In re Diehr

602 F.2d 982, 203 U.S.P.Q. (BNA) 44, 1979 CCPA LEXIS 220
CourtCourt of Customs and Patent Appeals
DecidedAugust 9, 1979
DocketAppeal No. 79-527
StatusPublished
Cited by8 cases

This text of 602 F.2d 982 (In re Diehr) is published on Counsel Stack Legal Research, covering Court of Customs and Patent Appeals primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
In re Diehr, 602 F.2d 982, 203 U.S.P.Q. (BNA) 44, 1979 CCPA LEXIS 220 (ccpa 1979).

Opinion

RICH, Judge.

This appeal is from the decision of the Patent and Trademark Office (PTO) Board of Appeals (board) affirming the rejection of claims 1 — 11, all claims in appellants’ application serial No. 602,463, filed August 6, 1975, entitled “Direct Digital Control of Rubber Molding Presses.”1 The claims have been rejected under 35 U.S.C. § 101 as being drawn to nonstatutory subject matter. We reverse.

The Invention

Appellants claim a method for operating molding presses used in the manufacture of rubber articles. More specifically, appellants’ method produces molded articles which are properly cured, in that their method insures that the articles remain in the press for a period of time sufficient to insure that they are not overprocessed or underprocessed.

According to appellants’ specification, achieving a perfect cure depends upon several factors, including the thickness of the article to be molded, the temperature of the molding press, and the amount of time that the article is allowed to remain in the press. These factors are related by the Arrhenius equation,2 which appellants acknowledge has always been used to calculate the cure time in rubber molding processes.

From a reading of appellants’ specification and their brief before this court, it appears that they characterize their contribution to the art as residing in the step of repeatedly or constantly measuring the actual temperature in the mold. These temperature measurements are then used to calculate the cure time by repeatedly using the Arrhenius equation to arrive at the actual cure time, rather than by the conventional method which uses a single calculation using that equation based upon the temperature nominally set by a thermostat which controls the heater in the molding press. The conventional method is inherently inaccurate because the temperature value used in the equation is rarely, if ever, the true temperature in the mold environment.

Claim 1 is representative and reads:

1. 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 (In), 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 calculating in the computer, at frequent intervals during each cure, the Arrhenius equation for reaction time during the cure, which is
[984]*984In v = C Z + x
where v is the total required cure time, repetitively comparing in the computer

at said 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 equivalence.

The other claims are similar. Claim 11 does not recite the use of a computer to do the calculating, but, as we shall explain, we find this fact to be of no moment.

The Rejection

The examiner rejected the claims because he believed that the only non-conventional claim steps “define a computer program for taking repeated temperature measurements from the mold and calculating cure time in response to said measurement data.” On this basis, he decided that appellants were claiming a computer program, “subject matter [to] which, the Supreme Court has declined to extend patent protection absent a considered action by Congress.”

The board agreed with the examiner. It dismissed appellants’ argument that no computer program was disclosed in the specification, citing an admission to the contrary made by appellants during prosecution.3 The board was aware of the then newly announced Supreme Court decision in Parker v. Flook, 437 U.S. 584, 98 S.Ct. 2522, 57 L.Ed.2d 451, 198 USPQ 193 (1978) (hereinafter Flook), and made use of it in support of its decision to affirm the rejection.

The board, in its examination of claim 1, perceived the only “non-programming” step to be “constantly determining the temperature (Z) of the mold,” and stated that according to appellants’ specification, in “Background of the Invention,” it was old in the art. The board analyzed the other steps recited in claim 1 as being directed to gathering data for use in the recited formula or as “post solution activity,” which, according to Flook, would not render the claims statutory. The board concluded that appellants’ system involves an algorithm solving a mathematical problem in the sense involved in Flook.

After similarly analyzing the remainder of the appealed claims, the board concluded as follows:

It is our view that the only difference between the conventional methods of operating a molding press and that claimed in appellants’ application rests in those steps of the claims which related to the calculation incident to the solution of the mathematical problem or formula used to control the mold heater and the automatic opening of the press.
We think that appellants’ contribution, regardless of claim format, is a computer program of the character which the USSC has indicated, in both Flook and Benson,[4] is outside the bounds of 35 USC 101. [Emphasis ours.]

Appellants’ Arguments

Appellants argue that they have claimed a process which is basically chemical and physical in nature, not a computer program [985]*985or the type of mathematical algorithm involved in Flook. They do, however, as they must, acknowledge that calculations according to a recited formula are explicitly involved in the claimed process.

They strenuously take issue with the factual conclusion made by both the examiner and the board that their step of continuously measuring the temperature in the mold cavity is old in the art. They attribute this error to a misreading of their specification and assert that they are the first to employ this step in the molding process.

Appellants also say that the PTO has erred by dissecting their claims into what the PTO considers to be novel and non-novel elements in order to wrongfully conclude that they are claiming a computer program.

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Related

Diamond v. Diehr
450 U.S. 175 (Supreme Court, 1981)
In re Walter
618 F.2d 758 (Customs and Patent Appeals, 1980)
In re Sherwood
613 F.2d 809 (Customs and Patent Appeals, 1980)
In re Phillips
608 F.2d 879 (Customs and Patent Appeals, 1979)

Cite This Page — Counsel Stack

Bluebook (online)
602 F.2d 982, 203 U.S.P.Q. (BNA) 44, 1979 CCPA LEXIS 220, Counsel Stack Legal Research, https://law.counselstack.com/opinion/in-re-diehr-ccpa-1979.