I.

Chapter 2 - Patentable Subject Matter

A. Introduction to the Patent Act
1. Diamond v. Chakrabarty
a) Fact:
(1) D created a microbacterium that process crude oil for the
use in cleaning up oil spills
(2) This trait does not exist naturally
(3) D makes three patent claims
(a) A process claim for the method of producing the
bacteria
(b) Claims for an inoculum comprised of a carrier
material floating on water, such as straw, and the
new bacteria
(c) Claims to the new bacteria themselves
b) Examiner:
(1) Denied Claim (c) , cannot patent a natural thing
c) Issue:
(1) Whether the mico-organism constitutes a “manufacture” or
a “composition of matter” within the meaning of the statute
d) Reasoning:
(1) Cannot patent manifestations of nature
(2) Cannot patent discoveries of nature
(3) In this case, not nature’s handiwork
(a) This man created this entity.
(4) If it cannot be reproduced in nature without the aid of man
it may be patentable
(5) Distinction lies between products of nature, whether living
or not and human-made inventions
e) Holding:
(1) Reversed, patentable
II. Benson, Flook and Diehr and Software Patents
A. Benson
1. Converting pure binary to “binary coded decimal”
2. It was s simple mathematical operation
3. The mathematical truth is the same as saying 8+2=10
4. It was fundamental and not an invention of the patent applicants
5. Unpatentable scientific truths, abstract ideas and natural phenomena
a) “Abstract and sweeping” nature of the proposed patent claims
6. “An ideal in itself is not patentable”
a) A novel and useful structure created with the ad of knowledge of
scientific truth may be
7. So abstract and sweeping as to cover both known and unknown uses of
the BCD to pure binary conversion
 8. “Practical effect” of allowing the claims would be to “preempt” a
mathematical formula
9. Must be tied to a particular machine or apparatus
a) Could be done with a paper and pencil
10. Cannot patent an idea
11. Mathematical formulas are unpatentable, and may be considered to be
laws of nature
B. Flook
1. Method for Updating Alarm limits - technological art associated with
monitoring certain chemical processes
2. About the processes of creating a weighted average for effective alarms
3. Not tied to a computer
a) Could be done with a paper and pencil
4. Too general of a claim. No indication as to its application or relevant
processes
5. “No inventive concept”
6. Even though a phenomenon of nature or mathematical formula may be
well known an inventive application of the principle may be patented.
7. Optimizing a function has always been known
C. Diehr
1. First and only Supreme Court decision to sustain the patentability of an
invention
2. A method of operating a rubber-molding press for precision molded
compounds with the aid of a digital computer
3. An industrial manufacturing process which has long been patentable
4. Added to the jurisprudence in three ways
a) Computerization could be the source of more efficient industrial
processes and that such advances were not necessarily
unpatentable
(1) Do not need a computer to cure rubber. But the computer
may optimize the process as a whole, it may be patentable
b) Patent claim could be considered “as a whole”
(1) Must look at all elements, including the previous arts in
place
c) Interpreted Flook narrowly
III. Mayo Collab. Services v. Prometheus Labs, Inc
A. Implicit exceptions to the Patent Act
1. Laws of nature, natural phenomena, and abstract ideas are not
patentable
2. Monopolization of natural tools through the grant of a patent might tend to
impede innovation more than it would tend to promote it
3. All inventions at some level embody, use, reflect, rest upon, or apply laws
of nature, natural phenomena, or abstract ideas
 4. An application of a law of nature or mathematical formula to a known
structure or process may be patentable
B. Facts:
1. Determining the right level of medicine to apply for optimal reactions
C. Holding:
1. It is not patentable
D. Reasoning:
1. Warn against patenting based on draftsmanship, principles underlying the
prohibition against patents for natural laws, processes too broadly
preempt the use of a natural law
2. Insist that a process that focusing on natural law also contain other
elements or a combination of elements, sometimes referred to as an
"inventive concept" – Flook
3. Everything here is common knowledge
4. Already knew that there was a correlation between metabolites and the
risk of harm of excessive dosage of medication
5. Patent sets forth a law of nature – the relationship between the
metabolites and the likelihood that a dosage of a thiopurine drug will
prove ineffective or cause harm
E. Issue:
1. Do the claims do significantly more than simply describe these natural
relations?
2. Do the patent claims add enough to their statements of the correlations to
allow the processes they describe to qualify as patent-eligible processes
that apply natural laws?
F. Reasoning:
1. If a law of nature is not patentable then a process reciting the law of
nature is also not patentable
2. In the claim there is also an "administering" step, a "determining" step,
and a "wherein" step
a) Administering – people have known to administer this drug for the
specific ailment, they have known that there must be an
appropriate dosage. Nothing new here
b) Wherein – tells doctors of the relevant natural laws – correlation
c) Determining – determine the level of metabolites in the blood. Well
known, and well understood – "purely conventional or obvious",
"pre-solution activity"
d) Combination – considering all three as an ordered combination
adds nothing to the laws of nature.
(1) When viewed as a whole, they add nothing significant
3. Diehr – used a natural law, a mathematical equation, with an machine
was overall novel enough to create a patent
a) Transformed the process into an inventive application of the
formula
4. Flook – created an unpatentable formula for computing an updated alarm
limit. Did not include enough specifics about how the formula applies to
the process
a) No inventive concept. We knew we could optimize things with
computers
5. This case –
 a) (1) measure somehow the level of metabolite,
b) (2) use the law of nature to calculate the current toxicity/inefficacy
limits, and
c) (3) reconsider the drug dosage in light of the law
6. Basic steps needed to apply the law (relatedness of the natural law to the
process? – Factor?)
a) Effect is to tell doctors to apply the law in some way
7. Neilson – explained how the process of blowing hot air could be applied
in an inventive way
a) A machine embodying the principle. Invented a machine with the
ability to apply the natural principle
8. Policy – patent law should not inhibit the use of natural law
9. Patent claims must be considered as a whole
10. Effect would be a wild thicket of o exclusive rights over the use of critical
scientific data that are needed for sound medical care
11. Two-Step Framework
a) Step 1 – court to determine whether the claims at issue are
directed to one of the patent-ineligible concepts (laws of nature,
natural phenomena, and abstract ideas)
b) Step 2 – a court must examine the elements of the claim to
determine whether it contains an inventive concept sufficient to
transform the claimed patent-ineligible concept into a patent-
eligible application