U.S. Supreme Court Parker v. Flook, 437
U.S. 584 (1978) Parker v. Flook No. 77-642 Argued April 25, 1978 Decided June 22, 1978 437
U.S. 584 CERTIORARI TO THE COURT OF CUSTOMS
AND PATENT APPEALS Syllabus Respondent's method for updating alarm limits during catalytic
conversion processes, in which the only novel feature is a
mathematical formula, held not patentable under § 101 of the Patent
Act. The identification of a limited category of useful, though
conventional, post-solution applications of such a formula does not
make the method eligible for patent protection, since, assuming the
formula to be within prior art, as it must be, O'Reilly v.
Morse , 15 How. 62, respondent's application
contains no patentable invention. The chemical processes involved
in catalytic conversion are well known, as are the monitoring of
process variables, the use of alarm limits to trigger alarms, the
notion that alarm limit values must be recomputed and readjusted,
and the use of computers for "automatic process monitoring." Pp. 437 U. S.
588 -596.

															559 F.2d 21, reversed.

															STEVENS, J., delivered the opinion of the Court, in which
BRENNAN, WHITE, MARSHALL, BLACKMUN, and POWELL, JJ., joined.
STEWART, J., filed a dissenting opinion, in which BURGER, C.J., and
REHNQUIST, J., joined, post, p. 437 U. S.
598 . Page 437 U. S. 585 MR. JUSTICE STEVENS delivered the opinion of the Court.

															Respondent applied for a patent on a "Method for Updating Alarm
Limits." The only novel feature of the method is a mathematical
formula. In Gottschalk v. Benson, 409 U. S.
63 , we held that the discovery of a novel and useful
mathematical formula may not be patented. The question in this case
is whether the identification of a limited category of useful,
though conventional, post-solution applications of such a formula
makes respondent's method eligible for patent protection. I An "alarm limit" is a number. During catalytic conversion
processes, operating conditions such as temperature, pressure, and
flow rates are constantly monitored. When any of these "process
variables" exceeds a predetermined "alarm limit," an alarm may
signal the presence of an abnormal condition indicating either
inefficiency or perhaps danger. Fixed alarm limits may be
appropriate for a steady operation, but during transient operating
situations, such as start-up, it may be necessary to "update" the
alarm limits periodically.

															Respondent's patent application describes a method of updating
alarm limits. In essence, the method consists of three steps: an
initial step which merely measures the present value of the process
variable ( e.g., the temperature); an intermediate step
which uses an algorithm [ Footnote
1 ] to calculate an updated alarm limit value; and a final step
in which the actual alarm limit is adjusted to the updated value.
[ Footnote 2 ] The only
difference Page 437 U. S. 586 between the conventional methods of changing alarm limits and
that described in respondent's application rests in the second step
-- the mathematical algorithm or formula. Using the formula, an
operator can calculate an updated alarm limit once he knows 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
weighting factor to be used to average the original alarm base and
the current temperature.

															The patent application does not purport to explain how to select
the appropriate margin of safety, the weighting factor, or any of
the other variables. Nor does 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. Although the computations can be
made by pencil and paper calculations, the abstract of disclosure
makes it clear that the formula is primarily useful for
computerized calculations producing automatic adjustments in alarm
settings. [ Footnote 3 ]

															The patent claims cover any use of respondent's formula for
updating the value of an alarm limit on any process variable
involved in a process comprising the catalytic chemical conversion
of hydrocarbons. Since there are numerous processes of that kind in
the petrochemical and oil-refining industries, [ Footnote 4 ] the claims cover a broad range of
potential uses of the method. They do not, however, cover every
conceivable application of the formula. Page 437 U. S. 587 II The patent examiner rejected the application. He found that the
mathematical formula constituted the only difference between
respondent's claims and the prior art, and therefore a patent on
this method "would, in practical effect, be a patent on the formula
or mathematics itself." [ Footnote
5 ] The examiner concluded that the claims did not describe a
discovery that was eligible for patent protection.

