US Government Argues in Court that Isolated Genes are Unpatentable

AMP v. Myriad (Fed. Cir. 2010)

In March, 2010, District Court Judge Robert Sweet held Myriad's gene patent claims invalid for failing to satisfy the subject matter eligibility requirements of 35 U.S.C. 101.  The ruling was directed toward claims that cover particular isolated DNA molecules (genes) and processes of detecting and screening for those genes, but was written broadly enough to essentially invalidate all patents covering genes that were isolated from an organism. 

Last month, I heard a rumor that Obama administration science and legal advisors outside of the USPTO supported Judge Sweet's ruling.  At the time I disregarded that suggestion as unlikely. I was wrong. [Andy Pollack at the NYTimes has the scoop]

The US Department of Justice (DOJ) has now filed an amicus brief supporting the lower court decision — arguing that isolated genes are unpatentable because they improperly claim a product of naturer [Link to Brief]:

The district court correctly held . . . that genomic DNA that has merely been isolated from the human body, without further alteration or manipulation, is not patent-eligible. Unlike the genetically engineered microorganism in Chakrabarty, the unique chain of chemical base pairs that induces a human cell to express a BRCA protein is not a “human-made invention.” Nor is the fact that particular natural mutations in that unique chain increase a woman’s chance of contracting breast or ovarian cancer. Indeed, the relationship between a naturally occurring nucleotide sequence and the molecule it expresses in a human cell — that is, the relationship between genotype and phenotype — is simply a law of nature. The chemical structure of native human genes is a product of nature, and it is no less a product of nature when that structure is “isolated” from its natural environment than are cotton fibers that have been separated from cotton seeds or coal that has been extracted from the earth.

. . . .

Thus, the patent laws embrace gene replacement therapies, engineered biologic drugs, methods of modifying the properties of plants or generating biofuels, and similar advanced applications of biotechnology. Crossing the threshold of section 101, however, requires something more than identifying and isolating what has always existed in nature, no matter how difficult or useful that discovery may be.

. . . .

A product of nature is unpatentable because it is not the inventive work of humankind. That essential rule cannot be circumvented by drafting claims for the same natural product removed from its natural environment and proclaiming the result “pure.”

Several other amici have filed briefs:

About Dennis Crouch

Law Professor at the University of Missouri School of Law. Co-director of the Center for Intellectual Property and Entrepreneurship.

307 thoughts on “US Government Argues in Court that Isolated Genes are Unpatentable

  1. but but but….I thought one had to construe the US Constitution just like any other legal document. You’re the lawyer, ping. When the Founding Fathers wrote “useful arts” what were they using those words to mean?

    But perhaps I have been comprehensively Scali_wagged and you haven’t yet. Do put me right again ping, if I have got it wrong once again. And have fun doing it, won’t you.

  2. Maxie,

    On the utility of business methods, ping, like I said long ago in these pages, it is politically impossible for SCOTUS to announce to the American public that business methods (as such) are not “useful arts”.

    It is more than politically impossible Maxie – open your eyes, break out your Websters and add a few words. Start with “legally”, then add “actually” and “categorically” before moving to phrases such as “as a practical matter”, and “as a matter of reality.” Have some fun!

  3. Good point there IANAE, and food for thought.

    The discovery of the segment and its use is the invention. Truly it is.

    I am on the fence again. This is a close case.

  4. On the utility of business methods, ping, like I said long ago in these pages, it is politically impossible for SCOTUS to announce to the American public that business methods (as such) are not “useful arts”. But I know that this position was part of their discussions during the Bilski case, because that is how some of the amici put it to them, and so I believe (foolishly or otherwise) that it remains part of the judicial mindset. The Technical Boards of Appeal of the EPO allow “business method claims” all the time despite their statute bar on business methods as such. I see global convergence, also on the patentability of DNA molecule claims. You?

  5. Ping: you caught me. I am really Malcolm. I have been arguing with myself. It’s been quite a ride.

  6. Same question regarding

    Building blocks and abstractions – that all that be. Any art. Each art.

    There’s a king on a throne with his eyes torn out
    There’s a blind man looking for a shadow of doubt
    There’s a rich man sleeping on a golden bed
    There’s a skeleton choking on a crust of bread

  7. Now, given the above, it seems the isolated DNA is obvious given that the wild DNA from which it was isolated is old.

    Wild DNA doesn’t come neatly packaged in individual genes (as far as I know). Isolating a particular tiny section of the genome may or may not be inventive, but that would depend mainly on whether it was obvious to select out that section.

    After all, whether or not a particular sequence exists in nature, it’s theoretically possible to write down every finite length sequence. Every possible sequence is known in principle, so how can you say that any particular sequence is non-obvious even if it’s created in the lab? They’re all species of the fully-knowable genus of DNA sequences, or if you prefer they’re all species of the fully-knowable genus of base-4 numbers.

    Same question regarding finite strings of ones and zeros on a finite-capacity computer-readable medium, or finite arrangements of atoms to make pharmaceuticals, alloys, or polymers.

  8. NWPA, that sounds awfully NALish. Wait, so NWPA is a sockpuppet of NAL. Wait, but NAL is a sockpuppet of IANAE. Wait, yikes, IANAE is a sockpuppet of Malcolm.

    This means…NWPA is a sockpuppet of Malcolm.

    This brings a whole new level of meaning to the term self-flaggelation.

    Maxie,

    the thread is always quick to vegetate when ya don’t pay attention to such important decisions like Bilski, and continue to spout such nonsense as “business methods don’t have utility.” Seriously, “utility” is an extremely low hurdle.

    And Iza will stir the pot (or is it stir the kettle?) with this observation:

    From the link to uspto.gov :

    There are two criteria for determining subject matter eligibility and
    both must be satisfied. The claimed invention (1) must be directed to one of the four statutory
    categories, and (2) must not be wholly directed to subject matter encompassing a judicially
    recognized exception…

    Non-limiting examples of claims that are not directed to one of the statutory categories:…
    ii. A naturally occurring organism.

    It appears that it is not even a statutory exception that underpins the Gov’s argument, but rather the naturally occurring “thing” that is proscriptively not directed to a statutory category. Herein lies the thought that if it exists in nature, the “thing” simply does not belong to a statutory class under 101. Ya don’t even go to the exceptions. Pays attention to Homey’s observation here anonymous, ya don’t even havta listen to my main man IANAE.

    Now mind you, the Gov brief can be correct on point (things in nature – and yes Virginia, this includes molecules found in nature – are not patentable) and wrong on application. As Dr. Noonan has painstakingly shown, the isolation process simply involves human manufacturing of an item found in nature. For a long list of such explanations, see link to patentdocs.org

    Manufacture is nowhere limited to adding things together using the building blocks of the particular art. Manufacture can (and does) also include activity by man in reducing the building blocks found in nature, removing bits and pieces. Ya just gotta have the right mindset of building blocks and abstractions is all.

    Just an observation – feel free to draw your own answers.

  9. MM: I have no sock puppets. I posted under Kettle twice on this thread because I was called a kettle.

    We all, though, can spot the Malcolmy in your sockpuppets.

  10. I am in a dilemma here Is F&L really SNL?
    Fingerprints Dennis remember? You see what I have experienced on this line is not like others. So you see Japanese Patent Office speaks loudly. So does that involve Google? You see I do a lot of copying elsewhere.

  11. Anon, is not “disgraceful” a synonym for the word you selected (“infamous”) to characterize my contributions to these pages? It is in the dictionary I use.

    So, are my postings disgraceful? Or do you want to choose a word other than “infamous” to describe them?

    Meanwhile, this thread is slowly vegetating.

  12. Mr. MaxDrei,

    Re: “I’ll not pay any attention to your assertion (with no supporting “rationale”)that my contributions are disgraceful.

    You claim that my assertion has no supporting rationale when my assertion merely points out that your assertion was made, not only without rationale, but actually in opposition to the existing rationale that has just recently unfolded in the Bilski case, and is decidedly disingenuous. Yes, it is apparent that you will not pay any attention, because your not paying attention is precisely the point of my statement.

    You baldly assert that business methods have no utility. I simply called you on this bald assertion. You yourself used the word “disgraceful.” If that is how you feel, so be it.

    Mr. Mooney,

    You remind me of the maxim concerning how to tell if a person is a liar. That person believes that everyone else is a liar. Your suspicion that I am merely a sockpuppet of NWPA’s belies your own propensity towards sockpuppetry. I am not NWPA. Perhaps you should constrain yourself to your dialogues, or as the case may be, to your monologues, as your contributions remain shallow and non-deservedly self congratulatory.

    Mr. IANAE,

    Your ability, nay penchant, for purposeful confusion serves no one. You seem to relish drawing rather meaningless distinctions while leaving the gist of points unanswered. “But only if someone already knew about it. Otherwise, you’re not taking from the public anything that it had in any meaningful sense.” Except this is decidely false. It doesn’t matter about the “meaningful sense” – if the item is a natural item, a patent is not deserved for that item. Quite naturally, methods of using that item are still patentable. A second example is “101 bars only abstract concepts, laws of nature, and natural phenomena. That’s much narrower than “anything that nature already provides”. Instead of playing word games, perhaps you should explain what you understand what “laws of nature” and “natural phenomena” mean in the context of the judicial exception, so that the rebuttals can be made to your satisfaction straight off.

    Mr. Ping,

    It appears that though crass, your grouping of these posters together is quite on target, as their positions and methods do reinforce each other quite consistently. Just lose the ghetto-speak as it makes you difficult to understand, and clarity should always be a lawyer’s aim.

    Mr. Cooper,

    I am quite confused by your statement of “Perhaps a better analogy for a gene is a single plant of desirable properties selected from a field full of plants nominally of the same species. Such an individual plant, when propagated vegetatively, can be patented–that is settled law.

    I am not sure you want to use that example as it is decidely similar to the bacterium case already in the briefs that was decided against your holding, while I am not sure just what propagating vegetatively actually means.

  13. Penitence is a thing that enervates our spirit, major to a higher decrease compared to decrease alone and producing a bigger mistake compared to mistake itself. So by no implies regret.

  14. Malcolm, no.

    I limit the discussion to where the manufactured composition is made from a known composition using a conventional process.

    You say this is true of most, if not all, new compositions. If so, then…

    I take it your position is that such a manufactured composition is patentable to the first person to find a use for the manufactured composition.

  15. Shorter Kettle: “I have no clue what DNA is so I’m just going to call people names and ramble on about an old Supreme Court case.”

  16. So, it would seem from the comments above that IANAE and MM (the Malcolmy twins) still endorse Benson. Is that true?

    Now you seem to have moved from the natural law alleged in all of mathematics (or mathematical algorithm as it is called in Benson) to abstract idea.

    Shameful that you are still being intellectually dishonest despite the assault on your castlekeep.
    You are the good German.

    Can anyone really endorse or claim that there is any sense to abstract idea? Which is basically saying something is too broad. And the Malcolmy twins say that shift registers are not limiting?

    You must be Richard Stern.

  17. But, unless I missed something, the isolated gene becomes isolated using a known process that operates on the wild DNA. Now, given the above, it seems the isolated DNA is obvious given that the wild DNA from which it was isolated is old.

    This is about the tenth time we’ve been down this exact road in this thread. If this is your argument, then all claims to pure compositions are obvious if it can be shown (even after filing) that the composition can be found (albeit only in an impure or conjugated form) “in nature”. Is that your position, Ned?

  18. Malcolm, infringement is a non sequitur. The real question is this: is the isolated DNA “new.” Are the differences between the wild DNA, old as a matter of law, and the isolated DNA enough to justify a patent as a matter of law.

    No doubt the isolated DNA is different from wild. But, unless I missed something, the isolated gene becomes isolated using a known process that operates on the wild DNA. Now, given the above, it seems the isolated DNA is obvious given that the wild DNA from which it was isolated is old.

    If I am wrong in this at all, please explain.

    For example, earlier in this thread I asked whether a claim to DNA isolated from a known DNA, where the isolation process was well known, was obvious. I think you agreed that it was.

  19. Ned To any fair reader, there is no material difference between the isolated DNA and the wild DNA, and the claim to one is effectively a claim to the other.

    I don’t know what a “fair reader” is, Ned, but I do know that anyone with a working knowledge of patent law understands that a claim to an isolated DNA of SEQ X is not infringed by an animal comprising that sequence (assuming an ordinary definition of “isolated”).

    In short: you are wrong, Ned, and it was so easy to prove you were wrong that I question whether you are sincerely arguing these points of yours or just spewing horsecrxp for the sake of spewing horsexcrp.

  20. The DOJ states “A product of nature is unpatentable because it is not the inventive work of humankind. That essential rule cannot be circumvented by drafting claims for the same natural product removed from its natural environment and proclaiming the result ‘pure.’”

    Of course, a “gene” does not exist as a gene, without more, in the natural surrounding. A gene implies an isolated coding sequence, whereas in nature, the chromosome comprises a long unbroken string of DNA, where there is no indication that one stretch is different from any other. A ribosome can detect start and stop sites, but a ribosome is not part of a gene. mRNA, or cDNA may encode a gene product, but neither is a gene. Isolating a gene from a chromosome and determining its nucleotide sequence clearly involves human intervention

    Furthermore, a chromosome is not like a vein of gold, wherein the gold from one section is identical to the gold from another section. Gold is gold, but one stretch of DNA in a chromosome is not identical to another stretch, as the base composition and sequence will be different.

    Therefore, the DOJ’s position breaks down. An isolated gene sequence, which does not exist in isolation in nature but is part of that long string of bases making up a chromosome, is in fact an artifact of human intervention.

    Perhaps a better analogy for a gene is a single plant of desirable properties selected from a field full of plants nominally of the same species.

    Such an individual plant, when propagated vegetatively, can be patented–that is settled law.

    Accordingly, it is illogical to deny patentability to an isolated gene under sec. 101. It might or might not be obvious under sec. 103, but it is patentable subject matter.

  21. “All the base are still belong to Benson”

    lulz.

    “Wild DNA doesn’t run afoul of any of the 101 exceptions. ”

    lulzxalot

    “the recitation of a particular SEQ ID clearly limits the claim to a very specific practical application of those phenomena.”

    How so?

    “the subject matter exception preempted by the claim should be particularly identified.”

    You mean kind of like the DC did? O, right, like that.

  22. Benson is a good example as to why a claim remains a claim to unpatentable subject matter regardless of its inclusion of incidental subject matter such as “a general purpose computer” or “a shift register.” The claim in substance remains a claim to the unpatentable subject matter regardless of its incidental differences.

    I wouldn’t say that the differences are “incidental”, but I would say that they are not particular or limiting. A shift register in a computer does not meaningfully limit the concept of base-conversion to a specific practical application. All the base are still belong to Benson, which preempts the entire abstract concept.

    In the Myriad case, the isolated DNA has incidental differences with wild DNA.

