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 CERTIORARI TO TIE UNITED STATES
COURT OF CUSTOMS AND PATENT
APPEALS 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 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. I The patent application at issue was filed by the respondents on
August 6, 1975. The claimed invention is a process for molding raw,
uncured synthetic rubber into cured precision products. The process
uses a mold for precisely shaping the uncured material under heat
and pressure and then curing the synthetic rubber in the mold so
that the product will retain its shape and be functionally
operative after the molding is completed. [ Footnote 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
[ Footnote 2 ] when to open the
press Page 450 U. S. 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. [ Footnote 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. [ Footnote 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. Page 450 U. S. 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. [ Footnote 5 ] He
determined that those Page 450 U. S. 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 Page 450 U. S. 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 U.
S. 303 (1980), this Court discussed the historical
purposes of the patent laws, and, in particular, 35 U.S.C. § 101.
As in Chakrabarty, we must here construe 35 U.S.C. § 101,
which provides:

															"Whoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new and
useful improvement thereof, may obtain a patent therefor, subject
to the conditions and requirements of this title. [ Footnote 6 ] " Page 450 U. S. 182 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 U. S. 37 , 444 U. S. 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 447 U. S. 308 ,
quoting United States v. Dubilier Condenser Corp., 289 U. S. 178 , 289 U. S. 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. [ Footnote 7 ] In
defining the nature of a patentable process, the Court stated:

															"That a process may be patentable, irrespective of the Page 450 U. S. 183 particular form of the instrumentalities used, cannot be
disputed. . . . A process is a mode of treatment of certain
materials to produce a given result. It is an act, or a series of
acts, performed upon the subject matter to be transformed and
reduced to a different state or thing. If new and useful, it is
just as patentable as is a piece of machinery. In the language of
the patent law, it is an art. The machinery pointed out as suitable
to perform the process may or may not be new or patentable; whilst
the process itself may be altogether new, and produce an entirely
new result. The process requires Page 450 U. S. 184 that certain things should be done with certain substances, and
in a certain order; but the tools to be used in doing this may be
of secondary consequence." Cochrane v. Deener, 94 U. S. 780 , 94 U. S.
787 -788 (1877).

															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 409 U. S.
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. [ Footnote 8 ] Page 450 U. S. 185 III 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 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-Tip
Pencil Co. v. Howard , 20 Wall. 498, 87 U. S. 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, 55 U. S. 175 (1853). Only last Term, we explained:

															"[A] new mineral discovered in the earth or a new plant found in
the wild is not patentable subject matter|"

															"[A] new mineral discovered in the earth or a new plant found in
the wild is not patentable subject matter. Likewise, Einstein could
not patent his celebrated law that E=mc^2; nor could Newton have
patented the law of gravity. Such discoveries are 'manifestations
of . . . nature, free to all men and reserved exclusively to
none.'" Diamond v. Chakrabarty, 447 U.S. at 447 U. S. 309 ,
quoting Funk Bros. Seed Co. v. Kalo Inoculant Co., supra at 333 U. S.
130 .

															Our recent holdings in Gottschalk v. Benson, supra, and Parker v. Flook, supra, both of which are
computer-related, stand for no more than these long-established
principles. In Benson, we held unpatentable claims for an
algorithm used to convert binary code decimal numbers to equivalent
pure binary numbers. The sole practical application of the
algorithm was in connection with the programming of a Page 450 U. S. 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.
[ 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 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, [ Footnote
10 ] nor Page 450 U. S. 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 437 U. S.
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
preempt 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 90 hold."
409 U.S. at 409 U. S. 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 437 U. S. 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., 333 U.
S. Seed Page 450 U. S. 188 Co. 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 Stone
explained four decades ago:

															"While a scientific truth, or the mathematical expression of it,
is not a patentable invention, a novel and useful structure created
with the aid of knowledge of scientific truth may be." Mackay Radio & Telegraph Co. v. Radio Corp. of
America, 306 U. S. 86 , 306 U. S. 94 (1939). [ Footnote 11 ]

															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 Page 450 U. S. 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. [ Footnote 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. [ Footnote
13 ] Page 450 U. S. 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:

															"Section 101 sets forth the subject matter that can be patented,
'subject to the conditions and requirements of this title.' The
conditions under which a patent may be obtained follow, and Section 102 covers the conditions relating to
novelty. "

															S.Rep. No.1979, 82d Cong., 2d Sess., 5 (1952) (emphasis
supplied). It is later stated in the same Report:

															"Section 102, in general, may be said to describe the statutory
novelty required for patentability, and includes, Page 450 U. S. 191 in effect, an amplification and definition of 'new' in section
101." Id. at 6. Finally, it is stated in the "Revision
Notes":

															"The corresponding section of [the] existing statute is split
into two sections, section 101 relating to the subject matter for
which patents may be obtained, and section 102 defining statutory
novelty and stating other conditions for patentability." Id. at 17. See also H.R.Rep. No.1923, 82d
Cong., 2d Sess., 6, 7, and 17 (1952).

