By Jason Rantanen
Prometheus Laboratories, Inc. v. Mayo Collaborative Services (Fed. Cir. 2010)
Panel: Rader, Lourie (author), Bryson
Last Friday, the Federal Circuit released its second noteworthy post-Bilski decision (the first being Research Corp v. Microsoft). The opinion, Prometheus v. Mayo, issued following a grant-vacate-remand order from the Supreme Court instructing the CAFC to revisit its original decision in light of Bilski. Despite this procedural posture, however, the new opinion is quite similar to the old, arriving at the same conclusion through essentially the same reasoning.
Prometheus initially came to the Federal Circuit following a district court grant of summary judgment of invalidity under § 101 (lack of patentable subject matter). After the CAFC reversed the ruling of invalidity using its "machine-or-transformation" test, Mayo sought review by the Supreme Court. The Court granted certiorari, vacated the CAFC decision, and remanded for consideration in light of its Bilski opinion. Earlier Patently-O commentary includes a summary of the original Federal Circuit opinion and a discussion of the remand.
The patents-in-suit claim a method for determining whether a patient has received a therapeutically efficacious amount of drugs such as 6-mercaptopurine ("6-MP") and azthiopurine ("AZA"), which are used to treat inflammatory bowel diseases but can produce toxic side effects. In the human body, these drugs metabolize into 6-MP metabolites, including 6-methylmercaptopurine ("6-MMP") and 6-thioguanine ("6-TG"). By administering the drug, measuring the subject's levels of 6-MMP and 6-TG and comparing them to pre-determined levels, toxicity can be minimized and efficacy maximized.
Claim 1 of Patent No. 6,355,623 is representative:
1. A method of optimizing therapeutic efficacy for treatment of an immune-mediated gastrointestinal disorder, comprising:
(a) administering a drug providing 6-thioguanine to a subject having said im-mune-mediated gastrointestinal disorder; and
(b) determining the level of 6-thioguanine in said subject having said immune-mediated gastrointestinal disorder,
wherein the level of 6-thioguanine less than about 230 pmol per 8×108 red blood cells indicates a need to increase the amount of said drug subsequently administered to said subject and
wherein the level of 6-thioguanine greater than about 400 pmol per 8×108 red blood cells indicates a need to decrease the amount of said drug subsequently administered to said subject.
Although similar in most respects, some claims of the second patent-in-suit, No. 6,680,302, dispense with the "administering" step.
The Patents Do Not Claim a Physical Phenomena
On remand, the CAFC again rejected Mayo's argument that the '623 and '302 patents claim a "natural phenomenon." In seeking a judgment of invalidity under Section 101, Mayo contended (and the district court agreed) that the "administering" and "determining" steps are merely necessary data-gathering steps for the use of the correlations between 6-TG and 6-MMP and therapeutic efficacy or toxicity in patients. Because these correlations are simply natural phenomena, Mayo reasoned, they were unpatentable.
As before, the Federal Circuit disagreed, noting that Bilski provides a broad – although not unlimited – scope for patent protection, and “an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.” Slip. Op. at 12, quoting Bilski, 130 S.Ct. at 3230. Furthermore, the court stated, neither the Supreme Court's order to vacate and remand the original Prometheus decision nor Bilski dictates a wholly different analysis or different result.
The crux of the CAFC's determination that the asserted claims recite a patent-eligible application of naturally occurring correlations between metabolite levels and efficacy or toxicity as opposed to the natural correlation itself rests on the specific treatment steps recited by the claims: the "administering" step and the "determining" step. "The inventive nature of the claimed methods stems not from preemption of all use of these natural processes, but from the application of a natural phenomenon in a series of steps comprising particular methods of treatment." Slip. Op. at 15-16.
In support of its conclusion, the court reiterated its earlier determination that the treatment methods in Prometheus's patents satisfy the "machine-or-transformation test. Although this is not the exclusive test, post-Bilski, it nevertheless provides important clues to subject matter patentabilty. In applying the machine-or-transformation framework, the court specifically rejected Mayo's argument that the disputed claims simply claim natural correlations and the associated data-gathering steps, broadly stating that the asserted claims are "claims to methods of treatment, which are always transformative when one of a defined group of drugs is administered to the body to ameliorate the effects of an undesired condition." Slip Op. at 17. Even leaving out the administration step does not make the claims unpatentable, as the CAFC also found the "determining" step to be transformative because it involves "[s]ome form of manipulation, such as the high pressure liquid chromatography method specified in several of the asserted dependent claims or some other modification of the substances to be measured, [which] is necessary to extract the metabolites from a bodily sample and determine their concentration." Id. at 18.
In reaching this conclusion, however, the court was forced to distinguish its earlier decision In re Grams, 888 F.2d 835 (Fed. Cir. 1989), which similarly claimed a process that involved "(1) performing a clinical test on individuals and (2) based on the data from that test, determining if an abnormality existed and determining possible causes of any abnormality by using an algorithm." Id. at 20. Unlike the claims in Grams – which the CAFC found unpatentable "because the tests were just to 'obtain data'" (Slip Op. at 20) – the claims of the Prometheus patents "require the performing of clinical tests on individuals that were transformative."
Mental Steps
In addition to its overarching analysis of the subject matter issue, the opinion also includes an interesting discussion of the use of mental steps in patent claims. Although the CAFC agreed that the final "wherein" clauses are mental steps, "A subsequent mental step does not, by itself, negate the transformative nature of prior steps. Thus, when viewed in the proper context, the final step of providing a warning based on the results of the prior steps does not detract from the patentability of Prometheus’s claimed methods as a whole." Slip Op. at 21. Because no claim in the Prometheus patents claims only mental steps, "contrary to Mayo’s assertions, a physician who only evaluates the result of the claimed methods, without carrying out the administering and/or determining steps that are present in all the claims, cannot infringe any claim that requires such steps." Id.
Additional Commentary
In addition to an extensive discussion about the decision in response to Dennis's post on Sunday, other sites commenting on the decision include:
- Patent Docs
- patents4life
- IP Watchdog
- Chris Holman's IP Blog
- Hal Weger of Foley has suggested that another grant of certiorari may be down the road, given the opinion's refusal to discuss a three-Justice dissent from the dismissal of certiorari in Lab. Corp., 548 U.S. 124, that was cited with approval by five Justices in two concurrences in Bilski.
Wilton: Therefore, it is entirely appropriate to ask the question “what’s new about this method?”
AI: That’s been asked and answered. A new use for detecting, preventing, and curing cancer.
Wilton you are now just running around in circles like Malcolm.
NWPA,
Bein added to the list aint no big thang. Don’t forget that this person is the same one who believes his be otchin and windmill chasin on a mere comment section of a patent blog will bring abouts real change.
