Centocor v. Abbott: Written Description and Antibody Claims

By Jason Rantanen

Centocor Ortho Biotech, Inc. v. Abbott Laboratories (Fed. Cir. 2011) Download 10-1144
Panel: Bryson, Clevenger, Prost (author)

Centocor, the holder of Patent No. 7,070,775, which claims fully human antibodies to human necrosis factor α ("TNF-α"), sued Abbott for infringement by the therapeutic antibody Humira®.  A jury rejected Abbott's defenses and awarded Centocor $1.67 billion in damages.  After the district court granted Abbott's JMOL of no willful infringement, but denied JMOL on invalidity, noninfringement and damages, Abbott appealed. 

Later Added Claims Lacked Written Description
On appeal, the CAFC reversed, focusing solely on the issue of written description.  In many ways this is a prototypical written description case.  Centocor's approach to developing a TNF-α antibody involved first identifying a mouse antibody to human TNF-α, then changing the less critical portions of the antibody to make it more human – thus producing a chimeric antibody.  Abbott followed a different path, setting out from the start to develop a fully human antibody, a process that ultimately led to Humira®.  Both Centocor and Abbott obtained patents on their antibodies.

In 2002, after Abbott obtained regulatory approval to market Humira®, Centocor filed claims to fully human antibodies as part of an ongoing continuation of the chimeric antibody patent family. These claims later issued as part of the '775 patent.  In responding to Abbott's argument that the fully human antibody claims lacked adequate written description, Centocor relied on a 1994 CIP in the chain that predated the 1996 filing date of Abbott's patent application.

In its opinion, the CAFC honed in on the lack of disclosure of any human variable regions (the portion of the antibody that binds to TNF-α) in the 1994 CIP.  Examining the "four corners" of the 1994 CIP application, the court concluded that "[t]here is nothing in the specification that conveys to one of skillin the art that Centocor possessed fully-human antibodies or human variable regions that fall within the boundaries of the asserted claims."

"while the patent broadly claims a class of antibodies that contain human variable regions, the specification does not describe a single antibody that satisfies the claim limitations. See Eli Lilly, 119 F.3d at 1566-69. It does not disclose any relevant identifying characteristics for such fully-human antibodies or even a single human variable region. See id. Nor does it disclose any relationship between the human TNF-α protein, the known mouse variable region that satisfies the critical claim limitations, and potential human variable regions that will satisfy the claim limitations."

Slip Op. at 16-17.  Essentially, the claims constituted a wish list of properties for a fully-human, therapeutic TNF-α antibody would possess – but a mere wish or plan for obtaining the invention is not sufficient to satisfy the written description requirement. 

Disclosure of a Protein Does Not Necessarily Suffice to Support Claims to All Associated Antibodies
Centocor also suggested that it satisfied the written description requirement by fully disclosing the human TNF-α protein.   It based that suggestion on the current PTO written description guidelines, together with Noelle v. Lederman, 355 F.3d 1343 (Fed. Cir. 2004).  One example in the PTO guidelines indicates that "'an isolated antibody capable of bding to [protein] X' is adequately described where the specification fully characterizes protein X-even if there are no working or detailed prophetic examples of actual antibodies that bind to protein X."  Slip Op. at 17-18.  In other words, simply disclosing the "lock" is suffient to support a claim to the key fitting into that lock.  This view was reinforced by Noelle, in which the CAFC held that:

"as long as an applicant has disclosed a “ fully characterized antigen,” either by its structure, formula, chemical name, or physical properties, or by depositing the protein in a public depository, the applicant can then claim an antibody by its binding affinity to that described antigen."

Noelle, 355 F.3d at 1349. 