															In this case, it may later be determined that the respondents'
process is not deserving of patent protection because it fails to
satisfy the statutory conditions of novelty under § 102 or
nonobviousness under § 103. A rejection on either of these grounds
does not affect the determination that respondents' claims recited
subject matter which was eligible for patent protection under §
101. IV 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 post-solution
activity will not transform Page 450 U. S. 192 an unpatentable principle into a patentable process. Ibid. [ Footnote 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 Page 450 U. S. 193 for the molding of rubber products, we affirm the judgment of
the Court of Customs and Patent Appeals. [ Footnote 15 ] It is so ordered. [ 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:

															ln v = CZ + x

															wherein ln v is the natural logarithm of v, the total required
cure time; C is the activation constant, a unique figure for each
batch of each compound being molded, determined in accordance with
rheometer measurements of each batch; Z is the temperature in the
mold; and x is a constant dependent on the geometry of the
particular mold in the press. A rheometer is an instrument to
measure flow of viscous substances.

															[ 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:

															"1. A method of operating a rubber-molding press for precision
molded compounds with the aid of a digital computer,
comprising:"

															"providing said computer with a database for said press,
including at least,"

															"natural logarithm conversion data (ln),"

															"the activation energy constant (C) unique to each batch of said
compound being molded, and"

															"a constant (x) dependent upon the geometry of the particular
mold of the press,"

															"initiating an interval timer in said computer upon the closure
of the press for monitoring the elapsed time of said closure,"

															"constantly determining the temperature (Z) of the mold at a
location closely adjacent to the mold cavity in the press during
molding,"

															"constantly providing the computer with the temperature
(Z),"

															"repetitively calculating in the computer, at frequent intervals
during each cure, the Arrhenius equation for reaction time during
the cure, which is"

															"ln v = CZ + x"

															"where v is the total required cure time,"

															"repetitively comparing in the computer at said frequent
intervals during the cure each said calculation of the total
required cure time calculated with the Arrhenius equation and said
elapsed time, and"

															"opening the press automatically when a said comparison
indicates equivalence."

															"2. The method of claim 1 including measuring the activation
energy constant for the compound being molded in the press with a
rheometer and automatically updating said data base within the
computer in the event of changes in the compound being molded in
said press as measured by said rheometer."

															" * * * *" "11. A method of manufacturing precision molded articles from
selected synthetic rubber compounds in an openable rubber molding
press having at least one heated precision mold, comprising:"

															"(a) heating said mold to a temperature range approximating a
predetermined rubber curing temperature,"

															"(b) installing prepared unmolded synthetic rubber of a known
compound in a molding cavity of predetermined geometry as defined
by said mold,"

															"(c) closing said press to mold said rubber to occupy said
cavity in conformance with the contour of said mold and to cure
said rubber by transfer of heat thereto from said mold,"

															"(d) initiating an interval timer upon the closure of said press
for monitoring the elapsed time of said closure,"

															"(e) heating said mold during said closure to maintain the
temperature thereof within said range approximating said rubber
curing temperature,"

															"(f) constantly determining the temperature of said mold at a
location closely adjacent said cavity thereof throughout closure of
said press,"

															"(g) repetitively calculating at frequent periodic intervals
throughout closure of said press the Arrhenius equation for
reaction time of said rubber to determine total required cure time v as follows:"

															"ln v = cz + x"

															"wherein c is an activation energy constant determined for said
rubber being molded and cured in said press, z is the temperature
of said mold at the time of each calculation of said Arrhenius
equation, and x is a constant which is a function of said
predetermined geometry of said mold,"

															"(h) for each repetition of calculation of said Arrhenius
equation herein, comparing the resultant calculated total required
cure time with the monitored elapsed time measured by said interval
timer,"

															"(i) opening said press when a said comparison of calculated
total required cure time and monitored elapsed time indicates
equivalence, and"

															"(j) removing from said mold the resultant precision molded and
cured rubber article."

															[ Footnote 6 ]

															The word "process" is defined in 35 U.S.C. § 100(b):

															"The term 'process' means process, art or method, and includes a
new use of a known process, machine, manufacture, composition of
matter, or material."