    Right, but the problem with patenting wild DNA is a 102/103 one and not a 101 one. Wild DNA doesn’t run afoul of any of the 101 exceptions. Even if you want to rely on complementary base pairing or transcription/translation as natural phenomena, the recitation of a particular SEQ ID clearly limits the claim to a very specific practical application of those phenomena.

    If the differences are incidental, and the wild DNA is prior art, the claim should fall under 103 upon a proper showing of obviousness. If the claim is to fall under 101, the subject matter exception preempted by the claim should be particularly identified.

  23. IANAE, Benson is a good example as to why a claim remains a claim to unpatentable subject matter regardless of its inclusion of incidental subject matter such as “a general purpose computer” or “a shift register.” The claim in substance remains a claim to the unpatentable subject matter regardless of its incidental differences.

    In the Myriad case, the isolated DNA has incidental differences with wild DNA. But the differences are product of a known process. The question is therefore whether the differences are material. This is a “constitutional” mandate under Benson.

    To any fair reader, there is no material difference between the isolated DNA and the wild DNA, and the claim to one is effectively a claim to the other.

    Now the use of the DNA to diagnose a specific illness, to provide a vaccine, or for other patentable purposes, may be patentable. But I think the Federal Circuit has to follow the government brief in this case, because it is right.

  24. enough substance to be thrown against a wall

    Maxie – that aint necessarily a good thing, ya might wanna hold your “thanks.”

  25. Thank you IANAE, and thanks Anonymous for acknowledging that my contributions have enough substance to be thrown against a wall. I’ll not pay any attention to your assertion (with no supporting “rationale”)that my contributions are disgraceful.

    Do I need to give more “rationale”? Must I repeat it all over again? I thought we all knew it from the legal theory put up to SCOTUS by some of the Bilski amici. If for some people here I am indeed “infamous” then it is for endlessly repeating the same point, and nobody’s here because they are looking for boredom.

  26. I like how anonymous spouts out crxp and when it’s explained why it’s crxp, he/she/it just moves on with some new crxp.

    Reminds me of NWPA.

  27. You give no rationale for excluding the usefulness of banking improvements.

    I think it comes down to whether making money without more, shuffling around intangible property, or managing a risk in the abstract, is a credible utility. I would expect not, since that would make utility automatic for any claim. Might as well say that your perpetual motion machine has utility as landfill.

    Let’s put it this way. If a method of making money is a credible utility, try to draft a claim that lacks utility, bearing in mind that the claim is infringed by selling. I bet you can’t.

  28. MaxDrei,

    You give no rationale for excluding the usefulness of banking improvements. I recognize your non-US view (and obviously, your non-grasp of the recent Bilski transactions), but would you have us believe that usefulness only comes in technical flavors? Keep in mind that the “technical arts” test has been outlawed far longer than the Bilski case.

    Or is this one of your infamous “sling it on the wall and see what sticks” comments?

  29. The whole point here is that 101 bars anything that nature already provides.

    Except that it doesn’t. 102 bars what nature already provides, and 103 bars trivial modifications to what nature already provides. But only if someone already knew about it. Otherwise, you’re not taking from the public anything that it had in any meaningful sense.

    101 bars only abstract concepts, laws of nature, and natural phenomena. That’s much narrower than “anything that nature already provides”.

  30. So, despite the recitation of the word “new” in 35 USC 101, patent-eligibility under 101 should NOT be assessed on date X relative to the state of the art on date X? That makes sense: it is how the EPO manages patent-eligibility under Article 52 of the European Patent Convention

    But 101 also recites “useful”. The patent clause in the Constitution constrains patent eligibility to the “useful arts” which surely excludes what bankers were up to in 1787 but would unquestionably cover natural philosophical isolations of portions of a DNA molecule. Is “useful” in 101 because of the patents clause and, if so, ought it then to frank the patentability of DNA portions while depriving of patent-eligibility any improvements in the processes of banking?

  31. anonymous If the exact same item is found to occur in nature after the patent grant, the patent should absolutely be nullified.

    Perhaps, according to some inherent ineligibility standard.

    Of course, the claimed compositions we are talking about are never found in nature. If they were, this issue would have been settled quite some time ago. It’s not as if there is a dearth of Ph.D.s in the 1600 art unit.

  32. but if the sequence is later discovered in nature that could retroactively render the claim non-statutory under 101, which is nonsensical

    Why?

    This makes perfect sense. If the exact same item is found to occur in nature after the patent grant, the patent should absolutely be nullified. It would make no sense to do anything else.

    The whole point here is that 101 bars anything that nature already provides. The act of a patent cannot take from what is owned by all. 101 is a perfectly proper place for this.

  33. IANAE: “But obviousness should still be determined according to the law of obviousness, and 101 is neither an acceptable shortcut nor a necessary one.”

    It could convincingly be argued to be BOTH acceptable AND necessary, given the incoherent and unpredictable quality of the current so-called “law of obviousness”.

    I agree with the general tenor of your statement though. I think that 112, 102, and 103 houses should be put into order, and 101 used only as an extremely coarse filter.

  34. Ned: Circling back, if subject matter varies from that which is old only in obvious ways, why do we not just say that the subject matter is not patentable under §101?

    Because 101 and 103 are different.

    If you isolate a wild gene having SEQ ID NO 1 that is known for a particular function, and use it for that function, your isolated gene is obvious because the wild gene was known for that purpose and you isolated it in a known way that required no inventive contribution.

    If you create an isolated gene in a lab having SEQ ID NO 1, that was never before seen by man, and through experimentation discover that it is useful for the very same function, your isolated gene is not obvious, for reasons that should themselves be obvious.

    There are two problems with your proposal:

    1. Your claim in either case would be “an isolated gene having SEQ ID NO 1”. That claim is either statutory or not, because it has the exact same construction and scope in each case. The only difference between the two is the state of the prior art, which is not relevant to a determination under 101.

    2. The second gene may not be obvious, but if the sequence is later discovered in nature that could retroactively render the claim non-statutory under 101, which is nonsensical because the statutory nature of a claim should not change over time. Furthermore, it would be non-statutory for the reason that it is per se obvious, which makes even less sense because we already have a rule for invalidating claims that are obvious. Finally, it would be obvious based on prior art that didn’t exist at the time, which would make the least sense of all.

    I don’t mind if isolating a known gene sequence is generally considered obvious. In fact, I get the impression from Malcolm that it pretty much already is. But obviousness should still be determined according to the law of obviousness, and 101 is neither an acceptable shortcut nor a necessary one.

  35. Iza not forget about you policy wank Willton:

    Surely, Willton, you know of the difference in structure when switches (moer than one) are created (heck, even just used) in series or in parellel, right? Ya might havta take off your policy blinders to recognize the plain truth.

    That is far different compared to what I am talking about. You are talking about how electrical components may be located and connected on a circuit board to create different circuits. That is not the same as saying that a series of switches in a particular ON/OFF configuration is a different machine than the same series of switches with a different ON/OFF configuration. Sure, the first configuration may perform a different function than the second configuration. But the physical structure of the switches themselves have not changed.

    A computer is a wonderful machine in that it can perform a multitude of functions at any given time. But the computer itself does not undergo any structural changes when it does so.

    Posted by: Willton | Nov 02, 2010 at 12:35 PM

    I cannot force you to see when you choose to clamp your eyes shut. Ya wanted an engineering explanation and I gave ya one – but you immediately deny the impact of the inner change in construction with elements in series or parallel. Of course we both know that computers are not built in single on/off switch modes, so your policies driven from your simple example are only good for the isolated solitary on/off switch. No doubt, you’d prefer the nonsense answers of Malcolm.

    Good luck with that.

  36. Ok I just read the article and he actually has asperger’s, so I guess I shouldn’t make fun of him too much. I just thought he was really nervous and maybe like 12 years old.

  37. “Ah, now I see the real reason for your change in career plans, 6. You’ve already achieved your own special form of immortality: link to blog.games.yahoo.com .

    Congratulations!”

    Lulz I saw the video of the encounter behind that happening. You should see the super nerd dude he’s hilarious irl.

    If, perchance, I should ever get my own character added to WoW though, I could call my life more or less complete.

    Although, to be honest, I could already. I’m already unimaginably famous compared to what I would have ever believed a mere 4 years back.

  38. Note to ping-a-ling: this is called “answering a question.” Someday maybe you’ll overcome your handicap and give it a try.

    Posted by: Malcolm Mooney | Nov 02, 2010 at 01:15 PM

    Yeah sunshine, here are highlights of that self professed way to answer: “Perhaps…I haven’t done… Diehrbot…

    You call that an answer? Seriously? Noncommittals, haven’t-dones and ad hominym. Boy, your integrity really shines dully there.

    Then ya continue with the sophmoric “Yes you were” and geometric counting of your bizare nonanswers somehow being the “proof” that ya corrected me – this third grade nonsense of I-know-you-are-but-what-am-I integrity – scratch that, if ya tried that discussion with a third grader, she would probably just be_at your sorry _ss and be done with ya.

    Yeah Malcolm, there is indeed world’s of difference between us – I be forthright about not giving answers, and graciously providing my extremely valuable onservations, and you be O-I-give-answers that aren’t nothin but crrp.

    Even your silliniess has depleted the chuckle-meter on this matter, and if ya actually had anything at all that proved me wrong, ya woulda used it already instead of jacking yourself.

    On top of everything else, ya forgot that today was windmill day. Hey there’s still time for your pointless be otchin, if ya hurry.

  39. Malcolm, I agree with you that your hypothetical sequence is patentable subject matter.

    On the “per se obviousness point” I was suggesting that if a sequence is old, and that the claim is to a modification of the old sequence that is introduced by the very process of identification of the old sequence, then the claimed to the “isolated” sequence is per se obvious.

    It appears to me that the “isolated” DNA in this case varies from the wild DNA only in obvious ways. While it is structurally different, the structural differences are result of the process of isolation, which is known.

    Circling back, if subject matter varies from that which is old only in obvious ways, why do we not just say that the subject matter is not patentable under §101?

    This discussion of structural obviousness avoids the issue of whether the discovery of the association of the particular DNA with a particular form of cancer is a discovery that should be patented in some way. Truly I think that to be patentable the claim must associate the isolated DNA with the discovery in some patentable manner.

  40. NWAP you seem very upset about this lower court opinion

    It’s true, IANAE. You’re just foaming at the mouth and spouting incoherent nonsense. It’s been shameful to watch. Meanwhile, Night Wiper has been relatively clear and forthright this entire discussion.

    [cue twilight zone theme]

  41. ping a ling: Man O integrity caught in O lie.

    Yes you were, as four repeated mistakes after you were corrected each time is almost surely intentional.

    Oops, make that five, ping a ling!

    By the way, if you can articulate a question about claims to isolated DNA molecules without calling NWPA a dishonest, mentally deficient hack, I’m happy to answer it.

  42. I will also say to you IANAE that you seem very upset about this lower court opinion. I don’t blame you. I have been very upset for some years now about how intellectually dishonest people have been trying to bend patent law for policy reasons.

    Now we are in a position that we cannot rely on the law anymore. We don’t know if it will be hijacked by a policy person. It is quite upsetting.

    This is why I find MM such a distasteful person.

  43. You tell me to swallow the Blue pill. The Red pill claims fraudulent debt. The Blue pill won;t let go because 15 years later! So guess what I spit both out.
    Tomorrow is another day! And after that is done, I will start searching to take down Jah Jah too.

  44. Where did I state that as my opinion?

    IANAE: Are you an attorney? Do you know how judical exceptions are applied? I don’t think you understand this.

  45. He ll I might not even need to be a judge anymore, this system might get its sht together without me.

    Ah, now I see the real reason for your change in career plans, 6. You’ve already achieved your own special form of immortality: link to blog.games.yahoo.com .

    Congratulations!

  46. Sunshine, I am not arguing whether it is or is not.

    And actually, you were arguing that it was not. You’ve stated a number of times that isolated genes were non-statutory for capturing some law of nature you were unwilling or unable to identify.

  47. My point was and is that MM’s hypo cannot be fully answered unless we know whether or not a court could possible apply an exception. I think that is very clear thinking.

    It’s very unclear thinking, unless you have in mind an exception that could plausibly apply. Because really, you could say that about any claim with no thinking at all. “Oh, sure, that’s fine unless it’s not for some reason.”

  48. >>and it’s up to you to show why it’s in one of >>the three classes of exceptions.

    Sunshine, I am not arguing whether it is or is not. I did not say I agreed with the lower court. You have some hostility problems.

    My point was and is that MM’s hypo cannot be fully answered unless we know whether or not a court could possible apply an exception. I think that is very clear thinking.

    You must not understand how judicially created exceptions are applied or you are just trying to pick a fight.

  49. Sounds to me like you don’t understand how judicial exceptions are applied.

    I understand that they’re exceptions. Molecules are well known to be generally statutory, as they are clearly within the 101 categories, and nobody ever complains about things like Teflon or acetaminophen being statutory. If there’s an exception for molecules that exist in nature, or for molecules that have a particular type of utility, that would be an exception, and it’s up to you to show why it’s in one of the three classes of exceptions.

  50. I never said I corrected you a dozen times.

    If you can articulate a question that doesn’t incorporate a mistake that I’ve already corrected you on a dozen times, ping-a-ling I’m more than happy to answer. Got that? More than happy to answer.
    Posted by: Malcolm Mooney | Nov 01, 2010 at 05:32 PM

    Man O integrity caught in O lie.

    have corrected you on this point, however, 4 times

    ??? – Wow that’s is some sheer lunacy there Malcolm.

    Wassa matta crybaby Malcolm? All of a sudden ya can’t find any of these dozen times that ya corrected me? Too ashamed to admit that ya were just flappin your gums?

    “Bring on those dozen corrections. Where are they? Chop chop, bring em baby. Bring em, unless ya want the world to see what a chump you are (oops too late).”

    Still waiting. Very simple straightforward put your money where your mouth is, put up or sfu.

    C’mon Sunshine, stick to the bargain. SHOW ME, or SFU.

  51. Why not declare it unpatentable as a matter of law?

    Because, as we presumably keep telling examiners, if they say our claim is obvious they have to prove it.

    Besides, if isolated genes are per se obvious, on what basis can a non-genetic selection patent ever be non-obvious when it is selected from a known genus? On what basis can computer-readable data be non-obvious when it is selected from the known genus of all possible binary strings that fit on a computer-readable medium?

    And most importantly, there’s a big difference between per se obviousness and non-statutory subject matter.

  52. We don’t know what the sequence is, do we?

    No, we don’t. Were you going to say that the sequence is statutory as long as it’s novel? That will take some explaining, and in particular more explaining than the trial judge gave.

    I have a molecule here. You don’t know what the molecule is, but it has a substantial utility. I claim the molecule itself, specifying its exact chemical structure, including stereochemistry and everything. Is that claim statutory?

  53. ping All of a sudden ya can’t find any of these dozen times that ya corrected me?

    I never said I corrected you a dozen times.

    I have corrected you on this point, however, 4 times in this thread alone. So you’re on your way, fruitloop.

