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Keywords

discoveryappealpatenttrademarkrespondent

appealpatentrespondent

Related Cases

Parker v. Flook, 437 U.S. 584, 98 S.Ct. 2522, 57 L.Ed.2d 451, 198 U.S.P.Q. 193

Facts

Respondent applied for a patent on a 'Method for Updating Alarm Limits' during catalytic conversion processes, where the only novel feature was a mathematical formula. The method involved measuring a process variable, calculating an updated alarm limit using the formula, and adjusting the alarm limit accordingly. The patent examiner rejected the application, stating that the mathematical formula was the only difference from prior art, and thus the claims did not describe a patentable invention.

Respondent applied for a patent on a 'Method for Updating Alarm Limits.' The only novel feature of the method is a mathematical formula.

Issue

Whether the identification of a limited category of useful, though conventional, post-solution applications of a mathematical formula makes the method eligible for patent protection.

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.

Rule

The discovery of a mathematical formula or algorithm cannot be patented as a process if the process itself is conventional and does not contain any novel or non-obvious elements beyond the formula.

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, 14 L.Ed. 601, respondent's application contains no patentable invention.

Analysis

The Court applied the rule by examining whether the claimed method contained any inventive concept beyond the mathematical formula. It concluded that the method was merely a conventional application of a known formula, and the post-solution activity did not transform the unpatentable principle into a patentable process. The Court emphasized that merely attaching conventional steps to a mathematical formula does not render the entire process patentable.

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.

Conclusion

The Supreme Court reversed the decision of the Court of Customs and Patent Appeals, holding that the claims did not describe patentable subject matter under § 101 of the Patent Act.

The judgment of the Court of Customs and Patent Appeals is Reversed.

Who won?

The Supreme Court ruled in favor of the Patent and Trademark Office, affirming that the claims were not patentable because they were based solely on a mathematical formula.

The Supreme Court held that the claims did not describe patentable subject matter because they were based solely on a mathematical formula.

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