															[ 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 a
patent in our act of congress. It is included under the general
term 'useful art.' An art may require one or more processes or
machines in order to produce a certain result or manufacture. The
term machine includes every mechanical device or combination of
mechanical powers and devices to perform some function and produce
a certain effect or result. But where the result or effect is
produced by chemical action, by the operation or application of
some element or power of nature, or of one substance to another,
such modes, methods, or operations are called processes. A new
process is usually the result of discovery; a machine, of
invention. The arts of tanning, dyeing, making waterproof cloth,
vulcanizing India rubber, smelting ores, and numerous others are
usually carried on by processes, as distinguished from machines.
One may discover a new and useful improvement in the process of
tanning, dyeing, &c. irrespective of any particular form of
machinery or mechanical device. And another may invent a
labor-saving machine by which this operation or process may be
performed, and each may be entitled to his patent. As, for
instance, A has discovered that, by exposing India rubber to a
certain degree of heat, in mixture or connection with certain
metalic salts, he can produce a valuable product, or manufacture;
he is entitled to a patent for his discovery, as a process or
improvement in the art, irrespective of any machine or mechanical
device. B, on the contrary, may invent a new furnace or stove, or
steam apparatus, by which this process may be carried on with much
saving of labor and expense of fuel, and he will be entitled to a
patent for his machine as an improvement in the art. Yet A could
not have a patent for a machine, or B for a process; but each would
have a patent for the means or method of producing a certain
result, or effect, and not for the result or effect produced. It is
for the discovery or invention of some practical method or means of
producing a beneficial result or effect that a patent is granted,
and not for the result or effect itself. It is when the term
process is used to represent the means or method of producing a
result that it is patentable, and it will include all methods or
means which are not effected by mechanism or mechanical
combinations."

															[ Footnote 8 ]

															We note that, as early as 1854, this Court approvingly referred
to patent eligibility of processes for curing rubber. See
id. at 56 U. S. 267 ;
n. 7, supra. In Tilghman v. Proctor, 102 U.
S. 707 (1881), we referred to the original patent
Charles Goodyear received on his process for "vulcanizing" or
curing rubber. We stated:

															"That a patent can be granted for a process there can be no
doubt. The patent law is not confined to new machines and new
compositions of matter, but extends to any new and useful art or
manufacture. A manufacturing process is clearly an art within the
meaning of the law. Goodyear's patent was for a process, namely,
the process of vulcanizing india rubber by subjecting it to a high
degree of heat when mixed with sulphur and a mineral salt. The
apparatus for performing the process was not patented, and was not
material. The patent pointed out how the process could be effected,
and that was deemed sufficient." Id. at 102 U. S.
722 .

															[ Footnote 9 ]

															The term "algorithm" is subject to a variety of definitions. The
petitioner defines the term to mean:

															"'1. A fixed step-by-step procedure for accomplishing a given
result; usually a simplified procedure for solving a complex
problem, also a full statement of a finite number of steps. 2. A
defined process or set of rules that leads [ sic ] and
assures development of a desired output from a given input. A
sequence of formulas and/or algebraic/logical steps to calculate or
determine a given task; processing rules.'"

															Brief for Petitioner in Diamond v. Bradley, O.T. 1980,
No. 79-855, p. 6, n. 12, quoting C. Sippl & R. Sippl, Computer
Dictionary and Handbook 23 (2d ed.1972). This definition is
significantly broader than the definition this Court employed in Benson and Flook. Our previous decisions
regarding the patentability of "algorithms" are necessarily limited
to the more narrow definition employed by the Court, and we do not
pass judgment on whether processes falling outside the definition
previously used by this Court, but within the definition offered by
the petitioner, would be patentable subject matter.

															[ 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 437 U. S. 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 , 333 U. S. 130 (1948):

															"He who discovers a hitherto unknown phenomenon of nature has no
claim to a monopoly of it which the law recognizes. If there is to
be invention from such a discovery, it must come from the
application of the law of nature to a new and useful end."

															Although we were dealing with a "product" claim in Funk
Bros., the same principle applies to a process claim. Gottschalk v. Benson, 409 U. S. 63 , 409 U. S. 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:

															"A person shall be entitled to a patent unless --"

															"(a) the invention was known or used by others in this country,
or patented or described in a printed publication in this or a
foreign country, before the invention thereof by the applicant for
patent, or"

															"(b) the invention was patented or described in a printed
publication in this or a foreign country or in public use or on
sale in this country more than one year prior to the date of the
application for patent in the United States, or"

															"(c) he has abandoned the invention, or"

															"(d) the invention was first patented or caused to be patented,
or was the subject of an inventor's certificate, by the applicant
or his legal representatives or assigns in a foreign country prior
to the date of the application for patent in this country on an
application for patent or inventor's certificate filed more than
twelve months before the filing of the application in the United
States, or"