Accepting that while this may be true in some cases, the CAFC rejected its application to the multi-part claims at issue.  "While our precedent suggests that written description for certain antibody claims can be satisfied by disclosing a well-characterized antigen, that reasoning applies to disclosure of newly characterized antigens where creation of the claimed antibodies is routine."  Slip Op. at 19.  Here, the creation of the claimed antibodies – which possessed a number of characteristics beyond their relationship with the antigen – was anything but routine.  "Claiming antibodies with specific properties, e.g., an antibody that binds to human TNF-α with A2 specificity, can result in a claim that does not meet written description even if the human TNF-α protein is disclosed because antibodies with those properties have not been adequately described."  Id. at 20.  As Centocor "failed to support its contention that generating fully-human antibodies with he claimed properties would be straightforward for a person of ordianry skill in the art" at the time, possession of the known antigen did not place it in possession of the claimed antibodies. 

For those who are interested in reading further, PatentDocs has a detailed write-up of the decision.

 

68 thoughts on “Centocor v. Abbott: Written Description and Antibody Claims

  1. Ya might want to read bilksi again there Sunshine

    Why? Bilski does not seriously address the veracity of my statement, one of many flaws in the decision.

    On the other hand, the Supremes did tank Bilski’s patent, just as I predicted (and you failed to predict). And I know why they did it, too.

  2. At issue were “therapeutic antibodies” not a “therapeutic antibiotic[.]” Please correct the very first sentence of your blog post.

  3. Any fo0l can isoalte a gene sequence. It takes actual brains and skill to write a useful program.

  4. To paraphrase Vim Fuego

    Jimmy Page wrote Stairway to Heaven when he was 21. I learned it when I was 12. You be the judge.

  5. IANAE, the way I read the Supreme Court is that when a legal issue (eg, malice) has to be established by C & C evidence, a court cannot grant SJ to the party having the burden without considering two independent things: 1) whether there is a genuine dispute of material fact; and 2) whether the facts alledged to be undisputed are sufficient to establish the legal proposition by C & C evidence.

    When the facts are undisputed, but they do not carry the burden such that the legal prosition is not established, for example, without substantial doubt in the case of C & C, the remedy is not to send the case to the jury, but to non suit the proponent of the legal prosition either by granting SJ to the opposing party with respect to the issue, or by granting a verdict JMOL on that issue.

    Now, if you agree with the above, then we do agree. However, I sense that you do not agree.

  6. Really, IANAE, are you that hard up for a trolling expedition?

    Evidently, since I’m taking the highly controversial position that an invention is obvious when it was “invented” by doing precisely what would be obvious to an uninventive person.

    Do you really think that’s the “problem” that the wording of 103 was intended to solve?

  7. For example if the facts are not in dispute, such as when the evidence is nothing but patents and both parties agree on the skill in the art, IANAE seems to think that a dispute about whether the claims are invalid (over this undisputed evidence) is a issue of fact for the jury.

    I’ve been saying the exact opposite of that the whole time.

    My point was that, as there are no issues of fact, there is no applicable standard of proof. Because questions of law don’t have standards of proof. Let me know when you’re done struggling mightily with this concept.

  8. Maxie,

    Your insistence that I “go away” coupled with your words that the conversation was between you and Ned means that it was a private conversation (as in, between two and only two people). You wanted no one to “butting in” so rudely. And while private conversations are held in the public all the time, usual and typical blog “conversations” are open to comments from the public at large. Really, must I observe for you the common sense notion between blog writing, conversations and private conversations, or are ya just at a loss for anything real to say to the points I raised? I noticed that ya havent addressed those points at all. Now why is that?

    It is hardly tilting at windmills when I address the clear and unmistakable meaning of your words. If You are having trouble remembering those words, just look up – they are here in black and white.

    Now I knows that you like to sit in a saddle backwards, but when you ride such a high horse, that backward sitting can be awfully dangerous. Your feet cannot reach the stirrups and when the horse bucks (for example, when I poke it with a sharp stick) you end up on the ground.

  9. ping once again you are tilting at windmills. I wrote “conversation” and you then told me I had asserted “private conversation”. Above, MM wrote “The requirement”, and you then upbraid him on the basis that he had instead written “The SCOTUS requirement”.

    As you already know, I wish you would go away (or change your tedious ways).

