Obviousness with Business Methods

intellectual concepts are not patentable, as they are basic tools of scientific and technological work."" 5 Six years later, in 1978, the Supreme Court had another opportunity to examine the patent eligibility question regarding software inventions in Parker v. Flook."6 Unlike Benson, where the invention was not directed toward a particular apparatus or end use,' ,' the claims in Flook operated to adjust alarm limits in a catalytic converter apparatus." 8 Flook argued that his invention did not pre-empt the mathematical formula because the formula had uses outside the catalytic conversion process that remain in the public domain.' 19 Additionally, the Flook claims differed from the invention in Benson in that they contained more than just the mathematical formula or algorithm; the claims also described so-called "post-solution" activity, namely the adjustment of the alarm limit according to the formula.1 Despite these differences from Benson, the Court held the invention was unpatentable because to permit a patent to be issued here would allow careful draftsman to patent 111. Id. at 64. 112. Id. at 67. 113. Id. at 72. 114. 35 U.S.C. § 271(a) (1994). 115. Benson, 409 U.S. at 67 (emphasis added). 116. 437 U.S. 584 (1978). 117. Benson, 409 U.S. at 64. 118. Flook, 437 U.S. at 585. 119. Id. at 590. 120. Id. 20021 UNIVERSITY OF MIAMI LAW REVIEW ideas and phenomenon of nature previously prohibited by including "post solution" activity. 121 The Court held "[t]he rule that the discovery of a law of nature cannot be patented rests, not on the notion that natural phenomenon are not processes, but rather on the more fundamental understanding that they are not the kind of discoveries that the statute was enacted to protect." 122 According to the Flook Court, laws of nature are not new, but have always existed and thus are not eligible for patent protection under the Utility Standard in 35 U.S.C. § 101.123 The Court did not completely foreclose the use of mathematical algorithms or laws of nature in patentable inventions however. One must now claim inventive application of the mathematical algorithm or law of nature. 124 Flook highlights the problem of attempting to isolate one of the three basic criteria for the grant of a patent. In Flook, the Court rejects the claim as unpatentable principally because the "chemical process involved in catalytic conversion of hydrocarbons are well known, as are the practice of monitoring the chemical process variables, the use of alarm limits to trigger alarms, the notion that alarm limit values must be recomputed and reajusted ...125 In his dissent, Justice Stewart argues that the majority's reasoning is based more squarely on Novelty, 35 U.S.C. § 102, and Non-obviousness, 35 U.S.C. § 103, than on patent eligibility, 35 U.S.C. § 101.126 In Justice Stewart's view, the question before the Flook Court was whether a claimed process looses its status as patentable subject matter under 35 U.S.C. § 101 because one step of the process would not be patentable if considered in isolation.'22 While the majority would seem to agree that the claims must be read as a whole, 1 8 they characterize the "process as unpatentable under § 101, not because it contains a mathematical algorithm as one component, but because once than algorithm is assumed to be within the prior art, the application, considered as a whole, contains no patentable invention."' 129 If the invention is found within the prior art, i.e. the invention was already made prior to Flook's discovery, then it would be said to be anticipated by the prior art, and thus be unpatentable under 35 U.S.C. § 102, Novelty.' 30 Although 35 U.S.C. § 101 includes language requiring that the invention be "new and useful," Flook illustrates the diffi-