The loafers aint the only things be light about that one.
Hey Sunshine, you be the same one “shot” down and dissed over at the Patent Docs? There cant be two such fools chasin 102/103 arguement in a 101 decision, can there?
Being added to your short list is the greatest honor one could have on patentlyo.
Although, I think having a word banned that became your name is a close second.
I’ll add NWPA to the short list, along with pingaling and AI.
That be obvious.
Maybe he should talk with Ned, Ned’s got some great meds, even if he gets the colors messed up on occasion.
>>It be pathological to the point of bringin >>chuckles.
You have to forgive poor MM. He lost his mind when Bilski was decided by the SCOTUS. He hasn’t recovered.
“I’m not the one who drafted the claim, pingaling.”
And what the H does that got ta do with anything, Sunshine? Your conflation is in your analysis – in case ya didn’t notice, ya keep bouncin around the 102/103 back to 101 issh.
It be like ya got 101 on the head. Too many windmill blades come smackin down on ya, no doubt.
It be pathological to the point of bringin chuckles.
pingalingadingdong “for 102/103 analysis,…in which case the claim is effectively a claim to ineligible subject matter”
Major lulz there Sunshine – Conflate much?
I’m not the one who drafted the claim, pingaling.
We already know that you and your buddy AI and at least one sockpuppet (can’t remember the stupe name offhand) believe that claims in the form “A new method, comprising an old transformative method followed by a ‘new, non-obvious’ step of thinking about the old method” are eligible and valid as a matter of law.
It’s sort of sad that you can’t defend such claims reasonably, but it’s certainly not unexpected given your past history.
“for 102/103 analysis,…in which case the claim is effectively a claim to ineligible subject matter”
Major lulz there Sunshine – Conflate much?
“If anyone knows of a logical, legal way out of this conundrum, I’d love to hear it.”
Sure, they did not concern themselves with 102/103 just yet.
If you want to change your direction
If you’re time of life is at hand
Well don’t be the rule — be the exception
A good way to start is to stand.
6, with all due respect, whether or not “they’ve concerned themselves” with 102/103 is irrelevant to the existence of the legal conundrum.
Here’s where we are at:
1) you aren’t allowed to “dissect” claims for 101 purposes to identify a claim as an abstraction (except possibly when the only transformative step is insubstantial and/or unrelated to the purpose of the method)
2) for 102/103 analysis, you must dissect claims to determine if the invention resides purely in subsequent mental steps added to old, transformative methods, in which case the claim is effectively a claim to ineligible subject matter (i.e., the only new step recited in the claims is a purely mental process, i.e., an abstraction)
Thus, there is simply no way for a claim reciting “A new method, comprising an old transformation followed by a new way of thinking about the transformation” to be a valid claim under 102/103 (or 101, if the Federal Circuit’s reasoning is held to be incorrect by the Supreme Court).
This is why I’ve been saying: what difference does it make whether such claims are obliterated under 101 or 102/103? My question is: is there a *logical*, legal way for the Federal Circuit to find Prometheus’ claims valid under 102/103, where the only transformative step is admitted in the specification to be old (or, to put it another way, where the only new step in the claim is a subsequent and purely mental step)?
I can certainly imagine policy reasons (“without such claims, medical treatment will slow to crawl and the human race will quickly disappear from earth”) to justify someone (ideally not a court) to simply “say that it is so.” But other than, it’s mystifying and so obviously mystifying that I’m shocked that the Federal Circuit didn’t bring the problem up (they usually do, after all).
I think this was a good first instance decision for the wrong reasons.
The first instance judge, IMHO, was correct that the asserted claims are unenforceable and should go no further. Very possibly there is a good underlying invention, but the way that it is claimed is unlikely to stand up under 35 USC 112 for indefiniteness and failure to distinctly point out and claim the invention. The claims relate to a method claim without any method steps. Further they assert an aesthetically pleasing result without any anchor in terms of an objective test to show how that relative term should be judged. The CAFC has already pronounced adversely on just this indefinite language in a recent decision on another case, and in the European equivalent of the patent in issue the term was objected to as indefinite and removed.
As Max Drei has indicated, there would be no problem with this subject matter before the EPO, and the equivalent European patent has in fact issued without any patent elegibility objection during examination. I suspect Judge Rader was right in his decision as to elegibility under 35 USC 101. But his observations about 35 USC 112 may not have been directed just at the Supreme Court: the plaintiffs would do well to heed them.
There are better things that these patentees could usefully do than contest the case up to the Supremes. Discontinue the present proceedings, draft better claims, reissue the patent and start again with a decent set of claims. Unfortunately the patentees in this case may demonstrate the same level of insight as the Bilski parties, in which case the claims will go to the Supremes and there will be tears.
“If anyone knows of a logical, legal way out of this conundrum, I’d love to hear it.”
Sure, they did not concern themselves with 102/103 just yet.
IANAE If someone comes up with a non-transformative way of obtaining the data, which is clearly covered by the claim, does that invalidate the claim? What if you could obtain the necessary data by non-invasively measuring dimensions of the patient, e.g. blood pressure, or pupil dilation?
If Prometheus were to assert the claim against such a test, the claim would almost certainly be found invalid — at least if the Federal Circuit wished to be consistent in its application of 101.
But CAFC went out of its way to distinguish this hypothetical set of circumstances from the actual facts (the necessarily transformative nature of the “determining” step was admitted by both parties, as I recall) in the first opinion.
so how long before we see Bilski’s claim again but with a zeroth step of “driving to work”? Internal combustion is inherently transformative, right?
Indeed, but I think the CAFC has also given itself wiggle room in its opinion to ignore transformative steps that are unrelated to achieving the purpose of the claimed method (never mind that Prometheus’ invention as claimed achieves nothing tangible that was not achieved by the prior art). Of course, this wiggle room implicitly and unambiguously requires that the Diehrbot Credo be violated.
The real problem is not the facile 101 test that the Federal Circuit has set forth in Prometheus. The real problem is how to reconcile that test with the Federal Circuit’s admission in the same opinion that the purely mental step recited in Prometheus’ claims (i.e., the wherein clause) is, by itself, not eligible for patenting.
Why is this a big problem? Because if you do not ignore that final mental step when analyzing the claims under 102/103, you are liable to end up validating a claim that is indistinguishable from the prior art *except* for the mental step. And it doesn’t take a rocket scientist to appreciate that such a claim is, for all practical purposes, a claim to a new mental step, at least as far as it concerns those who were and are practicing the old, transformative prior art method and who have the misfortune of being “educated” about the significance of the results obtained by those old methods.