															The Board of Appeals of the Patent and Trademark Office
sustained the examiner's rejection. The Board also concluded that
the "point of novelty in [respondent's] claimed method" [ Footnote 6 ] lay in the formula or
algorithm described in the claims, a subject matter that was
unpatentable under Benson, supra. The Court of Customs and Patent Appeals reversed. In re
Flook, 559 F.2d 21. It read Benson as applying only
to claims that entirely preempt a mathematical formula or
algorithm, and noted that respondent was only claiming on the use
of his method to update alarm limits in a process comprising the
catalytic chemical conversion of hydrocarbons. The court reasoned
that, since the mere solution of the algorithm would not constitute
infringement of the claims, a patent on the method would not
preempt the formula.

															The Acting Commissioner of Patents and Trademarks filed a
petition for a writ of certiorari, urging that the decision of the
Court of Customs and Patent Appeals will have a debilitating effect
on the rapidly expanding computer "software" industry, [ Footnote 7 ] and will require him to
process thousands of additional Page 437 U. S. 588 patent applications. Because of the importance of the question,
we granted certiorari, 434 U.S. 1033. III This case turns entirely on the proper construction of § 101 of
the Patent Act, which describes the subject matter that is eligible
for patent protection. [ Footnote
8 ] It does not involve the familiar issues of novelty and
obviousness that routinely arise under §§ 102 and 103 when the
validity of a patent is challenged. For the purpose of our
analysis, we assume that respondent's formula is novel and useful,
and that he discovered it. We also assume, since respondent does
not challenge the examiner's finding, that the formula is the only
novel feature of respondent's method. The question is whether the
discovery of this feature makes an otherwise conventional method
eligible for patent protection.

															The plain language of § 101 does not answer the question. It is
true, as respondent argues, that his method is a "process" in the
ordinary sense of the word. [ Footnote 9 ] But that was also true of the algorithm, which
described a method for converting binary-coded decimal numerals
into pure binary numerals, Page 437 U. S. 589 that was involved in Gottschalk v. Benson. The holding
that the discovery of that method could not be patented as a
"process" forecloses a purely literal reading of § 101. [ Footnote 10 ] Reasoning that an
algorithm, or mathematical formula, is like a law of nature, Benson applied the established rule that a law of nature
cannot be the subject of a patent. Quoting from earlier cases, we
said:

															"'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 . Phenomena of nature, though just discovered, mental
processes, and abstract intellectual concepts are not patentable,
as they are the basic tools of scientific and technological
work."

															409 U.S. at 409 U. S.
67 .

															The line between a patentable "process" and an unpatentable
"principle" is not always clear. Both are "conception[s] of the
mind, seen only by [their] effects when being executed or
performed." Tilghman v. Proctor, 102 U.
S. 707 , 102 U. S. 728 .
In Benson, we concluded that the process application in
fact sought to patent an idea, noting that

															"[t]he mathematical formula involved here has no substantial
practical application except in connection with a digital computer,
which means that, if the judgment below is affirmed, the patent
would wholly preempt the mathematical formula and, in practical
effect, would be a patent on the algorithm itself."

															409 U.S. at 409 U. S.
71 -72.

															Respondent correctly points out that this language does not
apply to his claims. He does not seek to "wholly preempt the
mathematical formula," since there are uses of his Page 437 U. S. 590 formula outside the petrochemical and oil refining industries
that remain in the public domain. And he argues that the presence
of specific "post-solution" activity -- the adjustment of the alarm
limit to the figure computed according to the formula --
distinguishes this case from Benson and makes his process
patentable. We cannot agree.

															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. [ Footnote
11 ] 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 .

