Chapter §3.02 Processes Within §101

• Jurisdiction: United States

§3.02 Processes Within §101

[A] Definition of a Process

The patenting of processes is as old as the U.S. patent law itself. The first American federal patent law, the Patent Act of 1790, referred to a process as an "art."⁴⁴ The first U.S. patent was granted for a process of making potash, a chemical compound used chiefly in fertilizers.⁴⁵ Today, the U.S. Patent Act provides that the term process means "process, art, or method."⁴⁶

A process is synonymous with a method, or a series of steps for accomplishing some result. Often, the process is a novel and nonobvious method of making some end product. For example, a typical process claim might recite a method of making a chemical compound X as follows:

1. A process for making compound X, comprising the steps of:

(a) mixing equal parts Y with Z to form a mixture,

(b) heating the mixture to a temperature of about 100 degrees Celsius,

(c) cooling the mixture to a temperature of about 10 degrees Celsius, and

(d) recovering a precipitate of said compound X from the cooled mixture.

The end product of the claimed process (in the above example, the compound X) need not itself be patentable; in other words, a process claim can be granted for a novel and nonobvious method of making an old product. The Patent Act's definitional section provides that the "term process . . . includes a new use of a known process, machine, manufacture, composition of matter, or material."⁴⁷

The independent patentability of new processes for making known products reflects the importance to society of stimulating new process innovation. Consider, for example, the societal benefit achieved through the invention of new processes to make insulin, a well-known protein needed by people with diabetes. Insulin is now easily obtained in large quantities through DNA cloning techniques. This recombinant process is much more efficient than the conventional method of extracting the insulin from the pancreas of hogs.⁴⁸ By providing the incentive of process patent protection, the patent system calls forth new and nonobvious ways to make existing products.

[B] Process Versus Product

Process claims, as in the example above, should be distinguished from product claims, which are typically drawn to compositions of matter, machines, or manufactures, discussed separately below. A process claim is generally considered narrower in scope, and hence of less economic value to the patent owner, than a product claim.

Consider the above claim to a process comprising steps (a)-(d), performed in the recited order, (a)-(b)-(c)-(d), which produces a given product, compound X. This process claim is relatively narrow in scope because it is literally infringed only by other processes that make X by repeating the identical series of recited steps, (a)-(d), in that precise sequence. If a competitor can determine how to make product X by a different process, for example steps (e)-(h), or by performing steps (a)-(d) in a different order such as (c)-(d)-(a)-(b), then the process claim has not been literally infringed.⁴⁹

On the other hand, if a patent is obtained with a claim to the product X itself, then the making of X by any process, whether it comprises steps (a)-(d), (e)-(h), (c)-(d)-(a)-(b), or any other set of steps, literally infringes the claim. In other words, the scope of protection for the product, claimed as a product, is not limited by the process with which it is made; nor is it relevant whether the product patent owner knew of or described the processes used by the accused infringer to make product X. "[A] patentee is entitled to every use of which his invention is susceptible, whether such use be known or unknown to him."⁵⁰ Accordingly, product claims are generally considered far more economically valuable to a patentee than are process claims.

[C] Computer-Implemented Processes: The Supreme Court's Benson (1972)/Flook (1978)/Diehr (1981) Trilogy

Many patented processes or methods are implemented through the use of computers and software. For example, in 1981 the Supreme Court in Diamond v. Diehr⁵¹ upheld the §101 eligibility of a computer-controlled process for curing synthetic rubber. By monitoring the real-time conditions inside a mold, the process control system determined when the mold should be opened by performing calculations based on the well-known Arrhenius equation. Representative claim 1 of the Diehr patent provided:

