Diamond vs. Diehr

United States Supreme Court
Diamond v. Diehr (450 U.S. 175), No. 79-1112
Argued October 14, 1980 Decided March 3, 1981
KEY DOCTRINE: Patentable claims do not become invalid because they include mathematical formulas.
Mathematical formulas in the abstract are not eligible for patent protection. But a physical machine or process
which makes use of a mathematical algorithm is different from an invention which claims the algorithm, as such, in
the abstract. Thus, if the invention as a whole meets the requirements of patentability—that is, it involves
"transforming or reducing an article to a different state or thing"—it is patent-eligible, even if it includes a software
component.
FACTS: The patent application at issue was filed by the defendants in this case (Diehr) 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.
Defendants 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 when to open the press
and remove the cured product. Nonetheless, according to the defendants, 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. 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.
Defendants 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.
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 denfendants, 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 defendants' claims on the sole ground that they were
drawn to nonstatutory subject matter under 35 U.S.C. § 101. He determined that those steps in
defendants' claims that are carried out by a computer under control of a stored program
constituted nonstatutory subject matter. The remaining steps -- installing rubber in the press and
the subsequent closing of the press -- were "conventional and necessary to the process, and
cannot be the basis of patentability." The examiner concluded that defendants' 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 stating that when the process was considered as a
whole, the claim performed a function which the patent laws were designed to protect. 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 defendants' 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 the US
Supreme Court.
ISSUE: Whether or not patentable claims become invalid because they include mathematical
formulas.
HELD: No.
Patentable claims do not become invalid because they include mathematical formulas. It
is now commonplace that an application of a law of nature or mathematical formula to a known
structure or process may deserve patent protection. Defendants’ claims, which contain a
mathematical formula, transform an article to a different state, which is performing a function
which the patent laws were designed to protect.
Defendants' claims recited subject matter that was eligible for patent protection under §
101.
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."
Industrial processes such as defendants' 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.
While a mathematical formula, like a law of nature, cannot be the subject of a patent
based on the ruling of US Supreme Court in Gottschalk v. Benson, the defendants 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.
Defendants' 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.
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. In is not appropriate to separate claims
into old and new elements and ignore the presence of the old elements in the analysis. This is
especially true in a process claim because a new combination of steps in a process may be
patentable even though all the parts of the combination were well known and in common use
before it was made.

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United States Supreme Court

Diamond v. Diehr (450 U.S. 175), No. 79-1112

Argued October 14, 1980 Decided March 3, 1981

When a claim containing a mathematical formula implements or applies the formula in a

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