															Yet it is equally clear that a process is not unpatentable
simply because it contains a law of nature or a mathematical
algorithm. See Eibel Process Co. v. Minnesota Ontario Paper
Co., 261 U. S. 45 ; Tilghman v. Proctor, supra. [ Footnote 12 ] For Page 437 U. S. 591 instance, in Mackay Radio & Telegraph Co. v. Radio Corp.
of America, 306 U. S. 86 , the
applicant sought a patent on a directional antenna system in which
the wire arrangement was determined by the logical application of a
mathematical formula. Putting the question of patentability to one
side as a preface to his analysis of the infringement issue, Mr.
Justice Stone, writing for the Court, explained:

															"While a scientific truth, or the mathematical expression of it,
is not patentable invention, a novel and useful structure created
with the aid of knowledge of scientific truth may be." Id. at 306 U. S.
94 . Funk Bros. Seed Co. v. Kalo Co., 333 U.
S. 127 , 333 U. S. 130 ,
expresses a similar approach:

															"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." 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, Page 437 U. S. 592 409 U.S. at 409 U. S. 67 , it
is treated as though it were a familiar part of the prior art.

															This is also the teaching of our landmark decision in O'Reilly v.
Morse , 15 How. 62. In that case, the Court rejected
Samuel Morse's broad claim covering any use of electromagnetism for
printing intelligible signs, characters, or letters at a distance. Id. at 56 U. S.
112 -121. In reviewing earlier cases applying the rule
that a scientific principle cannot be patented, the Court placed
particular emphasis on the English case of Neilson v.
Harford, Web.Pat.Cases 295, 371 (1844), which involved the
circulation of heated air in a furnace system to increase its
efficiency. The English court rejected the argument that the patent
merely covered the principle that furnace temperature could be
increased by injecting hot air, instead of cold into the furnace.
That court's explanation of its decision was relied on by this
Court in Morse: "'It is very difficult to distinguish it [the Neilson patent]
from the specification of a patent for a principle, and this at
first created in the minds of the court much difficulty; but after
full consideration, we think that the plaintiff does not merely
claim a principle, but a machine, embodying a principle, and a very
valuable one. We think the case must be considered as if the
principle being well known, the plaintiff had first invented a mode
of applying it. . . . '"

															15 How. at 56 U. S. 115 (emphasis added). [ Footnote
13 ] We think this case must also be considered as if the
principle or mathematical formula were well known.

															Respondent argues that this approach improperly imports into §
101 the considerations of "inventiveness" which are the proper
concerns of §§ 102 and 103. [ Footnote 14 ] This argument is based on two fundamental
misconceptions. Page 437 U. S. 593 First, respondent incorrectly assumes that, if a process
application implements a principle in some specific fashion, it
automatically falls within the patentable subject matter of § 101
and the substantive patentability of the particular process can
then be determined by the conditions of §§ 102 and 103. 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. [ Footnote 15 ] 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.

															Second, respondent assumes that the fatal objection to his
application is the fact that one of its components -- the
mathematical Page 437 U. S. 594 formula -- consists of unpatentable subject matter. In
countering this supposed objection, respondent relies on opinions
by the Court of Customs and Patent Appeals which reject the
notion

															"that a claim may be dissected, the claim components searched in
the prior art, and, if the only component found novel is outside
the statutory classes of invention, the claim may be rejected under
35 U.S.C. § 101." In re Chatfield, 545 F.2d 152, 15 (CCPA 1976).
[ Footnote 16 ] Our approach
to respondent's application is, however, not at all inconsistent
with the view that a patent claim must be considered as a whole.
Respondent's process is unpatentable under § 101 not because it
contains a mathematical algorithm as one component, but because,
once that algorithm is assumed to be within the prior art, the
application, considered as a whole, contains no patentable
invention. Even though a phenomenon of nature or mathematical
formula may be well known, an inventive application of the
principle may be patented. Conversely, the discovery of such a
phenomenon cannot support a patent unless there is some other
inventive concept in its application.

