My second (belated) post about 101.

I don't believe 101 is a defense to infringement (as y'all know), but let's assume that it is.

Let’s start with the types of subject matter, which seems to be misunderstood by alot of people.  There are three categories of "ineligible subject matter," two of which are intangible, one tangible:  intangible abstract ideas and laws of nature (probably overlapping to some extent?) and tangible “natural phenomenon.”  To make this clearer, I’ll call that third category “natural products.”  (There are enormous definitional problems here:  why is the rate at which the body metabolizes a synthetic drug a “law of nature” being a glaring one, but let’s keep going.)

You know the basic types of claims or you wouldn’t be reading this.

With that framework, here is what the Supreme Court cases teach:  if a method claim is deemed to embrace intangible subject matter, or if a product claim embraces a natural product, the claim is at least suspect.  There’s a lot in that which we’ll get to in a moment, but that formula predicts the outcome of every Supreme Court case since 1952, plus Funk Brothers (which I have doubts survived the 1952 amendments to the Patent Act but that's for another day):

Case

Product claim?

Process claim?

Any ineligible subject matter, and if so what type?

Result

Comments

Funk

X

 

Natural product

No invention

 

 

         

 

         

Gottschalk

 

X

Intangible

No invention

 

Parker

 

X

Intangible

No invention

 

Diehr

 

X

Intangible

Invention

Because the process was tied to a particular application (not machine, but process), the subject matter was eligible.  Court almost looked at is like a product-by-process claim

Chakrabarty

X

 

 

Invention

Not natural product; but notice that if it had been…

Bilski

 

X

Intangible

No invention

 

Prometheus

 

X

Intangible

No invention

 

Myriad

X

 

To an extent, natural product

To extent natural product, no invention.

In dicta emphasized that a method claim would have been fine.

 Thus, there is a correlation between the use of a method claim and an intangible.  The reason for this correlation between claim type and the tangibility of the ineligible subject matter is, I suspect, that, absent unusual circumstances, a process claim using a natural product isn’t precluding all uses of the natural product, but a product claim on the natural product itself does so.  Vice versa with process claims claiming intangibles.

I hear the objections.  Some say that focusing on claim type will lead to clever drafting.  But, a method claim covering a use a tangible natural product won’t get the same coverage as a product claim, and vice versa. Clever drafting will only get you so far and what’s wrong with clever drafting, anyway?  But, I hear the objection. I’ll overrule it.

Now, so far, I think, this is relatively simple.  But it led me to what, I think, is an important insight:  a method claim to an intangible is the mirror image of a product claim to a natural product. That, I think, helps us to deal with some questions about how much is “enough” in the context of a method claim to an intangible—a serious and messy question.  (And, in my view as noted above, an unnecessary and unauthorized one, and a stupid one – how much is “enough” is 103!)

Let’s see what we can see.  A product claim on a new mineral found in nature is ineligible. The product claim is coextensive with the natural product, which is old, even if newly discovered. There’s plenty of dicta on that point, and Myriad so holds.  The legislative history of the 1952 act also shows that Congress wanted to bar these claims (though it expressly made clear that it wanted to permit claims to methods using “old” natural products). 

The converse of the foregoing is that a method claim coextensive with even a newly discovered intangible law or idea should not be eligible.  Let’s ignore the fact that that conclusion flies in the face of the statutory language that was added to overcome limitations on what was a “process” (“including a process, art or method which includes a new use of a known process, composition, manufacture, machine, or material….”).   Since the Supreme Court hasn’t seemed to notice that problem, we’ll skip past it, too.

 So we have some easy observations:  a product claim coextensive with a natural product is ineligible, as is a method claim coextensive with the abstract law or idea.

 Now, let’s deal with the other end of each spectrum.  The dicta in Myriad was that someone who discovers a natural product should go get method claims on it.  That would be fine.  So, a process claim is fine even though it mentions a natural product.  No news there.