  54. 6 All u lawlyers still going on and on about this subject. It’s GG already tards. Myriad is going down whether or not the patent protectionists at the Fed Circ. kill it or not. The USSC will do it while the gov. says so and you fers know it. 100% chance.

    Well, we have 6’s prediction. He may be dead wrong but at least he’s no coward.

  55. He ll I might not even need to be a judge anymore, this system might get its sht together without me.

    That would be good – then you wouldn’t have to do those LSAT logic puzzles…

  56. All u lawlyers still going on and on about this subject. It’s GG already tards. Myriad is going down whether or not the patent protectionists at the Fed Circ. kill it or not. The USSC will do it while the gov. says so and you fers know it. 100% chance.

    Sorry, you lost, you can stop talking about it now. Just say GG and get on with your life ffs.

    O and btw Good Mother Fin Game B itches.

    And the same thing will happen when Bearegard claims finally get their day in court. Someone will bring suit, and then the government will be like “hur, we changed our position in light of this case being filed” and that’s it, gg fools. Just like I predicted for the last couple of years.

    Good. Game. Again.

    He ll I might not even need to be a judge anymore, this system might get its sht together without me.

  57. Wassa matta crybaby Malcolm? All of a sudden ya can’t find any of these dozen times that ya corrected me? Too ashamed to admit that ya were just flappin your gums?

    “Bring on those dozen corrections. Where are they? Chop chop, bring em baby. Bring em, unless ya want the world to see what a chump you are (oops too late).”

    Still waiting. Very simple straightforward put your money where your mouth is, put up or sfu.

    C’mon Sunshine, stick to the bargain. SHOW ME, or SFU.

  58. >>I don’t care if you agree with it. I care that >>you don’t know how to apply it.

    Nice try, but I am unwilling to make the arguments of the court. They are there for all to read in the lower court opinion. And not too terribly difficult to understand.

    The unclaimed utility–because a sequence was specified as only being different. We don’t know what the sequence is, do we? If we don’t know what the seuqnce is then we can’t rule out an argument about a judicial excpetion just as we can’t rule out a judicial excpection if I just say some shift registers. Sheesh, you are slow.

    OK. Bye. I have to get some work done. Go read the lower court opinion and argument with it.

  59. I never said I agree with the natural law logic.

    I don’t care if you agree with it. I care that you don’t know how to apply it.

    I will say that the argument here is stronger than in Benson.

    If it’s such a strong argument, why do you keep dancing around the main point, which is that you can’t monopolize a natural law unless there is a natural law being monopolized?

    Benson is probably better understood as monopolizing an abstract concept, the concept being the conversion of numbers from one specified base to another.

    Your move, then. What natural law is monopolized by a particular gene, and why should the patent eligibility of any molecule depend on its unclaimed utility? (You see, by avoiding the question you’ve now raised another question you can avoid.)

  60. IANAE: I never said I agree with the natural law logic. I said that is what the SCOTUS did in Benson and what the lower court did here.

    I ain’t you natural law whipping boy. I think the argument in Benson is outrageous. However, I will say that the argument here is stronger than in Benson.

  61. by mapping it to an attempt to monopolize a natural law.

    What natural law would that be, Captain Intellectual Honesty?

  62. I don’t think it is ineligible. I think it is elgible.

    The where it comes from and the utility of it do make a difference as that is how the court has excluded eligibility by mapping it to an attempt to monopolize a natural law.

  63. IANAE: what? did you read the lower court opinion? I did.

    It also doesn’t make any difference what the doofus judge said, NWPA. You’re trying to change the subject.

    Why is my composition claim invalid as ineligible under 101? Why?

  64. NWPA, as IANAE pointed out it doesn’t really matter what the utility is for purposes of this discussion. Assume it’s a substantial utility for 101 purposes. If that doesn’t work, assume that the sequence, when used to transform a microbe, quintuples the rate at which the microbe produces a life-saving anti-cholera drug.

  65. MM: your hypo is interesting of course as it cuts out the mapping to a natural law.

    Either you don’t understand that natural laws don’t need our permission, or you’re doing that intellectual dishonesty thing where you are completely incapable of or unwilling to say exactly what “natural law” applies here.

    Also, what is the utility?

    Who cares? The question was about statutory subject matter. Assume there is a utility. The utility does not need to be claimed, unless your invention is “a computer-readable medium having a specified utility when inserted into a computer”.

  66. MM: your hypo is interesting of course as it cuts out the mapping to a natural law. add into the claim that the sequence is replicon from someone’s DNA (or synthetically created after determining the sequence) and you have a problem.

    Also, what is the utility?

    Also,ask yourself if you claim shift registers that don’t do anything know or unknown to man would those be statutory?

  67. Yes, software is statutory, if you claim it as a process of doing something with a computer.

    Now who’s mixing stat classes IANAE?

    That Nazgul be chewin on your head, yous so lost.

  68. Tried already to help you with your reading comprehension problems, ping. Instead of re-posting your own mistake, try reading what I actually wrote.

    By the way, this counts as the second correction of your error. Only ten more to go! LOL.

    WRONG! – and can ya get any lamer??

    Show me Malcolm – show me exactly the “dozen” times ya done corrected me. SHOW ME OR SFU.

    This is like the time ya called someone a putz for misreading something, and it turned out that you was the putz who did the misreading.

    Still Waiting

  69. NWPA Sorting, finding tumors in x-rays, navigating cars, navigating airplanes, etc.

    Those are methods. We’re talking about chemical compositions that are claimed structurally.

    Try to keep it real, Night Wiper. I know it’s hard for you.

  70. Sorting, finding tumors in x-rays, navigating cars, navigating airplanes, etc.

    Are those also strings of atoms? Fascinating.

    I’ll try to type slower this time. If you don’t think strings of atoms are statutory, what do you think of the particular examples of strings of atoms that I just listed?

    I’ll even answer the question you didn’t ask. Again. Yes, software is statutory, if you claim it as a process of doing something with a computer. Much as you would claim sorting, finding tumors in x-rays, navigating cars, or navigating airplanes.

  71. . An isolated nucleic acid, wherein said nucleic acid consists of SEQ ID NO:33.

    SEQ ID 33 is a 429 nucleotide sequence, including modifications of every thymidine residue. As far as you know, there is no genome on earth that includes the sequence. Specification teaches that you can make the sequence using a well-known DNA synthesizing machine.

    Eligible under 101?

    Let’s see the analysis.

    Still waiting. If you can’t invalidate this simple, real-world claim under 101 with a coherent analysis that doesn’t render other composition claims invalid, then you shouldn’t be arguing that Myriad’s claims are ineligible under 101. This is why the ACLU will fail and why the DOJ will fail, and fail miserably at that.

  72. >>you won’t be happy with the result.

    Frankly, sockpuppet, I think the one that isn’t happy is you. If genes go the way of all flesh, it won’t matter to my practice. I will apply patent law principles to form my opinion how this should go and be intellectual honest. Something you are incapable of.

  73. >>You don’t think Aspirin should have been >>patentable subject matter, then? Stainless >>steel? Teflon? Kevlar?

    Sorting, finding tumors in x-rays, navigating cars, navigating airplanes, etc.

  74. ping a ling : put your money where your mouth is,

    Tried already to help you with your reading comprehension problems, ping. Instead of re-posting your own mistake, try reading what I actually wrote.

    By the way, this counts as the second correction of your error. Only ten more to go! LOL.

  75. you should focus on your arguments for why your atoms string together should be eligible for patentability.

    You don’t think Aspirin should have been patentable subject matter, then? Stainless steel? Teflon? Kevlar?

    You fill in the rest.

    No, you fill in the rest. You said gene sequences capture a natural law. Which natural law would that be? I honestly can’t think of one, so if you leave it to me to fill in the rest, you won’t be happy with the result.

  76. That’s too much work MM.

    I’ll post my predictions when I have a chance to read some of the amicus briefs.

    Too much work to explain your own comment? Lame.

  77. Ask away…

    That aint the bargain, Sunshine.

    Bring on those dozen corrections. Where are they? Chop chop, bring em baby. Bring em, unless ya want the world to see what a chump you are (oops too late).

    Still waiting. Very simple straightforward put your money where your mouth is, put up or sfu.

    C’mon Sunshine, stick to the bargain. SHOW ME, or SFU.

  78. without wasting too much time:

    Benson: physical shift registers that are electrical circuits that usually are eligible under 101. SCOTUS comes up with a judicial exception and takes something out of 101 by saying the claims capture a natural law.

    You fill in the rest.

  79. You do seem unbalanced though MM. You are striking out at Beauregard claims (fighting the last battle) when you should focus on your arguments for why your atoms string together should be eligible for patentability.

    Odd you can’t claim a single atom, but somehow these guys think if they put two atoms together that they have an invention. Doesn’t make sense.

  80. Would you say the same if the prior art showed the power supply, light bulb, switch, and 3 pieces of wire all unconnected? Does that anticipate my proposed claimed?

    My guess would be that Wilton would say no because this collection of parts is capable of being the claimed machine.

    Actually, if all we had was what you wrote above, then I would say no anticipation because there is no disclosure of the capability of connecting the aforesaid parts to form the claimed circuit. However, if there were such a disclosure without showing them being actually connected, then yes, I would say you have anticipation.

  81. That’s too much work MM.

    I’ll post my predictions when I have a chance to read some of the amicus briefs.

    How can you claim an atom? It already exists? You are trying to claim an atom. Gee, can you think of a work–combination–that may also apply to your switch diatribe.

  82. Wilton If the novelty is in the “million switches” where “certain ones have to be swiched thousands of times a second,” then you don’t have a new machine. You have a new process.

    Indeed. And the process should be claimed as a method, not as a composition comprising a set of “readable” instructions.

  83. Ned: the claim is to a sequence that is an obvious modification on a admittedly old sequence.

    Then the claim should be found obvious. I’m not sure what difference it makes how the obvious modifications were introduced into the composition.

    What say you, Ned? Is my hypothetical valid under 101? And what do you predict the Fed Cir will do? Don’t be shy, now.

  84. Wilton You are missing the point while attempting to ignore reality.

    The obtuseness I referred to above. Passing isn’t familiar with the concept of “claims” or at least wishes to pretend that they are irrelevant to a discussion of whether something is “different” or not for patent purposes. But they’re not irrelevant. On the contrary.

  85. Malcolm, the claim is to a sequence that is an obvious modification on a admittedly old sequence. The obvious modification is an artifact of a known process.

    You are the examiner. Do you reject based upon obviousness?

  86. Your logic doesn’t scale very well. It is easy to say when its only one switch. A lot harder to say when it is a million switches and certain ones have to be swiched thousands of times a second.

    Well, then it sounds like you should be claiming the process, not the apparatus. If the novelty is in the “million switches” where “certain ones have to be swiched thousands of times a second,” then you don’t have a new machine. You have a new process.

  87. If you can’t see why shift registers and nucleotide sequence aren’t similar, then you aren’t trying.

    Help me out. What is the abstract principle or law of nature that is “captured” by a particular, specified DNA sequence?

  88. I’m sorry, but moving something from one position to another position changes the structure of a machine. Write a few mechanical patent applications and you’ll figure that one out.

    No, moving something from one position to another position changes the something’s orientation, assuming that the something is designed to be moved to and from said positions. Doing so does not change the something’s structure, and it certainly does not turn the something into a new machine. If you want to claim the new orientation of the moveable something, feel free. But you should not be able to get a patent on a new machine based on this distinction.

    Bend a length of small diameter wire in four places and you’ve come up with a paperclip. Certain parts of the wire have simply been moved from one position to another.

    That is changing the structure of said wire. When the wire is shaped into the form of a paperclip, it is not made with the intention of being turned into a wire again. The switch, however, was constructed with the intention of going back and forth between an open (i.e., OFF) position and a closed (i.e., ON) position. There is a big difference between static parts and dynamic parts. You should know this.

    As for your scissors, the scissors in the closed position don’t have much utility as a cutting member. However, in the open position and with moderately sharp blades, you can do a whole host of things with it that you cannot do with it in a closed position.

    You are missing the point while attempting to ignore reality. The scissors were constructed to be able to move between the open and closed positions. It is one machine, not two.

  89. A lot harder to say when it is a million switches and certain ones have to be swiched thousands of times a second.

    A lot easier to say when that’s not actually claimed.

    Software patents don’t claim a differently-programmed computer at all. They claim the program, without the computer. They do that on purpose, so they don’t have to sue the person with the computer.

    Also, the claimed software doesn’t involve any switch-flipping. The switches are flipped once, to form an arrangement of known computer commands encoded in an array of two-state switches. We even call that process “writing” the program to the medium, because that’s exactly what it is.

    And you’re not even claiming the configuration of the array of switches. You’re claiming what it does when it’s inserted into an unspecified computer that you quietly assume is programmed to understand your unspecified string of ones and zeros in just the right way. All the while saying that a Mac is a completely different machine from a PC (which is probably not a bad argument), but that both (and also any later invented box) are “general purpose computers” even though they can’t even run the same computer-readable medium.

    That’s going to take some explaining.

    The handy thing about DNA is that it always runs on the same type of “processor”, and the same DNA always means the same thing in every application.

  90. Read the instructions, NWPA. Let’s see the analysis under 101. If you want to use Benson, then please compare the above claim to the claim in Benson so we can all see why the “logic” in Benson is appropriate here.

    Still waiting. This doesn’t seem terribly difficult, NWPA. Unless of course you don’t know what you’re talking about. Please post the claim at issue in Benson so we can compare it with an isolated nucleic acid composition claim. Then explain to us why the logic of Benson should apply to the nucleic acid claim, and not to other chemical compositions.

    This should be very easy for you, NWPA. It’s your theory, after all. What’s the problem?

  91. Night Wiper It is no wonder you can’t predict the outcome of these cases.

    What’s your prediction on the outcome of the Myriad case in the Federal Circuit, Night Wiper? You know my prediction.

    What’s yours?

  92. >>Read the instructions, NWPA. Let’s see the >>analysis under 101. If you want to use Benson, >>then please compare the above claim to the >>claim in Benson so we can all see why >>the “logic” in Benson is appropriate here.

    Look, this isn’t hard. There are three judicially created exceptions. The DOJ said why one of them applies. If you can’t see why shift registers and nucleotide sequence aren’t similar, then you aren’t trying.

  93. Ned Malcolm, so I invent a machine that automatically sequences and lists, in an ordered manner, the entire genome from a human sample. An educated woman seeking to determine whether she has the concerned brest cancer gene, submits a sample and the machine gives her a list. She scans the list and determines from it the answer.

    Is there any infringement by anybody here of any the claims of. Myriad?

    Perhaps some of the method claims would be infringed, Ned. I haven’t done the analysis. The issues with the method claims are quite different (and less controversial, unless you’re a Diehrbot) than the 101 issues relating to the composition claims.

    Note to ping-a-ling: this is called “answering a question.” Someday maybe you’ll overcome your handicap and give it a try.