And I certainly don’t mean to say that “inventions” such as Prometheus’ can not or should not be protectable by current US patent law. But, as they are presently claimed, I don’t see a way for the claims to survive unless the Federal Circuit buries its head far deeper into the sand than was heretofore thought possible. If anyone knows of a logical, legal way out of this conundrum, I’d love to hear it.
the test is not JUST to obtain data,
The test for the level of metabolite in the patient is not just to obtain data?
and that transformation was critical to the claim
The transformation isn’t even in the claim. And it’s certainly not critical to the “invention”, which is looking at a number and (in some of the narrower claims) deciding what to do about it.
“It’s pretty clear that the Prometheus test is done just to obtain data”
Actually, the whole point of this lesson is that the test is not JUST to obtain data, and that transformation was critical to the claim – that is why In re Grams is distinguished. The path of red herrings (what if…) simply smells.
Although I think I see what you are trying to say – the court should have grown a pair and simply overturned In re Grams, instead of trying to dance around as they have. The law has indeed evolved since 1989.
Since when are “tests that were transformative” and “tests just to ‘obtain data'” mutually exclusive?
It’s pretty clear that the Prometheus test is done just to obtain data, since it’s the data that is needed for the subsequent mental step, and the test only coincidentally happens to be transformative. If someone comes up with a non-transformative way of obtaining the data, which is clearly covered by the claim, does that invalidate the claim? What if you could obtain the necessary data by non-invasively measuring dimensions of the patient, e.g. blood pressure, or pupil dilation?
It’s equally clear that Grams positively recited “performing said plurality of clinical laboratory tests on the individual to measure the values of the set of parameters”, some of which tests require one to “measure the levels of chemical and biological constituents of the individual”. You’ll find it hard to distinguish Prometheus on the grounds that Prometheus requires clinical tests on individuals that are transformative.
And anyway, isn’t it a bit ridiculous to hinge patentability of a method of dosing medication on how easy or hard it is to test the patient for over/under-dosage?
“ Unlike the claims in Grams – which the CAFC found unpatentable “because the tests were just to ‘obtain data'” (Slip Op. at 20) – the claims of the Prometheus patents “require the performing of clinical tests on individuals that were transformative.”
The decision nullifies the attempted strawman of “driving to work.”
AI: !!! Bilski 14 !!!
“[He] had a mind that ticked like a clock and, like a clock, it regularly went cuckoo.”
Malcolm: According to the “rationale” in Prometheus, the presence of the transformative “immunizing” step would clearly suffice for 101 subject matter eligibility.
Great, so how long before we see Bilski’s claim again but with a zeroth step of “driving to work”?
Internal combustion is inherently transformative, right?
Malcolm wises up and admits defeat on the 101 issue.
Welcome into the light.
Which by the way Willton is precisely the question at hand. It is the contribution of AI everywhere. And Inviting Body Punches, sometimes truth is just not flashy or provocative. It appears that you are addicted to the provocation and do not have your eye on the ball. No wonder then that you enjoy the likes of Malcolm and wonder where “the contribution” of AI is.
!!! Bilski 14 !!!
Seems like the Classen decision is a done deal at this point, unless the CAFC is inclined to spit in its own face.
A method of determining whether an immunization schedule affects the incidence or severity of a chronic immune-mediated disorder in a treatment group of mammals, relative to a control group of mammals, which comprises:
immunizing mammals in the treatment group of mammals with one or more doses of one or more immunogens, according to said immunization schedule, and
comparing the incidence, prevalence, frequency or severity of said chronic immune-mediated disorder or the level of a marker of such a disorder, in the treatment group, with that in the control group.
According to the “rationale” in Prometheus, the presence of the transformative “immunizing” step would clearly suffice for 101 subject matter eligibility.
Unless the judges want to get into the utility issue (and they were certainly not inclined to do so in Prometheus), it’s on to 102/103.
To me that doesn’t resolve this question: Suppose a patent describes a process that would, if performed by a human being, be bloody obvious (for example, there would be plenty of prior art one could dredge up of people doing this same basic thing by hand–if you see what I mean), and the patent really just adds in the further specification that all this should be performed with a computer (where the specifics of the implementation are not innovative in any way). So, what authorities tell us that something like this should NOT satisfy the nonobviousness criterion for patentability? One might suppose that a patent examiner would see this instantly, but yet I (inventor, not a lawyer) read lots of granted patents that amount to nothing more than this. Can one be assured that none of them would stand up?
AI: “It is inappropriate to dissect the claims into old and new elements and then to ignore the presence of the old elements in the analysis. This is particularly true in a process claim because a new combination of steps in a process may be patentable even though all the constituents of the combination were well known and in common use before the combination was made.”
It just can’t get any clearer than this. Diehr goes even further and says:
“The “novelty” of any element or steps in a process, or even of the <450 U.S. 189> process itself, is of no relevance in determining whether the subject matter of a claim falls within the §101 categories of possibly patentable subject matter.”
All of which is irrelevant to the question at hand. In your hypo, not only are all of the elements of the process disclosed in the prior art, but they are disclosed in ONE PIECE of prior art: the prior art method of diagnosing and treating the common cold. Therefore, it is entirely appropriate to ask the question “what’s new about this method?” If you can’t answer that question, then your hypothetical method is anticipated, and reciting a bunch of non-limiting mental or result-oriented steps will not save your claim.
AI–
Not only was that post uninteresting, it wasn’t even provocative.
yawn.
“but there are all kinds of things that people aren’t permitted to say. ”
I lulzed broje.
Inviting Body Punches,
AI has contributed more than Malcolm. Easily.
Sure, he is not a lawyer and strays from the perfect legal world on occasion (but much less than the other non-lawyers that frequently post here – your mention of 6 and the I would throw in MaxDrei).
And for a non-lawyer, he seems to understand the patent law much better than Malcolm. He understands what Diehr stands for and what Bilksi confirms. You ask what he has contributed, and I will tell you – He has contributed the plain truth about 101. This is soomething that Malcolm has completely failed at.
!!! Bilski 14 !!!
Come to think of it Inviting Body Punches, what have you EVER contributed to this forum? The world has enough naysayers. Stand up and do something positive. Invent something.
Please, why does anybody entertain AI seriously?
What has he EVER contributed to this forum that had any value other than the comic?
It’s just as easy to ignore AI as it is to ignore 6.
Actual Inventard…(Red Herring Fallacy Omitted)
Once again, the resident Diehrbot crosses over into self-parody. Can anyone really be this stoopit?
Posted by: Malcolm Mooney | Jan 02, 2011 at 12:53 AM
_________________________
So Malcolm, let me see if I understand you.