  10. The requirement that a patentable method achieves a non-abstract or physical transformation (e.g., a transformation that does not include “making a profit”) is a healthy requirement for a functioning patent system

    Ya might want to read bilksi again there Sunshine – even if it be painful. And dont just read the dissent, focus on the majority opinion.

    And please do not invite the DIehrists out, Iza dont need more O that Bilksi 18, 24, 2, 2, hut stuff.

  11. “Frankly, for 6, I think he is trapped in his habit of over-wordsmithing or doesn’t understand law, or both.”

    Oh NAL, I understand it all too well. Your judicially accidontally created then legislatively unintentionally legitimized precious business methods are waiting on the legislative chopping block my dearheart. Give our congress a little time sweetie. They move slowly.

  12. New Light That being said, dismissing the mere making of money as something not having utility is quite the mistake.

    I disagree. The requirement that a patentable method achieves a non-abstract or physical transformation (e.g., a transformation that does not include “making a profit”) is a healthy requirement for a functioning patent system. The exception to this requirement, of course, would be a method that includes a novel, non-obvious (and properly described) machine.

    Does anyone of this sound familiar?

  13. 6, I have yet to see anything but atrocious work from French patent attorneys in my practice. Your rant has amused me.

  14. 6,

    Your first one was better: “I’m working on another French application right now

    get it – you’re working? That’s a knee slapper.

  15. Ned-O

    One of these was that there really was no technical problem to be solved

    Perhaps ya didnt hear teh one abouts the technical arts test FAILING as a point of law in this here country. It may have happened during one of your non-lucid moments…

  16. A conversation between and only between two peoples be private maxie.

    butting in on a conversation I am having with Ned

    So guess what, it was you that said it, very much against what ya just posted.

    Dippin inta Ned’s meds aint gonna help your cause.

  17. New Light, you should check out the discussion IANAE and I had about C & C in the i4i thread. Apparently on SJ, the Supreme Court requires both the DC and the Feds to determine whether the evidence of invalidity meets the C & C requirements as a necessary element to a grant SJ of invalidity — because invalidity requires proof by C & C.

    IANAE has been struggling mightly with what this means. Any insight you might have would be welcome.

    For example if the facts are not in dispute, such as when the evidence is nothing but patents and both parties agree on the skill in the art, IANAE seems to think that a dispute about whether the claims are invalid (over this undisputed evidence) is a issue of fact for the jury. I suggest, and I have been all over the map on this I admit, to the contrary that the issue is “one of law.” The court ought to grant judgment for the PO if there is any substantial doubt, or for the infringer if there is none. There is no issue of fact to be tried.

    Your views?

  18. Yes, Malcolm, I agree. The same can be said for applications in every art. Proper claiming is key to the individual invention captured in the particular application. That being said, dismissing the mere making of money as something not having utility is quite the mistake. We even have a Department of Commerce – which should indicate the very real utility present generally.

    But that wasn’t the topic of the discussion.

    The topic was the attempted elimination of “Business Methods” as patentable subject matter. Both the legislative law and the case law (e.g. see Bilski) are quite clear on this point. It is a point that Ned must come to some reconciliation with as I know he values the Supreme Court jurisprudence, but still seems to find a philosophical fault with the “Business Methods” as a patentable subject matter. As I recognize that 6 and MaxDrei do as well – but for different reasons. For MaxDrei, it appears merely to be jurisdictional, for which applying the proper forum (US law) suffices. Frankly, for 6, I think he is trapped in his habit of over-wordsmithing or doesn’t understand law, or both.

    Ned, on the other hand, has shown the most willingness to actually engage in a conversation on the merits of anyone that regularly posts on this blog. That is why I feel comfortable engaging him in a conversation, as opposed to certain other posters, who would rather be cute and play their little games to avoid a clear discussion on the merits.

  19. Ping has correctly identified that under US law, “Business Methods” are patentable subject matter.

    It’s true that some may be patentable, if they are claimed properly. But try to claim “A method of doing business, comprising [insert accounting steps], wherein said method increases the likelihood of a profit.” Even if you toss a computer in there, you’re likely to end up with nothin’ at the end of the day.

