By Michael Borella and Ashley Hatzenbihler[1]– Introduction Diamond v. Diehr, decided by the Supreme Court in 1981, seemed to establish a bedrock principle of statutory construction for patent law. The Court stated that “[t]he ‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the 35 U.S.C. § 101 categories of possibly patentable subject matter.” That proclamation appeared to slam the door shut on any consideration of novelty, or by extension non-obviousness, as part of the subject matter eligibility calculus….