															"(e) the invention was described in a patent granted on an
application for patent by another filed in the United States before
the invention thereof by the applicant for patent, or on an
international application by another who has fulfilled the
requirements of paragraphs (1), (2), and (4) of section 371(c) of
this title before the invention thereof by the applicant for
patent, or"

															"(f) he did not himself invent the subject matter sought to be
patented, or"

															"(g) before the applicant's invention thereof the invention was
made in this country by another who had not abandoned, suppressed,
or concealed it. In determining priority of invention there shall
be considered not only the respective dates of conception and
reduction to practice of the invention, but also the reasonable
diligence of one who was first to conceive and last to reduce to
practice, from a time prior to conception by the other."

															[ 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 437 U. S. 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
preempted, 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 post-solution 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 450 U. S.
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 450 U. S. 213 .
Respondents' claims, however, are not limited to the isolated step
of "programming a digital computer." Rather, respondents' claims
describe a process of curing rubber beginning with the loading of
the mold and ending with the opening of the press and the
production of a synthetic rubber product that has been perfectly
cured -- a result heretofore unknown in the art. See n 5, supra. The fact
that one or more of the steps in respondents' process may not, in
isolation, be novel or independently eligible for patent protection
is irrelevant to the question of whether the claims as a whole
recite subject matter eligible for patent protection under
§ 101. As we explained when discussing machine patents in Deepsouth Packing Co. v. Laitram Corp., 406 U.
S. 518 (1972):

															"The patents were warranted not by the novelty of their
elements, but by the novelty of the combination they represented.
Invention was recognized because Laitram's assignors combined
ordinary elements in an extraordinary way -- a novel union of old
means was designed to achieve new ends. Thus, for both inventions,
'the whole in some way exceed[ed] the sum of its parts.' Great
A. & 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 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 Page 450 U. S. 194 to have discovered. The Court's decision in this case rests on a
misreading of the Diehr and Lutton patent application. Moreover,
the Court has compounded its error by ignoring the critical
distinction between the character of the subject matter that the
inventor claims to be novel -- the § 101 issue -- and the question
whether that subject matter is in fact novel -- the § 102
issue. I Before discussing the major flaws in the Court's opinion, a word
of history may be helpful. As the Court recognized in Parker v.
Flook, 437 U. S. 584 , 437 U. S. 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. [ Footnote 2/1 ]
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. [ Footnote 2/2 ] It
was 1968 before Page 450 U. S. 195 the federal courts squarely addressed the subject, [ Footnote 2/3 ] and 1972 before this Court
announced its first decision in the area. [ Footnote 2/4 ]

															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). [ Footnote 2/5 ] The doctrine was regularly
invoked to deny patents to inventions consisting primarily of
mathematical formulae or methods of computation. [ Footnote 2/6 ] 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 Page 450 U. S. 196 could 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 a
description of the function of a machine was unpatentable. This
doctrine had its origin in several 19th-century decisions of this
Court, [ Footnote 2/8 ] and it had
been consistently followed thereafter by the lower federal courts.
[ Footnote 2/9 ] Page 450 U. S. 197 Finally, 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 patentable
process must cause a physical transformation in the materials to
which the process is applied. See ante at 450 U. S.
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. [ Footnote
2/10 ] 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.
[ Footnote 2/11 ] The Patent Office
indicated, however, Page 450 U. S. 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. [ Footnote 2/12 ] Shortly thereafter, a similar Page 450 U. S. 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. [ Footnote 2/13 ] 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. [ Footnote 2/14 ] Page 450 U. S. 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. [ Footnote 2/15 ] 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 Page 450 U. S. 201 after Prater and Bernhart. [ Footnote 2/16 ] 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). [ Footnote 2/17 ] 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. [ Footnote 2/18 ] 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 409 U. S. 67 ,
are not patentable processes within the meaning of § 101. Page 450 U. S. 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
recordkeeping machine system which comprised a programmed digital
computer was patentable subject matter under § 101. Id. at
771. The majority dismissed Benson with the observation
that Benson involved only process, not apparatus, claims.
502 F.2d at 771. Judge Rich dissented, arguing that to limit Benson only to process claims would make patentability
turn upon the form in which a program invention was claimed. 502
F.2d at 773-774. [ Footnote 2/19 ]
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 Page 450 U. S. 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 preempt all uses of an algorithm or
mathematical formula. 545 F.2d at 156, 158-159. [ Footnote 2/20 ] 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 preempt the
algorithm itself. One of the cases adopting this view was In re
Flook, 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, 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 preempt 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). Page 450 U. S. 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
preempted an algorithm or amounted to a patent on the algorithm
itself. 437 U.S. at 437 U. S.
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 437 U. S. 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 437 U. S.
591 -595. [ Footnote
2/22 ]

															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. [ Footnote 2/23 ] In subsequent cases, the court
construed Page 450 U. S. 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. [ Footnote 2/24 ]
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. II As I stated at the outset, the starting point in the proper
adjudication of patent litigation is an understanding of what the
inventor claims to have discovered. Indeed, the outcome of such
litigation is often determined by the judge's understanding of the
patent application. This is such a case.