Having failed to supply for the record and with specificity sufficient to support a prima facie case of claim dissection at 101, 102, or 103, the factual and legal basis on which said dissection of claims are allowed, your only rebuttal is…
Anyone agreeing with the Supreme Courts ruling in Diehr and In Re Bilski is either an “Actual Inventard” “Diehrbot” and/or “stoopit?”
I suppose your name calling includes the majorities on the Supreme Court as well. Seriously Malcolm, is that the best you can do?
Thank you MM. When I read your AI quote I did not believe it, till I had found it for myself. AI really did write that every process requires at least one mental step. Whatever could he be thinking there? That “invention” = “conception” = “patentable subject matter”, but, equally, “patentable subject matter” = “process” and so, inevitably, “subject matter” = “mental”?
Actual Inventard: every process requires at least one or more mental steps.
Once again, the resident Diehrbot crosses over into self-parody. Can anyone really be this stoopit?
Wilton: “Well, is such objective physical treatment and/or use of instrumentalities the same as that of the old method? ”
It my hypothetical the doctor could use any combination of known methods and instrumentalities because treating the common cold is not confined to one sequence of steps. But It doesn’t matter and here’s why,
Diehr says:
“It is inappropriate to dissect the claims into old and new elements and then to ignore the presence of the old elements in the analysis. This is particularly true in a process claim because a new combination of steps in a process may be patentable even though all the constituents of the combination were well known and in common use before the combination was made.”
It just can’t get any clearer than this. Diehr goes even further and says:
“The “novelty” of any element or steps in a process, or even of the <450 U.S. 189> process itself, is of no relevance in determining whether the subject matter of a claim falls within the §101 categories of possibly patentable subject matter.”
Now for years Mooney said this section of Diehr was c r a p. He was betting the Steven’s approach in Flook that made it permissible to dissect claims would control.
But Mooney and the rest of you dissectionist were shocked when the Supreme Court said the following in Bilski:
““Finally, in Diehr, the Court established a limitation on the principles articulated in Benson and Flook.”
And that with that the Supreme Court put the final nail in the coffin for the anti patent crowds hopes and dreams.
And thats the law.
Happy New Years!!!
AI: To extrapolate on the hypothetical I offered yes, there is going to be some type of objective physical treatment and instrumentalities used to treat and cure the cancer. The doctor is not going to cure cancer just by thinking about it.
Well, is such objective physical treatment and/or use of instrumentalities the same as that of the old method? Because based on your original phrasing of the hypo, it sounded like there was nothing different about the new method compared to the old method, outside of the disease to be treated.
I would expect the same of the claim in AI’s hypothetical. But, in my view, AI’s claim leaves out the testing step, and focuses solely on interpreting the test result as indicative of cancer and taking some objectively observable action indicative of that correlation.
Posted by: TINLA IANYL | Dec 30, 2010 at 11:12 AM
____________
To extrapolate on the hypothetical I offered yes, there is going to be some type of objective physical treatment and instrumentalities used to treat and cure the cancer. The doctor is not going to cure cancer just by thinking about it.
And yes, as previously stated people will be free to think about this process, and talk about it. In fact the good doctor will most likely get the nobel prize for his brilliant objective, applied, scientific process that no one in the history of the world had ever thought of before, but Malcolm would deny him his patent, if he could.
Something is seriously wrong with this.
But, assuming the novelty and non-obvious of the mental step, are such claims patentable under 102/103, pingaling? Under current case law?
You say yes, and so does AI. Anyone else?
Posted by: Malcolm Mooney | Dec 30, 2010 at 02:03 PM
Malcolm inventors are not awarded patents for an individual step in a process, nor are they denied patents for such. The claims are considered as a whole under 112, 101, 102, and finally 103.
If all these requirements are met the inventor receives his/her patent. Then the marketplace determines the value of the patent. So even if you do not value or respect it the inventor still gets his patent and then you are free to not license, purchase or use the invention. You can even express your opinion about how it suxs or whatever. But the patent is issued according to the law and not your opinions. The sooner you accept that fact the happier you will be .
AI’s claim leaves out the testing step, and focuses solely on interpreting the test result as indicative of cancer and taking some objectively observable action indicative of that correlation.
In other words, telling someone what you’re thinking is now patentable. Wow.
Posted by: Malcolm Mooney | Dec 30, 2010 at 11:29 AM
___
In the hypothetical I proposed, merely telling someone what you are thinking does not cure cancer. And even if it did, that would not be eligible subject matter under 101.
However for reasons previously stated , a process for curing cancer, that involves more than just whispering you’re cured in someones ear is eligible subject matter under 101.
Yes, Mooney if you dissect the claims you can prevent patents for the cure for cancer. In fact you can prevent all process patents since every process requires at least one or more mental steps.
That’s why the law says not to dissect claims into eligible and non eligible subject matter so please do not ask me to violate the law, hypothetically or otherwise.
Okay let’s end this.
Malcolm Mooney, please cite the case law that states the Supreme Courts ruling in Diehr to take the claims as a whole, does NOT apply for 102 0r 103.
PERIOD.
::SILENCE::
Exactly Malcolm. Exactly.
You think the USA is the only jurisdiction in which such questions arise? Some US Applicants do file foreign. And when they do, the EPO has to examine their claims.
The EPO used to reject many of them with a 101 eligibility bludgeon. Then Applicants got wise to that and claimed their subject matter more imaginatively. So the EPO sharpened the edge on its 103 battle-axe. To survive a sweep with that fearsome weapon, your claimed subject matter has to use technical features to solve an objective technical problem. Applicant needs to be more imaginative still. Merely thinking about something isn’t (by any stretch of the imagination) technology. Goodbye claim.
It is all very well for the CAFC to follow the EPO’s 101 relative/absolute path if it has a 103 battle-axe like the EPO’s. But it hasn’t.
MD could it be that these CAFC judges have been infected by EPO philosophy on the crucial difference between eligibility and patentability?
Don’t know and don’t care really. The issue here is whether you can do an end-around 101 and patent thinking about or communicating an unpatentable idea to a person merely by reciting some old, transformative steps before the mental ones.
Just a thought (because I can’t be bothered to read the decision or follow the thread rigorously) but could it be that these CAFC judges have been infected by EPO philosophy on the crucial difference between eligibility and patentability?
What I mean is this. In Europe, you ignore the state of the art (and what is old) when doing 101.
Thus, in Europe, claim “A computer” and you get over 101, whatever words (if any) follow “computer”. But claim something barred by the EPC from patenting, like a mathematical process, and you don’t.
Whereas 102 and 103 are “relative” tests, that is, relative to the prior art, 101 is an “absolute” test in which the prior art plays no part.
I get the feeling that these CAFC judges find this relative/ absolute distinction attractive.
