Application of Flook
| Decision Date | 04 August 1977 |
| Docket Number | Patent Appeal No. 77-512. |
| Citation | 559 F.2d 21 |
| Parties | Application of Dale R. FLOOK. |
| Court | U.S. Court of Customs and Patent Appeals (CCPA) |
Frank J. Uxa, Thomas J. Clough, John B. Goodman, Harvey, Ill., attorneys of record, for appellant.
Joseph F. Nakamura, Washington, D. C., for the Commissioner of Patents, Thomas E. Lynch, Washington, D. C., of counsel.
Before MARKEY, Chief Judge, and RICH, BALDWIN, LANE and MILLER, Judges.
This is an appeal from a decision of the Patent and Trademark Office (PTO) Board of Appeals (board) sustaining the rejection of claims 1 through 10 of appellant's application for "Method for Updating Alarm Limits"1 as nonstatutory subject matter under 35 U.S.C. § 101. We reverse.
The invention relates to a process for controlling at least one parameter of a catalytic hydrocarbon conversion process. An alarm results when the actual value (PVL) of the parameter reaches an alarm value. The alarm value is not fixed but rather is periodically adjusted as a function of the history of the actual value of the parameter. This adjustment is accomplished by some type of computer in accordance with a mathematical control equation. In essence, the process involves an initial step which reads the parameters of the chemical process system, an intermediate step which uses an algorithm to calculate a desired new value for the alarm value, and a final step in which the actual alarm value is adjusted. Claim 1 is the only independent claim.
The examiner stated that, while the claimed invention is clearly a method useful within the technological arts, the only part of this claimed invention which is not conventional is the particular algorithm used to adjust the alarm value. The examiner interpreted In re Christensen, 478 F.2d 1392, 178 USPQ 35 (Cust. & Pat.App.1973), as holding that such claims are not statutory subject matter under 35 U.S.C. §§ 100-101, notwithstanding the fact that they are within the technological arts.2
The board adopted the examiner's view of Christensen and the rejection based on that view. On rehearing, the board expressly rejected appellant's position regarding the holding in Christensen. Appellant's position is that express language in Christensen limited the holding in that case to claims in which the solution of the novel equation is the last step of a claimed process.3 This condition is, of course, not present in appellant's claims. The board held that appellant's focus on the "last step" condition is misplaced because whether or not there happens to be a step after solution of the algorithm is a mere matter of form.
OPINIONThe issue in this case is whether a claim to a process which uses an algorithm to modify a conventional manufacturing system is statutory subject matter under Gottschalk v. Benson, 409 U.S. 63, 93 S.Ct. 253, 34 L.Ed.2d 273, 175 USPQ 673 (1972) and Christensen, supra. We hold that the invention here claimed is statutory subject matter.
Christensen's holding of nonstatutory subject matter is expressly limited to claims directed to determining data used in an algorithm and solving the algorithm, that is, to claims in which nothing is done after solution of the algorithm. Christensen recognized that the absence of a step other than those steps required for solution of the algorithm necessarily precludes the possibility that the claim involves statutory subject matter. The court, in Christensen, reasoned that Benson requires that a claim must include a recitation which materially limits the claim to a scope less than the mere act of solving an algorithm. The court determined that this requirement of a limitative recitation is not satisfied by the recitation of data-gathering steps but implied that it may be satisfied by the recitation of some sort of post-solution activity. Because the court found no post-solution activity recited in the claims of Christensen, the court did not need to reach the question of what sort of post-solution activity is required for statutory subject matter. Thus, Christensen does not render the claims before us unpatentable, because these claims include recitation of post-solution activity, a step in which the solution is applied to a control...
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Application of Bergy
...57 L.Ed.2d 451 (1978) . 198 USPQ 193 . Parker v. Flook, 437 U.S. 584, 98 S.Ct. 2522, 57 L.Ed.2d 451, 198 USPQ 193 (1978) , hereinafter "Flook", was a case from this court ( In re Flook, 559 F.2d 21, 195 USPQ 9 (Cust. & Pat.App.1977) , reversed sub nom. Parker v. Flook, supra ), involving......
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Diamond v. Diehr, Ii, 79-1112
...invention only when the claims, if allowed, would wholly pre-empt the algorithm itself. One of the cases adopting this view was In re Flook, 559 F.2d 21 (1977),21 which was reversed in Parker v. Flook, 437 U.S. 584, 98 S.Ct. 2522, 57 L.Ed.2d 451 (1978) . Before this Court decided Flook , ......
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Application of Bergy
...470 (Cust.Ct. & Pat.App.1977) (Waldbaum II). Compare In re Richman, 563 F.2d 1027, 1028 (Cust.Ct. & Pat.App.1977) with In re Flook, 559 F.2d 21 (Cust.Ct. & Pat.App.1977). Similarly here, the fact that claims directed to a process of using microorganisms constitute patentable subject matter ......
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Parker v. Flook
...that alarm limit values must be recomputed and readjusted, and the use of computers for "automatic process monitoring." Pp. 588-596. 559 F.2d 21, Lawrence G. Wallace, Washington, D.C., for petitioner. D. Dennis Allegretti, Chicago, Ill., for respondent. Mr. Justice STEVENS delivered the opi......