  20. Ned,

    I must disagree with you on a philosophical basis when you state “There really is no problem to be solved — no long felt need.

    Making money is probably the biggest problem and the longest felt need that “business” has ever known.

    I do think you are correctly identifying MaxDrei’s “technical problem” concern and I think the true philosophical argument mirrors the contentions more along the lines of 6, who questions whether “Business Methods” are a “useful art” as understood by the US Patent System.

    But no matter your philosophical feeling on these questions, Ping has correctly identified that under US law, “Business Methods” are patentable subject matter. MaxDrei’s EP answer simply does not apply to the laws of this country.

  21. ping, Max was criticizing BM patents on a number of different levels, no doubt. One of these was that there really was no technical problem to be solved.

    I flipped that just one more turn. The need or desire to make money, or more money, from trade is always present. There really is no problem to be solved — no long felt need. Financial practicioners are always trying to figure out more ways to make money — primarily by identifying markets and “inventing” ways to service their needs.

    Back to the Supremes point of view: if a solution to an identified problem is within the skill of the art, it is not patentable. They view 103 as a codification of their Greenwood decision. One of the hallmarks of being within the skill in the art is that the solution appears as soon as the need is indentified. There is no gap in time. There is no reasearch. It is “obvious.”

    Reading Malcolm’s posts over time tell me that he thinks this way as well. He assumes that software requires no great deal of skill to implement. Thus, once a need presents itself, the solution is normally well within the ordinary skill in the art.

    In contrast, look at this case. There was a long felt need for a human antibody for TNF-alpha. They had no clear path from the known mouse antibody to the human antibody. It took a long time and a great deal of effort to find the solution. This is the stuff of patents from Malcolm’s point of view.

    This said, I am quite impressed by some BM inventions. Also, there are revolutionay mathematical inventions that, IMHO, deserve patent protection. I have described one here before, the Viterbi algorithm that is the foundation for space communications, disc drive read/write technology, and cell phone technology among others. Viterbi himself was recognized as one of the great engineers of our time by the IEEE.

  22. Oh and hey, check out this joke:

    I have a French application that is appealing my final rejection.

    That’s it. That’s the whole joke.

  23. I’m working on another French application right now. Now, I’ve met some French girls, who, apparently as a genus are quite delightful, and I’ve seen some right nice French art. But can anyone explain how it is that the French, virtually without fail, come up with the most go d awful inventionlols, where, in their applications, they usually display a form of blatant technical misunderstanding of the previous literature and indeed sometimes misunderstand THEIR OWN INVENTION. Which, it is noted, the later of which seems to be impossible, but they somehow manage it.

    Are there no technically competent people in France? Srsly? Nobody in the whole country understands jack? I mean, on the one hand, I’ve never heard of any especially good technical schools over there. But on the other, they are a modern country and I’d presume they’d have like 1-3. Perhaps it is just their patent attorneys that are screwing up?

  24. I’m working on another French application right now. Now, I’ve met some French girls, who, apparently as a genus are quite delightful, and I’ve seen some right nice French art. But can anyone explain how it is that the French, virtually without fail, come up with the most go d awful inventionlols, where, in their applications, they usually display a form of blatant technical misunderstanding of the previous literature and indeed sometimes misunderstand THEIR OWN INVENTION. Which, it is noted, the later of which seems to be impossible, but they somehow manage it.

    Are there no technically competent people in France? Srsly? Nobody in the whole country understands jack? I mean, on the one hand, I’ve never heard of any especially good technical schools over there. But on the other, they are a modern country and I’d presume they’d have like 1-3. Perhaps it is just their patent attorneys that are screwing up?

  25. Ned-O

    Please pardon the intrusion into the delicate conversation that You and MaxDrei appear to be having (as you have labeled points above that do not correspond to points that appear in this public blog – and Maxi’s pant__ies are in a tight wedge since it appears that I ruined his setup – but Iza knew it was just him tryin to trick ya and I be watchin out for ya), but I ever so humbly offer a few observations to go with your points.