Or will you tell me that Europe got the relative/absolute idea from the USA?
Sunshine, patentable subject matter is a 101 concern.
Wrong – patentable subject matter is a 101, 102, and a 103 concern. In order for a claim to be considered patentable, it must overcome all three hurdles. I thought you knew this?
For example, non-lawyers can’t go around giving legal advice.
Sure they can. They just can’t represent that they’re authorized by the state to do it. Are you seriously suggesting that it’s illegal to say “You should sue those b@stards!” if you’re not a lawyer?
MM, I think you need to clarify what you mean by “mental step” if you want people to answer the question.
Mental step means a step performed in the brain. I know you’ve mentioned the possibility that the district court or the Federal Circuit was interpreting the wherein clause(s) in the claims to be more than merely mental, but that’s simply not the case. The Federal Circuit both pre- and post-Bilski is basically applying a very strict and simple transformation test to find the claims eligible, i.e., if there is a physical transformation in the claim that yields information that is relevant to the “purpose” of the claim, you pass 101. Period. End of analysis. No treatment necessary (that’s claim 46). This is the whole point of Lourie’s discussion about the added mental step not “negating” the 101 eligibility of the claim.
That’s all fine and dandy, as I’ve stated. It’s a very simple rule for drafting a diagnostic claim to meet 101 eligibility.
I know you are upset at the thought that people might be prohibted from saying what they think.
Or thinking what they think. But yes, prohibiting people from saying what they think about a fact without obtaining prior consent from such people is a very serious problem. It was a problem recognized by the framers of the Constitution, as I recall, in one of the earlier amendments.
Does that include making a diagnosis, referring the patient to a specialist, treating the the patient, etc.?
The last issue is somewhat different as a properly claimed method of treatment which recites only non-mental steps is certainly patentable in the United States.
We all agree (even Judge Lourie agrees!) that a method consisting of a single step of thinking about or communicating to a patient that a patient should receive treatment X is not eligible for patenting under 101 under existing law, regardless of the novelty of the treatment. How is it possible, then, to take that ineligible subject matter and stick it to the tail end of an old and unpatentable method and voila! get a claim that is patentable under 102/103? If such a claim is deemed both eligible and novel or non-obvious, the effect on those who are practicing the prior art is to preclude them from communicating their thoughts about a fact relating to their trade (note that the fact is NOT a trade secret, but a publically known fact). This is a problem.
there are all kinds of things that people aren’t permitted to say. For example, non-lawyers can’t go around giving legal advice.
Statutes were passed to protect the public.
Artists can’t publicly perform copyrighted works without a royalty being paid by the venue, or distribute copies of recordings of cover songs without taking a mechanical license.
Artistic expression and public facts are distinct and recognized as such by the law. There’s a completely different set of policy issues at stake and many exceptions to enforcement, both judicial and statutory. Moreover, while I can’t legally copy and sell Nicholas Cage’s new movie, I can certainly talk about it ad nauseum.
Why is it such a stretch that doctor’s would be prohibited from making diagnoses without taking a license?
“Well, I saw a new report published five years ago that suggests a treatment for you based on our tests, Ms. Vogel, but I can’t even tell you what that treatment is until I talk to our lawyers. Making the recommendation might be patented and we can’t afford another lawsuit this year. I know you are critically ill and can’t really afford to wait, but think of all the children that might die if we didn’t allow such patents.”
MM, I think you need to clarify what you mean by “mental step” if you want people to answer the question.
Does that include making a diagnosis, referring the patient to a specialist, treating the the patient, etc.?
I know you are upset at the thought that people might be prohibted from saying what they think. It does seem to implicate first amendment concerns of free speech, but there are all kinds of things that people aren’t permitted to say. For example, non-lawyers can’t go around giving legal advice. Artists can’t publicly perform copyrighted works without a royalty being paid by the venue, or distribute copies of recordings of cover songs without taking a mechanical license. Why is it such a stretch that doctor’s would be prohibited from making diagnoses without taking a license?
Welcome, sockpuppets!
We’ll put another “Yes” next to looking glass’ nym. That makes three: ping, AI, and “looking glass”.
Anyone else think that you can create a patentable claim (under 102/103, as if that wasn’t to clear to anyone except for pingaling and co.) by adding a subsequent “novel” mental step to an old method?
““(let me know if I’m misrepresented your positions — you’re… notorious for flip-flopping when the light gets bright”
Cite me a sample Sunshine – show mees where Iza flip-flopped. Betcha cant, cause I be consistent as the Northern Star.
You be just trollin for comments and jus dont have much ta say, do ya?”
cf
“we be talkin 101 here Sunshine.
No, I’m asking you about 102 or 103, pingaling, and you keep trying to change the subject.
That much was very clear the first time I asked.
Posted by: Malcolm Mooney | Dec 30, 2010 at 01:18 PM
“Can that be patentable subject matter?
What are your views, ping?
Still waiting, ping.
Let me know if you are having difficulty understanding the question.
Posted by: Malcolm Mooney | Dec 26, 2010 at 11:34 AM”
And
“Sunshine, patentable subject matter is a 101 concern.”
W
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Malcolm, there are two things abundantly clear:
1) You do not understand the difference between 101, and 102 or 103.
2) You have been pwned by Ping.
Sunshine, patentable subject matter is a 101 concern.
If you want to get technical about it, pingaling, it’s eligible subject matter that’s a 101 concern. The same subject matter could be eligible for patenting under 101 but not patentable under 102/103.
But you’re only trying to change the subject … again.
If all of the limitations in a claim are present in the prior art except for an additional “novel” mental step and/or a step of stating what you are thinking, is that claim patentable?
Easy stuff, pingaling. And better yet it’s not even a “hypothetical.” Claims of precisely that nature are at issue in Prometheus (well, not precisely because the mental step in Prometheus is so broadly claimed that it, too, is likely inherently anticipated or obvious — but let’s ignore that for now). The bottom line is that if we take the CAFC decision at face value, we now know that such claims are “eligible” for patenting under 101, at least as long as at least one of the old steps include some transformation of human tissue.
But, assuming the novelty and non-obvious of the mental step, are such claims patentable under 102/103, pingaling? Under current case law?
You say yes, and so does AI. Anyone else?
“Can that be patentable subject matter?
What are your views, ping?
Still waiting, ping.
Let me know if you are having difficulty understanding the question.
Posted by: Malcolm Mooney | Dec 26, 2010 at 11:34 AM”
Sunshine, patentable subject matter is a 101 concern.
“That much was very clear the first time I asked.”
Bring the chuckles, baby, bring ’em.
we be talkin 101 here Sunshine.
No, I’m asking you about 102 or 103, pingaling, and you keep trying to change the subject.