  94. Can you rustbrains imagine that an analogy isn’t necessary the best way to think about patent law? That new inventions may need to be thought about differently and might not be directly analogous to previous inventions?

    Really, MM, you have reached new lows. Yappping about Bearegard when your castle keep is being attacked. Focus boy. Focus.

  95. “And not only because nobody would pay extra for a light-creating machine based on the sole fact that it’s switched on”

    Your logic doesn’t scale very well. It is easy to say when its only one switch. A lot harder to say when it is a million switches and certain ones have to be swiched thousands of times a second.

  96. You guys are really lame.

    This whole discussion is an exercise is denial and intellectually dishonesty. It is no wonder you can’t predict the outcome of these cases.

    Try actually working at narrowing down the discussion to actual topic where there is a disagreement of law or fact.

  97. Lionel: I was surprised (way back when) when I first found out that straight sequences found in nature were being created in isolated form in labs and being patented.

    Were you surprised when you first found out that you could get a patent on a previously uncharacterized chemical composition, where the chemical was isolated from a plant?

  98. MM:
    Read Benson. Shift registers that aren’t eligible because they are capturing a law of nature. So, your molecule (that is partially funcationally claimed) may or may not be 101 eligible under the base of your dreams.

  99. “I bet you couldn’t find a single examiner or judge who wouldn’t make a 102 rejection of a “machine that creates light etc.” based on prior art showing a light switch in an off position. It’s so clear an anticipation that not even Newman would disagree.”

    If the prior hasn’t showed that light was made when the switch was flipped to ON and/or that the switch was ever flipped to ON, then no, they would not be able to make out a case of anticipation.

    Would you say the same if the prior art showed the power supply, light bulb, switch, and 3 pieces of wire all unconnected? Does that anticipate my proposed claimed?

    My guess would be that Wilton would say no because this collection of parts is capable of being the claimed machine. What say you?

  100. 1. An isolated nucleic acid, wherein said nucleic acid consists of SEQ ID NO:33.

    SEQ ID 33 is a 429 nucleotide sequence, including modifications of every thymidine residue. As far as you know, there is no genome on earth that includes the sequence. Specification teaches that you can make the sequence using a well-known DNA synthesizing machine.

    Eligible under 101?

    Let’s see the analysis.

    Still waiting. Again, this is a very simple, very real hypo regarding the technology very closely related to that which the ACLU (and some commenters here) believes unpatentable under 101. My question is: why is this composition not eligible for patenting?

  101. Regarding Alappat, if a programmed machine does nothing different than old machines, I think there are strong tension with Benson. In contrast, if the programmed machine does something new, it would be patentable under Diehr. I think the actual test announced in Alappat is highly suspect given that this is essentially the same test used in State Street Bank which was all but overruled by the Supreme Court in Bilski.

    If one were to read the apocalyptic views of many of the Amicus briefs in Bilski, the MOT test all but condemns to oblivion most software patents. Since Bilski only removed the MOT test from the “sole test” category, I think the whole issue of patentability of programs is now back on the table.

  102. I hope you are not practicing, because if you are, you really need to brush up on your 35 USC 102 jurisprudence.

    I bet you couldn’t find a single examiner or judge who wouldn’t make a 102 rejection of a “machine that creates light etc.” based on prior art showing a light switch in an off position. It’s so clear an anticipation that not even Newman would disagree.

    I’m sorry, but moving something from one position to another position changes the structure of a machine.

    The structure of the machine includes a movable switch, capable of being in either orientation, no matter which orientation it’s currently in. Flip all the switches you want, it’s still the same machine. And not only because nobody would pay extra for a light-creating machine based on the sole fact that it’s switched on.

  103. “It is only different from a functional standpoint; it is not different from a structural standpoint.”
    Sure it is … the switch has a different configuration. A configuration is “a relative arrangement of parts of elements.” A pool of molten aluminum and an aluminum engine block contain the same arrangement of elements (i.e., aluminum atoms), however, they are configured differently, and configuration counts when we are talking about novelty.

    This isn’t a particular hard concept to grasp. It is only a hard concept to grasp when you have a preconceived notion that conflicts with this concept.

  104. “It’s a switch. It’s designed to be placed in different configurations while still being the same switch.”
    Then you’ve got an obviousness argument. However, if nobody has turned the switch from OFF to ON (or from OFF to ON), then you don’t have anticipation.

    Wrong. The structure of the machine has not changed when the switch has moved from one position to another. You are arguing for a process limitation, which has no patentable weight when claiming an apparatus or machine. See In re Thorpe.

  105. Malcolm

    “LOL. When you were born?”

    Once again, I am a victim of my own lack of clarity. I have been aware that these patents have been granted for years. I just always thought they were wrong and was surprised the CAFC approved them. I assumed all gene patents would be on techniques, apparatuses, therapies, and derived materials. I was surprised (way back when) when I first found out that straight sequences found in nature were being created in isolated form in labs and being patented.

  106. Shift registers that aren’t eligible because they are capturing a law of nature.

    Diehr got his patent, though. His invention only used one particular application of a law of nature.

    If you can explain how a single gene captures the entirety of the principle of genetic transcription, I look forward to reading your next post.

  107. “Nonsense. Machine 1 is capable of being Machine 2 by merely flipping a switch.”
    And a block of iron is capable of being an engine block merely through the use of a 5-axis CNC machine. In both instances, they have been transformed into something they were not before.

    “Your claim above would be anticipated by either Machine 1 or Machine 2”
    I hope you are not practicing, because if you are, you really need to brush up on your 35 USC 102 jurisprudence.

    “even though the structure of the machine has not changed when moving from the first position to the second position”
    I’m sorry, but moving something from one position to another position changes the structure of a machine. Write a few mechanical patent applications and you’ll figure that one out.

    “A pair of scissors in an open position does not suddenly become a new and patentably different machine when the scissors are subsequently closed.”
    Bend a length of small diameter wire in four places and you’ve come up with a paperclip. Certain parts of the wire have simply been moved from one position to another. As for your scissors, the scissors in the closed position don’t have much utility as a cutting member. However, in the open position and with moderately sharp blades, you can do a whole host of things with it that you cannot do with it in a closed position.

  108. Malcolm, so I invent a machine that automatically sequences and lists, in an ordered manner, the entire genome from a human sample. An educated woman seeking to determine whether she has the concerned brest cancer gene, submits a sample and the machine gives her a list. She scans the list and determines from it the answer.

    Is there any infringement by anybody here of any the claims of. Myriad?

  109. Welcome to the world of the law – which creates legal fictions all the time.

    The law does so usually with a legitimate justification. I have not seen such a justification for this particular legal fiction thus far.

    The point remains, Machine 1 doesn’t infringe whereas Machine 2 does infringe. The law treats them differently. Therefore, they are different machines.

    They are only different as you have narrowly described and claimed them. However, you should not be surprised when a machine capable of doing both through the use of a switch anticipates your claim to either Machine 1 or Machine 2.

    Machine 1 doesn’t do anything, whereas Machine 2 creates light. How is that not different?

    It is only different from a functional standpoint; it is not different from a structural standpoint. You are free to claim either machine from a functional standpoint, but when the prior art discloses a machine that is capable of doing both, you should not be able to obtain a patent to a “new machine” that merely performs only one such function. Instead, you should be claiming the process.

  110. “It’s a switch. It’s designed to be placed in different configurations while still being the same switch.”
    Then you’ve got an obviousness argument. However, if nobody has turned the switch from OFF to ON (or from OFF to ON), then you don’t have anticipation.

    “Claim a string of ones and zeros, show its utility, and I’ll be happy to agree that it’s a valid selection patent over the prior art memory device with all those switches.”
    Another person unfamiliar with the differences between the first and second paragraphs of 35 USC 112.

  111. 1. An isolated nucleic acid, wherein said nucleic acid consists of SEQ ID NO:33.

    SEQ ID 33 is a 429 nucleotide sequence, including modifications of every thymidine residue. As far as you know, there is no genome on earth that includes the sequence. Specification teaches that you can make the sequence using a well-known DNA synthesizing machine.

    Eligible under 101?

    Let’s see the analysis.

    Still waiting. Ping already punted and failed.

    Passing through, want to take a shot? Lionel?

  112. Passing Gas Machine 1 doesn’t do anything, whereas Machine 2 creates light. How is that not different?

    Great philosophical point! You can wank with the best of them.

    Do you have a claim in mind?

  113. Surely, Willton, you know of the difference in structure when switches (moer than one) are created (heck, even just used) in series or in parellel, right? Ya might havta take off your policy blinders to recognize the plain truth.

    That is far different compared to what I am talking about. You are talking about how electrical components may be located and connected on a circuit board to create different circuits. That is not the same as saying that a series of switches in a particular ON/OFF configuration is a different machine than the same series of switches with a different ON/OFF configuration. Sure, the first configuration may perform a different function than the second configuration. But the physical structure of the switches themselves have not changed.

    A computer is a wonderful machine in that it can perform a multitude of functions at any given time. But the computer itself does not undergo any structural changes when it does so.

  114. ping-a-ling, do you have a question about isolated nucleic acid claims? If so, please ask away and if the question doesn’t incorporate an error I’ve corrected you on a dozens of times before, I’m happy to answer it.

    I do answer questions, ping-a-ling, unlike you. So ask away.

  115. 1. An isolated nucleic acid, wherein said nucleic acid consists of SEQ ID NO:33.

    SEQ ID 33 is a 429 nucleotide sequence, including modifications of every thymidine residue. As far as you know, there is no genome on earth that includes the sequence. Specification teaches that you can make the sequence using a well-known DNA synthesizing machine.

    Eligible under 101?

    Let’s see the analysis.

    Read the instructions, NWPA. Let’s see the analysis under 101. If you want to use Benson, then please compare the above claim to the claim in Benson so we can all see why the “logic” in Benson is appropriate here.

    Thanks.

  116. Bring on those dozen corrections. Where are they? Chop chop, bring em baby. Bring em, unless ya want the world to see what a chump you are (oops too late).

    Still waiting. Very simple straightforward put your money where your mouth is, put up or sfu.

    This is a predicate to my taking a shot, so’z I need ya to stand up Malcolm – help me help you.

    NWPA:

    See me quoting me:
    Prediction: NIMBY
    Posted by: ping | Oct 30, 2010 at 09:28 AM

  117. “No, what escapes me is the reason why we are creating a fiction that a switch in the ON position is considered a new and different machine than a switch in the OFF position.”

    Welcome to the world of the law – which creates legal fictions all the time. The point remains, Machine 1 doesn’t infringe whereas Machine 2 does infringe. The law treats them differently. Therefore, they are different machines.

    Machine 1 doesn’t do anything, whereas Machine 2 creates light. How is that not different?

  118. The functional part of the claim is what is there besides the “SEQ ID 33 is a 429 nucleotide sequence”. What you are saying is functionally we don’t care. We care about how the molecule is used to for example determine a marker or replicate the molecule. So, the other atoms that could hang off the molecule we don’t care about becasue functionally we get the same result.

    In EE we say that there are a number of ways of implementing the function say for example with a circuit or software so we don’t specify the function.

    Get it? Same thing.

  119. Yes, MM, but read Benson. Shift registers that aren’t eligible because they are capturing a law of nature.

    Funny how you have advocated and loved Benson and now that the same logic invades your turf you are now up in arms.

  120. An isolated oxygen atom is a chemically distinct species from a molecule of oxygen O2.

    Similarly an isolated genetic sequence does not exist in nature and is a distinct chemical entity with different properties from the sequence in vivo. In particular it is removed from its nucleic acid chain and will have new terminator groups (since the free chemical bonds at the end of the chain will not remain as such but will form a stable chemical group e.g. -OH which does not exist in nature

    All this argument is legally very interesting, but not technically very literate.

  121. 1. An isolated nucleic acid, wherein said nucleic acid consists of SEQ ID NO:33.

    SEQ ID 33 is a 429 nucleotide sequence, including modifications of every thymidine residue. As far as you know, there is no genome on earth that includes the sequence. Specification teaches that you can make the sequence using a well-known DNA synthesizing machine.

    Eligible under 101?

    Let’s see the analysis.

    Still waiting. Very simple, straightforward, real-world hypo. Maybe you want to take a shot, Lionel?

  122. no matter how the switches are arranged, the STRUCTURE of the switches are the same.

    Ya know, I tried that back when I was a novice student with my EE teacher a long time ago.

    Didn’t work then either.

    legitimate, engineering-related justification

    Surely, Willton, you know of the difference in structure when switches (moer than one) are created (heck, even just used) in series or in parellel, right? Ya might havta take off your policy blinders to recognize the plain truth.

    IANAE, is that a Nazgul on your shoulder?

  123. It escapes you?

    The reason is that people want to sue software companies as direct infringers. Because they want more money. Which, as you know, is a very good reason to twist the law beyond all recognition.

    Well, yeah, that I understand. Sorry, I was hoping for a legitimate, engineering-related justification, not the cynical “we want to make money” justification. I guess I was asking for too much.

  124. Good question, and an example that I thought up of before. The answer is yes. Machine 1 (i.e., OFF position) has a much different characteristic than Machine 2 (i.e., ON). If I claimed:

    An electric circuit, comprising
    a bulb,
    a power supply connected to the bulb, wherein
    the bulb is lit using electricity from the power supply.

    This claim would be infringed by Machine 2 but not Machine 1. Since Machine 2 infringes but not Machine 1, Machine 2 would not be anticipated by Machine 1 and vice versa.

    Nonsense. Machine 1 is capable of being Machine 2 by merely flipping a switch. There is nothing structurally different about Machine 1 compared to Machine 2. Your claim above would be anticipated by either Machine 1 or Machine 2, as they are the same machine arranged in different manners.

    Your position is basically saying that a machine in one position is unique compared to the same machine in a second position, even though the structure of the machine has not changed when moving from the first position to the second position. I’m sorry, but that makes absolutely no sense. A pair of scissors in an open position does not suddenly become a new and patentably different machine when the scissors are subsequently closed. The same principle should apply to electrical engineering.

  125. No, what escapes me is the reason why we are creating a fiction that a switch in the ON position is considered a new and different machine than a switch in the OFF position.

    It escapes you?

    The reason is that people want to sue software companies as direct infringers. Because they want more money. Which, as you know, is a very good reason to twist the law beyond all recognition.

    It’s absolutely laughable to think that a disclosure of a switch in the ON position would not be an anticipation of a switch in the OFF position. The mere disclosure of a switch teaches the “genus” of both positions. Sure, the switch is different now that you’ve switched it, but it’s not “a different switch”. It’s a switch. It’s designed to be placed in different configurations while still being the same switch.

    All this argument over switches. And yet, nobody seems to want to claim the positions of all the switches on the computer-readable medium. Claim a string of ones and zeros, show its utility, and I’ll be happy to agree that it’s a valid selection patent over the prior art memory device with all those switches.