    1) Where does this requirement for “need of motivation come from? The Constitution, oh er um the (C)onstitutiton, does not call out that the promotion is to be based on “need”. Iza be curious what extra-doctrinal material be driving this view that “need” be so critical.

    2) MaxDrei’s premise, as I so rudely pointed out was the varient claimed not well within the ordinary skill. His words: “”the new bankster method, as claimed, solves that problem cleverly, not obviously.” If you are pointing out that Max has a good point, shouldn’t you at least be on teh same page of Max’s point?

    3) Since MaxDrie makes no mention of “Obvious as a matter of law according to the Supreme Court way of looking at things“, it appears that you are not connecting with any cognizant thought advanced by Max. Rather, it seems that you have brainfrrted and have continued a conversation with other people on your somewhat alzheimeric recounting of Supreme Court rulings. Please remember to take the proper dosages of each of your several medications.

  26. Sorry Maxi – didn’t know the party was a private conversation – ya might want to have those types off line, rather than on a website blog.

    Just an observation.

  27. On the other hand though, the temple that christ cleared was a really nice temple, indeed, so far as I understand it, it was “his father’s house”. So really it might not be so much of an issue as long as you’re just at, say, the NYSE.

  28. You have a good point there, Max.

    1)The need or desire for making more money is a fact of life. No motivation is needed.

    2)The variant claimed is well within the ordinary skill; software implementation is routine.

    3)Obvious as a matter of law according to the Supreme Court way of looking at things.

    As to the morality: that has been a bug-a-boo since Christ cleared the Temple of money exchangers, hasn’t it? Let’s not go there.

  29. ping you are rudely butting in on a conversation I am having with Ned about the question Ned raised. It is an interesting question, for which the EPO has the answer. I was asking Ned what he thought about it.

    Go away, will you?

  30. Mr. Mooney’s first paragraph is no response at all to the issue presented in italics.

    He did imply that, relative to the level of skill required to write software, cloning an antigen and isolating an antibody required a level of skill sufficiently greater to imbue that activity with a quality of patentability lacking in the writing of software.

    Still laughable. Talk about the pot calling the kettle black–2 paragraphs, 2 strawmen by Mr. Mooney.

    I never said it required “great” technical skill to magnetically confine plasma in a stable configuration. On the other hand, I’m not aware of any 25 year old having done so. But lots of 25 year olds have conceived and actually reduced to practice antigens. I know you did.

    Just because something can be done by a 12-year-old, or for the same token by a mere 25-year-old, does not automatically render it patent-ineligible.

    I don’t often follow this board, and now I remember why.

  31. Maxi,

    More questions – must be in one of your instigate to learn and then ignore the answers so yous can ask the same questions later modes.

    Some observations:

    the fun cases are those where the (financial) engineering problem is “how to cream off even more money”, and the new bankster method, as claimed, solves that problem cleverly, not obviously.

    So the premise is set that a business method patent, whose utility is established, is clever (by that Maxi I assume you mean to indicate novel), and is not obvious. I further assume it be given that 112 be met (since ya don’t raise the issue).

    Now let’s look at your questions:

    Should that claimed subject matter be patentable?

    Well duh – under US law, business method patents are fully patent eligible, given that they pass all the other tests. Since in your example, the patent does, the easy observation is yes, the claimed subject matter be patentable. I do not miss the trick part of the implied judgment in the use of “should”, but that observation be covered under your last question.

    Does it meet 101?
    Does it meet 103?

    Not sure why you give the answer and then ask the question. Under your given conditions, these both be yes.

    Does it seem right?

    Here be the loaded question. This be a pure “value judgment” question, and quite frankly dont have a right answer. “Seeming right” depends on your philosophy abouts business method patents. US law has spoken on this, so if yous want the legal answer, that answer would be Yes – it is “right”. Mind you, I just be observin the legal answer there.