What if someone discovers (which means “invent” under the 1952 act) an old intangible, including a natural product?  There’s no ready analog I can think of to a method claim mentioning a natural product:  it would be a product claim mentioning an abstract idea.  Although I’m sure they exist, they would seem to be a product-by-process claim (much like Diehr was analyzed, in my view).  So, a product by process claim should be fine even though it mentions an old intangible.

Now, let’s dig a little deeper into the muddy middle of these spectrums. Suppose my new mineral has a name (“Hricikite”), and a chemical structure.  If I merely claimed Hricikite in terms of its chemical structure, that fails.  The analog, I suggest, would be to try to claim an abstract idea by simply laying out its steps.  This was, perhaps, CLS Bank:  the claim basically broke down the abstract idea of an escrow into its constituent parts, much like the claim to the chemical structure did so with Hricikite.

 But in each case, this is “bad’ clever claim drafting.  Putting it aside, and I think we would agree, that beyond those efforts to use more words to claim the ineligible subject matter, it doesn’t take much to make a method claim mentioning a natural product eligible.  A new use for an old product is enough.  The statute says the same thing about processes. My key point:  If these symmetries hold true, that means that it also should not take much to make a method claim to an intangible eligible. 

I am probably missing a lot.  What do you think?

63 thoughts on “My second (belated) post about 101.

  1. It is difficult to get R. Stern to engage in an open debate. I can’t imagine why. :) Could it be because he is wrong and his views don’t hold water.

  2. R Stern — To be complete, I think whether someone has “invented” something turns on 102 and 103. That is what Congress wanted.

    Finally, realize that it is only in the last 2 years that the Court wandered, erroneously I’d say, into allowing 101 to be an invalidity defense.

    The legislative histories of the patent act are gathered at ipmall.com, or something like that. It’s pretty revealing to read them… Especially the discussion about In re Thau and why they were amending the definition of “process” to expand it… not contract it!

  3. Prior to 1952, the statute was 4886, and it only talked about the “invention” being “new.” However, in 1952, Congress defined “invent” to include “discover” and made clear that anything “more than” new was in 103 — not in 101 or anywhere else.

    Chief Judge Rader’s CLS opinion goes into this a lot.

  4. Prof. Hricik,

    I would point out that some actively seek the Judicial route to attempt to change what the Legislature did in 1952.

    Make no bones about it, this activity is philosophically driven, and is anathema to anyone who believes in the rule of law, the separation of powers, restrained judicial activism, and the Constitution.

  5. And to answer you directly, the word “invents” in 101 should be looked at with no less scrutiny than the word “any.”

    Or to put in another way, the use of the word in 101 is NOT meant in any limiting manner – as you would seem to ignore what the writers of the 1952 Act have stated.

  6. Prof. Stern,

    Context good sir – I will not play semantics with you as you very well know the context of the removal – look to the words of your brother in academia here, and let’s pay attention.

  7. Why is the word “invents” in section 101, if Congress Congress purposefully eliminated the word “invent[ion]” in the ’52 act?

  8. 6 states “I quite agree. He should read that reference I showed you the other day to get himself up to speed.” all the while knowing (or should know) full well that the reference he speaks of does not support his position and would abolish ALL but the simplest (and simplest to design around) picture claims that do not climb any rungs on the ladder of abstraction.

    6, your continued attempt to incorrectly use the reference needs to stop.

  9. I think the real answer to whether this is good law is the fact that no one can agree on what the law is, and they recognize the cases are irreconcilable (Flook and Diehr?) and unpredictable (the rate at which the body metabolizes a man-made drug is a law of nature?).

    It’s nonsense. Read some of the pre-1952 “invention” cases and you see exactly the same sort of “analysis” going on — judges saying “well, this isn’t enough to be invention.” That’s 103….

    Forward, into the Past —

  10. “solutions are not structure any more than functions are.”

    What? So, a special purpose chip that performs the function is not structure? A definite set of solutions is what makes the claims not abstract.

