Patentable Subject Matter and the Supreme Court Myriad Preview

Myriad's patent claims are directed, inter alia, to several isolated human DNA molecules that represent the BRCA1 and BRCA2 genes. These gene mutations are associated with an increased risk of developing breast and/or ovarian cancer. Because women with these gene mutations are much less likely to survive into old-age, many choose to undergo extensive preventive surgery in an attempt to avoid the risk. In other words, the genetic information and testing technology is important. 

Fundamentals of Patentability: Most patentability decisions focus on either an invention's obviousness or a patent's failure to properly disclose the invention. The Myriad case looks at something more fundamental – whether isolated human DNA is, in general, the type of thing that should be patentable.

Product of Nature: In this case, all the parties agree that the claimed DNA molecules are "compositions of matter" that nominally fall within the statutory guidelines of patentable subject matter found in 35 U.S.C. § 101. The disagreement comes from the common law gloss that the Supreme Court has added to the statute. Namely, the Supreme Court has repeated stated that, regardless of the novelty of the invention, neither products of nature nor natural phenomena qualify for patenting. The big issue in this case boils down to whether the claimed molecules fall within this product of nature exception.

Human-Made Inventions: According to the Court, "human-made inventions" sit at the opposite end of the spectrum from products of nature. To be distinguishable from products of nature, a human made invention must be "markedly different" or express "distinctive" characteristics from what is found in nature.

Patenting Isolated cDNA: Myriad's patent also claim cDNA molecules that are synthesized in the lab using the naturally occurring enzymes reverse transcriptase and DNA polymerase.  cDNA differs from native DNA in that the cDNA typically (and in this case) represents only the information for a single gene and with unnecessary (intron) information removed. Native DNA is typically part of a large single molecule (a chromosome) that includes lots of genes and lots of introns intermixed between and within gene coding. The human body has a natural process for accessing and using the particular gene when it is needed. To do this, enzymes are able to create an RNA strand that mirrors the DNA information and that removes the introns. In the human, that RNA is then used to create a protein used by the body. For Myriad, the RNA is instead transcribed back into DNA (now called cDNA because it is [c]omplementary to the RNA).

To be clear, Myriad did not claim to invent any of this process or to invent cDNA in general. Rather, Myriad invention is that it created a cDNA molecule that holds the exact same information as the naturally occurring BRCA1/BRCA2 RNA.  Certainly, cDNA is chemically different from RNA — it is preferred in the lab because it is double-stranded and typically more stable.   An additional difference here is that the claimed cDNA is isolated from the cell and the living organism so that it it can be tested and used in different ways.  

Holding: cDNA is Markedly Different from That Found in Nature: The Federal Circuit considered these arguments, but decided to take a different perspective — focusing on differences instead of similarities. In holding the claims patentable, the court reasoned that: 

  1. The claimed cDNA is a molecule that is not found in nature.
  2. The claimed cDNA is quite different from a native chromosomal DNA.
  3. Human intervention of cleaving and/or synthesizing is necessary to make the cDNA.
  4. Because the molecule is changed, it cannot be said to be merely "purified."
  5. Judge Moore goes on to explain that the cDNA sequence is "completely different than the corresponding RNA."

Insignificant Extra-Solution Modification: In a number of cases, the Supreme Court has worked to conflate the issues of patentable subject matter with issues of obviousness and novelty.  Thus, for instance, courts have repeatedly noted that insignificant extra-solution modifications of an invention cannot whitewash an otherwise unpatentable invention.   Here, potential conflation has a strong foothold because the real breakthrough at the time was discovery of the genetic sequence itself.  It took tremendous effort and ingenuity to discover that transcription map and that map was the key to their discovery as outlined in the inventors 1994 Science article.  However, in 1994 (the time of the invention) once a sequence was known, almost any trained molecular biology lab technician could manufacture the isolated cDNA with effort but without much necessary ingenuity. If the discovered map itself was unpatentable as merely information and the process to create the isolated DNA was already known, then where is the invention? This type of analysis is outside of mainstream Federal Circuit decisions, but if the Supreme Court takes the case, the interplay between what was invented and what was already known may well be an important element in to the court's discussion of patentable subject matter.  

   

   

   

285 thoughts on “Patentable Subject Matter and the Supreme Court Myriad Preview

  1. Just because SCOTUS baulked at declaring all business methods per se ineligible does not mean that all business methods are henceforth per se eligible.

    Actually, that is exactly what it does mean.

