In re Grams

Citation: In re Grams, 888 F.2d 835 (Fed. Cir. 1989).

Factual Backgroundn
The invention involved method claims that combined a mathematical algorithm with data gathering steps. The invention at issue was a process for diagnosing a patient using an algorithm that manipulated data obtained from results of tests performed on the patient. The claim involved performing clinical laboratory tests on an individual to obtain data indicative of the individual’s medical condition. The invention further involved processing steps for manipulating the collected data. As a result of this process, a set of parameters corresponding to a combination of constituents responsible for the medical condition could be identified.

Federal Circuit Decision
Citing Benson, the Federal Circuit stated that these remaining steps were “a procedure for solving a given kind of mathematical problem. The court cited the rule of In re Abele, which stated that:


 * [i]f a claim would be otherwise statutory, albeit inoperative or less useful without the algorithm, the claim likewise presents statutory subject matter when the algorithm is included.

The Federal Circuit would not interpret this language as declaring any claim that was statutory without the algorithm as patentable. It also pointed to the “provided that" qualification in Abele as denying effect to field of use limitations or nonessential post-solution activity. The court decided that the claimed process was nonstatutory subject matter because the step of performing lab tests “merely provides the data for the algorithm,” and that whether or not the claims required that the method be performed by a programmed computer was irrelevant to the determination of whether the claim defined a Section 101 process.