constitute mere "insignificant postsolution activity."
D.
We discern two other important aspects of the Supreme Court's § 101
jurisprudence. First, the Court has held that whether a claimed process is novel or non-
obvious is irrelevant to the § 101 analysis. Diehr, 450 U.S. at 188-91. Rather, such
considerations are governed by 35 U.S.C. § 102 (novelty) and § 103 (non-obviousness).
Diehr, 450 U.S. at 188-91. Although § 101 refers to "new and useful" processes, it is
overall "a general statement of the type of subject matter that is eligible for patent
protection 'subject to the conditions and requirements of this title.'" Diehr, 450 U.S. at
189 (quoting § 101). As the legislative history of § 101 indicates, Congress did not
intend the "new and useful" language of § 101 to constitute an independent requirement
of novelty or non-obviousness distinct from the more specific and detailed requirements
of §§ 102 and 103, respectively. Diehr, 450 U.S. at 190-91.
So here, it is irrelevant to
the § 101 analysis whether Applicants' claimed process is novel or non-obvious.
Second, the Court has made clear that it is inappropriate to determine the patent-
eligibility of a claim as a whole based on whether selected limitations constitute patent-
14
Although the Court spoke of "postsolution" activity, we have recognized
that the Court's reasoning is equally applicable to any insignificant extra-solution activity
regardless of where and when it appears in the claimed process. See In re Schrader,
22 F.3d 290, 294 (Fed. Cir. 1994) (holding a simple recordation step in the middle of the
claimed process incapable of imparting patent-eligibility under § 101); In re Grams, 888
F.2d 835, 839-40 (Fed. Cir. 1989) (holding a pre-solution step of gathering data
incapable of imparting patent-eligibility under § 101).
15
By the same token, considerations of adequate written description,
enablement, best mode, etc., are also irrelevant to the § 101 analysis because they,
too, are governed by other provisions of the Patent Act. Section 101 does, however,
allow for patents only on useful inventions. Brenner v. Manson, 383 U.S. 519, 532-35
(1966).
2007-1130 17