															Here it is absolutely clear that respondent's application
contains no claim of patentable invention. The chemical processes
involved in catalytic conversion of hydrocarbons are well known, as
are the practice of monitoring the chemical process variables, the
use of alarm limits to trigger alarms, the notion that alarm limit
values must be recomputed and readjusted, and the use of computers
for "automatic monitoring alarming." [ Footnote 17 ] Respondent's application simply provides a
new and presumably better method for calculating alarm limit Page 437 U. S. 595 values. If we assume that that method was also known, as we must
under the reasoning in Morse, then respondent's claim is,
in effect, comparable to a claim that the formula 2�r can be
usefully applied in determining the circumference of a wheel.
[ Footnote 18 ] As the Court
of Customs and Patent Appeals has explained,

															"if a claim is directed essentially to a method of calculating,
using a mathematical formula, even if the solution is for a
specific purpose, the claimed method is nonstatutory." In re Richman, 563 F.2d 1026, 1030 (1977).

															To a large extent, our conclusion is based on reasoning derived
from opinions written before the modern business of developing
programs for computers was conceived. The youth of the industry may
explain the complete absence of precedent supporting patentability.
Neither the dearth of precedent nor this decision should therefore
be interpreted as reflecting a judgment that patent protection of
certain novel and useful computer programs will not promote the
progress of science and the useful arts, or that such protection is
undesirable as a matter of policy. Difficult questions of policy
concerning the kinds of programs that may be appropriate for patent
protection and the form and duration of such protection can be
answered by Congress on the basis of current empirical data not
equally available to this tribunal. [ Footnote 19 ] Page 437 U. S. 596 It is our duty to construe the patent statutes as they now read,
in light of our prior precedents, and we must proceed cautiously
when we are asked to extend patent rights into areas wholly
unforeseen by Congress. As MR. JUSTICE WHITE explained in writing
for the Court in Deepsouth Packing Co. v. Latram Corp., 406 U. S. 518 , 406 U. S.
531 :

															"[W]e should not expand patent rights by overruling or modifying
our prior cases construing the patent statutes unless the argument
for expansion of privilege is based on more than mere inference
from ambiguous statutory language. We would require a clear and
certain signal from Congress before approving the position of a
litigant who, as respondent here, argues that the beachhead of
privilege is wider, and the area of public use narrower, than
courts had previously thought. No such signal legitimizes
respondent's position in this litigation."

															The judgment of the Court of Customs and Patent Appeals is

															Reversed.

															| 437
U.S. 584 app| APPENDIX TO OPINION OF THE COURT Claim 1 of the patent describes the method as follows:

															"1. A method for updating the value of at least one alarm limit
on at least one process variable involved in a process comprising
the catalytic chemical conversion of hydrocarbons wherein said
alarm limit has a current value of"

															" Bo + K" "wherein Bo is the current alarm base and K is a predetermined
alarm offset which comprises: " Page 437 U. S. 597 "(1) Determining the present value of said process variable,
said present value being defined as PVL;"

															"(2) Determining a new alarm base B1, using the following
equation:"

															" B1=Bo(1.0-F) + PVL(F)" "where F is a predetermined number greater than zero and less
than 1.0;"

															"(3) Determining an updated alarm limit which is defined as B1 +
K; and thereafter"

															"(4) Adjusting said alarm limit to said updated alarm limit
value."

															App. 63A.

															In order to use respondent's method for computing a new limit,
the operator must make four decisions. Based on his knowledge of
normal operating conditions, he first selects the original "alarm
base" (Bo); if a temperature of 400 degrees is normal, that may be
the alarm base. He next decides on an appropriate margin of safety,
perhaps 50 degrees; that is his "alarm offset" (K). The sum of the
alarm base and the alarm offset equals the alarm limit. Then he
decides on the time interval that will elapse between each
updating; that interval has no effect on the computation, although
it may, of course, be of great practical importance. Finally, he
selects a weighting factor (F), which may be any number between 99%
and 1% * and which is
used in the updating calculation.