    You see you are disingenuous 6. Try. Try. Try to reform yourself. Try to honestly understand these issues.

  11. Why is that a strawman? In fact it is not. It is another example of how macro reasoning negatives psychotic arguments of Lourie. How 6 does a computer perform functions with no structure? How is that possible?

  12. Rabid madness from you 6, again. 6, do you care what is a fair answer under the law and given the technology or do you just want to argue and try to get the policy you think is the right policy?

    (And, by the way, a judicial exception applied at the Federal Circuit is supposed to be an something that is applied as narrower as possible and used as a last resort.)

  13. “And let’s be REALLY clear. Those skilled in the art describe the machines and methods using functional language and that functional language clearly defines a set of solutions.

    Just go and look at a website that bids out software.”

    I’ll take you at your word, it’s a “set of solutions”. Nobody a dam. Solutions are not structure any more than functions are.

  14. “Just how do you think machines work?”

    That depends on the machine brosef.

    “Do you think two machines with the same structure can perform different functions?”

    Yeah they do all the time. Like literally, allllllll the time. For instance, my hammer in my closet can perform the functionality of driving a nail into a board. An exact copy of my hammer from the store can also perform the different function of prying a nail loose from a board. Same structure, different functions.

    “This is the type of reasoning that is persuasive at the Fed. Cir. because we have people that are ignorant of science and scientific thought.”

    For good reason it sounds to me like.

    “Furthermore, those skilled in the art describe the inventions using functional language”

    Well, to be clear, the use abstract functional language about compairing, sorting etc. to describe the abstract mathematicla functions carried out by the machine whose sole function is in its name… computer, as in it computes things. So… they use language that is, wait for it, explicitly forboden, to describe their inventions. That’s fine, it just doesn’t cut the mustard for patent eligibility generally speaking.

    “That the inventors are describing things that have no structure to each other?”

    Well that’s what they’ve stated, explicitly, in the references so far made of record here on PO. I’m still waiting for your declaration so I can weigh me up some evidence.

    “That people building actual machines discuss them devoid of structure? ”

    That’s actually one of the major points to even having “programming” as an endeavor of human beings. So you don’t have to discuss the actual structure.

    “Outrageously ridiculous propositions.”

    How is that outrageous and ridiculous? When you look at Alice’s claim, you don’t think to yourself a big stream of very specific 1’s and 0’s. You think about them in the abstract. Precisely how they were meant to be thought of.

    Sometimes I think you may have watched the Matrix a time or two too many.

    “Functional claims in information processing describe a set of solutions that is well understood by those skilled in the art.”

    Ok. Too bad that doesn’t mean squat and nobody gives a dam.

  15. “The presumption of validity.”

    Gotcha, so in the PTO the claim would be invalid as written under 101, but once it graduates to the DC, it’s valid under 101.

    /boogle.

    This isn’t something about the form of the claim or whatever like the office is imposing in Miyazaki or with BRI just to get things sorted out and clear.

    This is about fundamentally, and in terms of substance, whether the actual subject matter being eligible or ineligible.

    “Moreover, a circuit court judge should not be making findings of fact based on no evidence particularly when the circuit court judge has no understanding of the technology.”

    I quite agree. He should read that reference I showed you the other day to get himself up to speed.

    “Do you understand how absurd it is to say that a machine that is performing a specific function has no structure?”

    Good thing that is a strawman that nobody has ever stated.

  16. Congress only wins if they’re more explicit than they were. It was decided shortly after the passage of the 1952 act what it meant to change, by the USSC no less, and based on the goings ons of the congress no less. If you take issue with those ancient decidings of the USSC then you should have made congress aware of your concerns ages ago.

  17. So they’re not evil, they’re just unethical and l iars. I thought to li e was an evi l act, making one evi l, according to the christi an sects in this country. Aren’t you a member of one of the christi an sects?

  18. And let’s be REALLY clear. Those skilled in the art describe the machines and methods using functional language and that functional language clearly defines a set of solutions.

