Thursday, March 17, 2016

Would Diehr and Morse Be Invalid Under the §101 Mayo Test?

As most patent practitioners are aware, the Supreme Court set forth a two-part test for determining patent eligibility under 35 U.S.C. § 101 in Alice Corp. v. CLS Bank International under the framework set forth in Mayo v. Prometheus Laboratories (e.g., the Mayo test). The Mayo test requires that (1) determine whether the claims at issue are directed to a patent-ineligible concept; and if so, (2) determine whether the claims at issue include an “inventive concept.”  In other words, a determination is being made of whether the claims at issue merely recite “well-understood, routine, and conventional activity” or whether an element or combination of elements within the patent recite an “inventive concept” that is sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the ineligible concept itself.

If one were to apply the Mayo test to patents previously held to be patentable (e.g., the Diehr patent, the Morse patent, etc.) by the Supreme Court, those patents may very well be found to be invalid as being directed to patent ineligible subject matter.

Recent trends during Patent Office examination, patents in post-grant proceeds, and decisions by federal courts have resulted in a determination of claims that are directed to patent ineligible subject matter.  Typically, a patent examiner, a Patent Trial and Appeal Board (PTAB) panel, or a federal court will find the claim is directed to an abstract idea under step one of the Mayo test and then distill or dissect the ordered combination into individual claim elements to find each of the individual claim elements are directed to “well-understood, routine, and conventional activity” at step two of the Mayo test.

Additionally, patent examiners, PTAB panels, and courts (see Ariosa v. Sequenom) will look to the applicant’s or patent owner’s specification to support a finding under step one or step two of Mayo.  For instance, the Federal Circuit found that the method steps set forth in Sequenom’s patent did not support patentability because the specification stated “[t]he preparation of serum or plasma from the maternal blood sample is carried out by standard techniques.” In other words, the Federal Circuit found that “the method steps were well-understood, conventional and routine, the method of detecting paternally inherited cffDNA is not new and useful.”

One particularly famous Supreme Court case upholding that the technology claimed in the patent application was directed to patent eligible subject matter is Diamond v. Diehr.  The Diehr patent was directed to “accurate and automatic control of the molding time for rubber compounds and the automatic opening of rubber-molding presses when the cure is calculated to be complete.”  Claim 1 of the Diehr patent recited:

A method of operating a rubber-molding press for precision molded compounds with the aid of a digital computer, comprising:

providing said computer with a data base for said press including at least,
natural logarithm conversion data (1n),
the activation energy constant (C) unique to each batch of said compound being molded, and
a constant (x) dependent upon the geometry of the particular mold of the press,

initiating an interval timer in said computer upon the closure of the press for monitoring the elapsed time of said closure,

constantly determining the temperature (Z) of the mold at a location closely adjacent to the mold cavity in the press during molding,

constantly providing the computer with the temperature (Z),

repetitively performing in the computer, at frequent intervals during each cure, integrations to calculate from the series of temperature determinations the Arrhenius equation for reaction time during the cure, which is 1n v=CZ+x

where v is the total required cure time,

repetitively comparing in the computer at frequent intervals during the cure each said calculation of the total required cure time calculated with the Arrhenius equation and said elapsed time, and

opening the press automatically when a said comparison indicates completion of curing.

If one were to apply step one of the Mayo test, one could argue the abstract idea is controlling molding times for rubber compounds.  In fact, the Supreme Court stated in its decision to find that the claims were directed to patent eligible subject matter “We view respondents’ claims as nothing more than a process for molding rubber products…”  

Transitioning to step two of the Mayo test, one could find that each claim element was “well-understood, routine, and conventional activity.”  One of the claim elements recites a well-known mathematical formula.  The Diehr specification states the “invention uses computers of well-known type with data storage banks containing the time-temperature cure data for the compound or compounds being used” and that “the relatively simple system of FIG. 1 is easily expanded within the capability of many present-day computers.”  As such, the specification of Diehr illustrates that the technology being utilized was already present. 

Finally, treating each claim element as being well-understood and conventional, one could then find that the claims, as a whole, do not amount to anything other the sum of the well-understood and conventional claim elements.

Most patent practitioners remember the Supreme Court case O’Reilly v. Morse as holding that an abstract idea, apart from its implementation, is not directed to patent eligible subject matter when the Supreme Court invalidated claim 8 of the Morse patent.  However, the Supreme Court also held that claim 1 of the Morse patent to be directed to patent-eligible subject matter.  More specifically, the Supreme Court stated “[t]he first seven inventions, set forth in the specifications of his claims, are not subject to exception.”
Claim 1 of the Morse patent recites:

Making use of the motive power of magnetism, when developed by the action of such current or currents substantially as set forth in the foregoing description of the first principal part of my invention, as means of operating or giving motion to machinery which may be used to imprint signals upon paper or other suitable material, or to produce sounds in any desired manner, for the purpose of telegraphic communication at any distances.

In essence, Morse disclosed the use of repeaters in between a transmitter and receiver to restore the signal transmitted by the transmitted to substantially its initial level.  Morse admitted in his specification that “it had been essayed to use the currents of electricity or galvanism for telegraphic purposes” prior to his invention.  Additionally, the individual components utilized by Morse had been previously available.

Applying the Mayo test to claim 1 of the Morse patent may also result in the claimed subject matter being found to be directed to patent ineligible subject matter.  For example, applying step one of the Mayo test, one could find the abstract idea to be utilizing magnetism to provide “communication at any distances.”

Applying step two of the Mayo test, one could find that each of the individual components were “well-understood, routine, and conventional activities.”  Again, treating each claim element as being well-understood and conventional, one could then find that the claims as an ordered combination do not amount to anything other the sum of the well-understood and conventional claim elements.

Thus, application of the Mayo test to patents previously held to be directed to patent eligible subject matter by the Supreme Court would likely result in a contradicting decision that those patents are instead directed to patent ineligible subject matter.  However, a solution may reside in this statement from then Justice Rehnquist in Diamond v. Diehr: “when a claim containing a mathematical formula implements or applies that formula in a structure or process which, when considered as a whole, is performing a function which the patent laws were designed to protect (e. g., transforming or reducing an article to a different state or thing), then the claim satisfies the requirements of 101.”  In other words, the claims need to be considered as a whole during application of step two of the Mayo test.  It is too simple to distill each claim into its individual claim elements to state that each element is “well-understood, routine, and conventional activity” and then consider that the ordered combination does not amount to anything other than the sum of those well-understood, routine, and conventional” claim elements.


  1. If the case did make it through the USPTO gist machine, it certainly would not make it past a circuit court judge who typically want nothing more than to rid their docket of patent cases.

  2. A finding that elements of the claimed invention were "well-understood, routine, and conventional activity” says nothing about whether the claimed invention is directed to an "abstract idea." However, welcome to the new world order, brought to you by SCOTUS, that turns the meanings of words upside down and 35 USC is treated as being advisory (subject to the whims of the Court).

  3. The USPTO Interim Guidance issued in 2014 analyzed the Diamond v. Diehr case in light of the Alice/Mayo test and found the claim eligible. See page 74626

  4. Thank you for your comment. I completely agree with this application of the Alice/Mayo test set forth in the USPTO Interim Guidance. However, I would offer that in a vacuum and considering very similar circumstances (e.g., similar claim elements, similar specification, etc.) that quite a few Examiners would issue a 101 rejection under these circumstances.