															In the first sentence of its opinion, the Court states the
question presented as "whether a process for curing synthetic
rubber . . . is patentable subject matter." Ante at 450 U. S. 177 .
Of course, that question was effectively answered many years ago
when Charles Goodyear obtained his patent on the vulcanization
process. [ Footnote 2/25 ] The
patent application filed by Diehr Page 450 U. S. 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.
[ Footnote 2/26 ] As I read the
claims, their discovery is an Page 450 U. S. 207 improved method of calculating the time that the mold should
remain closed during the curing process. [ Footnote 2/27 ] 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.
[ Footnote 2/28 ] Second, since
devices for constantly Page 450 U. S. 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. [ Footnote 2/29 ] 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. [ Footnote 2/30 ] Nor
does the Page 450 U. S. 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. [ Footnote 2/31 ] Page 450 U. S. 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. [ Footnote 2/32 ] What I believe Page 450 U. S. 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. [ Footnote 2/33 ] III The Court misapplies Parker v. Flook because, like the
Court of Customs and Patent Appeals, it fails to understand or
completely disregards the distinction between the subject matter of
what the inventor claims to have discovered -- the § 101 issue --
and the question whether that claimed discovery is in fact novel --
the § 102 issue. [ Footnote 2/34 ]
If there is not even a Page 450 U. S. 212 claim that anything constituting patentable subject matter has
been discovered, there is no occasion to address the novelty issue.
[ Footnote 2/35 ] 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.
[ Footnote 2/36 ] It seems clear to
me that Diehr and Page 450 U. S. 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. [ Footnote 2/37 ] 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 Glottschalk v. Benson, 409 U. S.
63 (1972), and in Page 450 U. S. 214 Parker v. Flook, 437 U. S. 584 (1978), [ Footnote 2/38 ] 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 Page 450 U. S. 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 post-solution
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 post-solution
activity 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 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.
[ Footnote 2/39 ]

															In Gottschalk v. Benson, we held that a program for
the Page 450 U. S. 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
post-solution 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 450 U. S.
179 -180, n. 5. In my opinion, it equally requires
rejection of Claim 11, because the pre-solution activity described
in that claim is admittedly a familiar part of the prior art.
[ Footnote 2/40 ]

															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
[ Footnote 2/41 ] -- 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. IV The broad question whether computer programs should be given
patent protection involves policy considerations that Page 450 U. S. 217 this 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 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, [ Footnote 2/42 ] commentators have noted
that "this industry is growing by leaps and bounds without it."
[ Footnote 2/43 ] In addition,
even Page 450 U. S. 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. [ Footnote 2/44 ]

															Within the Federal Government, pattern 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. [ Footnote 2/45 ] 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. [ Footnote 2/46 ] Page 450 U. S. 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." [ Footnote
2/47 ] Because Page 450 U. S. 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 2/1 ]

															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 2/2 ]

															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.J., 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 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 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 2/4 ] See Gottschalk v. Benson, 409 U. S.
63 (1972) .

															[ Footnote 2/5 ] 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 2/6 ] See, e.g., Don Lee, Inc. v. Walker, 61 F.2d 58, 67 (CA9
1932); In re Bolonaro, 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 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 other
grounds, 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, 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 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 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 , 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 (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 2/10 ]

															The Commission's report contained the following evaluation of
the current state of the law with respect to computer program
patentability:

															"Uncertainty now exists as to whether the statute permits a
valid patent to be granted on programs. Direct attempts to patent
programs have been rejected on the ground of nonstatutory subject
matter. Indirect attempts to obtain patents and avoid the
rejection, by drafting claims as a process, or a machine or
components thereof programmed in a given manner, rather than as a
program itself, have confused the issue further, and should not be
permitted."

															Report of the President's Commission on the Patent System, "To
Promote the Progress of . . . Useful Arts" in an Age of Exploding
Technology 14 (1966).

