than only a specific application of that principle. See id. at 187; Benson, 409 U.S. at 71-
72. Pre-emption of all uses of a fundamental principle in all fields and pre-emption of all
uses of the principle in only one field both indicate that the claim is not limited to a
particular application of the principle. See Diehr, 450 U.S. at 193 n.14 ("A mathematical
formula in the abstract is nonstatutory subject matter regardless of whether the patent is
intended to cover all uses of the formula or only limited uses.") (emphasis added). In
contrast, a claim that is tied to a particular machine or brings about a particular
transformation of a particular article does not pre-empt all uses of a fundamental
principle in any field but rather is limited to a particular use, a specific application.
Therefore, it is not drawn to the principle in the abstract.
The Diehr Court also reaffirmed a second corollary to the machine-or-
transformation test by stating that "insignificant postsolution activity will not transform an
unpatentable principle into a patentable process." Id. at 191-92; see also Flook, 437
U.S. at 590 ("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."). The Court in Flook reasoned:
A competent draftsman could attach some form of post-solution activity
to almost any mathematical formula; the Pythagorean theorem would not
have been patentable, or partially patentable, because a patent
application contained a final step indicating that the formula, when
solved, could be usefully applied to existing surveying techniques.
437 U.S. at 590.
Therefore, even if a claim recites a specific machine or a particular
transformation of a specific article, the recited machine or transformation must not
13
The example of the Pythagorean theorem applied to surveying techniques
could also be considered an example of a mere field-of-use limitation.
2007-1130 16