# Diamond v. Diehr SKH

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Jump to navigationJump to search- In enacting the Patent Act, Congress intended the statutory subject matter to include anything under the sun that is made by man.
- Although term `process' was not added to statutory specifications of what is patentable until 1952, a process has historically enjoyed patent protection because it was considered a fort of `art' as that term was used in 1793 act and, hence, analysis of eligibility of a claim of patent protection for a `process' did not change with addition of that term.
- For purpose of Patent Act, a `process' is an act or series of acts performed on the subject matter to be transformed and reduced to a different state or thing, and if new and useful it is just as patentable as a piece of machinery regardless of whether the machinery pointed out as suitable to perform the process is new or patentable.
- A physical and chemical process for molding precision synthetic rubber products falls within Patent Act's categories of possibly patentable subject matter.
- Process for curing synthetic rubber fell within statutory categories of possibly patentable subject matter, notwithstanding that process included use of mathematical formula, i.e., Arrhenius equation, and programmed digital computer, where claims described method of transforming raw uncured synthetic rubber into a different state or thing and solved industry problem of `overcure' or `undercure' by continuously measuring temperature inside the mold cavity and applicants were not seeking to protect the formula.
- Not every discovery falls within Patent Act's categories of possibly patentable subject matter, as excluded from patent protection are laws of nature, physical phenomenon and abstract ideas.
- A claim drawn to subject matter otherwise statutory does not become nonstatutory, i.e., outside Patent Act's categories of possibly patentable subject matter, simply because it uses a mathematical formula, computer program, or digital computer.
- An application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.
- Although by itself, the Arrhenius equation to calculate cure over time in rubber molding presses is not patentable, when a process for curing rubber is devised which incorporates it in a more efficient solution of the equation, such process is at the very least not barred at the threshold as outside Patent Act's categories of possibly patentable subject matter.
- In determining eligibility of claimed process for curing synthetic rubber including in several of its steps use of a mathematical formula and a programmed digital computer, the claims were to be considered as a whole and, it was inappropriate to dissect the claims into old and new elements and then ignore the presence of the old elements in the analysis.
- It is inappropriate to dissect claims into old and new elements and then ignore the presence of the old elements in the analysis, particularly 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 claimed process itself, is of no relevance in determining whether the subject matter of a claim falls within Patent Act's categories of possibly patentable subject matter.
- Whether a particular invention is novel is a question fully apart from whether the invention falls into a statutory category of possibly patentable subject matter.
- Whether process for curing synthetic rubber which included in several of its steps use of a mathematical formula and a programmed digital computer, was patentable subject matter was an issue apart from whether a patent could be denied for lack of novelty or nonobviousness, and although it might later be determined that the process was not deserving of patent protection on novelty or obviousness grounds, a rejection on either of such grounds did not affect the initial determination that the claims recited subject matter which was eligible for patent protection as patentable subject matter.
- 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 protection of the patent laws, and such principle cannot be circumvented by attempting to limit use of the formula to a particular technological environment.
- Insignificant postsolution activity will not transform an unpatentable principle into a patentable process.
- 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, i.e., nonpatentable, regardless of whether the patent is intended to cover all uses of the formula or only limited uses and, similarly, a mathematical formula does not become patentable subject matter merely by including in the claim for the formula token postsolution activity.
- 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 design to protect, e.g., transforming or reducing an article to a different state or thing, then the claim satisfies the statutory requirements for possible patentable subject matter.
- Fact that one or more steps in process for curing synthetic rubber which included in several of its steps the use of a mathematical formula and a programmed digital computer, might not, in isolation, be novel or independently eligible for patent protection was irrelevant to question of whether the claims as a whole recited subject matter eligible for patent protection.