  126. Now Willton, take the function of a multiple switch arrangement and re-arrange those that are on and off – You have more than a single function at hand. Now increase towards the Billion combination mark.

    It does not matter whether we have more than one function. What matters is the structure of the switches. The fact of the matter is that no matter how the switches are arranged, the STRUCTURE of the switches are the same.

    Perhaps you should stick to your policy arguments, as the facts of the art escape you.

    No, what escapes me is the reason why we are creating a fiction that a switch in the ON position is considered a new and different machine than a switch in the OFF position. If a practitioner wants to claim the arrangement of the switches in a computer, then logically the practitioner should be claiming the arrangement, not the apparatus.

    The fact that a practitioner can claim the arrangement as an apparatus is just an unfortunate circumstance regarding the state of the law.

  127. “The problem, though, is that jurists often analogize cutting a branch from a tree to finding an oncogene. And then they [accurately and logically conclude] that isolated DNA is a product of nature.”

    Fixed it for you. 😉

    By the way, I am not arguing against the patentability of methods of isolating genes, modified isolated genes, treatments based upon the isolated genes, or gene therapies, etc.

    If the only difference between A and B is that B is isolated and A is part of a system or compound, then B as such should not be patentable if A is found in nature.

    And I should also say I am for very limited 101 rejections. In this case, I believe this is a plain 101 issue and I am surprised that patents to existing genes in isolated forms have been granted.

  128. “Lionel, I agree that such a claim should be patentable, but under the logic set forth in the DOJ brief, I don’t see how it would be. Inventor didn’t invent natural compound X — it exists in nature. Inventor didn’t invent X’s medicinal effect — he simply observed this law of nature. How exactly is Inventor doing more than seeking a monopoly on a natural phenomenon?”

    If the compound as such is found in nature, then the compound as such should not be patentable. However, if the compound or the lifeform/object containing it has not been used to treat people, why wouldn’t it be patentable under the logic of this case? The treatment does not exist until you invent it, regardless of whether the effect does.

  129. “Let’s say we have a light bulb connected to a switch and a power supply. If I turn the switch from the ‘OFF’ position to the ‘ON’ position, have I created a new and/or different machine?”

    Good question, and an example that I thought up of before. The answer is yes. Machine 1 (i.e., OFF position) has a much different characteristic than Machine 2 (i.e., ON). If I claimed:

    An electric circuit, comprising
    a bulb,
    a power supply connected to the bulb, wherein
    the bulb is lit using electricity from the power supply.

    This claim would be infringed by Machine 2 but not Machine 1. Since Machine 2 infringes but not Machine 1, Machine 2 would not be anticipated by Machine 1 and vice versa. Bearing in mind, that we aren’t considering obviousness.

    Obviousness is easy when you have a circuit with only two configurations. However, obviousness becomes a lot harder when you have millions of transistors connectable in an untold number of ways.

  130. “Your claim is anticipated by prior art computers or it’s simply abstract and not eligible for patenting. You can’t just claim a desired function and stick a computer on it and expect to get a patent.”

    You seem to have a problem distinguishing the first paragraph of 35 USC 112 from the second paragraph of 35 USC 112. Common problem among examiners.

    Regardless, computers having new functionality have been patentable for several decades now. Your hypothetical examiner would get drummed out of this USPTO rather quickly for failing to properly apply the law.

  131. You come to me like a moth to the flame
    It’s love you need but I don’t play that game
    ‘Cos you could be my greatest fan
    But I’m nobody’s friend

  132. C’mon Malcolm,

    Bring on those dozen corrections. Where are they? Chop chop, bring em baby. Bring em, unless ya want the world to see what a chump you are (oops too late).

    Me thinks you’ve run your mouth too much once again. Never fear, it’s windmill day.

    Get out there and vote peoples (unless ya wanna be like Malcolm and just sit there and be otch).

    I done told ya all before – it be like building blocks and abstractions. Molecules use the building blocks of atoms and computers use the building blocks O circuits and switches. Ya can make new molecules by picking and choosing which ones to put together and ya make a new machine by choosing which circuits and switches are configured. The abstraction of a general purpose computer is merely the playground of building blocks. Some of ya all need to reset your thinkin.

    Your buildin blocks inside a single chip gives ya so much more power and options than all the possible molecules that biology gives ya. There be the binary beauty of simple symmetry. Malcolm be jealous of this different world and its power of creation. Color be born from the simple binaries of black and white, of 1’s and 0’s. O such sweet nuance.

  133. Now Willton, take the function of a multiple switch arrangement and re-arrange those that are on and off – You have more than a single function at hand. Now increase towards the Billion combination mark.

    Perhaps you should stick to your policy arguments, as the facts of the art escape you.

    Your try at being obtuse fails
    Thank you for the compliment. Keep that 6 as your tutor.

  134. What are the two functions of that one switch? Your try here at being clever fails.

    Your try at being obtuse fails.

  135. What are the two functions of that one switch? Your try here at being clever fails.

    The two functions of the one switch do not change the fact that the switch in an OFF position is not structurally different from the same switch in an ON position. Turning a switch on does not magically turn the switch into a new machine.

  136. Similarly, your computer with a hard drive that includes your operating system plus all the programs you normally run would be considered a very different computer if the hard drive was replaced with the identical make/model hard drive but no software was loaded thereon. I would say that even a 5 year old would be able to tell the difference between the two computers.

    If you think they aren’t a different computer, why would anybody pay anything different for one computer over the other computer. Identical computers should be worth identical amounts – am I not correct?

    Passing Through, given what you have written above, let me ask you something:

    Let’s say we have a light bulb connected to a switch and a power supply. If I turn the switch from the “OFF” position to the “ON” position, have I created a new and/or different machine?

  137. Similarly, your computer with a hard drive that includes your operating system plus all the programs you normally run would be considered a very different computer if the hard drive was replaced with the identical make/model hard drive but no software was loaded thereon. I would say that even a 5 year old would be able to tell the difference between the two computers.

    Passing, that’s a nice summary of the challenge I ran awhile back in the Great Hall. 6 failed miserably. Several anti-software types failed miserably, IANAE wisely did not even try the challenge and Malcolm, well, he was nowhere to be found (sorta like, right after Bilski).

    Thanks for confirming once again your inability to articulate a coherent defense of Beauregard claims, ping.

    Wow, Malcolm, still taking reading lessons from 6 I see. No other reason for ya to mix up the volition aspect of Homey don’t give answers with the “inability” that ya run your mouth with. No surprise really, ya seem to think that kinda stench.

    Ya see Sunshine, I aint chasin ya like NAL did, criminy, she chased you for what 2 1/2 years and you always ran away. She even chased your sockpuppets into the ground. I don’t need to chase ya, cause I know you aint got the answers.

    If you can articulate a question that doesn’t incorporate a mistake that I’ve already corrected you on a dozen times, ping-a-ling I’m more than happy to answer. Got that? More than happy to answer.

    On this note Iza gonna take you up – document these so-called dozen mistakes you’ve done corrected me on Sunshine. Heck, let’s roll through a half dozen of ’em.

    Pardon me if I don’t hold my breath waitin for ya there Chuckles. You don’t got Jack.

    One of the many important differences between you and me, ping-a-ling

    Yeah I bet – like your “integrity.” Thanks but no thanks Mr. Opposite day – Mr. dead president, Your type O “integrity” is somethin I am quite pleased that we have many such important differences.

  138. Passing: A block of iron can be configured to be an automobile engine. However, a block of iron does not identically disclose an automobile engine or would it infringe an automobile engine.

    What does this have to do with the lack of novel structural limitations in a typical Beauregard claim or the presence of structural limitations in a typical isolated nucleotide claim?

    Your ability to ramble on and kick up dust and change the subject reminds me of a certain poster who infamously imploded in these very threads.

    If you think they aren’t a different computer, why would anybody pay anything different for one computer over the other computer. Identical computers should be worth identical amounts – am I not correct?

    LOL.

    Claim 1: A computer, wherein said computer is capable of doing something new and desirable.

    Examiner: Your claim is anticipated by prior art computers or it’s simply abstract and not eligible for patenting. You can’t just claim a desired function and stick a computer on it and expect to get a patent.

    Applicant: But my claim says that it’s capable of doing something new and desirable. It’s in the claim. And one skilled in the art will know how to make it do something new and desirable.

    Examiner: Nope. Not buying it.

    Applicant: Well, if it wasn’t new and desirable, how do you explain this receipt where someone paid me more for my computer than for this other guy’s computer? Huh? How do you explain that, huh?

    Examiner: Maybe it was autographed by someone vastly more important than you.

  139. “Of course not. The machine is designed to have its switches flipped from time to time. It’s a known and intended (and reversible, usually) use of the very same machine.”
    That fact that something can be configured to do something doesn’t mean it has been. A block of iron can be configured to be an automobile engine. However, a block of iron does not identically disclose an automobile engine or would it infringe an automobile engine.
    The number of transistors on certain chips are approaching 1 billion. Considering that number of various ways that these switches can be configured, you have to imagine that most patented electrical circuits could be infringed by these chips assuming that the switches were so configured so as to create the patented electrical circuit.
    Would you say that your “general purpose computer,” that doesn’t include any software which reconfigures the computer, is infringing these patented circuits? If not, why not?
    What happens when a piece of software changes the configuration of these circuits such that the computer has been reconfigured and, in fact, the computer does have a configuration that matches a particularly claimed circuit? Is that “general purpose computer” then infringing the patented circuit? If not, why not?
    You answers to those questions would be appreciated. If you would like and you do not care to explain your answers, a simple (i) yes, yes; (ii) no, no; (iii) yes, no; or (iv) no, yes would suffice.

  140. “Nobody skilled or unskilled in the art considers any computer to be a ‘different computer’ in any way when different software is installed on it.”
    A computer with widget A connected to thingamajig B with a Phillips-head screw is different than the an otherwise identical computer but with widget A connected to thingamajig B with a flat-head screw. There may not be much difference, but there is a difference.

    Similarly, your computer with a hard drive that includes your operating system plus all the programs you normally run would be considered a very different computer if the hard drive was replaced with the identical make/model hard drive but no software was loaded thereon. I would say that even a 5 year old would be able to tell the difference between the two computers.

    If you think they aren’t a different computer, why would anybody pay anything different for one computer over the other computer. Identical computers should be worth identical amounts – am I not correct?

    “though much of the time a different operating system requires a different “structure” of the computer-readable medium for the software to actually work.”
    Not really, you can use the same DVD, hard drive, or USB drive to load up Linux, Windows or Leopard. Of course, it would be nice if you clarified what you meant by “a different ‘structure.'”

    “Could you possibly have claimed software that works on a different computer than was known to exist at the time?”
    Can you say Doctrine of Equivalents? Also claim a “manifold connected to a plurality of chambers” and the number of different manifolds that are covered by the claimed “manifold” is infinite and includes manifolds not even dreamed of. So what?

  141. >>This might be old news to you but every math >>equation that there has ever been “already existed”.

    Every information processing method already exists? Where are they?

  142. “The relationship between the genotype and the phenotype already existed and was discovered.”

    This might be old news to you but every math equation that there has ever been “already existed”.

  143. NWPA: Can we all just agree that you repeat the same arguments over and over again, IANAE.

    Pot, meet kettle. He called you black.

  144. ping Keep waiting Sunshine.

    Thanks for confirming once again your inability to articulate a coherent defense of Beauregard claims, ping.

    By the way, happy to defend the “Isolated DNA comprising SEQ ID X” as statutory under 101 until the cows come home. I’m sure I speak for a majority of the Federal Circuit as well.

    If you can articulate a question that doesn’t incorporate a mistake that I’ve already corrected you on a dozen times, ping-a-ling I’m more than happy to answer. Got that? More than happy to answer.

    One of the many important differences between you and me, ping-a-ling. Same applies to Night Wiper.

    Benson’s logic is that the method and hardware was nothing more than a way of capturing the natural law of how to convert from different bases of a number

    Now apply the logic to the following:

    1. An isolated nucleic acid, wherein said nucleic acid consists of SEQ ID NO:33.

    SEQ ID 33 is a 429 nucleotide sequence, including modifications of every thymidine residue. As far as you know, there is no genome on earth that includes the sequence. Specification teaches that you can make the sequence using a well-known DNA synthesizing machine.

    Eligible under 101?

    Let’s see the analysis.

  145. Benson’s logic is that the method and hardware was nothing more than a way of capturing the natural law of how to convert from different bases of a number.

    And what natural law is captured by an isolated gene that is useless for synthesizing protein in vivo? A particular gene, that in any event would code for only a particular protein and doesn’t generally pre-empt the use of other genes to code for other proteins?

  146. >>Why don’t you elaborate on that a little?

    Benson’s logic is that the method and hardware was nothing more than a way of capturing the natural law of how to convert from different bases of a number.

  147. Do you become a different person if you get a sun tan? Of course not. The ability to tan in response to the appropriate stimulus was always an inherent feature of the person you’ve always been.

    I beg your pardon, IANAE. You were right – it is sadly rare around here to get a satisfactory explanation of why one is wrong.

  148. The logic against these molecules is the same type of logic applied in Benson.

    Why don’t you elaborate on that a little? I don’t quite see the similarity. Benson claimed a hard-wired mathematical calculation, and Myriad claims a molecule. Also, Myriad clearly doesn’t preclude the use of the gene in nature to code for proteins, because if it did and it could get an injunction, it would have essentially cured breast cancer.

    With the stronger argument that the genotype to phenotype is a law of nature.

    Who cares about the phenotype? There are no claims to producing the phenotype. Isolated genes can’t produce any phenotype anyway.

    At most, the correlation between the isolated gene and the wild gene that produces the phenotype is a statement of utility. What is claimed is the molecule itself. Do you have a problem with molecules being statutory?

  149. You see what happens when you get intellectually dishonest people writing opinions for the supreme court.

    You, MM, should completely re-evaluate your miserable life.

  150. Can we all just agree that you repeat the same arguments over and over again, IANAE.

    The logic against these molecules is the same type of logic applied in Benson. With the stronger argument that the genotype to phenotype is a law of nature.

  151. Does it become a different machine if the switches are flipped to different positions, or is it the same machine being put to a different use?

    Of course not. The machine is designed to have its switches flipped from time to time. It’s a known and intended (and reversible, usually) use of the very same machine.

    Do you become a different person if you get a sun tan? Of course not. The ability to tan in response to the appropriate stimulus was always an inherent feature of the person you’ve always been.

    why don’t you explain to us how the computer readable medium recording the software is just an “abstract idea, law of nature, or natural phenomenon.”

    It’s an abstract idea because it’s the recipe and not the process. The real invention is a computer doing whatever useful thing the program does. Until you run the program, you don’t have a statutory process, you only have an unspecified medium with some writing on it that doesn’t affect the medium. We’ve had this discussion before.

    I think that’s what you really need to establish post Bilski to knock out Beauregard claims categorically under 101. Do you agree?