															If the operator has decided in advance to use an original alarm
base (Bo) of 400 degrees, a constant alarm offset (K) of 50
degrees, and a weighting factor (F) of 80%, the only additional
information he needs in order to compute an updated alarm limit
(UAV), is the present value of the process variable (PVL). The
computation of the updated alarm limit according to respondent's
method involves these three steps:

															First, at the predetermined interval, the process variable Page 437 U. S. 598 is measured; if we assume the temperature is then 425 degrees,
PVL will then equal 425.

															Second, the solution of respondent's novel formula will produce
a new alarm base (B1) that will be a weighted average of the
preceding alarm base (Bo) of 400 degrees and the current
temperature (PIL) of 425. It will be closer to one or the other,
depending on the value of the weighting factor (F) selected by the
operator. If F is 80%, that percentage of 425 (340) plus 20% (1-F)
of 400 (80) will produce a new alarm base of 420 degrees.

															Third, the alarm offset (K) of 50 degrees is then added to the
new alarm base (B1) of 420 to produce the updated alarm limit (UAV)
of 470.

															The process is repeated at the selected time intervals. In each
updating computation, the most recently calculated alarm base and
the current measurement of the process variable will be substituted
for the corresponding numbers in the original calculation, but the
alarm offset and the weighting factor will remain constant.

															* More precisely, it is defined as a number greater than 0, but
less than 1.

															[ Footnote 1 ]

															We use the word "algorithm" in this case, as we did in Gottschalk v. Benson, 409 U. S. 63 , 409 U. S. 65 , to
mean "[a] procedure for solving a given type of mathematical
problem. . . ."

															[ Footnote 2 ]

															Claim 1 of the patent is set forth in the 437
U.S. 584 app|>appendix to this opinion, which also contains a
more complete description of these three steps.

															[ Footnote 3 ]

															App. 13A.

															[ Footnote 4 ]

															Examples mentioned in the abstract of disclosure include naphtha
reforming, petroleum distillate and petroleum residuum cracking,
hydrocracking and desulfurization, aromatic hydrocarbon and
paraffin isomerization and disproportionation, paraffin-olefin
alkylation, and the like. Id. at 8A.

															[ Footnote 5 ] Id. at 47A.

															[ Footnote 6 ] Id. at 60A.

															[ Footnote 7 ]

															The term "software" is used in the industry to describe computer
programs. The value of computer programs in use in the United
States in 1976 was placed at $43.1 billion, and projected at $70.7
billion by 1980 according to one industry estimate. See Brief for the Computer & Business Equipment Manufacturers Assn.
as Amicus Curiae 17-18, n. 16.

															[ Footnote 8 ]

															Title 35 U.S.C. § 101 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."

															Section 100(b) provides:

															"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 9 ]

															The statutory definition of "process" is broad. See n 8, supra. An
argument can be made, however, that this Court has only recognized
a process as within the statutory definition when it either was
tied to a particular apparatus or operated to change materials to a
"different state or thing." See Cochrane v. Deener, 94 U. S. 780 , 94 U. S.
787 -788. As in Benson, we assume that a valid
process patent may issue even if it does not meet one of these
qualifications of our earlier precedents. 409 U.S. at 409 U. S.
71 .

															[ Footnote 10 ]

															In Benson, we phrased the issue in this way:

															"The question is whether the method described and claimed is a
'process' within the meaning of the Patent Act." Id. at 409 U. S.
64 .

															[ Footnote 11 ]

															It should be noted that, in Benson, there was a
specific end use contemplated for the algorithm -- utilization of
the algorithm in computer programming. See In re
Chatfield, 545 F.2d 152, 161 (CCPA 1976) (Rich, J.,
dissenting). Of course, as the Court pointed out, the formula had
no other practical application; but it is not entirely clear why a
process claim is any more or less patentable because the specific
end use contemplated is the only one for which the algorithm has
any practical application.