    Now if ya just be trollin with a nice sharp stick, I find it a bit pecular that you post some thirteen minutes earlier abouts gettin back to the point of the thread. What’s up with that?

  32. Max, yes, jury fact-finding decisions ARE normally hard to overturn, unless there was no relevant evidence to support them that no reasonable jury could have relied upon, and a JMOL motion was filed below to show that. In this particular [somewhat unusual] case the only relevant evidence for the subject issue was the written contents of the earlier patent application on which a vital filing date priority was dependent. Making a JMOL much easier.

    Yes, there has been confusion between “written description” and “enablement” but the CAFC in fairly recent cases discussed in this blog has been trying to separate and clairify that.

  33. Another strawman. I never said it required “great” technical skill to clone an antigen and isolate an antibody from the antigen. On the other hand, I’m not aware of any 12 year old having done so. But lots of 12 year olds have conceived and actually reduced to practice novel software. I know I did. Deal with it. It’s called “reality”.

    Sunshine – it aint straw if it be dealing with something you intimated – that of relative technical skill. You be full of judgment on the relativeness of one art to another – and ya know what? It dont matta.

    Your advice, though, should be followed first by yourself – deal with the reality that the software arts are easier to be inventive in. I know that hurts your pride and your sense of worth in the path you have taken – the long hours of study that narrowed your specialty into one rather old school buggy whip type of area. Too bad, so sad – it’s reality – deal with it.

    It aint no wonder where the elitist “its-gotta-be-a-Nobel-Prize-to-earn-a-patent” mindset comes from – people too smart for their own good who are jealous of others. Take your own advice: “Deal with it. It’s called “reality”.

    And yes, this is me poking you with another sharp stick. Alls I wants is another fire roasted chestnut, so fetch boy.

  34. The patent in issue concerned an antibody with a mouse variable region and whether that could provide written description for a claim covering a similar antibody having a human variable region.

    Asserted claim 1 reads:

    1. An isolated recombinant anti-TNF-α antibody or antigen-binding fragment thereof, said antibody or antigen-binding fragment comprising a human constant region, wherein said antibody or antigen binding fragment
    (i) competitively in-hibits binding of A2 (ATCC Accession No. PTA-7045) to human TNF-α, and
    (ii) binds to a neutral-izing epitope of human TNF-α in vivo with an af-finity of at least 1×108 liter/mole, measured as an association constant (Ka), as determined by Scatchard analysis.

    An uncharitable reader would note that the claim specifies desired properties without any indication of the structure needed to define those properties. The characterisation of the claimed subject matter as a mere “wish-list” seems difficult to dispute.

    Footnote 2 to the decision effectively says all that needs to be said and reads:

    Dr. Marks testified at length about the state of the art at the time Centocor’s specification was filed and explained that one of skill in the art would not under-stand from the disclosure of a mouse variable region that Centocor was in possession of an antibody with a fully human variable region. He concluded:
    Q. And how do the protein sequences of the mouse antibody, or the chimeric antibody, compare to a full human antibody?
    A. They’re very different.
    Q. And would the disclosure of this sequence infor-mation teach of one ordinary skill in the art how to make and use a fully human [antibody]?
    A. No.

    It is difficult to see on that evidence how the claimed subject matter could have been held to meet the written description requirements or even enablement requirements if enablemen had been argued.

  35. Ned, I think the fun cases are those where the (financial) engineering problem is “how to cream off even more money”, and the new bankster method, as claimed, solves that problem cleverly, not obviously. Should that claimed subject matter be patentable? Does it meet 101? Does it meet 103? Does it seem right?

  36. Can we perhaps return to the subject of this thread? compliance with the written description requirement is a question of fact. Here, the jury had to address that issue in the context of an antuibody claim. Was anybody ever in any serious doubt, that the judgement of the jury would be found wanting? Must the CAFC adjudicate not only issues of law but also issues of fact? Where does the issue of “want of written description” turn into “want of an enabling disclosure”? Is there not another recent case in which the petitioner for revocation was told that its chances of progress would be better if it ran its attack on the other heading? So, how is one supposed to know which attack to run? run both, i suppose, and hope for the best?

