fundamental principles
are "part of the storehouse of knowledge of all men . . . free to
all men and reserved exclusively to none." Funk Bros. Seed Co. v. Kalo Inoculant Co.,
333 U.S. 127, 130 (1948); see also Le Roy v. Tatham, 55 U.S. (14 How.) 156, 175
(1852) ("A principle, in the abstract, is a fundamental truth; an original cause; a motive;
these cannot be patented, as no one can claim in either of them an exclusive right.").
"Phenomena of nature, though just discovered, mental processes, and abstract
intellectual concepts are not patentable, as they are the basic tools of scientific and
technological work." Benson, 409 U.S. at 67; see also Comiskey, 499 F.3d at 1378-79
(holding that "mental processes," "processes of human thinking," and "systems that
depend for their operation on human intelligence alone" are not patent-eligible subject
matter under Benson).
The true issue before us then is whether Applicants are seeking to claim a
fundamental principle (such as an abstract idea) or a mental process. And the
underlying legal question thus presented is what test or set of criteria governs the
determination by the Patent and Trademark Office ("PTO") or courts as to whether a
claim to a process is patentable under ยง 101 or, conversely, is drawn to unpatentable
subject matter because it claims only a fundamental principle.
The Supreme Court last addressed this issue in 1981 in Diehr, which concerned
a patent application seeking to claim a process for producing cured synthetic rubber
products. 450 U.S. at 177-79. The claimed process took temperature readings during
cure and used a mathematical algorithm, the Arrhenius equation, to calculate the time
when curing would be complete. Id. Noting that a mathematical algorithm alone is
5
As used in this opinion, "fundamental principles" means "laws of nature,
natural phenomena, and abstract ideas."
2007-1130 7