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In re Grams (888 F.3d 835, 1989 Nov 03)

Decision Parameters

Decisions It Cites

    Gottschalk v. Benson [409 U.S. 63, 1972]
    In re Christensen [478 F.2d 1392, 1973]
    In re Chatfield [545 F.2d 152, 1976]
    In re Richman [563 F.2d 1026, 1977]
    Parker v. Flook [437 U.S. 584, 1978]
    In re Sarkar [588 F.2d 1330, 1978]
    Diamond v. Chakrabarty [447 U.S. 303, 1980]
    In re Walter [618 F.2d 758, 1980]
    Diamond v. Diehr [450 U.S. 175, 1981]
    In re Abele [684 F.2d 902, 1982]
    In re Meyer [688 F.2d 789, 1982]

Decisions That Cite It

    In re Bilski [545 F.3d 943, 2008]

Rules & Quotes

{1} Notwithstanding those statements in Diehr and Chakrabarty, Benson remains the law. Indeed, Benson is cited in both Diehr and Chakrabarty, with no apparent attempt in either opinion to overrule or disapprove of it. Thus, "an algorithm, or mathematical formula . . . like a law of nature . . . cannot be the subject of a patent." Diamond v. Diehr, 450 U.S. at 186, 101 S.Ct. at 1056.

[PROCESS] {2} The sole physical process step in Grams' claim 1 is step [a], i.e., performing clinical tests on individuals to obtain data. The specification does not bulge with disclosure on those tests. To the contrary, it focuses on the algorithm itself, although it briefly refers to, without describing, the clinical tests that provide data. Thus, it states: "The [computer] program was written to analyze the results of up to eighteen clinical laboratory tests produced by a standard chemical analyzer that measures the levels of the chemical biological components listed. . . ." The specification also states that "[t]he invention is applicable to any complex system, whether it be electrical, mechanical, chemical or biological, or combinations thereof." From the specification and the claim, it is clear to us that applicants are, in essence, claiming the mathematical algorithm, which they cannot do under Gottschalk v. Benson. The presence of a physical step in the claim to derive data for the algorithm will not render the claim statutory.

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