  37. Malcom, I think that you and the Supreme Court are in fundamental agreement. Given a certain skill set of the ordinary practitioner, and a bit of common sense, routine variations are obvious as a matter of law.

  38. Not because of the manner

    An argument looking for a place to happen.

    Really, IANAE, are you that hard up for a trolling expedition?

  39. As I suggested before, the “recognition” of a problem could be “the invention”

    Yes, the “problem” was that nobody had made money selling a pet rock. The “problem” was that nobody had filed a patent expressly describing a cursor that turned into a picture of your cat when you double-clicked. The “problem” was that nobody had filed a patent on a method of playing kick the can via an interactive network hosted on a plane.

    Surely the lowest form of inventing.

  40. Please continue reading 35 USC Section 103 to the part of:
    “Patentability shall not be negatived by the manner in which the invention was made.”

    Patentability shall be very much negatived if the invention was made in exactly the same way an uninventive person of ordinary skill in the art would have done it. Not because of the manner in which the inventor did it, but because it’s ipso facto obvious.

  41. “And then ask yourself why USPTO examiners who examine software pretend that the world didn’t exist until 1980.”

    I’m going to guess it is because most of them are 30 or younger and for them the world literally did not exists unti 1980 or after.

  42. The better question is “programming to do what?”

    LOL – if you pay attention to ping and “got no problem” on the other thread, the answer is “progammed to do anything that isn’t expressly described in two previously published patents.”

    And lest we forget, you need never program a darn thing (ever in your life) to get a softie waftie patent. You just have to slap your “new” method onto some old boiler and voila! If the Examiner makes an obviousness argument, you just say that while the cited art did talk about collecting data about what the viewer watched, and the viewers age, sex and gender it “did not allow” for data about the hairstyle of the viewer to be collected. You see, this is a totally different kind of data from the data about age of the viewer and what the viewer was looking at. The other references don’t mention hairstyles.

    And this actually works. And ping and his playmate like it this way. Can you guess why?

  43. technical skill is not a requirement of a patent grant

    Nice strawman. Of course, a technical background is required to become a patent agent and also required, I believe, to become an Examiner. Have you ever wondered why that is?

    Those practicing in high-energy, quantum, semiconductor, etc. physics would not consider the level of skill required for the tasks you described to be particularly great

    Another strawman. I never said it required “great” technical skill to clone an antigen and isolate an antibody from the antigen. On the other hand, I’m not aware of any 12 year old having done so. But lots of 12 year olds have conceived and actually reduced to practice novel software. I know I did.

    Deal with it. It’s called “reality”.

  44. By your logic, driving a car requires a higher level of skill than software. Same for employing an oven to bake cookies.

    That’s actually true, with respect to a car. More 15 year olds can program and conceive of “new” software applications than can competently drive a car.

    Baking cookies may actually be easier than writing software, but it’s probably much more difficult to conceive of patentable software than it is to conceive of a patentable cookie.

    Again, rather than get all defensive about this, just accept it. And then ask yourself why USPTO examiners who examine software pretend that the world didn’t exist until 1980.

  45. Ned Heller,

    Please continue reading 35 USC Section 103 to the part of:
    Patentability shall not be negatived by the manner in which the invention was made.

    The issue is not that anyone can program, no matter what anyone says. Anyone can titrate. Anyone can perform any manual step of any art – all such steps assume the same equal status, no matter what anyone says. It is not the step “of programming” wherein lay the invention. The better question is “programming to do what?”

    As you indicate, “recognition” of a problem can be “the invention.” Lambasting any particular art is the work for the feeble minded.

    But then again, this is a mere comment section of a blog. Do you really expect more?

  46. Mooney explained: I think he conflates the skill needed to program a computer with whether a particular computer software invention is obvious. I don’t know whether this is what the 35 USC Section 103 says, but it certainly is what the Supreme Court said in the Greenwood case: that the work of one of ordinary skill was not patentable.