															[ 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 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 2/13 ]

															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 2/14 ]

															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 2/15 ]

															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 2/16 ]

															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 2/17 ]

															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 2/18 ]

															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, 450
U.S. 175 fn2/2|>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 2/19 ]

															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 2/20 ]

															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 2/21 ] 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 2/22 ]

															This form of claim analysis did not originate with Flook. Rather, the Court derived it from the landmark
decision 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 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. 450
U.S. 175 fn2/13|>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 2/23 ]

															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. 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 2/24 ] 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 2/25 ]

															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 india rubber by subjecting it to a high
degree of heat when mixed with sulphur and a mineral salt."

															" * * * *" "The mixing of certain substances together, or the heating of a
substance to a certain temperature, is a process." Tilghman v. Proctor, 102 U. S. 707 , 102 U. S. 722 ,
728 (1881). See also Corning v.
Burden , 15 How. 252, 56 U. S. 267 (1854). Modern rubber curing methods apparently still are based in
substantial part upon the concept discovered by Goodyear:

															"Since the day 120 years ago when Goodyear first heated a
mixture of rubber and sulphur on a domestic stove and so discovered
vulcanisation, this action of heat and sulphur has remained the
standard method of converting crude rubber, with all its
limitations, into a commercially usable product, giving it the
qualities of resistance to heat and cold in addition to
considerable mechanical strength."

															"Goodyear also conjured up the word 'cure' for vulcanisation,
and this has become the recognised term in production circles."

															Mernagh, Practical Vulcanisation, in The Applied Science of
Rubber 1053 (W. Naunton ed.1961). See generally Kimmich,
Making Rubber Products for Engineering Uses, in Engineering Uses of
Rubber 18, 28-34 (A. McPherson & A. Klemin eds.1956)

															[ Footnote 2/26 ]

															"Respondents characterize their contribution to the art to
reside in the process of constantly measuring the actual
temperature inside the mold." See ante at 450 U. S.
178 .

															[ Footnote 2/27 ]

															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 2/28 ]

															In the portion of the patent application entitled "Abstract of
the Disclosure," the following reference to monitoring the
temperature is found:

															"An interval timer starts running from the time of mold closure,
and the temperature within the mold cavity is measured often,
typically every ten seconds. The temperature is fed to a computer.
. . ."

															App. to Pet.for Cert. 38a. In the portion of the application
entitled "Background of the Invention," the following statement is
found:

															"By accurate and constant calculation and recalculation of the
correct mold time under the temperatures actually present in the
mold, the material can be cured accurately, and can be relied upon
to produce very few rejections, perhaps completely eliminating all
rejections due to faulty mold cure." Id. at 41a. And, in the "Summary of the Invention,"
this statement appears:

															"A surveillance system is maintained over the mold to determine
the actual mold temperature substantially continuously, for
example, every ten seconds, and to feed that information to the
computer along with the pertinent stored data and along with the
elapsed time information." Ibid. Finally, in a description of a simple
hypothetical application using the invention described in Claim 1,
this is the reference to the temperature reading device:

															"Thermocouples, or other temperature detecting devices located
directly within the mold cavity may read the temperature at the
surface where the molding compound touches the mold, so that it
actually gets the temperature of the material at that surface." Id. at 45a.

															[ Footnote 2/29 ] Id. at 24a.

															[ Footnote 2/30 ]

															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:

															"Vulcanisation is too important an operation to be left to human
control, however experienced and conscientious. Instrumentation
makes controlled cure possible, and, in consequence, instrument
engineering is a highly important function in the modern rubber
factory, skilled attention being necessary not only in the
maintenance of the instruments, but also in their siting. There are
instruments available which will indicate, record or control all
the services involved in vulcanisation, including time, temperature
and pressure, and are capable of setting in motion such operations
as the opening and closing of moulds and, in general, will control
any process variable which is capable of being converted into an
electric charge or pneumatic or hydraulic pressure impulse."

															Mernagh, supra, 450
U.S. 175 fn2/25|>n. 25, at 1091-1092.

															[ Footnote 2/31 ]

															Commentators critical of the Flook decision have noted
the essential similarity of the two inventions:

															"The Diehr invention improved the control system by
continually remeasuring the temperature and recalculating the
proper cure time. The computer would simultaneously keep track of
the elapsed time. When the elapsed time equalled the proper cure
time, the rubber would be released automatically from the
mold."

															"The facts are difficult to distinguish from those in Flook. Both processes involved (1) an initial calculation,
(2) continual remeasurement and recalculation, and (3) some control
use of the value obtained from the calculation."

															Novick & Wallenstein, supra, 450
U.S. 175 fn2/5|>n. 5, at 326 (footnotes omitted) .

