eligible subject matter. Flook, 437 U.S. at 594 ("Our approach to respondent's
application is, however, not at all inconsistent with the view that a patent claim must be
considered as a whole."); Diehr, 450 U.S. at 188 ("It is inappropriate to dissect the
claims into old and new elements and then to ignore the presence of the old elements in
the analysis."). After all, even though a fundamental principle itself is not patent-eligible,
processes incorporating a fundamental principle may be patent-eligible. Thus, it is
irrelevant that any individual step or limitation of such processes by itself would be
unpatentable under § 101. See In re Alappat, 33 F.3d 1526, 1543-44 (Fed. Cir. 1994)
(en banc) (citing Diehr, 450 U.S. at 187).
III.
In the years following the Supreme Court's decisions in Benson, Flook, and
Diehr, our predecessor court and this court have reviewed numerous cases presenting
a wide variety of process claims, some in technology areas unimaginable when those
seminal Supreme Court cases were heard.
Looking to these precedents, we find a
wealth of detailed guidance and helpful examples on how to determine the patent-
eligibility of process claims.
A.
Before we turn to our precedents, however, we first address the issue of whether
several other purported articulations of § 101 tests are valid and useful. The first of
these is known as the Freeman-Walter-Abele test after the three decisions of our
predecessor court that formulated and then refined the test: In re Freeman, 573 F.2d
16
We note that the PTO, too, has been active in analyzing § 101 law. See,
e.g., Ex parte Lundgren, 76 USPQ2d 1385 (B.P.A.I. 2004); Interim Guidelines for
Examination of Patent Applications for Patent Subject Matter Eligibility, Off. Gaz. Pat. &
Trademark Office, Nov. 22, 2005.
2007-1130 18