    Today, programming is routine. Even kids can program. In the old days, even kids could repair cars, or any mechanical apparatus around the home. The Supremes believed at the time of Greenwood that any mechanical invention that was well within the ordinary skill to be non patentable as a matter of law. Mooney holds that view today about software.

    But is this what obviousness is all about? I admit I still today do not fully understand just how one can say that so-and so combination is within the ordinary skill of a programmer, when the real issue to me is whether there was a known problem to be solved. As I suggested before, the “recognition” of a problem could be “the invention” even if the implementation would be routine once the problem was recognized.

  47. By your logic, driving a car requires a higher level of skill than software. Same for employing an oven to bake cookies. How old were you when you were allowed to do that? Don’t you think that the lack of those tyoes of molecular biology labs in middle school has more to do with safety and expense than skill? I mean, it’s not that hard to do. It’s just tedious and expensive, and potentially dangerous due to restriction enzymes, etc.

    I think you’re just mad that “hard science” gets more respect than chemistry and biology, to the point that women are allowed to excel in those fields because it is enough like cooking and making babies to be appropriate. I mean, it’s no accident that Marie Curie was awarded the nobel prize for chemistry instead of physics. Then many years later, they finally awarded her the physics prize she actually earned. Maybe you should go back and do comp sci, since it’s so easy for you.

  48. You miss the point, as usual.

    No Sunshine, I wield the point – as usual.

    Like here – jabbing you sharply and watching you dance your foolish dance.

  49. “MM–

    Your comment was laughably self-aggrandizing.”

    Just that one??!!!!

    Keep in mind that it’s Malcolm’s life long dream to be considered one of the “serious” posters here.

  50. MM–

    Your comment was laughably self-aggrandizing.

    You suggest that cloning antigens and isolating antibodies requires a high level of skill in comparison to the writing of software.

    If you want to look thin, hang out with fat people.

    Apart from the fact that technical skill is not a requirement of a patent grant, your suggestion that your particular level of skill meets some imaginary patentability skill threshold, but that others do not, is laughable.

    Those practicing in high-energy, quantum, semiconductor, etc. physics would not consider the level of skill required for the tasks you described to be particularly great.

  51. pingDamm those softy-wofty non-grownup art fields that just hand out patents left and right.

    You miss the point, as usual.

    For the record, the decision seems reasonable. Based on the MPEP guidelines and earlier precedent, the issuance of Centocor’s patent also seems reasonable. A thoughtful Examiner might have been paying more attention to the state of the art at the time of filing in light of later developments before issuing the broad claim based on Centocor’s disclosure.

    But pingaling if anything cases like these prove my point (as if any is needed) about the profound differences between the grown-up arts and the little league arts such as “software” and “computer-implemented horseshxt”, and how patents in those arts are treated by the PTO and the Federal Circuit.

    Note that at a minimum (and even this is cast into some doubt, I’d say) one would have to prove actual reduction to practice of a novel antigen in order to obtain an antibody claim.

    Contrast with software, with nothing whatsoever is necessary to obtain a claim other than a hand-waving description of a concept that includes a couple of magic words.

    Like many other people with modest educations (or more), I wrote my first software and programmed a computer when I was around 12 years old. I didn’t isolate an antibody against an antigen that I had cloned myself until I was 25. When did you isolate your first antibody ping?

    In terms of the skill required, the differences are quite clear. The very lowest degree of skill is surely the skill needed to conceive of a software invention in terms that are concrete enough to achieve a patent. Slightly more difficult is describing that invention in a manner that will secure a patent. And a bit higher than that is actually programming the software that was conceived (this is the part that is unnecessary to obtain a patent and is often done only by the third party defendant after the patent is obtained).

    Nothing controversial here. Just like the fact that the South lost the Civil War, you can find childish people who are offended when you bring it up or who refuse to believe it. That doesn’t change the fact.

  52. Why do people post these sorts of incoherent comments? Is it for attention? Catharsis? I don’t agree or disagree… I just can’t tell if there’s any point at all being made here.

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