															[ Footnote 2/32 ]

															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, 450
U.S. 175 fn2/15|>n. 15, at 502-503 (footnote omitted), the
authors of a recent article on the subject observe that the Court
of Customs and Patent Appeals' analysis in this case "lends itself
to an interesting exercise in claim drafting." Id. at 505.
To illustrate their point, the authors redrafted the Diehr and
Lutton claims into the format employed in the Flook application:

															"An improved method of calculating the cure time of a rubber
molding process utilizing a digital computer comprising the steps
of:"

															"a. inputting into said computer input values including"

															"1. natural logarithm conversion data ([l]n),"

															"2. an activation energy constant (C) unique to each batch of
rubber being molded,"

															"3. a constant (X) dependent upon the geometry of the particular
mold of the press, and"

															"4. continuous temperature values (Z) of the mold during
molding;"

															"b. operating said computer for"

															"1. counting the elapsed cure time,"

															"2. calculating the cure time from the input values using the
Arrhenius equation [l]n V = CZ + X, where V is the total cure time,
and"

															"c. providing output signals from said computer when said
calculated cure time is equal to said elapsed cure time." Ibid. The authors correctly conclude that even the
lower court probably would have found that this claim was drawn to
unpatentable subject matter under § 101. Id. at
505-506.

															[ Footnote 2/33 ]

															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 450 U. S. 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 2/34 ]

															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
with its expansive reading of § 101 in Tarczy-Hornoch,
Prater, and their progeny.

															[ Footnote 2/35 ]

															The Court's opinion in Flook itself pointed out this
distinction:

															"The obligation to determine what type of discovery is sought to
be patented must precede the determination of whether that
discovery is, in fact, new or obvious."

															437 U.S. at 437 U. S. 593 .
As the Court of Customs and Patent Appeals noted in this case, "for
the claim to be statutory, there must be some substance to it other
than the recitation and solution of the equation or formula." 602
F.2d at 988. See Comment, 62 J.Pat.Off.Soc., supra 450
U.S. 175 fn2/22|>n. 22, at 522-523.

															[ Footnote 2/36 ]

															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 450 U. S.
188 -191, 450 U. S. 193 , 450
U.S. 175 fn2/15|>n. 15. Rather than directing its attention
to the applicants' claimed discovery, the Court instead focuses
upon the general industrial context in which the applicants intend
their discovery to be used. Implicit in this interpretation of the
patent application is the assumption that, as long as the claims
describe a specific implication of the applicants' discovery,
patentable subject matter is defined. This assumption was expressly
rejected in Flook: "This assumption is based on respondent's narrow reading of Benson, and is as untenable in the context of § 101 as it
is in the context of that case. It would make the determination of
patentable subject matter depend simply on the draftsman's art, and
would ill-serve the principles underlying the prohibition against
patents for 'ideas' or phenomena of nature. The rule that the
discovery of a law of nature cannot be patented rests not on the
notion that natural phenomena are not processes, but rather on the
more fundamental understanding that they are not the kind of
'discoveries' that the statute was enacted to protect."

															437 U.S. at 437 U. S. 593 (footnote omitted).

															[ Footnote 2/37 ]

															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."

															" * * * *" "A standard digital computer may be employed in this method. It
has a data storage bank of suitable size which, of course, may vary
when many molds are used and when more refinements are employed.
However, Fig. 1 shows a relatively simple case which achieves
results that are vast improvements over what has been done up to
now. . . ."

															"The data bank of the computer is provided with a digital input
into which the time-temperature cure data for the compound involved
is fed, as shown in Fig. 1. All the data is available to the
computer upon call, by random access, and the call can be
automatic, depending upon the temperature actually involved. In
other words, the computer, over and over, questions the data
storage, asking, what is the proper time of cure for the following
summation of temperatures? The question may be asked each second,
and the answer is readily provided."

															" * * * *" "Recalculation continues until the time that has elapsed since
mold closure corresponds with the calculated time. Then, the
computer actuates the mold-opening device and the mold is
automatically opened."

															App. to Pet. for Cert. 43a-45a. The Figure 1 referred to in the
application is as follows:

															bwm:

															____________________ ___________________
__________________________

															|Arrhenius Reaction| |Actual Mold | |Compares Calculated
Cure|

															|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 the
following paragraph:

															"The patent sought is on a method of programming a general
purpose digital computer to convert signals from binary-coded
decimal form into pure binary form. A procedure for solving a given
type of mathematical problem is known as an 'algorithm.' The
procedures set forth in the present claims are of that kind; that
is to say, they are a generalized formulation for programs to solve
mathematical problems of converting one form of numerical
representation to another. From the generic formulation, programs
may be developed as specific applications."