That much was very clear the first time I asked.
“As has been explained to you many times, the analysis of a claim under 102 or 103 requires”
Talk about sophistry – we be talkin 101 here Sunshine.
Ya do know the difference between 101 and 102 or 103, dontcha?
pingaling “In other words, telling someone what you’re thinking is now patentable. Wow.”
Sunshine, just an observation: Don’t parse – take the claim as a whole.
pingaling, your sophistry is repetitive and non-responsive. As has been explained to you many times, the analysis of a claim under 102 or 103 requires comparing the limitations recited in the claim with the methods known in the prior art.
If all of the limitations in a claim are present in the prior art except for an additional mental step and a step of stating what you are thinking, is that claim patentable?
Your repeated invocation of this “read the claim as a whole” “rule” (in quotes because it applies in all situations, except when it doesn’t) strongly suggests that you believe the answer to the question is “yes.” So we’ll put you down for that, right next to your bud AI.
Maybe Dennis should take a poll.
“In other words, telling someone what you’re thinking is now patentable. Wow.”
Sunshine, just an observation: Don’t parse – take the claim as a whole. Your statement above parses a single element and you are pronouncing “patentable” on an element.
Ya gonna get the Diehrists aroused here with their Bilski 18’s, 24’s or whateva’s.
TINLA it appears that they may haved actually read the specification and the prosecution history, and determined that a warning step was recited.
Right, just like Chef America: the plain language of the claim can be ignored on certain days of the week.
So the holding of Prometheus is that you can patent a claim that recites old steps plus an additional subsequent “novel” mental step and a step of telling someone what you are thinking? I think that’s just as interesting (and wrong) of a result as the “novel-mental-step-added-to-old-method-is-patentable” result.
AI’s claim leaves out the testing step, and focuses solely on interpreting the test result as indicative of cancer and taking some objectively observable action indicative of that correlation.
In other words, telling someone what you’re thinking is now patentable. Wow.
MM, in my view, it depends on whether the claim limitation really is just a mental step, or if there is some objectively observable activity like reporting the level under a column reserved for the range indicative of the other condition, or issuing a diagnosis.
I’ve already said that the court did not appear to interpret “correlating” in the examiner preferred manner of the broadest unreasonable interpretation. Rather, it appears that they may haved actually read the specification and the prosecution history, and determined that a warning step was recited.
I would expect the same of the claim in AI’s hypothetical. But, in my view, AI’s claim leaves out the testing step, and focuses solely on interpreting the test result as indicative of cancer and taking some objectively observable action indicative of that correlation.
pingaling, can one patent a method with steps that are identical to the steps of an old method except for the addition of a subsequent and “novel” mental step? It’s a yes or no question.
What’s your position? I’m not interested in your “explanation” of your non-position on the question. I don’t think anyone is interersted in hearing that … again.
Same for AI and TINLA. Simple yes or no.
In fact, everyone should feel free to respond to this poll, drawn directly from the very straightforward facts of Prometheus. Let’s see who responds and who somehow can’t bring themselves to answer (due to shame, presumably) and therefore makes a desperate bid to change the subject.
I do.
Thankyou,
Ping
“You know, for laughs.”
Sunshine, the right phrase is “for chuckles” Pay attention.
“keep track of the future losers”
Wassa matta? you want losers to join you? And your keeping track is like what, your latest change-the-world windmill project?
“we have ping… asserting that… ”
Wrongo bucko – read my observations more closely. Iza either just sayin ya need to read the claim as a whole (tell me ya gonna disagree with that Sunshine), or Iza be commentin on what others be assertin (like TINLA’s offerin of the actual definitions which done show up policywank Willie-boy).
“(let me know if I’m misrepresented your positions — you’re… notorious for flip-flopping when the light gets bright”
Cite me a sample Sunshine – show mees where Iza flip-flopped. Betcha cant, cause I be consistent as the Northern Star.
You be just trollin for comments and jus dont have much ta say, do ya?
“I don’t know what you are getting on about regarding May. They were using something to effect analgesia that was already used to effect analgesia. They wanted to take that use out of the public domain by claiming its use a non-additictive analgesic, based on their discovery that it was non-addicting. That’s about like trying to patent using previously known lead free house paint to paint houses because you discovered lead is dangerous. ”
Well Broje I’m not going to dig into the facts again, but I think it enough that you said “anal” huh huh huh huhhuhhuh huh. Although I will also note that you’re the one going on and on about how new uses for old things are totally patentable. I’m not sure what changed your mind in the last few seconds, but whatever it was I’m glad it did. Maybe all this time you’ve meant that they were totally patentable under 101 but nearly always not under 102/103?
“Discovering a new property of the compund does not make the old use of that compound a new use”
Oh but broje! They said it a different way in the claimzor! You can’t ignore limitations! lol
I don’t pay attention to AI or his hypos but thanks for the welcome, I assume you had a good trip wherever you were headed?
“How is any of that at all like AI’s hypothetical, in which the raw results from the test for the common cold, if they fall in a previously unappreciated range, can be used to detect cancer very early and prevent it?”
Because all you did was use the test in an old fashion? And then look at it and make a prediction? Depending on the claim of course.
“That’s not forseeable at all, and the claim does not take using the test to diagnose the common cold out of the public domain.”
O rly? Because it sure seems to depending on your training and on whatever range of values that happens to pop out of the old test. You infringe as soon as you did the old steps the later being looking at the results and thinking about them.
But, of course, this is all a consequence of the nonsensical inclusion of mental steps etc. into patentably weighted subject matter. The lows the patent system are currently bound up with boggle the mind.
“Wilton has to resort to twisted extrapolations of unrelated lawl, because the policy arguments are all on AI’s side, ”
I lulzed. Policy? On AI’s side? lulololoulululululululuzlzuzluoluouoluuoluouluoululz.
The only “policy” that AI has or knows about is $$$ from ripping off some company.
So we have ping and AI both asserting that one can patent a method with steps that are identical to the steps of an old method except for the addition of a subsequent and “novel” mental step (let me know if I’m misrepresented your positions — you’re both notorious for flip-flopping when the light gets bright). TINLA, you want to sign on to that proposition as well?
I just want to keep track of the future losers. You know, for laughs.
Hi, 6, welcome back! 😛
I don’t know what you are getting on about regarding May. They were using something to effect analgesia that was already used to effect analgesia. They wanted to take that use out of the public domain by claiming its use a non-additictive analgesic, based on their discovery that it was non-addicting. That’s about like trying to patent using previously known lead free house paint to paint houses because you discovered lead is dangerous.
Discovering a new property of the compund does not make the old use of that compound a new use. Duh. How does that impact anything we were talking about regarding Tomlinson or AI’s hypothetical?