    Just go and look at a website that bids out software.

    Just a shameful state that people are intentionally misrepresenting the facts to get their policy.

  19. Just how do you think machines work? Do you think two machines with the same structure can perform different functions?

    This is the type of reasoning that is persuasive at the Fed. Cir. because we have people that are ignorant of science and scientific thought.

    Furthermore, those skilled in the art describe the inventions using functional language. Just how do you think that would work? That the inventors are describing things that have no structure to each other? That people building actual machines discuss them devoid of structure? Outrageously ridiculous propositions.

    Functional claims in information processing describe a set of solutions that is well understood by those skilled in the art.

  20. The presumption of validity. Moreover, a circuit court judge should not be making findings of fact based on no evidence particularly when the circuit court judge has no understanding of the technology.

    Do you understand how absurd it is to say that a machine that is performing a specific function has no structure? I suspect not.

  21. A patent is presumed valid absent CLEAR AND CONVINCING EVIDENCE — not argument, not philosophy, not nonsense — to the contrary. That’s why the burden is on the defendant.

  22. You seem to be familiar with the topic David, why on earth would you want evidence for the position that they do not add structure as opposed to needing evidence that they do in fact add some, very specific, structure. In most cases the functional limitation is the only distinguishing element in the claim, contrary perhaps to ultramercial’s fact pattern. Surely whatever structure that it supposedly adds needs to be very specific and described in the specification, if not even in the claims themselves (see 112 2nd’s command to claim that which you believe subjectively that you invented, if they believe they invented a structure, then they should have to claim that structure).

  23. “do not add structure when there is no evidence on the record to support that finding”

    Why would you think that you would need evidence to show that they do not add structure as opposed to instead needing evidence that they in fact do add structure? I’m just curious, why do you think the burden of proof should be on the side asserting simply that functional limitations are not in fact structural limitations? I mean, that’s fairly straight forward. And then the other side counters with an argument, unsupported by evidence, that the functional limitations “add structure”. Where they really mean, supposedly, “add physical structure”. If they’re going to assert it, then surely they can provide some evidence to support that argument.

  24. In CLS Bank Lourie just walked through the elements and found that they did not add structure. Absurd that a database and a prioritize list of tasks does not add structure. And, the other thing is that if these elements were nothing then there would have been plenty of systems with these elements for a 102 or 103.

    The 101 jurisprudence does not hold up under the light of the real world. Lourie’s analysis is devoid of reality. A database does not add structure? How could that be? No one skilled in the art would say that the claims in CLS Bank lacked structure. (And I am one skilled in the art and a patent attorney.)

  25. Thank you Prof. Hricik, I keep on telling Ned that Congress purposefully eliminated the word invention in the 1952 Act.

  26. Malcolm is wrong of course.

    Ned, we’ve been over this before – the end result of the Diehr process was not new – there were perfect cures prior.

    You are trying very hard to not move forward.

  27. Ned, Hotchkiss is, of course, the famous 103 case that was codified in 103… to avoid all this nonsense. So whether it’s “new enough” or “enough” or whatever doesn’t matter any more. Invention doesn’t matter.

    One day a court will actually decide these issues and face the reality of the statute… maybe. I know it’s percolating now and hope to see it! I also hope it’s not a case I’m conflicted out of due to Fed. Cir. R. 50 so I can write an amicus!

  28. David, but what IS a new use of an old process? Example: chewing food. Is the chewing of a particular food a new use, or using the food-chewing method to make medicine rather than for swallowing a new use?

    Take Hotchkiss v. Greenwood. Doorknob, but made with clay, not wood. No structural differences. Held: the work of the ordinary mechanic. Like the method of chewing food, the process (structure) was not new, just the clay, that had no different functional relationship to the structure.

    Back to Prometheus. Old process of comparing one DNA with another. Prometheus accuses of infringement the substitution of unpatentable DNA. Malcolm argues this is not patentable per se because the only thing new is ineligible and the overall product of the process is the same.