    If I agree with that statement, can we all agree that “molecule whose exact structure is specified” is statutory under 101 as being none of those three things?

  152. IANAE,

    Presume you have a circuit board with 1000s of analog elements connected with switches in between each element. Does it become a different machine if the switches are flipped to different positions, or is it the same machine being put to a different use?

    I think the answer is rather semantically determined, and based on whether you define the “machine” as the configured circuit, or as the reconfigurable collection of circuitry.

    That is basically what a computer is, and I’m pretty sure you know that. The software causes switches to be flipped, flip flops to be flopped, etc. to obtain a circuit, and outputs of that circuit to be stored and fed into another circuit, etc. That’s why many people say that a computer programmed with software is a different machine than a computer alone.

    But we know it’s really just semantics. Instead of getting caught up in those particular semantics, why don’t you explain to us how the computer readable medium recording the software is just an “abstract idea, law of nature, or natural phenomenon.” I think that’s what you really need to establish post Bilski to knock out Beauregard claims categorically under 101. Do you agree?

  153. This could have massive unintended consequences. By the reasoning used here, a natural compound that had never before been purified and identified, which turned out to be useful in treating cancer, would not be patentable as a composition of matter. The method of using it, maybe, but not the compound itself. That strikes me as perverse.

  154. Keep waiting Sunshine.

    and distinguish it structurally

    I done tell ya – that aint the legal requirement for Beauregard. Look again at the edges of the Printed Matter Doctrine. Oh wait – NAL tried to get ya to see that and ya chose not to.

    Understandable, as if ya did, ya would lose one of your favorite be otchin subjects.

    Iza don’t waste my time tryin to esplain things to those that won’t even try to understand the basics. That’s why I have the rule: Homey don’t do answers.

    Or perhaps since ya seem to be claimin that you do have the answer, Iza be waiting to see ya get off your duff and actually do somethin about in a court of law, instead of spending so much windmill time here.

    Seems like ya much prefer waiten and be othcin then actually doing somethin about it. Care to esplain that?

  155. Stick to explaining to us the functional aspects of the claims in suit and why it is not a law of nature.

    Oh, you only want to have patents on things that don’t use the laws of nature? Good news for business method patents that only use the laws of Congress, but bad news for computers, I’m afraid.

    The functional aspects of DNA are in how the DNA physically interacts with other things around it. In complete accordance with the laws of nature. Just like a ball bearing or a coffee cup (without writing on it) or anything else that one might attempt to patent.

    The DNA is claimed in terms of its exact and entire physical structure. It’s claimed as a series of quaternary bits. Go on, let’s see you draft a Beauregard claim reciting every one and zero on the medium.

  156. >>Just explain to us, ping, how Beauregard >>claims work exactly to distinguish >>one “readable” medium from another.

    If I can’t see it, then it ain’t there. ‘cept if it be a molecule.

    Isn’t Beauregard claims a bit off point here?

    Stick to explaining to us the functional aspects of the claims in suit and why it is not a law of nature.

  157. ping, anytime you want to explain to us all how it is possible to claim a composition and distinguish it structurally from the prior art without any recitation of a non-novel structure, you are welcome to do so.

    Until then, you and your sidekick Night Wiper got nothing but your name-calling and some truly awful, internally contradictory and self-affirming cases to back you up.

    Just explain to us, ping, how Beauregard claims work exactly to distinguish one “readable” medium from another.

    Been waiting a long time for you to step up.

  158. Anon: As you are the one that claims the “new machine” is but a lie, it is up to you to prove such a statement.

    It’s pretty obviously a lie, and a transparent one concocted to reach the desired result in the case. Curiously, that was the one day in the history of the judiciary that a panel of judges understood computer-related inventions.

    Nobody skilled or unskilled in the art considers any computer to be a “different computer” in any way when different software is installed on it. The idea that putting a disk in the drive makes the computer structurally different is more inventive than any Beauregard claim. You might be able to justify “different computer” in the case of a different operating system, though much of the time a different operating system requires a different “structure” of the computer-readable medium for the software to actually work.

    If someone later invents a new OS (as has been known to happen), would a computer-readable software for that new OS infringe your Beauregard claim? Could you possibly have claimed software that works on a different computer than was known to exist at the time? If so, all I have to do to invalidate your patent is design an OS that interprets a prior art string of bits as your program.

    Max: What I meant was that the debate about which tool to use has the potential to sharpen everybody’s focus.

    Unless, as I noted earlier, one’s interlocutor is a tool, or less preferably a spanner.

  159. MD What I meant was that the debate about which tool to use has the potential to sharpen everybody’s focus.

    The last thing the ACLU wants to do is sharpen anybody’s focus about patent law.

  160. Lionel, I agree that such a claim should be patentable, but under the logic set forth in the DOJ brief, I don’t see how it would be. Inventor didn’t invent natural compound X — it exists in nature. Inventor didn’t invent X’s medicinal effect — he simply observed this law of nature. How exactly is Inventor doing more than seeking a monopoly on a natural phenomenon?

  161. The funny thing NWPA is when his art unit is affected and business method patents and Beauregard claims survive.

    He just gonna blow.

  162. First Bilski smacks you in the face and now you must endure the mob coming after you. How’s it feel? How would it feel to have me and the others on this board intentionally obfuscate the arguments and conflate 101 and 102 and 103.

    Funny ain’t it.

  163. >>That is not my position.

    I think we have what amounts to functional claiming and claims that are to a law of nature. Wow, funny to hear you cry when the zealots come after you.

  164. it is your position that the relationship between the genotype and phenotype has nothing to do with the granting of the patent?

    That is not my position.

  165. IANAE, I did not intend to say that it doesn’t matter which tool. I agree with you, that it does matter. What I meant was that the debate about which tool to use has the potential to sharpen everybody’s focus.

  166. I’d complain less

    LOL

    Well that’ll be the day
    When you say goodbye
    That’ll be the day
    When you make me cry
    You say you’re gonna leave
    You know it’s a lie

  167. Sunshine Malcolm, so it is your position that the relationship between the genotype and phenotype has nothing to do with the granting of the patent?

  168. “Waaaaah!!!!! You violated my requiring structural features!”

    I’d complain less if all applicants were coddled like the softie woftie applicants. At least then there’d be some consistency in the PTO’s misapplication of the law.

  169. First off, Anon, don’t mess with my main man. Let me be the one that puts him in his place (it’s a lot higher than ya think).

    Second – Sunshine Malcolm, coming from the biggest crybaby on these boards (stop them Dennis, they’re picking on me), your “Waaaaah!!!!! You violated my Constitution!” is downright ironic – course, I don’t think ya recognize why, but think about this:

    The difference is that the PTO is actually quite strict (as they should be) about requiring applicants to recite the structural features

    Waaaaah!!!!! You violated my requiring structural features!

  170. Anon As you are the one that claims the “new machine” is but a lie, it is up to you to prove such a statement.

    The world of “anon”:

    Claim 1: “A new machine that does something that no machine ever did before.”

    Anon: “Go ahead, PTO. Prove me wrong or give me my patent.”

    PTO: “It’s an abstraction under 101.”

    Anon: “Waaaaah!!!!! You violated my Constitution!”

  171. Passing Through A claim to an “isolated gene” doesn’t have to recite the additional “stuff” with which it interacts, but through which utility is provided. Similarly, the disk (i.e., computer readable storage medium) interacts with a computer system (actually it is considered part of the computer system and it interacts with the other components). In so doing, the disk provides new functionality to a computer.

    The difference is that the PTO is actually quite strict (as they should be) about requiring applicants to recite the structural features of their molecules which provide the required utility and which distinguish those molecules from the prior art.

    Beauregard claims do not do this. They are composition claims which recite an old structure with an allegedly new function, without reciting any novel structural features that would give rise to the allegedly new function. As I’ve noted before, it’s basically a joke at the expense of the entire patent sytem. Worse than product-by-process claims even (at least as they were understood by Newman).

  172. NWPA Maybe they should assume the natural law of the relationship between the genotype and the phenotype were already known

    We’ve had this discussion before, too, Night Wiper. If the claims recited “A DNA with function X”, without an structural limitations, you’d have an argument.

    But that’s not the case. So instead we just have to wonder (not really) whether you are stoopit or lying.

  173. IANAE,

    I cannot control what you do not understand, what you choose not to understand, what you do not believe and what you choose not to believe.

    And unlike you, I have a real job to do, and will not spend my day patrolling blog message boards and spewing false rhetoric to suit a particular agenda.

    As you are the one that claims the “new machine” is but a lie, it is up to you to prove such a statement.

    In the meantime, the real world, the technical world and the courts will continue, thankfully without the need of your blessing or understanding.

  174. “Even more bonus points for why it should matter that the computer is a whole new computer, when all you’re claiming is a disk sold separately from the computer.”
    It matters with regard to the “utility” portion of 35 USC 101. A claim to an “isolated gene” doesn’t have to recite the additional “stuff” with which it interacts, but through which utility is provided. Similarly, the disk (i.e., computer readable storage medium) interacts with a computer system (actually it is considered part of the computer system and it interacts with the other components). In so doing, the disk provides new functionality to a computer. The “new functionality” satisfies the “new and useful” portion of 35 USC 101, and is consider a “new and useful improvement” of a machine. However, like with the “isolated gene,” you don’t need to claim the additional “stuff” which with the disk interacts. Along the same lines, I can claim a particular type of fluid used in shock absorbers. This fluid likely does not have any utility sitting alone without interacting with anything else, but a claim to the fluid alone still satisfies 35 USC 101.
    You state that “[t]here is apparently a perfectly logical reason that I refuse to believe, why a computer becomes a completely different computer when programmed.” Of course, you create a strawman be requiring a COMPLETELY different computer to be created. There is no requirement for a COMPLETELY different computer – just a different computer. Under 35 USC 102 (by which we judge whether something is new), even the slightest of differences is enough to establish that something isn’t new. Once I’ve found that slightest of differences and I can also establish that this slightest of differences produces some verifiable utility, then 35 USC 101 is locked up.
    Of course, all of this is a moot point. The law stands on my side. You can continue to throw out whatever pet theories of yours you want, but until you can convince the Federal Circuit otherwise, the best you can do is anonymously discuss your pet theories on this blog.

  175. Just recently I saw a show on the history Channel. It was about a Black family that in their particular gene structure they had a sequence that helped in the delviery of a Breast treatment. what happened is unbelievable.
    As bad as the syphilis story. and that was a sequence. Maybe not seperated by someone. But it was seperate and different none the less. And no one paid either group. Don’t call me ignorant!

  176. MM: funny how all of a sudden you understand the difference between 101 and 102 and 103. Odd.

    Maybe they should assume the natural law of the relationship between the genotype and the phenotype were already known and not consider it for 102 and 103 arugments. Gee does that sound familiar to you?

  177. Vision guy: I would guess that it has happened to some DNA strands in the past by natural acts.

    Worst. Inherency. Argument. Ever.

  178. Vision guy Thre is no other art area where claims allowed when the entire new and non obvious features are in the preamble.

    Not a fan of the claim drafting in the Myriad patents, but I’d like you to prove your statement. Seems like a load of b.s. to me. People have been successfully amending their preambles in response to Examiner rejections forever, in all art units.

    Sorry, I just don’t see it.

    Maybe try reading “isolated” as an adjective rather than as a process step. I am quite certain that the claims are not limited to isolated molecules that have been “snipped” (as you say) from other larger molecules.

  179. IANAE, the problem you’ll have discussing Beauregard claims with Night Wiper is that he believes that the recited functions are structures. At least, that is the alternate reality where he takes the discussion every time and then he sticks his fingers in his ears.

    The Government: Crossing the threshold of section 101, however, requires something more than identifying and isolating what has always existed in nature, no matter how difficult or useful that discovery may be

    No, it doesn’t. 102 and 103, however, require properly claiming the composition by reference to its structure so that it no longer reads on the composition that ‘existed in nature’ (or in the prior art, for that matter). Claiming the composition as “isolated” or on the basis of its relative purity is one way of doing that.

    A product of nature is unpatentable because it is not the inventive work of humankind. That essential rule cannot be circumvented by drafting claims for the same natural product removed from its natural environment and proclaiming the result “pure.”

    Ridiculous and wrong.

  180. One nuance that hasn’t seen a lotta discussion here, and that my pal Hal really points out with some force, is that Lord Kappos aint the one who wrote the government brief, but some dude over at Justice be the one speaking up for the Gov. here.

    What’s up with that?

  181. The structure of all these isolated DNA claims basically have the same form:

    An isolated DNA, comprising: something that exists in nature.

    The only possible part of that claim that is new and non obvious is the “isolated” portion, and that is in the preamble. Thre is no other art area where claims allowed when the entire new and non obvious features are in the preamble.

    What about moving “isolated” from the preamble to the body of the claim, as in:

    A DNA from a first DNA strand, the DNA comprising: a second DNA strand isolated from the first DNA strand.

    The first DNA strand exists in nature and the second DNA strand exists in nature as a smaller part of the larger first DNA strand.

    In general, isolating DNA (e.g. sniping the strand in two places) is not new and non obvious and I would guess that it has happened to some DNA strands in the past by natural acts.

    Since all the things in the claim exist in nature, how do these claims get past 101 merely because a human directs the snipping of the strand. Sorry, I just don’t see it.

  182. “Even more bonus points to you if you can figure out why you sound like a rustbrain.”

    Is it because I think software is a method of using a common computer, and should be claimed as such to be statutory?

    Is it because I don’t think “on a computer” makes a claim any better for its presence or worse for its absence?

    If you think being a Beauregard fan makes you sound all modern and avant-garde, don’t let me stand in your way.

  183. All the clarification ya need is in Alappat IANAE.

    Of course, we can re-visit the grand hall where 6 and others failed my great experiment. Any time ya wanna race your “same” machine without software versus my “same” machine with software Iza ready for ya. I done ripped up the “House” line of thought before and Iza could do it again.

    I recall that you were smart enough to not try your hand that day, seeing all the bodies left asunder that did try it and that ya would be plainly routed in your Middle-Earth prancing here.

    It be really basic “in the art” as software is really just hardware in another format.

    They say discretion is the better part of valor, my friend. My advise: use some here.

    As for Malcolm, Iza guess that he just didn’t realize all the windmills available in his own backyard.

  184. >>Even more bonus points

    Even more bonus points to you if you can figure out why you sound like a rustbrain.

  185. “Fixed for you IANAE.”

    Thanks for that clarification. There is apparently a perfectly logical reason that I refuse to believe, why a computer becomes a completely different computer when programmed. Maybe you could explain that reason again, bearing in mind that it retains all of its old “general purpose” functionality, and also bearing in mind that a computer has to be programmed before it can even read a computer-readable medium.

    Bonus points for explaining to me why I might refuse to purchase an ordinary computer on the basis that it has software on it and therefore is not the general purpose computer I thought it was.

    Even more bonus points for why it should matter that the computer is a whole new computer, when all you’re claiming is a disk sold separately from the computer.