And Tomlinson is basically about not being able to patent using house paint to paint cars, where the property of the paint to, you know, be paint and paint stuff is already known. The “new” use of the paint isn’t really new. It’s obvious to the point of anticipation.
How is any of that at all like AI’s hypothetical, in which the raw results from the test for the common cold, if they fall in a previously unappreciated range, can be used to detect cancer very early and prevent it? That’s not forseeable at all, and the claim does not take using the test to diagnose the common cold out of the public domain.
Are these not fair questions?
Gently lay the shovel down Willie-boy. We will lower a rope to you (in due time).
subject old = treating a cold
subject new = treating cancer
Do you read what you write?
By subject, I meant the person on whom the method is performed. The subject is a person in each instance.
In this case, ping, Wilton has to resort to twisted extrapolations of unrelated lawl, because the policy arguments are all on AI’s side, and even he can see it. It’s hard to blame him for wanting to win this challenging, for his side, argument. Looks like Wilton likes a challenge.
Oh thanks for the heads up max. i was truly beginning to believe we were no longer the USA.
Willie-boy,
I admire your “bravery” for so willingly jumping at the chance to show your ignorance.
Bravo.
ps. I see why you usually stick to policy-only arguments. You svck at making factual or legal ones.
The EPO looked at “novelty of purpose” almost immediately after it opened its doors for business in 1978. Exxon wanted a patent for its fuel additive because, said Exxon, it reduced friction within the engine. The Examiner raised no 101 objection. but did raise a 102 objection because the prior art had the same fuel and the same additive, in the same proportions. The only difference was that the prior art advocated using the additive to inhibit corrosion in the engine. It said nothing about any friction-reducing capability in the fuel additive.
Outcome? Exxon got its patent. Its “use claim” was found to be eligible, new and not obvious. Right result, no? Indisputably, Exxon made a valuable contribution to the technical field of fuel additives, revealing to the PHOSITA teaching of which, up till then, the PHOSITA was ignorant.
On that basis, “use claims” are by now ubiquitous in Europe. I guess the CAFC did not want to miss out, or disadvantage US-based industry relative to Europe. You see, these days, there is competition amongst nations, to be more “patent-friendly” than the next nation.
“the subject of the method is the same”
but
“an old method of treating a cold can be used to treat cancer does not mean that the new use”
W
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F
subject old = treating a cold
subject new = treating cancer
Do you read what you write?
AI: As pointed out above the case law does say you must take the claims as a whole. So there is no way for you to start eliminating these claims without dissecting them into patentable and non patentable subject matter, and that is not allowed.
The case law says that the claim must be taken as a whole in order to determine if the claim meets 101 subject matter scrutiny and 103(a) obviousness scrutiny. The case law does not, however, say that every recitation in a claim must be treated as limiting. The USPTO routinely disregards “adapted for” and “whereby” clauses when such clauses do not recite a structural limitation of a claimed apparatus or a manipulative limitation of a claimed process. The same is true for process limitations in product-by-process claims. See In re Thorpe.
Just because an old method of treating a cold can be used to treat cancer does not mean that the new use is performed any differently than the old use. If the method is the same, the subject of the method is the same, and the process limitations of the method are the same, then what is objectively different about the new use compared to the old use? Only one thing is different: how one interprets the results. Sorry, but in my view, that’s not claim limiting.
But if a Medical Doctor discovers and invents a process for the cure for cancer, and God forbid it involves a mental step you suddenly say it has no patentable weight.
No patentable weight!?!?!?!?
The frekin cure for cancer, a medical and scientific breakthrough has no patentable weight, but a new shaped cookie does?!?
That’s Homer Simpson logic!
It’s Fd up.
Save your moral outrage for those lunatics in the PIAUSA.
Maybe now I’ll get my “Day” in Court. And they may not care as you say. But they will understand that Lobbyists don’t exist inside the Rotunda.
*Day
Him too
Push sarah, push. They dont care about you.
A compilation of a persons Civil Rights.
And it was all over a fender. I hope you are all proud of what you have done to me.
Whether you believe it or not. I was once a very gentle soul. That cried if you looked at me wrong. So getting away from what sucked it out of me was neccessary for my mental health. But it seems there is no getting away from it.
So when I pushed up against a wall, the onlt thing to do is push back
“misstates the MPEP and the facts of May and Tomlinson. The ruling is that a new use of a known property of a compound or structure is not patentable, but that a new use of a previously unappreciated property of the known compound or structure is patentable. Characterizing that as making unpatentable a new use of a known method producing results with previously unappreciated meaning seems quite a stretch, and essentially incorrect.
”
Your “result” limitations will be dealt with in due course. The director stated that he doesn’t have a problem with them, but of course he doesn’t, he’s a lawlyer. The courts on the other hand may have one very soon, especially in light of how courts have viewed them before. They seem to a new fad of late just begging to be beatdown. I’ve already discussed them with more than a few lawlyers and all agree that they’d rather turn those result limitstions into straightforward step limitations. Flip a coin at your own risk.
Btw, citing nonsense about 101 has no relevance to 102 and 103. By the by, the court specifically addressed your nonsense argument in May.
“Appellants contend that May is not an anticipation since claim 1 is limited to a method for effecting nonaddictive analgesia, whereas May only discloses a method for effecting analgesia. Relying on 35 U.S.C. § 100(b), viz., “[t]he term `process’ . . . includes a new use of a known 1090*1090 . . . composition of matter,” appellants conclude that they have discovered a new use for the species disclosed by May. We disagree.”
link to scholar.google.com
And see where this comes from:
“We likewise must affirm the rejection of process claims 18-20, notwithstanding appellants’ urgings that those claims “stand in a different position regarding obviousness” than the composition claims by setting forth “a use and the means whereby such new use is obtained,” thus coming “within the definition of a process set forth in 35 U.S.C. 100(b)” and that this “new use of the nickel and cobalt dithiocarbamates as an ultraviolet stabilizer for polypropylene constitutes one of the fundamental aspects of appellants’ invention.” As indicated, Tholstrup shows the combination of polypropylene with nickel dithiocarbamates to be old. While the method of combining is not clear, we thing it conventional, and therefore obvious, to do so by “admixing,” as claimed. We therefore find process claims 18-20 unpatentable by reason of their reading on an obvious process, the admixing of polypropylene and a nickel dithiocarbamate, an old mixture.”
where claim 18 is:
“18. A process of inhibiting degradation of polypropylene caused by exposure to light which comprises admixing solid, isotactic, substantially crystalline polypropylene and a stabilizing quantity of dithiocarbamate having the general formula:
wherein each of R, R1, R2, and R3 is a hydrocarbon radical containing 1 to about 18 carbon atoms and M is selected from the group consisting of nickel and cobalt.”
link to scholar.google.com
I didn’t interpret AI’s hypothetical in that light. It seems to me that he was proposing interpreting the result in a new way with respect to a previously unappreciated range of measured values indicative of a different condition. So basically, something analogous to the invention in Prometheus. We are making different assumptions about what AI is thinking.