    At least to the point that any other classification of items is “per se” anything. The use of “per se” is itself “per se” problematic. Of course, ALL things, business method or otherwise must satisfy ALL legal requirements, “-ability” and “-eligibility” being separate things. By proper law, at least in the US (see comment below), ALL business methods are patent-eligible, as a “per se” category – this is the point of the 35 US 273 argument. Whether any individually claimed business method passes ALL the other tests, is of course evaluated on case-by-case basis. But that is true for ALL non-business method claims as well.

    As for what SCOTUS knew (or cared) about what Europe does, once again MaxDrei mixes SCOTUS and European law improperly – “technical” simply is not an applicable US concept, and SCOTUS decides ONLY based on applicable US law. TO do so otherwise simply is improper.

  2. MaxDrei,

    I hope you realize from your limited searching that Ned is not the right person to ask about the exception to the printed matter doctrine. His “I assume you suggest that if the information is useful that it can be patented” misses rather badly.

  3. I tried Wikipedia, and found PMD tied up with 103, substrate, Gluck and Beauregard. Makes sense to an EPO reader.

    No wonder Dennis wants 101 enquiries set aside till 103 is done. Keeps things simpler, right?

    But I’ve just read through the Lourie/Moore/Breyer reasoning again. Raises interesting philosophical points whether a claim to a molecule per se (thus delivering absolute protection for that molecule over 20 years, for ALL possible uses of it) is commensurate with the contribution to the art and whether such scope promotes or hinders the progress.

    Tough questions. I hope this case goes en banc.

  4. Sorry Ned. Don’t understand you there.

    (There are loads of other contributers I don’t understand either, but I don’t tell them that because I see no value in corresponding with them).

    But I would like to understand your point here.

    How wide-ranging is the “Printed Matter Doctrine”?

  5. AI, "claim as a whole" does not dissect and consider only one part.  It rather assesses the significance of the statutory part of the claim.   See, Bilski 14 and its discussion of the 3 prior Supreme Court cases.

  6. 6, you keep on insisting that “wholly preempt” is the critical aspect of Benson when the Supreme Court itself in Flook said that it was not. While the specific BCD algorithm disclosed and claimed in Benson may have only been usable on a general purpose digital computer, such is not true of mathematics in general. And yet the Supreme Court of Flook and in later cases continued to insist that the problem is not the specific machine on which the mathematical algorithm is calculated, but that the machine is irrelevant.

    I give you an example. Assume I have a new mathematical algorithm. I disclose 25 different machines and 25 different machine-implemented methods for calculating the algorithm. I disclose a general purpose digital computer and a particular program. I disclose an Abacus, and a series of steps. I disclose a Chinese puzzle box with certain representations that can only be used to solve this particular problem. I disclose a blackboard and chalk. I disclose a waxed tablet; and the list goes on.

    If I claim the mathematical algorithm as a process, the patent office would say that the algorithm is abstract. If I claim the 25 different machine implemented processes, I presume that the patent office would not allow any of them. But the legal basis for not allowing any of them would have nothing to do with preemption. Can you imagine how ludicrous it would be for the patent office to reject the claim to a programmed computer on the basis that it wholly preempted the mathematical algorithm when the application itself disclosed 24 other ways of calculating the algorithm with a machine?

    Your insistence, 6, that preemption by using a mathematical algorithm on a specific machine or use has anything to do with Benson, with Flook, with Diehr, while repeated with insistence, is not understood by this listener. The Supreme Court said, again, that the problem was that mathematic algorithms were in the public domain and could not be claimed by anybody. The question for the Supreme Court was not whether the use of an algorithm on a particular machine wholly preempted the algorithm, but whether the machine was relevant at all.

    Bilski is another case. Its rationale is not well understood. To me, Bilski makes no sense whatsoever.

  7. Just because SCOTUS baulked at declaring all business methods per se ineligible does not mean that all business methods are henceforth per se eligible.

    Plenty of business methods are patented in Europe. But not all that are new and useful. Rather, only those that use technical features to solve an objective problem within technology aka the useful arts. SCOTUS knew this already, before it delivered its 5:4 split. OK?

  8. “I think the Supreme Court made it clear that the claim considered as a whole has to be directed to statutory subject matter.”

    You have it backwards. First the claim has to be considered as a whole in order to determine if the claim is statutory subject matter. You don’t get to parse and dissect the claims for any reason, especially novelty. If the SCOTUS intended to use your view they had plenty of opportunity to say so in Bilski, but they did not. And Ned, can you quote the exact case, and paragraph(s) where the SCOTUS says,…

    “Is the claim considered as a whole directed to a new machine, a new process, a new article of manufacture, or new composition of matter. ”

    Or is this just your personal gloss of the case?