  186. There’s no logical reason that I will believe in for a programmed computer to be anything other than the very same machine put to a different use.

    Fixed for you IANAE. It is a good thing that what constitutes a Lie in the courts is not what you perversely believe a lie to be, your selective reasoning and purposeful ignorance notwithstanding.

  187. Patents should not reward “sweat of the brow”.

    The problem, though, is that jurists often analogize cutting a branch from a tree to finding an oncogene. And then they come up with the idea that isolated DNA is a product of nature.

  188. Noonan: “But, Don, it is structural, which is what the court missed by focusing on how they are the same rather than how they are different. Comes from having science illiterates making these decisions. Arrogance and ignorance don’t make a pretty combination, in any field of endeavor.”

    Nice to see somebody else making an unequivocal and critical statement on this board for once.

    Of course, I’m now going to reverse roles:

    Kevin, you provide some basis for the claim of ignorance, but not for the claim of arrogance.

    More info please…

  189. Different subject that bears mentioning because while the securing of a patent may be nice, only the holder of the patent is able to exploit it. This is only too clear in the matter of Stanford v. Roche, for which the Supreme Court today granted Stanford’s cert petition.

    See SCOTUSblog for details.

  190. “The critical distinction in the patent sense is that software creates a new machine.”

    The big problem with that tenuous fiction is that a computer running an OS (and therefore capable of reading your medium) is no longer a general purpose computer. It’s a whole new programmed machine that you’re not describing or claiming. A true general purpose computer that hasn’t already been turned into some other machine can’t run any store-bought software.

    There’s no logical reason for a programmed computer to be anything other than the very same machine put to a different use. They say a lie can run round the world before the truth can get its boots on. Alappat got a good head start, but logic will eventually catch it up.

  191. Bert,

    Same machine,

    No. Read Allapat. The critical distinction in the patent sense is that software creates a new machine. This is established law.

  192. Can you describe that component? In terms other than…

    The “in terms other than” is not required – a distinction false to the circumstances.

  193. Ned,

    You say, “Can one re-patent an old machine because one discovers a new use for it?”.

    Isn’t that what software patents do?

    New inputs, new outputs. Same machine, new patent.

    Profit!

  194. “Beauregard claims are to a component of a machine.”

    Can you describe that component? In terms other than “a known (or later-invented) memory device with stuff written on it”? If you can, that’s what you should actually be claiming.

    “I say that 101 is not what should be used that the government again is mixing 101 with 102 and 103.”

    If we agree, why do you insist on fighting about it?

  195. Beauregard claims are to a component of a machine.

    I stated my position above. I didn’t see any response to that position. Sure they are more statutory and if you read my posts you will see that I say that 101 is not what should be used that the government again is mixing 101 with 102 and 103.

  196. “You do everything you possibly can to conflate and muddle arguments regarding information processing inventions”

    No I don’t. I’ve been saying for some time now that information processing inventions should be statutory, as long as you claim the actual processing of the information. Giving someone else instructions for processing information (Beauregard) is no more statutory than giving someone else instructions for taking a pill.

    Now, if you’re done with your name-calling, would you like to have a little discussion about why synthetic genes are more statutory than natural genes?

  197. IANAE>>the issue honestly and fairly.

    You do everything you possibly can to conflate and muddle arguments regarding information processing inventions and now you want everyone to play nice. Typical low life.

  198. What are the three 101 exceptions? Oh, right – laws of nature, natural phenomena, and abstract ideas.

    There’s no way a gene is a “law of nature”, and a wild gene is no more abstract than a brand new gene created in a lab. So what’s the argument that a gene is a “phenomenon”?

    A gene is a molecule. Everybody knows that. Everybody also knows that all molecules are patentable subject matter. The question never arises when people try to patent fuel additives, pharmaceutical compositions, or fancy polymers. When the molecule is found in nature, we talk about anticipation, not subject matter. The only difference, subject matter-wise, is that we have stronger feelings about genes.

    If the argument is that the named inventor did not make the invention, then state it that way. It amounts to the same anyway, if nobody invented the gene, but at least we can discuss the issue honestly and fairly. If the argument is that the gene is old or that isolating it is routine, make it a 102 or a 103 rejection.

    Max, you say that it shouldn’t matter what tool we use to arrive at the same result. I disagree. If you let some random spanner carry this debate, it changes the very principles of the law and changes how we handle all the debates to come.

  199. >>Patent rights, like copyrights, are not given >>to reward “sweat of the brow.”

    And, the hardest thing is to recognize and appreciate hindsight.

  200. Lionel said:
    “Why do so many people make this mistake. Of course isolated DNA exists in nature – it’s simply not isolated.”

    Man, that’s circular! If it is not isolated, then it isn’t “isolated DNA.”

  201. Lionel said:
    “High octane gasoline does not exist in any form prior to refining.”

    I don’t think you are right. It is part of the overall crude oil composition and it is merely extracted or isolated (i.e., by distillation). It’s always THERE in crude oil as part of the composition.

    Maybe I don’t understand the nuance of “isolated” in the DNA context, but you could argue that high octane gasoline was also there in nature.

  202. “the isolated nucleic acid molecules of these claims no more exist in nature than your electro/mechanical inventions.”

    Why do so many people make this mistake. Of course isolated DNA exists in nature – it’s simply not isolated.

    If I cut branch off a tree, have I invented a new plant?

  203. “I think this lower court decision is a product of people who have never set foot in a lab.”

    Patent rights, like copyrights, are not given to reward “sweat of the brow.”

  204. Andrew Dhuey wrote,

    “A hypo for the the DOJ authors of this brief:

    Inventor discovers natural compound X has medicinal properties curative of disease Y when administered to a human. Inventor claims method of curing disease Y through administration of X. Note that the method does nothing significant to alter X — it is merely “isolated” and collected.

    Not patentable, right? X is just a product of nature and its curative effect is just a law of nature. Inventor didn’t create anything — just observed a natural phenomenon that has existed for millennia.”

    If the use as a medicine was unknown, “method of curing disease Y through administration of X” is of course patentable. If the use was known, say by local medical practitioners and based upon administration of the source plant in question, then a simple claim like that should not be patentable. However, claims to compounds with that substance and particularly effective doses or treatment methods should still be patentable.

  205. “This does not make sense to me.

    How is ISOLATED DNA a product of nature? Does ISOLATED DNA exist in nature?

    Under this logic, ISOLATED DNA is a product of nature just as much as high-octane gasoline is a product of nature as it was extracted from crude oil.”

    You’re being ironic, right? The difference is obvious. Isolated DNA exists in non-isolated form. High octane gasoline does not exist in any form prior to refining.

    There was no real creation of the isolated strand, just recreation in an isolated form.

    Certainly, you are entitled to a partent if you invent a new process or apparatus for isolating DNA.

  206. Maybe the way to think of this is as a method of determining a natural law, which is surely patente eligible.

  207. What thing is clear the term “altered” is very much functional claim language.

    Seems to me the right analysis is to break this down just like the government did. Does finding a relationship between the genotype and the phenotype constitute an invention?

    If not then the other inventive elements must be how to get the isolated replicon of the DNA and how to test the genotype. These are likely obvious, so again we have the government wanting to conflate 101 and 103 issues.

    Pretty simple really. There is no doubt that isolated DNA is different.

    Funny thing is that the argument that discovering a relationship between a genotype and a phenotype is an invention is FAR weaker than the argument that an information processing algorithm is an invention. The information processing algorithm didn’t exist prior to being invented. The relationship between the genotype and the phenotype already existed and was discovered.

    I will place my bets early that the SCOTUS is going to say that at least the part of discoverying the relationship between a genotype and phenotype is not an invention. And the rest is just packaging.

    Now methods of using this information may be an invention. What of a method of treatment where you figure out what the genotype is and treat accordingly?

    Oh well, the rustbrains will likely flood this blog.

  208. 6,

    The compatriot of yours that rides a donk ey has gone awol – perhaps he is gearing up for all the windmills in his own backyard.

  209. Four Horsemen of the Patentpocalypse.

    lulz 6.

    And I guess it effortlessly passes any “utility” requirement because, as you say, it is an “antibiotic”

    reminds me of the omni-utility statement: throw it on the grass, if the grass grows, it’s a fertilizer, if the grass dies, it’s a herbicide.

    Maxie,

    Ya still haven’t accounted for teleportation (and the removal of introns) in your analogy.

  210. Agreed, Mr Noonan, analogies only get you so far. Assuming your purified antibiotic is a “new” “composition” of matter, which does not occur in nature, I guess that 35 USC 103 might be decisive to its patentability. And I guess it effortlessly passes any “utility” requirement because, as you say, it is an “antibiotic”, right, known to be efficaceous against disease indication X, or whatever, and said in your app to be useful as such, right?

    But a photograph of a length of road, or a recitation of naturally-occurring string of amino acid bases, is not a new composition of matter, is it?

    Aharonian now has Neifeld’s take on “isolated”. Interesting word, that. When I took a photo of the fragment of road surface, I “isolated” that fragment from the rest of the road.

    Since we have now touched upon the “ignorance and arrogance” of others, and since I happened to notice an “it’s” upthread, I should perhaps mention the arrogance of English patent lawyers whenever they gleefully detect an abuse of the apostrophe by English market traders. The little signs written in chalk, on individual hampers of fresh fruit and veg’, often recite something like “Superfresh Cherry’s, 5 EUR a pound”. We call that the Greengrocers’ Apostrophe. Maybe you have the same phenomenon in the USA?

  211. “As can be seen plainly here by the four, well three of the four horsemen.”

    I will thank you to use our full titles sir: Four Horsemen of the Patentpocalypse.

  212. “But if I discover how to detect phlogiston and purify it, why can’t I patent it?”

    Because good game Kev. Because GG.

    “Comes from having science illiterates making these decisions. Arrogance and ignorance don’t make a pretty combination, in any field of endeavor.”

    I’m not science illiterate and even after your presentation (which was a good one btw and I’m pretty sure brought me up pretty well to speed) I still have to say I would probably gg these kinds of claims too.

    I know, I know, it’s totally unfair. But that’s just how the ball bounces sometimes.

    Oh and Kev, ain’t no need to bad mouth ur courts. They’re the only reason you got away with this scam in the first place. Chacrapardy was crp back in the day, and it led to crp. You can only get out of a system that which you put in.

  213. “And our bodies, are still are our bodies. And our DNA belongs to each of us.”

    Yes, and claims to isolated DNA do not “read on” your body. Owners of their DNA have roamed the Earth for quite a while not knowing how to learn their propensity for breast cancer.

  214. Arrogance and ignorance don’t make a pretty combination, in any field of endeavor.

    As can be seen plainly here by the four, well three of the four horsemen.

  215. But, Don, it is structural, which is what the court missed by focusing on how they are the same rather than how they are different. Comes from having science illiterates making these decisions. Arrogance and ignorance don’t make a pretty combination, in any field of endeavor.

  216. Max:

    Analogies go so far and then break down. Why don’t you tell me why a new antibiotic that isn’t changed except for it’s purification should not be patent eligible?

  217. “view of the prevailing belief that combustion involved something called phlogiston.”

    Silly Kev, it still does, we just can’t detect it.

  218. What does Mr Noonan mean by “uses”, I wonder.

    A pebble, isolated from the London to Edinburgh road, surely has a multitude of “uses” that the road in toto does not. You could put it in somebody’s walking boot, for example, if you wanted something to give the wearer a limp. So, if you file a patent application on the pebble, isolated from the road, and if you mention the limp use in your specification, is that enough to endow your pebble invention with patentable utility, and to demonstrate that it is not obvious?

  219. A Cow may be able to think some. But, he is not Human. And last time I checked we were not only different from other species. but, we work, we also pay taxes, we vote, and we also are… free. And our bodies, are still are our bodies. And our DNA belongs to each of us.

  220. lol Kevin – nice to see ya have a sense of humor. Oh, how some others could learn from you.

    But tell me how “ultimately” it is Congress, when they haven’t moved on the Courts pronouncements of the keep out zones…

  221. Dear Ned:

    Judge Sweet was wrong. The isolated DNA has many uses the DNA in the chromosome does not. The info is the same, but that’s like saying the bovine insulin keeps the cow from getting diabetes. Doesn’t do humans much good until you isolate it.

  222. Just reading the AIPLA brief, it said the utility was directly related to the structural differences.

    How so?

    The brief did not elaborate.

    Going back to Max’s example of a photo of a highway, if I discover the location of a vein of gold, oil or the like, can I photograph its location and then claim exclusive rights to its extraction by use of a ulility patent? Clearly the location is quite valuable, but it that the sole criteria for patentable subject matter?

    The claims in Bilski and Benson for that matter both passed that test.

    The problem I see here is that a patent on the gene is effectively a patent on something old, and unless the utility of the isolated DNA is directly related to the structural differences, the isolated DNA patent is a patent on the gene itself.

  223. to simply say “DNA isn’t patentable because we say it isn’t” – the problem is that’s something Congress, not the courts, are empowered to do.

    Not quite there Noonster. Tell me again who set up the great other keep out zones on patent eligibility…

    Per chance, was it the courts…

    Looks like it will be one more keep-out (or more likely, just shoehorned into the existing three).

    So sorry.

  224. Kevin, so, why then can’t the second disoverer of an use for an old compound repatent the compound?

    Back to bark: the purefied bark has a utility that wild bark does not have. Purefied bark is really a new article of manufacture, not a new compound. That is the reason, in my view, it is patentable. It is equivalent to steel: iron that has different properties that do not exist in nature.

    But, the utility of the isolated DNA is identical to that of the wild DNA, at least according to Sweet. Malcolm said the stucture was different. If so, that structure should not exist in the wild. This moves the ball closer to the goal of patentability, no doubt.

    But, now we get to the rub. If the utility is in the information common to both wild and isolated and is not related to the structural differences, the claim to the isolated DNA is equivalent to a claim to the wild DNA.

    Circling back, the utility of purefied bark is due to its purefication. The utility of steel is due to its manufacture. But the utility of isolated DNA? Is it really due to the structural differences in the isolated DNA?

    That is the question.

  225. Dear Ned:

    You can chew a lot of bark of a tree containing medicinal compound X, or you can take a pill. Why would we prefer the first to the second manner of producing a useful drug?

    The problem with the “you didn’t invent it” argument is that if the prerequisite is the type of invention required in the electromechanical arts, we might as well declare most chemistry to be outside the patent system. Doesn’t make a lot of policy sense – in fact, it would be a better (but not a good) outcome to simply say “DNA isn’t patentable because we say it isn’t” – the problem is that’s something Congress, not the courts, are empowered to do.

  226. Moocow, but you subtly shift the argument. The utility discovered is the medicinal use. A patent for that use is entirely justified.

    But does the discover of the utility justify claiming the pre-existing compound?

    Can one re-patent an old machine because one discovers a new use for it?

    When in history has one ever been able to re-patent something old just because one has discovered an new use for it?