1. A method of operating a rubber-molding press for precision molded compounds with the aid of a digital computer, comprising: providing said computer with a data base for said press including at least,

natural logarithm conversion data (ln),

the activation energy constant (c) unique to each batch of said compound being molded, and

a constant (x) dependent upon the geometry of the particular mold of the press,

initiating an interval timer in said computer upon the closure of the press for monitoring the elapsed time of said closure,

constantly determining the temperature (Z) of the mold at a location closely adjacent to the mold cavity in the press during molding,

constantly providing the computer with the temperature (Z),

repetitively calculating in the computer, at frequent intervals during each cure, the Arrhenius equation for reaction time during the cure, which is

ln v = CZ + x

where v is the total required cure time,

repetitively comparing in the computer at said frequent intervals during the cure each said calculation of the total required cure time calculated with the Arrhenius equation and said elapsed time, and

opening the press automatically when a said comparison indicates equivalence. ⁵²

Although unapplied mathematical algorithms, formulas, and equations are considered unpatentable abstract ideas, the Supreme Court in Diehr made clear that the presence of such mathematical subject matter in a patent claim (such as Diehr's application claim 1) does not necessarily deprive the claim of potential patentability under 35 U.S.C. §101. Claims must be analyzed as a whole, not dissected into their component parts, for purposes of determining if an invention falls within one or more of the §101 categories. The presence of a mathematical algorithm or formula in a patent claim does not necessarily render it ineligible for patent protection.

The Supreme Court concluded in Diehr that, in contrast with the inventors in the Court's previous decisions denying patentability to computer-implemented inventions,⁵³ Diehr did not seek to patent a mathematical formula per se, but rather a process of curing synthetic rubber. That process "admittedly employ[ed] a well-known mathematical equation, but [did] not seek to pre-empt the use of that equation."⁵⁴ Rather, Diehr sought only to foreclose others from using the Arrhenius equation in conjunction with all of the other steps recited in the claimed process, that is, installing rubber in a press, closing the mold, constantly determining the temperature of the mold, constantly recalculating the appropriate cure time through the use of the Arrhenius equation and a digital computer, and automatically opening the press at the proper time. Although a computer is not necessarily needed to cure natural or synthetic rubber, the Court realized that the computer use incorporated into Diehr's process patent significantly lessened the possibility of overcuring or undercuring the rubber, an important and useful result. The process as claimed represented potentially patentable subject matter under 35 U.S.C. §101.

In the aftermath of Diehr, some commentators suggested that to come within 35 U.S.C. §101, patent claims to a process (or method) comprising a mathematical algorithm had to involve a "physical transformation" of material into a different state or thing, such as the curing of the synthetic rubber in Diehr. The Federal Circuit rejected a blanket "physical transformation" requirement in AT&T Corp. v. Excel Communications, Inc.⁵⁵ There the Circuit reversed a district court's summary judgment that AT&T's patent, directed to a method of inserting information called a "primary interexchange carrier (PIC) indicator" into a long-distance telephone call record to facilitate differential billing of subscribers (depending on whether the subscriber called someone with the same or different long-distance carrier), was invalid as not falling within §101 subject matter.⁵⁶

Rejecting defendant Excel's reading of Diehr as overly limited, the Federal Circuit interpreted Diehr as simply standing for the proposition that a "physical transformation" is "not an invariable requirement, but merely one example of how a mathematical algorithm may bring about a useful application."⁵⁷ The Federal Circuit concluded in AT&T that, although the claimed process admittedly applied a simple Boolean principle to determine the value of the PIC indicator, this process produced a "useful, concrete, tangible result" without preempting other uses of the mathematical principle.⁵⁸ Thus the claimed process "comfortably" fell within the scope of 35 U.S.C. §101.⁵⁹

[D] Business Methods and the "Abstract Idea" Exception

[1] Overview

A process or method of doing business or operating a business is potentially patentable, just as is a method for doing anything else, so long as the claimed method is not an unapplied, abstract idea or concept. The Federal Circuit confirmed this view of the patent-eligibility of business methods in its 1998 decision, State Street Bank & Trust Co. v. Signature Fin. Group, Inc.,⁶⁰ discussed below, when it approved the §101 eligibility of a mutual funds management system that produced a "useful, concrete, and tangible" result—a share price.

After State Street, controversy grew over the rising number of business method patents, which some commentators (including Supreme Court justices) viewed as possessing questionable validity.⁶¹ In 2008, the Federal Circuit went en banc in In re Bilski and rejected the "useful, concrete, and tangible...