Digital Law Online: Flook

About the same time as Freeman, the CCPA reversed a decision of the Board that the claims of Dale Flook to a method of updating alarm limits in a chemical process recited nonstatutory subject matter under the Benson decision. {FN21: In re Flook, 559 F.2d 21, 195 USPQ 9 (1977)} The only independent claim was

A method for updating the value of at least one alarm limit on at least one process variable involved in a process comprising the catalytic chemical conversion of hydrocarbons wherein said alarm limit has a current value of Bo+K

wherein Bo is the current alarm base and K is a predetermined alarm offset which comprises:

(1) Determining the present value of said process variable, said present value being defined as PVL;

(2) Determining a new alarm base, B1, using the following equation: B1 = Bo(1.0-F)+PVL(F)

where F is a predetermined number greater than zero and less than 1.0;

(3) Determining an updated alarm limit which is defined as B1+K; and, thereafter

(4) Adjusting said alarm limit to said updated alarm limit value.

The CCPA framed the issue as whether a processes that uses a mathematical algorithm in an otherwise statutory process (in this case, a chemical conversion process), rather than is wholly a mathematical algorithm, is statutory.

Benson’s proscription was limited by its words to claims which involve a “mathematical formula” and which “would wholly pre-empt the mathematical formula.” The present claims do not preempt the formula or algorithm contained therein, because solution of the algorithm, per se, would not infringe the claims. Thus, Benson’s holding does not render the claims before us unpatentable. {FN22: 559 F.2d at 23, 195 USPQ at 11 (citations omitted)}

The CCPA stated that if a mathematical algorithm is claimed for a particular use but not all possible uses, it does not preempt the mathematical algorithm and is therefore statutory subject matter. The Patent Office appealed to the Supreme Court.

The Supreme Court, in Parker v. Flook, {FN23: 437 U.S. 584, 198 USPQ 193 (1978)} held that the claim was nonstatutory. It observed that “the claims cover a broad range of potential uses of the method” but noted that they do not “cover every conceivable application of the formula.” But the Court said that the proper approach to be used is to look at the process in general:

The process itself, not merely the mathematical algorithm, must be new and useful. Indeed, the novelty of the mathematical algorithm is not a determining factor at all. Whether the algorithm was in fact known or unknown at the time of the claimed invention, as one of the “basic tools of scientific and technological work,” it is treated as though it were a familiar part of the prior art. {FN24: 437 U.S. at 591-592, 198 USPQ at 198 (citations omitted)}

Because the chemical process, absent Flook’s particular alarm limits formula, was well-known, the Court ruled that the claims did not recite statutory subject matter.

Remember, though, that we are trying to determine only whether Section 101 is satisfied, not whether Section 102’s novelty or Section 103’s nonobviousness requirements are met. The Court has imported novelty considerations into statutory subject matter. Flook still does not provide the clear view of what, if any, software-based processes are statutory subject matter under Section 101.

In light of Flook, the CCPA revised its two-step Freeman test in In re Walter. {FN25: 618 F.2d 758, 205 USPQ 397 (1980)}

The second step of the Freeman test is stated in terms of preemption. We note, however, that Flook does not require literal preemption of a mathematical algorithm found in a patent claim. The Court there stated that Flook’s claims did not “cover every conceivable application of the formula.” Nevertheless, we believe that the Freeman test, as applied, is in no way in conflict with Flook.

In order to determine whether a mathematical algorithm is “preempted” by a claim under Freeman, the claim is analyzed to establish the relationship between the algorithm and the physical steps or elements of the claim. In Benson and Flook, no such relationship could be found; the entire claim was, in each case, drawn to the algorithm itself. . . .

When this court has heretofore applied its Freeman test, it has viewed it as requiring that the claim be examined to determine the significance of the mathematical algorithm, i.e., does the claim implement the algorithm in a specific manner to define structural relationships between the elements of the claim in the case of apparatus claims, or limit or refine physical process steps in the case of process or method claims? The point of the analysis is the recognition that “A principle, in the abstract, is a fundamental truth; an original cause; a motive; these cannot be patented,” and that, “a hitherto unknown phenomenon of nature” if claimed would not be statutory, but that “the application of the law of nature to a new and useful end,” would be.

While we have stated the test in terms of preemption, we have consistently applied it in the spirit of the foregoing principles. Since we have noted that Flook does not require literal preemption of a mathematical algorithm by a claim for a finding that the claim is nonstatutory, we thus deem it appropriate to restate the second step of the Freeman test in terms other than preemption. Once a mathematical algorithm has been found, the claim as a whole must be further analyzed. If it appears that the mathematical algorithm is implemented in a specific manner to define structural relationships between the physical elements of the claim (in apparatus claims) or to refine or limit claim steps (in process claims), the claim being otherwise statutory, the claim passes muster under Section 101. If, however, the mathematical algorithm is merely presented and solved by the claimed invention, as was the case in Benson and Flook, and is not applied in any manner to physical elements or process steps, no amount of post-solution activity will render the claim statutory; nor is it saved by a preamble merely reciting the field of use of the mathematical algorithm. {FN26: 618 F.2d at 767, 205 USPQ at 407 (citations omitted)}

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