    He is right of course.

    All this could easily have been sorted by using the MOT. We need to make that test all but exclusive — if the claim does not pass that test, the burden of persuasion should shift.

  29. And the Fed. Cir. decisions are devoid of evidence. How absurd for a judge to go through claim elements and say they do not add structure when there is no evidence on the record to support that finding and the judge is completely ignorant of the technology.

  30. “Congress in my view got rid of this mumbo jumbo in 1952 and replaced it with 103. That brilliant statute is being undone by judicial meddling.”

    6 – get out your time machine and realize who first posted this on the main Patently-O site.

    Double Amen, Prof. Hricik.

  31. Yeah, you have to control c any long post. You never know when it will get caught by the censor. I am pretty sure Lem$ey is now part of the censor. I guess the litigator is fed up with people saying what he really is.

  32. The other thing missing is just the reality of the science of information processing. Imagine a Federal Circuit that is supposed to be our one court in our entire nation that understands science and they don’t even know the Church-Turing Thesis, which is one of the most important theses every posited by man. And, yet we hear en banc Federal Circuit judges spending 1/2 an hour discussing paper and pencil vs. non-paper and pencil inventions. Shameful. And, frankly in a just world is enough to support the impeachment of the entire Federal Circuit.

  33. All of this is ridiculously complicated. And, the 101 SCOTUS common law is completely out of sink with the 1952 Patent Act and the advances in science.

    The core or nut of the problem is whether or not a method that is processing information is eligible for patentability. It takes time, energy, and space to process information. Information is conserved. Information is as much an attribute of our universe as the laws of motion.

    Benson attempts to get the policy result that these methods are not meant to be eligible as in the hardware is what is important and these methods are just things that are used to design hardware. That is the nut of it. And, Benson tries to get this result dishonestly and unethically by saying that first such a method is a law of nature or abstract. Benson puts everything in there that is possible and the various arguments of Benson have all been burned at the stake except the abstract argument.

    It is just shameful that in our society we have people that will intentionally misrepresent science to try to get their policy results.

  34. What people are doing is ignoring the word “known” in 100(b). Indeed, the Supreme Court has gone further and said even a new process using an UNKNOWN process/composition is not “eligible” (whatever that means).

    Congress wins.

  35. Dang it. I wrote a long post and it didn’t show up. I’ll just use the statute, but the meaning of 100(b) was EXPANDED in 1952 to overrule a case (Thau) that had addressed composition of matter claims to a composition on which the patent had lapsed, and in dicta had stated that “invention” (in the old statute) did not include the new use of a material on which the patent had lapsed. Congress sought to “eliminate the doubt” that Thau had created that and did so in 100(b).

    100(b) The term “process” means process, art or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material.

    101 Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

    So, if I discover an improvement on a process it is eligible for patenting even if it includes the new use of a known process, machine, composition, material.

    The argument that is left, I suppose, is that a “natural product” is not a “material” or “composition of matter.” Really?

  36. Malcolm: “Another analogy may suffice. I “discover” a “new” but ineligible fruit growing on an unexplored mountaintop in the Amazon. I can’t claim the fruit. But can I claim “A method, comprising eating said fruit” (one step). Or “A method, comprising picking said fruit from the tree.” I think the answer is no.”

    How does this compare to your (much repeated) analogies of a molecule ‘invented’ but later found to be naturally occurring – be it in the stomach of a sea urchin, monkey, or (gasp) on a tree?

    I gt that you are attempting a distinction here with a focus on ‘method’ – but your own example dooms your attempts to differentiate the item (much as I attempted to explain to you so many times).

    Your point here seems to want to divorce the inputs from the process and focus only on the process steps.

    Now that argument may have some merit. One difference that you do need to keep in mind with such a position though, is the inherent relationship between the inputs and the steps. You NEED to ask yourself if they are functionally related.

