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Diamond v. Diehr

Citations: 67 L. Ed. 2d 155; 101 S. Ct. 1048; 450 U.S. 175; 1981 U.S. LEXIS 73; 209 U.S.P.Q. (BNA) 1; 49 U.S.L.W. 4194Docket: 79-1112

Court: Supreme Court of the United States; March 3, 1981; Federal Supreme Court; Federal Appellate Court

Narrative Opinion Summary

The case involves a patent application for a process of molding synthetic rubber using a method that includes continuous temperature measurement and computer recalculations to optimize curing times. Initially rejected by the Patent Examiner and the Patent and Trademark Office Board of Appeals as nonstatutory under 35 U.S.C. 101, the claims were subsequently upheld by the Court of Customs and Patent Appeals. The Supreme Court granted certiorari and ultimately reversed the rejection, affirming the eligibility of the claims under 35 U.S.C. 101. The Court clarified that while mathematical formulas in isolation are not patentable, their application within a transformative industrial process can be. The decision emphasized evaluating patent claims in their entirety and distinguished the eligibility criteria under Section 101 from the novelty requirements under Sections 102 and 103. The outcome validates the respondents' claims as patentable subject matter, underscoring the principle that a combination of known elements, when integrated into a novel process, can satisfy statutory requirements for patent protection.

Legal Issues Addressed

Distinction Between Patent Eligibility and Novelty

Application: The Court distinguished the requirements for patent eligibility under Section 101 from the novelty and non-obviousness criteria under Sections 102 and 103.

Reasoning: Furthermore, the patent eligibility under 101 is distinct from the novelty and nonobviousness criteria under 35 U.S.C. 102 and 103.

Evaluation of Patent Claims as a Whole

Application: The Court stressed that patent claims should be evaluated in their entirety rather than dissected into old and new elements.

Reasoning: The Court emphasized that claims should not be dissected into old and new elements; rather, they should be evaluated as a whole.

Integration of Mathematical Formulas in Industrial Processes

Application: The Court ruled that integrating a mathematical formula into an industrial process that transforms materials can fulfill the requirements of patent eligibility.

Reasoning: In conclusion, the Court affirmed that when a mathematical formula is integrated into a process that fulfills the patent laws' intent—such as transforming materials—it meets the requirements of 35 U.S.C. 101.

Non-Patentability of Mathematical Formulas

Application: The Court emphasized that while mathematical formulas themselves are not patentable, their application within a process can be patentable under certain conditions.

Reasoning: While mathematical formulas themselves are not patentable, the respondents were not seeking to patent the formula but rather the application of that formula within their specific process.

Patent Eligibility under 35 U.S.C. 101

Application: The Court held that a process involving the application of a mathematical formula within a specific industrial procedure is patentable under 101.

Reasoning: The Supreme Court held that the respondents' claims were eligible for patent protection. It clarified that a 'process' under 101 encompasses any act or series of acts that transform a subject matter into a different state, making industrial processes like the one described historically patentable.