims are reminiscent of the claims in Flook,” Blumenthal & Riter, supra n. 15, at 502-503 (footnote omitted), the authors of a recent article on the subject observe that the Court of Customs and Patent Appeals’ analysis in this case “lends itself to an interesting exercise in claim drafting.” Id., at 505. To illustrate their point, the authors redrafted the Diehr and Lutton claims into the format employed in the Flook application:
The authors correctly conclude that even the lower court probably would have found that this claim was drawn to unpatentable subject matter under 101. Id., at 505-506.
[ Footnote 33 ] In addition to confusing the requirements of 101 and 102, the Court also misapprehends the record in this case when it suggests that the Diehr and Lutton patent application may later be challenged for failure to satisfy the requirements of 102 and 103. See ante, at 191. This suggestion disregards the fact that the applicants overcame all objections to issuance of the patent except the objection predicated on 101. The Court seems to assume that 102 and 103 issues of novelty and obviousness remain open on remand. As I understand the record, however, those issues have already been resolved. See Brief for Respondents 11-14; Reply Memorandum for Petitioner 3-4, and n. 4. Therefore, the Court is now deciding that the patent will issue.
[ Footnote 34 ] The early cases that the Court of Customs and Patent Appeals refused to follow in Prater, Musgrave, and Benson had recognized the distinction between the 101 requirement that what the applicant claims to have invented must be patentable subject matter and the 102 requirement that the invention must actually be novel. See, e. g., In re Shao Wen Yuan, 38 C. C. P. A. (Pat.), at 973-976, 188 F.2d, at 382-383; In re Abrams, 38 C. C. P. A. (Pat.), at 951-952, 188 F.2d, at 169; In re Heritage, 32 C. C. P. A. (Pat.), at 1173-1174, 1176-1177, 150 F.2d, at 556, 558; Halliburton Oil Well Cementing Co. v. Walker, 146 F.2d, at 821, 823. The lower court’s error in this case, and its unenthusiastic reception of Gottschalk v. Benson and Parker v. Flook, is, of course, consistent [450 U.S. 175, 212] with its expansive reading of 101 in Tarczy-Hornoch, Prater, and their progeny.
[ Footnote 35 ] The Court’s opinion in Flook itself pointed out this distinction:
As the Court of Customs and Patent Appeals noted in this case, “for the claim to be statutory, there must be some substance to it other than the recitation and solution of the equation or formula.” 602 F.2d, at 988. See Comment, 62 J. Pat. Off. Soc., supra n. 22, at 522-523.
[ Footnote 36 ] The Court fails to focus upon what Diehr and Lutton claim to have discovered apparently because it believes that this method of analysis would improperly import novelty considerations into 101. See ante, at 188-191, 193, n. 15. Rather than directing its attention to the applicants’ claimed discovery, the Court instead focuses upon the general industrial context in which the applicants intend their discovery to be used. Implicit in this interpretation of the patent application is the assumption that, as long as the claims describe a specific implication of the applicants’ discovery, patentable subject matter is defined. This assumption was expressly rejected in Flook:
[ Footnote 37 ] A few excerpts from the original patent application will emphasize this point:
“The invention will probably best be understood by first describing a simple example, in which a single mold is involved and in which the information is relatively static.
“The data bank of the computer is provided with a digital input into which the time-temperature cure data for the compound involved is fed, as shown in Fig. 1. All the data is available to the computer upon call, by random access, and the call can be automatic depending upon the temperature actually involved. In other words, the computer over and over questions the data storage, asking, what is the proper time of cure for the following summation of temperatures? The question may be asked each second, and the answer is readily provided.
The Figure 1 referred to in the application is as follows:
Id., at 53a.
[ Footnote 38 ] In Benson, we explained the term “algorithm” in the following paragraph:
[ Footnote 39 ] In Flook, the Court’s analysis of the postsolution activity recited in the patent application turned, not on the relative significance of that activity in the catalytic conversion process, but rather on the fact that that activity was not a part of the applicant’s discovery:
[ Footnote 40 ] Although the Court of Customs and Patent Appeals erred because it ignored the distinction between the 101 requirement that the applicant must claim to have discovered a novel process and the 102 requirement that the discovery must actually be novel, that court correctly rejected the argument that any difference between Claim 11 and the earlier claims was relevant to the 101 inquiry. See 602 F.2d, at 984, 987-988.
[ Footnote 41 ] This well-established precedent was reviewed in Parker v. Flook:
[ Footnote 42 ] For example, the Association of Data Processing Service Organizations, appearing as amicus curiae in Flook, made the following policy argument:
[ Footnote 43 ] Gemignani, supra n. 1, at 309. In a footnote to that comment, Professor Gemignani added that the rate of growth of the software industry [450 U.S. 175, 218] “has been even faster lately than that of the hardware industry which does enjoy patent protections.” Id., at 309, n. 259. Other commentators are in accord. See Nycum, Legal Protection for Computer Programs, 1 Computer L. J. 1, 55-58 (1978); Note, Protection of Computer Programs: Resurrection of the Standard, 50 Notre Dame Law. 333, 344 (1974).
[ Footnote 44 ] See, e. g., Gemignani, supra n. 1, at 301-312; Keefe & Mahn, Protecting Software: Is It Worth All the Trouble?, 62 A. B. A. J. 906, 907 (1976).
[ Footnote 45 ] This concern influenced the President’s Commission on the Patent System when it recommended against patent protection for computer programs. In its report, the President’s Commission stated:
[ Footnote 46 ] It is noteworthy that the position of the Court of Customs and Patent Appeals in the process patent area had been consistent with that [450 U.S. 175, 219] of the Commissioner of Patents and Trademarks for decades prior to 1968. As discussed in Part I, supra, in that year the court rejected two longstanding doctrines that would have foreclosed patentability for most computer programs under 101.
[ Footnote 47 ] A number of authorities have drawn the conclusion that the terms are in fact synonymous. See, e. g., Novick & Wallenstein, supra n. 5, at 333, n. 172; Anderson, Algorithm, 1 Encyclopedia of Computer Science & Technology 364, 369 (J. Belzer, A. Holzman & A. Kent eds. 1975); E. Horowitz & S. Sahni, Fundamentals of Computer Algorithms 2 (1978); A. Tanenbaum, Structured Computer Organization 10 (1976). Cf. Blumenthal & Riter, supra n. 15, at 455-456; Gemignani, supra n. 1, at 271-273, 276, n. 37.[450 U.S. 175, 221]