    It is improper to read into the SCOTUS case law what was not written. Only SCOTUS get’s to do that.

  9. New Light, thank you for writing such and eloquent, and cogent analysis of 101, especially regarding business methods. I am going to send a link to the clerk of each Justice of the Supreme Court of the United States and of course saved a copy for my own records.

  10. Thanks Al,
     
    It appears that the patent office has the "words" correct, but without any real understanding in analyzing whether the statutory subject matter in claims can be ignored for section 101 purposes. It is quite apparent that the authors of the patent office instructions to the examiner's did not fully understand the Supreme Court case law. Perhaps they were influenced by the Federal Circuit and the CCPA before them,
    because it was the Federal Circuit and CCPA cases after all, that were reversed by the Supreme Court.

    I think the Supreme Court made it clear that the claim considered as a whole has to be directed to statutory subject matter. The answer to this question is simple. Is the claim considered as a whole directed to a new machine, a new process, a new article of manufacture, or new composition of matter. In considering this question, it is critical to determine whether the statutory part of has a new utility with the addition of the nonstatutory material, or rather does it have the same utility as before such that the claim really is directed, not to the machine, process, article, or composition, but rather to the unpatentable subject matter.

     

  11. Actually 6, the topic is fascinating.  Check out recent posts by "a new light" and by MaxDrei.  One discusses the philosophy of patentable subject matter.  The other questions are fundamental approach, suggesting the European approach is preferable.  Regardless, the reason we discussed this issue is not so much as to demonstrate our knowledge of the law, but the question and to understand the substance of the law and the reasoning of the Supreme Court.

  12. Max, there is much to be said for your views, if we are writing on a blank slate I would agree with them.

    Just so I understand the EPO way of handling things well, let's replay discussed Benson.  I take it that Benson would be patentable in Europe because it was directed to a process, and it clearly solve the problem of conversion of binary coded decimal to binary in a more efficient manner.

    If it is not patentable in Europe based upon European "law," why?

  13. Um no, I’m sorry, but at times I really do not know what you are talking about. Really. You refer back to a point you made as if I should instantly understand what point it is to which you refer. I think your assumptions may at times be too much.

    On the printed matter exception, I assume you suggest that if the information is useful that it can be patented (if claimed in one of the four statutory classes). Thus, if a book describes a new medical procedure, the book containing the information is patentable because information is useful. If this general principle is not what you are talking about, please make your point in little clearer.

    Re: Pennock v. Dialogue, I was never really clear as to what it was you arguing. The case, as we all know now, stood for the proposition that a first inventor could abandon his right to a patent by placing his invention into public use or by putting it on sale prior to filing a patent application. We know this. I think your argument was that Congress could authorize extended trade secret use and still allow an inventor to obtain a patent. I demurred on this point. I think that Pennock was very clear that Congress could not do this because it would effectively extend the period of exclusive use to an indefinite time, and that was not authorized by the Constitution.

    I think I answered your points. I think I answered them time and again. Did I miss something?

  14. Ned, you literally never stop thinking about this sht do you? And you never understand it either. You come close, really close sometimes, but you never really get it. Go and read Weeds and Seeds by Chisum. Report back.

    SAVE YOURSELF SOME TIME AND TROUBLE. Let people that understand what is going on take this on until the courts spell it out for you so clearly you can’t mistake it.

  15. A New Light, excellent post. When dealing with music, with mathematics, with business methods and such, the essential question that has to be asked is whether these are within the “useful arts” within the meaning of the Constitution, for, if they are, there is no justification for denying them patent protection per se unless Congress, which has discretionary power to authorize or not authorize the patenting any subject matter within its constitutional grant of power, chooses to withhold patenting of subject matter otherwise within the constitutional definition of “useful arts.”

    So if music, mathematics or business methods can be described as processes, and I believe the Supreme Court held that at least in the case of mathematics that they could be so described as processes, there is no obvious statutory basis for denying such processes patent protection. None.

    For one, I have long argued here that mathematics should be the subject of patents. They are useful per se, and I cited the Viterbi algorithm as the most prominent that I know of. His algorithm transformed communications, allowed deep space communication, allowed the continued development of for example magnetic disk drives, and allowed for the initial development of cell phones. Viterbi was given an award by IEEE for being one the great engineers of the 20th century, but his contribution was in mathematics. What does this tell you?

    But there are larger issues at play here.