															[ Footnote 12 ]

															In Eibel Process Co., the Court upheld a patent on an
improvement on a papermaking machine that made use of the law of
gravity to enhance the flow of the product. The patentee, of
course, did not claim to have discovered the force of gravity, but
that force was an element in his novel conception. Tilghman v. Proctor involved a process claim for
" the manufacturing of fat acids and glycerine from fatty
bodies.'" The Court distinguished the process from the principle
involved as follows: "[T]he claim of the patent is not for a mere principle. The
chemical principle or scientific fact upon which it is founded is,
that the elements of neutral fat require to be severally united
with an atomic equivalent of water in order to separate from each
other and become free. This chemical fact was not discovered by
Tilghman. He only claims to have invented a particular mode of
bringing about the desired chemical union between the fatty
elements and water."

															102 U.S. at 102 U. S.
729 .

															[ Footnote 13 ] See also Risdon Locomotive Works v. Medart, 158 U. S. 68 ; Tilghman v. Proctor, supra. [ Footnote 14 ]

															Sections 102 and 103 establish certain conditions, such as
novelty and nonobviousness, to patentability.

															[ Footnote 15 ]

															The underlying notion is that a scientific principle, such as
that expressed in respondent's algorithm, reveals a relationship
that has always existed.

															"An example of such a discovery [of a scientific principle] was
Newton's formulation of the law of universal gravitation, relating
the force of attraction between two bodies, F, to their masses, m
and m', and the square of the distance, d, between their centers,
according to the equation F=mm'/d^2. But this relationship always
existed -- even before Newton announced his celebrated law. Such
'mere' recognition of a theretofore existing phenomenon or
relationship carries with it no rights to exclude others from its
enjoyment. . . . Patentable subject matter must be new (novel), not
merely heretofore unknown. There is a very compelling reason for
this rule. The reason is founded upon the proposition that, in
granting patent rights, the public must not be deprived of any
rights that it theretofore freely enjoyed."

															P. Rosenberg, Patent Law Fundamentals, § 4, p. 13 (1975).

															[ Footnote 16 ]

															Section 103, by its own terms, requires that a determination of
obviousness be made by considering "the subject matter as a whole."
35 U.S.C. § 103. Although this does not necessarily require that
analysis of what is patentable subject matter under § 101 proceed
on the same basis, we agree that it should.

															[ Footnote 17 ]

															App. 22

															[ Footnote 18 ]

															Respondent argues that the inventiveness of his process must be
determined as of "the time the invention is made" under § 103, and
that, therefore, it is improper to judge the obviousness of his
process by assessing the application of the formula as though the
formula were part of the prior art. This argument confuses the
issue of patentable subject matter under § 101 with that of
obviousness under § 103. Whether or not respondent's formula can be
characterized as "obvious," his process patent rests solely on the
claim that his mathematical algorithm, when related to a computer
program, will improve the existing process for updating alarm
units. Very simply, our holding today is that a claim for an
improved method of calculation, even when tied to a specific end
use, is unpatentable subject matter under § 101.

															[ Footnote 19 ]

															Articles assessing the merits and demerits of patent protection
for computer programming are numerous. See, e.g., Davis,
Computer Programs and Subject Matter Patentability, 6 Rutgers J. of
Computers and Law 1 (1977), and articles cited therein, at 2 n. 5.
Even among those who favor patentability of computer programs,
there is questioning of whether the 17-year protection afforded by
the current Patent Act is either needed or appropriate. See
id. at 20 n. 133.

															MR. JUSTICE STEWART, with whom THE CHIEF JUSTICE and MR. JUSTICE
REHNQUIST join, dissenting.