															409 U.S. at 409 U. S.
65 .

															[ Footnote 2/39 ]

															In Flook, the Court's analysis of the post-solution
activity recited in the patent application turned not on the
relative significance of that activity in the catalytic conversion
process, but rather on the fact that that activity was not a part
of the applicant's discovery:

															"The notion that post-solution activity, no matter how
conventional or obvious in itself, can transform an unpatentable
principle into a patentable process exalts form over substance. A
competent draftsman could attach some form of post-solution
activity to almost any mathematical formula; the Pythagorean
theorem would not have been patentable, or partially patentable,
because a patent application contained a final step indicating that
the formula, when solved, could be usefully applied to existing
surveying techniques. The concept of patentable subject matter
under § 101 is not 'like a nose of wax which may be turned and
twisted in any direction. . . .' White v. Dunbar, 119 U. S.
47 , 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 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 2/41 ]

															This well established precedent was reviewed in Parker v.
Flook: " Mackay Radio and Funk Bros. point to the
proper analysis for this case: the process itself, not merely the
mathematical algorithm, must be new and useful. Indeed, the novelty
of the mathematical algorithm is not a determining factor at all.
Whether the algorithm was, in fact, known or unknown at the time of
the claimed invention, as one of the 'basic tools of scientific and
technological work,' see Gottschalk v. Benson, 409 U.S. at 409 U. S. 67 , it is treated as
though 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 Service
Organizations, appearing as amicus curiae in Flook, made the following policy argument:

															"The need of the incentive of patents for software is at least
as great as that of the incentive available for hardware, because:
'Today, providing computer software involves greater . . . risk
than providing computer . . . hardware. . . .'"

															"To a financial giant, the economic value of a patent may not
loom large; to the small software products companies upon which the
future of the development of quality software depends, the value of
the patent in financing a small company may spell the difference
between life and death. To banks and financial institutions, the
existence of a patent or even the potentiality of obtaining one may
well be a decisive factor in determining whether a loan should be
granted. To prospective investors, a patent or the possibility of
obtaining one may be the principal element in the decision whether
to invest."

															"Making clear that patents may be available for inventions in
software would unleash important innovative talent. It would have
the direct opposite effect forecast by the . . . hardware
manufacturers; it would enable competition with those companies and
provide the needed incentive to stimulate innovation."

															Brief for ADAPSO as Amicus Curiae in Parker v.
Flook, O.T. 1977, No. 77-642, P. 44 (footnote omitted).

															[ Footnote 2/43 ]

															Gemignani, supra, 450
U.S. 175 fn2/1|>n. 1, at 309. In a footnote to that comment,
Professor Gemignani added that the rate of growth of the software
industry "has been even faster lately than that of the hardware
industry, which does enjoy patent protections." Id. at
309, n. 259. Other commentators are in accord. See Nycum,
Legal Protection for Computer Programs, 1 Computer L.J. 1, 55-58
(1978); Note, Protection of Computer Programs: Resurrection of the
Standard, 50 Notre Dame Law. 333, 344 (1974).

															[ Footnote 2/44 ] See, e.g., Gemignani, supra, 450
U.S. 175 fn2/1|>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 Patent
System when it recommended against patent protection for computer
programs. In its report, the President's Commission stated:

															"The Patent Office now cannot examine applications for programs
because of the lack of a classification technique and the requisite
search files. Even if these were available, reliable searches would
not be feasible or economic, because of the tremendous volume of
prior art being generated. Without this search, the patenting of
programs would be tantamount to mere registration, and the
presumption of validity would be all but nonexistent."

															Report of the President's Commission, supra, 450
U.S. 175 fn2/10|>n. 10, at 13.

															[ Footnote 2/46 ]

															It is noteworthy that the position of the Court of Customs and
Patent Appeals in the process patent area had been consistent with
that of the Commissioner of Patents and Trademarks for decades
prior to 1968. As discussed in 450 U. S. supra, in that year, the court rejected two longstanding
doctrines that would have foreclosed patentability for most
computer programs under § 101.

															[ Footnote 2/47 ]

															A number of authorities have drawn the conclusion that the terms
are, in fact, synonymous. See, e.g., Novick &
Wallenstein, supra, 450
U.S. 175 fn2/5|>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.
Satani, Fundamentals of Computer Algorithms 2 (1978); A. Tanenbaum,
Structured Computer Organization 10 (1976). Cf. Blumenthal
& Riter, supra, 450
U.S. 175 fn2/15|>n. 15, at 455-456; Gemignani, supra, 450
U.S. 175 fn2/1|>n. 1, at 271-273, 276, n. 37.