Posted by: TINLA IANYL | Dec 28, 2010 at 05:10 PM
_______
You are right and Willie is wrong. It just so happens that I agree with the Supreme Courts intepretation of broad scope of patentable subject matter and apparently so does the CAFC.
We are making different assumptions about what AI is thinking.
Apparently. AI is not very clear about what he is thinking, aside from his belief that anything and everything should be potentially patentable subject matter, including methods of thinking.
Posted by: Willton | Dec 28, 2010 at 05:57 PM:
When have I ever made such a statement? You lie like Malcolm. Hmmmm. New alias for Christmas?
In addition I would say that the conditions for 101, 102, and 103 are successive steps that once met establishes a platform for the next.
Once you meet the requirements for 101 you have met them and its not logical that your accomplishments can be stripped from you in 102 and 103.
Otherwise what is the point of having separate steps, or as Rich would say, doors to be unlocked?
Willton: There’s also nothing in the case law that says a new use of a known process MUST be patentable.
AI: As pointed out above the case law does say you must take the claims as a whole. So there is no way for you to start eliminating these claims without dissecting them into patentable and non patentable subject matter, and that is not allowed.
You still lose.
Bilski 14 baby!
Willton: Well, then I would continue to hold my stance that the claim should be rejected under 102, except my reasoning would be that the recited “mental step” indicating the new use would not have any patentable weight.
AI: Whoa there Willie! Just how do you expect to arrive at that conclusion without dissecting the claims? And please don’t quote Steven’s Dissent(s) like Ned does. The old man ( Stevens) is gone and his views have no force of law.
And for all you iron age thinking, horse and buggy whip factory working peeps that say the law should be changed to what Wille wants. Please consider the following:
If a housewife creates a new cookie sheet/pan that can bake 3D shape cookies, no one is going to say it’s not 101. Nor will there be any issues under 102 and 103, providing its never been done before.
But if a Medical Doctor discovers and invents a process for the cure for cancer, and God forbid it involves a mental step you suddenly say it has no patentable weight.
No patentable weight!?!?!?!?
The frekin cure for cancer, a medical and scientific breakthrough has no patentable weight, but a new shaped cookie does?!?
That’s Homer Simpson logic!
It’s Fd up.
It’s Inane.
Its IANAE EVEN!
In the hypothetical there was no process known or used by others for curing cancer…PERIOD. And there is nothing in the statute thats say a new use of a known process is not patentable under 102.
There’s also nothing in the case law that says a new use of a known process MUST be patentable. If the recitation of the new use does not provide a manipulative limitation to the claimed method or process, then it does not carry any patentable weight. In this case, the same method is being performed the same way on the same subject. The only thing that is different is what results the doctor is looking for. The mental steps of a doctor looking at or considering the result differently is not claim limiting, and thus does not distinguish the claimed invention from the prior art.
“Methinks “homey don’t do answers” because he’s a coward.
Ouch.
Posted by: Cy Nical | Dec 28, 2010 at 04:47 PM ”
Cy, ya be sittin on a stick again I see. I thinks I need ta swat ya side the head for ya to recognize an “ouch.”
Well, no accounts of tastes.
Willton – don’t confuse “takes a position” with “doing answers.”
I done take plenty O stands – just checkout my brilliant observations all up and down these here threads. My position be clear enough for those with any level O brains. In fact, plenty O stands be against your lame policy-only-table-poundin (If ya got the law, pound the law; if ya got the facts, pound the facts, if ya got neither, pound the table). Go ahead Willton-boy, pound that table some more.
As for answers, I done already stole Ol Maxie’s lines once before – for answers, ya gotta pay me, and you aint payin.
Willton: Using the hypothetical method for the purpose of detecting cancer had always been available to the public.
AI: Really? So why hadn’t anyone cured cancer until the invention of the good doctors method? You use the the word “available” like a weasel word to avoid a losing position. But the fact is every process is “available” to everyone in the public to be used and applied in any manner the public can invent. That’s why the term used in the case law is “application” NOT “availability”. ( See Diehr) Its the innovative , new and non obvious application of real world technology to an industrial process that makes the hypothetical method a patentable invention.
Willton: The fact that the method had not yet been appreciated for this purpose does not make it patentable.
AI: Again you make up another non legal term ( weasel word) to support a losing legal position. It does not matter if it’s been “appreciated” or not for 101. Thats just an opinion. The correct legal term according to the statute is “use”. The fact that the method had not been “used” for the purpose of detecting, preventing, and curing cancer is what makes it a new “use” and therefore statutory under 101. Read 35 U.S.C. 100 (b) or see TINLA IANYL post @ | Dec 28, 2010 at 03:30 PM
(b) The term “process” means process, art, or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material.
Willton: You lose.
AI: Not according to the statute. But of course you are free to keep saying that if it makes you feel better.
Wilton: TINLA, perhaps you assumed that I was arguing that AI’s hypo was not patentable based on 101. I did not. I’m saying that it’s not patentable under 102, and that the recitation of this particular new use does not carry any patentable weight.
AI: So you admit you lose the first round 101 and concede. Good. Now let’s go to round two 102.
35 U.S.C. 102 Conditions for patentability; “novelty and loss of right to patent. A person shall be entitled to a patent unless -the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for a patent.”
In the hypothetical there was no process known or used by others for curing cancer…PERIOD. And there is nothing in the statute thats say a new use of a known process is not patentable under 102. And as previously stated, since it’s an unexpected and surprising result, its also non obvious under 103. Therefore our hypothetical good doctor gets his patent for curing cancer, and Wilton goes down for the count!
Referee, “1,2,3,………”
I didn’t interpret AI’s hypothetical in that light. It seems to me that he was proposing interpreting the result in a new way with respect to a previously unappreciated range of measured values indicative of a different condition. So basically, something analogous to the invention in Prometheus.
Well, then I would continue to hold my stance that the claim should be rejected under 102, except my reasoning would be that the recited “mental step” indicating the new use would not have any patentable weight. The mental step of interpretting results differently does not provide a manipulative limitation to the claimed method, and thus cannot provide the basis for patentability.
We are making different assumptions about what AI is thinking.
Apparently. AI is not very clear about what he is thinking, aside from his belief that anything and everything should be potentially patentable subject matter, including methods of thinking.