															It is a commonplace that laws of nature, physical phenomena, and
abstract ideas are not patentable subject matter. [ Footnote 2/1 ] A patent could not issue, in other
words, on the law of gravity, or the multiplication tables, or the
phenomena of magnetism, or the fact that water at sea level boils
at 100 degrees centigrade and freezes at zero -- even though newly
discovered. Le Roy v.
Tatham , 14 How. 156, 55 U. S. 175 ; O'Reilly v.
Morse , 15 How. 62, 56 U. S.
112 -121; Rubber-Tip Pencil Co. v.
Howard , 20 Wall. Page 437 U. S. 599 498, 87 U. S. 507 ; Tilghman v. Proctor, 102 U. S. 707 ; Mackay Radio & Telegraph Co. v. Radio Corp. of
America, 306 U. S. 86 , 306 U. S. 94 ; Funk Bros. Seed Co. v. Kalo Co., 333 U.
S. 127 , 333 U. S.
130 .

															The recent case of Gottschalk v. Benson, 409 U. S.
63 , stands for no more than this long-established
principle, which the Court there stated in the following words:

															"Phenomena of nature, though just discovered, mental processes,
and abstract intellectual concepts are not patentable, as they are
the basic tools of scientific and technological work." Id. at 409 U. S. 67 . In Benson, the Court held unpatentable claims for an
algorithm that "were not limited to any particular art or
technology, to any particular apparatus or machinery, or to any
particular end use." Id. at 409 U. S. 64 . A
patent on such claims, the Court said, "would wholly preempt the
mathematical formula and, in practical effect, would be a patent on
the algorithm itself." Id. at 409 U. S.
72 .

															The present case is a far different one. The issue here is
whether a claimed process [ Footnote
2/2 ] loses its status of subject matter patentability simply
because one step in the process would not be patentable
subject matter if considered in isolation. The Court of Customs and
Patent Appeals held that the process is patentable subject matter, Benson being inapplicable, since

															"[t]he present claims do not preempt the formula or algorithm
contained therein, because solution of the algorithm, per
se, would not infringe the claims." In re Flook, 559 F.2d 21, 23.

															That decision seems to me wholly in conformity with basic
principles of patent law. Indeed, I suppose that thousands of
processes and combinations have been patented that contained one or
more steps or elements that themselves would have been Page 437 U. S. 600 unpatentable subject matter. [ Footnote 2/3 ] Eibel Process Co. v. Minnesota &
Ontario Paper Co., 261 U. S. 45 , is a
case in point. There the Court upheld the validity of an
improvement patent that made use of the law of gravity, which, by
itself, was clearly unpatentable. See also, e.g., Tilghman v.
Proctor, supra. The Court today says it does not turn its back on these well
settled precedents, ante at 437 U. S. 594 ,
but it strikes what seems to me an equally damaging blow at basic
principles of patent law by importing into its inquiry under 35
U.S.C. § 101 the criteria of novelty and inventiveness. Section 101
is concerned only with subject matter patentability. Whether a
patent will actually issue depends upon the criteria of §§ 102 and
103, which include novelty and inventiveness, among many others. It
may well be that, under the criteria of §§ 102 and 103, no patent
should issue on the process claimed in this case, because of
anticipation, abandonment, obviousness, or for some other reason.
But, in my view, the claimed process clearly meets the standards of
subject matter patentability of § 101.

															In short, I agree with the Court of Customs and Patent Appeals
in this case, and with the carefully considered opinions of that
court in other cases presenting the same basic issue. See In re
Freeman, 573 F.2d 1237; In re Richman, 563 F.2d 1026; In re De Castelet, 562 F.2d 1236; In re Deutsch, 553 F.2d 689; In re Chatfield, 545 F.2d 152. Accordingly,
I would affirm the judgment before us.

															[ Footnote 2/1 ]

															Title 35 U.S.C. § 101 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 2/2 ]

															Title 35 U.S.C. § 100(b) provides:

															"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 2/3 ]

															In Gottschalk v. Benson, the Court equated process and
product patents for the purpose of its inquiry: "We dealt there
with a product' claim, while the present case deals with a
`process' claim. But we think the same principle applies." 409 U.S.
at 409 U. S.
67 -68.