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patentrespondent
patentrespondent

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Diamond v. Diehr, 450 U.S. 175, 101 S.Ct. 1048, 67 L.Ed.2d 155, 209 U.S.P.Q. 1

Facts

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.

Issue

Rule

A process is defined as an act or series of acts performed on subject matter to transform it into a different state or thing. For a process to be patentable, it must be new and useful, regardless of whether the machinery used is new or patentable. The presence of a mathematical formula or computer does not automatically render a claim nonstatutory; the claims must be considered as a whole.

Analysis

The court analyzed the claims as a whole, emphasizing that the process involved the transformation of raw synthetic rubber into a different state. The use of a mathematical formula and a computer was not the focus; rather, the innovative aspect was the combination of steps that addressed industry problems of overcure and undercure. The court concluded that the claims did not seek to patent the mathematical formula itself but rather a process that utilized it effectively.

Conclusion

We view respondents' claims as nothing more than a process for molding rubber products and not as an attempt to patent a mathematical formula.

Who won?

The respondents prevailed in this case as the court found that their process for curing synthetic rubber was eligible for patent protection. The court emphasized that the claims should be viewed in their entirety, and the innovative combination of steps, including the use of a computer and mathematical formula, constituted a patentable process. The decision underscored the importance of considering the practical application of the claims rather than dissecting them into individual components.

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 risen in the molding of rubber products.

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