    You will (or should) note the resonance of those words. You will (or should) note that the exception to the printed matter doctrine (controlling law for which you have volunteered your admission as to knowing) uses those words to make a critical distinction. You will (or should) – as should Leopold – recognize that this distinction makes all the difference.

    Sometimes it is NOT just a level above kindergartner analysis that is required – sometimes it is the pure honesty of a kindergartner that is required. I suggest that you look into the difference between childlike and childish.

  37. Malcolm: “needs to understand why the ineligible product recited in the claim has been deemed ineligible in the first place (and this is where the Myriad decision was a bit of a disappointment).”

    I explained this to you many times – the decision mirrors my explanation to you. In our discussions prior to the Supreme Court decision you even switched your position (briefly) to mirror mine.

    And yet, you continue to post in denial.

  38. Prof Hricik: “A new use for an old product is enough.”

    Malcolm: “You seem to have lost the thread here. This is not an “old product” we’re discussing. It’s an ineligible product that, for patent law purposes, is nonetheless ‘new’.”

    Thanks for proving my point on the conflating bit.

    This is a point of discussion on the main patently-o threads for which you disappeared, even as I invited you to substantively join in. (see link to patentlyo.com )

    Funny, how Leopold’s comments just don’t fit.

  39. Ned,

    You seem to have forgotten:

    Bilski: MoT not required.
    Prometheus: MoT not sufficient.

    Thank you for remembering this in further discussions.

  40. David, most of us long ago figured out that what the Supreme Court meant in Benson was that a method claim that produced an intangible result (a number, hope, beauty, grace, etc.) was not eligible. This is why the MOT was and is such a beautiful and complete test, it requires a physical transformation.

    Simple, and easily understood. Just as is your “intangible” observation.

    What can we do given Bilski?

  41. Professor Hricik, could you do a post perhaps, here on your ethics blog, about the ethical implications of lawyers not respecting the law/supreme court in the context of 101 and the recent rulings?

  42. “Note that it was this same information that was deemed to be so fundamental that Myriad’s admittedly man-made compositions were deemed ineligible”

    Well I’m glad you cleared that up, I could have sworn that the supremes themselves said that they tossed the composition claims because Myriad finally was driven to admit that the invention was actually the discovery of the new gene. I mean, that’s what the first few sentences of the decision said so far as I recall. Or are we talking about at the district court level with J. Sweet?

  43. Perhaps you’d be so kind as to give us an example of an eligible “new use for a candy bar” David? You know, like just what do you have in mind?

    “If not, then pretty much every method claim is toast.”

    While I would agree that there are likely many new uses for candy bars out there that are eligible methods (perhaps a method of making larger candy items akin to, but not the exact same as smores) but I don’t even call those “new uses for candy bars”. I’d simply call those “methods of making x new snack item x” (perhaps appending: from old candy bar y). In any event, regardless of what happens to “new uses” of candy bars, I’m 1000% sure that all other methods need not fear anything from their potential demise and are not toast as a result.

    “But do we need 101 to accomplish this weeding?”

    I think that’s rather irrelevant. We have 101, so let it do its business.

    “What if it is a method to pick the apple that was totally revolutionary and avoided spoiling, damaging, etc, that no one had ever thought of?”

    Sounds eligible to me if claimed properly. In fact I believe we actually have such methods patented fairly regularly currently.

    “The way some people throw around 101, that claim gets tossed if the judge thinks it’s not “enough” beyond the apple. ”

    Nah bro. That may happen in some absurd district court that doesn’t understand the law like the ED Tex but that’s why we have appeals for people.

  44. LOL – 6, You are going to have to do more than merely claim that Prof. Hricik is stating things you have been saying.

  45. That’s some pretty spin there Leopold.

    Actually, the only thing left to do is to provide intellectually honest comments on the substantive issues. You know, the exact opposite of what my post actually decries. In other words, your (mis)characterization of ANY disagreement is pure B$.

  46. You’re right, it’s basic, but it’s being ignored.

    Re the candy bar, be sure you understand my point, which is that a new use of an old candy bar is patent eligible. Obvious? Probably. But eligible? If not, then pretty much every method claim is toast.