    Now the purefication patents are argued to justify patenting isolated DNA. But, aren’t they justified precisely because the purefied form has utility that does not exist otherwise?

    But, the holding here by Sweet is that there is no change in utility between wild and isolated. It is the same.

    So, what IS the argument for patentability. I see the struggle for one, but I have yet to see a good one.

    Off to read the other briefs.

  227. moocow – I agree that the particular isolated nucleic acid molecules of these claims don’t exist in nature.

    However, don’t their counterpart isolated mRNAs exist on a regular basis.

    Accordingly, isn’t an isolated DNA segment of its counterpart mRNAs an obvious variant?

  228. Seemingly ignored in this discussion thus far has been the fact that an aggregation of base units can exhibit properties that a single base unit does not.

    Obvious example: pure gold “metal” exhibits malleability and ductility, a single atom of gold does not.

    Even where all macroscopic properties are present in, say, a naturally-occurring compound, a particular combination of properties is unique to a particular substance, and it is that particular combination that gives the substance its specific and substantial utility.

    It is a “the whole is greater than the sum of the parts” argument. If the isolated units act as individual units and do not cooperate, not 101-eligible; if they do cooperate, 101-eligible.

    Of course, gold would have been anticipated by elemental gold, pure to the extent that it exhibited substantially the same macroscopic properties as pure gold metal.

    Combinatorial uses such as alloying? A hybrid answer to a hybrid question–depends on the type of alloy, and on whether it depends on the atomic properties, or if grains of independent metals are formed…

    Anyway, just a thought…anybody know of any discussions of this concept in case law?

  229. Gennie:
    the isolated nucleic acid molecules of these claims no more exist in nature than your electro/mechanical inventions. There is nothing “to get away with” here when you think about things like immunosuppressant molecules found in scorpion venom, or anticancer drugs from tree bark, and other molecules found at great effort and expense in nature and now presented for the first time in any useful form for uses that are impossible with the natural thing. Can you give me a reason why such things should be excluded from the patent system?

  230. Further on the above US 5,693,473 Claim 1, everything after the word “comprising:” in the preamble is not new (as I understand it) and existed in nature.

    So the only thing “new” is the word “isolated” and that is in the preamble.

    Would you allow the claim:

    1. An isolated DNA comprising: something that exists in nature but was hereto for not recognized and described by any human and now is described in this patent application.

    I work in the electro/mechanical area and there is no way we could get away with something like that. The examiners in the isolated DNA area have lost the upperhand and the leadership at the USPTO needs to help them get hand back.

  231. One of the claims at issue, US 5,693,473 Claim 1, is directed to “An isolated DNA comprising an altered BRCA1 DNA having at least one of the alterations set forth in Tables 12A, 14, 18 or 19 with the proviso that the alteration is not a deletion of four nucleotides corresponding to base numbers 4184-4187 in SEQ. ID. NO:1.”

    Notice how many times the claim uses “altered” (altered, alterations, alteration). I haven’t read the spec, but I would guess that altered is not transformation. Also, the table content themselves are not infact in the claim, just the words “Tables 12A, 14, 18 or 19” are in the claim.

    Sounds like they are trying to hide something.

    If someone sought to patent a hammer with three tongs, curved tongs, etc. instead of two straight tongs for the claw, how many patent practitioners would structure the claim as:

    A hammer, comprising:
    a shaft; and
    a head attached to the shaft, the head having a weighted end and an altered claw end having at least one of the alterations set forth in Table I.

    How does a hammer claw “have” an alteration? It would be an addiiton to something. How does a DNA “have” an alteration? The “alteration” existed prior to the isolation and nature is the one who formed the alteration.

    A problem here (and likely in isolated DNA in general) is that the isolated DNA examiner do not compel the patent practitioner via 112(1) or 112(2) to more particularly specify the structure of the claimed machine, manufacture, or composition of matter.

    The term alteration gives a more structure sounding claim, yet nothing infact is altered or modified. The “alteration” existed prior to the isolation.

    The isolated DNA examiner should not have let the patent practitioner get away with using “altered” in the claim.

  232. Unless ya two have something going on outside this thread, Cy, you’re off your game a little bit.

    Hah! How long have you been saving that up, ping?

  233. You keep using that word.

    As far as I can tell, that was the first and only post by “Colin Mallory.”

    Unless ya two have something going on outside this thread, Cy, you’re off your game a little bit.

  234. DOJ supports Obama’s desire to overturn longstanding USPTO policy but opposes Obama’s desire to overturn DOD’s DADT. Talk about hypocrisy.

    You keep using that word. I do not think it means what you think it means.

  235. The Two Bobs,

    You are the second Bob that has used that type of analogy – the US government has already used the Element-in-natural-form gambit in their brief in at least at page 23-24.

    lithium, tungsten, americium…

    The nuance there is that only americium – the only one that got a patent – is the only one actually made by man AS a building block itself. The others were already there, albeit not in pure forms.

  236. Maxie,

    I do find your “isolation-as-travel” analogy interesting. Cepts, how do you eliminate parts of that journey like the introns of the molecule? It’s not like in your journey analogy, you’ve just not taken a picture of them – they are not there.

    Sounds like you’ve invented a new form of travel Maxie. Iza haven’t seen anywhere where teleportation been reduced to practice, so your patent application teaching such should be golden.

  237. ping asserts that what makes it “interesting” is that it is a “fragment” of a molecule. Well, ping, every yard length on that naturally existing, long road that leads from London to Edinburgh is, I suppose, in some way “interesting” to you (and to the foot musculature, the vehicle suspension systems and the pneumatic tyres that “encode” to it). But if I should merely take a photograph that “isolates” that yard from the rest of the thousand miles, why should I then have made myself eligible for a patent for the act of “isolating” that yard? Beats me.

  238. Any one that has ever worked in a biology lab will surely know that it does not require much inventive enginuity to isolate a gene. Where the inventive inguinity lies is which gene to pick that actually does something useful. For that, you have to either luckily or through an incredible amount of work deduced the importance of that 1 gene out of the tens of thousands (and many more non conding sequences). And the utility requirement already prevents one from simply claiming non useful genes. So I think this lower court decision is a product of people who have never set foot in a lab.

  239. I have discovered a new element, which I have taken the liberty to name Patenteon, in honor of the patent system. (I was all set to name it “Patentbarium” in honor of the patent bar, but a colleague mentioned something called “Barium”. Also, a friend at Intel warned me against calling it Patentium.) I can PROVE that this element does not exist in its pure, elemental form in nature, where it can only be found as an oxide. But I have learned that Patenteon can be reduced to its never-to-be-found-in-nature pure, elemental form through the same sort of process by which aluminum oxide is reduced to pure aluminum. I am planning on filing a patent application on the pure element, and expect it to be approved on a first action. Is there any substantive reason why the PTO would grant a patent on a gene but not on my newly discovered element, in its pure, elemental form?

  240. “… prompted the United States to reevaluate the relationship …”

    Speak for yourselves; ’cause you sure aren’t speaking for me.

  241. Amusing thread, so far. The debate about whether a molecule is patentable per se, or only when tied to a specified specific utility, is as old as patent law. The shifting tides of opinion, how best to balance between helping the public, and helping the inventor, have washed over Europe for most of the last Century. It’s a real 50:50 question.

    So, I welcome the debate now, in the Myriad case. It will add to our wisdom, even though it concerns only a fragment of a molecule.

  242. A hypo for the the DOJ authors of this brief:

    Inventor discovers natural compound X has medicinal properties curative of disease Y when administered to a human. Inventor claims method of curing disease Y through administration of X. Note that the method does nothing significant to alter X — it is merely “isolated” and collected.

    Not patentable, right? X is just a product of nature and its curative effect is just a law of nature. Inventor didn’t create anything — just observed a natural phenomenon that has existed for millennia.

    If this is not patentable, what sense does that make on a policy level? Why would Congress want to distinguish between the above claimed therapy from those involving synthetic compounds?

  243. Even if you can’t patent the extract or isolated gene/matter/composition, you still could patent the process of isolating/extracting as well as the method of use of that extracted/isolated gene/matter/composition.

    Sure ya can – only problem here is that both the methods of extraction/isolation and the methods of use are old and no longer available for patenting.

    Sorry Charlie.

  244. Guest:

    What you are saying goes counter to decades-old precedent which holds that a NEW product (as distinguished from an OLD product as in In re Schreiber or Spada) can be unobvious based on an unobvious use or property.

    If something (in this case ISOLATED DNA) does not exist in nature, and assuming that the ISOLATED DNA has new and unobvious properties over ISOLATED RNA, how is that obvious over isolated RNA?

    Again, referring to high octane, which “exists” in crude oil, how is it obvious when you will destroy your engine if you filled your tank with crude oil?

    How is a plant extract unpatentable if you ingested the plant itself, you might die from other toxins?

  245. “Aren’t many drugs EXTRACTED or ISOLATED from natural things such as plants, requiring human intervention, to be suitable as a drug?

    Are these unpatentable (patent ineligible) just as high octane gasoline I mentioned previously under Obama’s logic since they “exist” in nature?”

    Even if you can’t patent the extract or isolated gene/matter/composition, you still could patent the process of isolating/extracting as well as the method of use of that extracted/isolated gene/matter/composition.

    Also, seems to me that it is obvious to extract/isolate most things. The tough thing (that should be patentable) is how to do with it and what to do with it.

  246. RE: How is ISOLATED DNA a product of nature? Does ISOLATED DNA exist in nature?

    Isolated DNAs on the whole don’t exist (I believe there may be a few exceptions to this general rule).

    However, isolated mRNAs exist on a regular basis.

    Accordingly, isn’t an isolated DNA segment of its counterpart mRNAs an obvious variant?

  247. Aren’t many drugs EXTRACTED or ISOLATED from natural things such as plants, requiring human intervention, to be suitable as a drug?

    Are these unpatentable (patent ineligible) just as high octane gasoline I mentioned previously under Obama’s logic since they “exist” in nature?

  248. Dear John:

    I would suggest that in the 18th century purified oxygen should have been patent-eligible, in view of the prevailing belief that combustion involved something called phlogiston.

  249. The brief tries to be all things to all people and (besides being a complete misreading of Funk Bros.) does nothing to the gene patent debate. First, in trying to placate biotech and pharma, the brief contends that cDNA is patent-eligible, thereby saving >90% of all the “gene patents” that the ACLU and PubPat are trying to eliminate. Second, by making the “product of nature” argument the brief puts at risk most of medicinal chemistry and any other useful “product of nature” (even outside the biotech field – is something isolated from petroleum a “product of nature?’ How about ultrapure silicon?).

    The brief’s position does not address the real issues, like avoiding patent thickets for personalized medicine (since the oligos used in chips are patent-elibigle as being synthetic, for example) or the problem of methods for detecting mutations (which do not require isolating genomic DNA).

    With any luck the Federal Circuit will reverse on the procedural issues and sanity will return to the administration.

  250. Give. Me. A. Break.

    But since Obama’s doing his best to destroy economic recovery, I shouldn’t have been surprised by this.

  251. It was said in another thread, the courts, including the Supreme Court, follow the government’s recommendation more than 90 percent of the time.

    Now, if the Feds want to reject the government position, the case will end up in the Supreme Court where, again, the goverment position wins more than 90% of the time. The Feds know this.

    Prediction: the Feds will follow the governments position.

    Circling back: on the issues of patentable subject matter in particular, I think it is the duty of the patent office to follow court decisions as best as possible, not to assume that subject matter is patentable without prior court precedent. It is the patent office obligation to bring new issues to the courts as soon as possible.

    They did not do that here. And certainly they did not do that in the case of In re Beauregard.

  252. anon and EG,

    I think the gov is looking at building blocks of nature.

    In an abstract view, they seem to be saying that merely stripping out some building blocks to get to other building blocks is not really doing anything – especially when the stripped down version behaves just like the building block in nature.

    This is actually a mix of two very different arguments, along a slender commonality – the building blocks are in nature, and the action of both the isolated building blocks and the non-isolated, but similar natural product behave in the same manner.

    Personally, I think this type of error (conflation of the two legal streams) causes more confusion in an admittedly complex art, but Iza wanna see how my pal Malcolm feels about this.

  253. This sums up the government’s about face:

    “We acknowledge that this conclusion is contrary to the longstanding practice of the Patent and Trademark Office, as well as the practice of the National Institutes of Health and other government agencies that have in the past sought and obtained patents for isolated genomic DNA. The district court’s judgment in this case, however, prompted the United States to reevaluate the relationship between such patents and the settled principle under Supreme Court precedent that the patent laws do not extend to products of nature. For the reasons below, the United States has concluded that isolated but otherwise unaltered genomic DNA is not patent-eligible subject matter under 35 U.S.C. § 101.”

    If the Federal Circuit adopts this position, many issued-patents will be effectively invalidity.

  254. This does not make sense to me.

    How is ISOLATED DNA a product of nature? Does ISOLATED DNA exist in nature?

    Under this logic, ISOLATED DNA is a product of nature just as much as high-octane gasoline is a product of nature as it was extracted from crude oil.

  255. The DOJ’s brief appears to characterize the US PTO’s position on this issue by reference to 2001 revised examination guidelines and an 1889 Commissioner’s decision. MPEP 2144.04 VII (“purifying and old product”) reflects the reality of how the Office handles these claims. A case-by-case fact driven analysis. Isn’t that the type of approach that the Supreme Court will cotton to?

  256. “The chemical structure of native human genes is a product of nature, and it is no less a product of nature when that structure is “isolated” from its natural environment than are cotton fibers that have been separated from cotton seeds or coal that has been extracted from the earth.”

    This statement is utter sophistry and rhetorical nonsense. “Isolated” nucleotides, as claimed by Myriad, don’t exist in nature.

  257. The DOJ’s brief is interesting. I wonder what percentage of biotech inventions are merely isolated from the human. As someone that work in biotech patent law, I wonder what they would consider sufficient manipulation? Putting a different promoter in front of the gene?

  258. I’m looking forward to Malcolm Mooney’s take on this.

    Fascinating in patent law (world-wide) is how often different jurisdictions agree on whether a particular claim is good or bad, but then resort to a different tool to despatch the bad claim. Tools available are available in any standard 101, 102, 103 or 112 toolbox.

    How about a claim to a specified portion of a naturally occurring DNA molecule, per se, and unsupported by any disclosure of any specified and specific utility? Such subject matter strikes me as a claim that, one way or another, ought not to survive. Up to each jurisdiction though, to choose the tool it likes best.

  259. Wow. This is messed up. DOJ supports Obama’s desire to overturn longstanding USPTO policy but opposes Obama’s desire to overturn DOD’s DADT. Talk about hypocrisy.

  260. I’m a mechanical guy, so Judge Sweet’s decision initially seems sensible to me. If his holding is wrong, please explain without too much bio terminology that I won’t understand why this is different from the discovery of elemental oxygen which I also presume would not have entitled one to article claims?

    trying to understand

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