    I like your apple example, but I think that is the “using more words to claim the thing approach. You’ve used a method claim, cleverly(!), to claim the apple. But do we need 101 to accomplish this weeding? What if it is a method to pick the apple that was totally revolutionary and avoided spoiling, damaging, etc, that no one had ever thought of? The way some people throw around 101, that claim gets tossed if the judge thinks it’s not “enough” beyond the apple. That is, I think, 103

    I agree with your comments about Myriad. This is no way to run a railroad.

  47. Oh so when Hricik states all the things I’ve been saying he’s “on the right track” but for the last few years, and indeed even today, I’m supposedly not.

    “I also think that there are plenty who do not want a clear path in order to pursue philosophical agendas concerning patent eligible subject matter. If they have to use the jeweler’s pick to sculpt and deny a patent to something that they would rather use an atom bomb, they will purposefully kick dust, conflate and discombobulate your attempts at clarity.”

    Yes, the evil people. The “others”. The ones that must be vilified because plainly their intentions are malevolent.

  48. Awesome – we now have a preemptive declaration that any disagreement is dust kicking, conflation, and discombobulation, based on nefarious philosophical agendas.

    I don’t suppose there remains much point in actually commenting on the substantive issues, does there?

  49. Most of this sounds like old news to me, Professor. ;)

    As for this:

    “it doesn’t take much to make a method claim mentioning a natural product eligible. A new use for an old product is enough.”

    You seem to have lost the thread here. This is not an “old product” we’re discussing. It’s an ineligible product that, for patent law purposes, is nonetheless “new”.

    An old, eligible product is not patentable because it’s old. That’s why composition claims on that product are out of the question. You have to come up with a new, non-obvious and useful method to get a patent claim. Consider an old candy bar. I’ll leave it to you to advise everyone on whether obtaining a patentable method claim involving that old candy bar is one that “does not take much.” ;)

    But a new ineligible product is something different. When evaluating a claim that recites a new ineligible product in the context of a “new” method, the question must be asked whether that claim still effectively protects the ineligible product itself (or some other ineligible subject matter). And to answer that question one needs to understand why the ineligible product recited in the claim has been deemed ineligible in the first place (and this is where the Myriad decision was a bit of a disappointment).

    Consider the claims that Myriad is presently asserting. They are method claims that deem to protect *old* uses of the new but ineligible products. Specifically, the old use is the identification of the presence of the (ineligible) identical or complementary sequences in the human genome. Note that it was this same information that was deemed to be so fundamental that Myriad’s admittedly man-made compositions were deemed ineligible.

    Another analogy may suffice. I “discover” a “new” but ineligible fruit growing on an unexplored mountaintop in the Amazon. I can’t claim the fruit. But can I claim “A method, comprising eating said fruit” (one step). Or “A method, comprising picking said fruit from the tree.” I think the answer is no.

    The bottom line here is that in some cases the analysis of eligibility is going to be straightforward and simple. But it’s always going to require more than thought than your typical kindergartner is capable of managing.

  50. I am neither pro- nor anti-patent. I’m pro Constitution. Congress in my view got rid of this mumbo jumbo in 1952 and replaced it with 103. That brilliant statute is being undone by judicial meddling.

    From what I hear entire industries are in a state of uncertainty, and that’s not good.

  51. I think that you most definitely are on the right path (although I do not agree fully with all of your analysis)

    I also think that there are plenty who do not want a clear path in order to pursue philosophical agendas concerning patent eligible subject matter. If they have to use the jeweler’s pick to sculpt and deny a patent to something that they would rather use an atom bomb, they will purposefully kick dust, conflate and discombobulate your attempts at clarity.

    There has been a war on patent eligibility (not patentability) on certain subjects for more than fifty years – be aware that attempts at achieving reasonable clarity – that disfavor a certain philosophical view will just not be appreciated.

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