    Some have argued that one cannot patent mathematics because mathematics is used to describe laws of nature and laws of nature are in the public domain, a common resource for all mankind that none should be able to appropriate to his exclusive use. However it may be that laws of nature are described by mathematics, it does not follow that all mathematics describe laws of nature.

    So if I am right in this, the only proper way of rejecting a claim to a mathematical algorithm claimed as a process is to reject it as claiming a law of nature. If this is not in fact the case, the claim should be patentable under section 101.

    But all this presupposes, of course, that mathematics falls within the useful arts. The Supreme Court seems to believe that they do not.

    Turning to business methods, here too new business methods have utility, but the question again is whether that utility is within the useful arts. If business methods have utility within the useful arts, there is no proper way of holding a claim to a business method (process) unpatentable under section 101 – it passes the utility test and is claimed in one of the four statutory classes.

    This is why Bilski is so frustrating to me personally because it doesn’t make any sense except if one assumes that business method utility is not within the useful arts. Thus the Supreme Court seems to require some physical utility independent of business utility. It is not that business methods are within the “useful arts.” It is rather that a business utility does not disable an otherwise statutory claim from patentability.

    I think music today cannot be considered to be within the useful arts. But what about information – information that has a practical use? Consider, for example, the information such as in the present case where the presence of a gene variant in a human indicates an abnormally high susceptibility to certain forms of cancer? I think such information is clearly useful. The problem here, is that information per se does not fall within any of the four statutory classes. Thus we struggle.

    Let me observe this much, one can make, use and sell information. We see it all the time in fiction where the informant makes a “commission” for selling information useful to the recipient. But information generally cannot fall within the useful arts even though it is useful because the usefulness has to be within the “useful arts”. But information that does have a practical use within the useful arts perhaps should be considered to be the subject matter of patents provided that it is claimed in one of the four statutory classes.

  16. In the beginning God created the heaven and the earth.

    And the earth was without form, and void; and darkness was upon the face of the deep. And the Spirit of God moved upon the face of the waters.

    And God said, Let there be light: and there was light.

    And God saw the light, that it was good: and God divided the light from the darkness.

    On goes the passage, dividing and separating, providing a God-given purpose to the separations.

    Learn then, that conflation – that mixing the light and the darkness, that mixing the separate portions and purposes of the law is a bad thing.

    Common sense indeed!

  17. When you squeeze a general principle into a cabin too small, you begin to realize in short order that something is wrong with the size of the cabin.

    Which is exactly why the exception to the printed matter doctrine is critically important.

    I cannot help but notice that Ned has never acknowledged the force of law in this exception. Not once. Not ever. It is almost as if he were afraid to recognize a legal principle – one that tears his world apart just as assuredly as his view of Pennock has been rocked.

    I am certain that it was not mere oversight or duty to work or wife that drove Ned to purposefully avoid my comments and analogy on that earlier thread – I called his attention back to the point I was making so many times that such an inadvertant overlooking is just not plausible. I can only take such avoidance – both on my point and on the point of the exception – as deliberate.

    It is especially rude to pretend to want a gentlemanly debate – then to not acknowledge the clear points made in the fullness of law by those who hold views contrary to your own. It is one thing to debate what law means – it is quite another to not acknowledge points that are not up for debate that are important to the discussion. Such is not only rude, but intellectually dishonest.

    Such chafes to the degree that rudeness ensues. Ned, you reap what you sow.

  18. I find the topic of 101 immensely enlightening, and even though I think there is indeed a “nomenclature” issue here, I think there is an even larger “big picture” misunderstanding of what 101 is for.

    The problem, as I see it, is evident in the attempted use of the word “obvious.” Even the slight adjustment of “obvious per se” is not making a proper distinction for the topic of patent eligible matter.

    I think a better use of the words that shine a proper light on 101 come directly from the Constitution, and focus on the “useful arts” wording of Article 1, Section 8: “To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.”

    If one resolves back to the Constitution in regards to music or literary works, then one does not have to fumble with trying to apply “obvious” to such items. Clearly, new music cannot be thought of as obvious. Clearly, new music is very much non-obvious in the ordinary sense of the word. No one would or could rightly say that such creation is so mundane as to be characterized as “obvious.” From the raw elements of rhythm, harmony, melody, structure, form, and texture spring ever new and non-obvious combinations that delight generation after generation.

    The point in Alappat wherein the judges declare such to be beyond the patent law treatment is not a call to apply a legal equivalent to treat any such element as “old in the art” but rather to treat it as “not in the patent realm” to begin with. I find it personally offensive to treat the glory of music is such a dismissive manner.

    I think that math, pure math, and music are similar, yet different. The similarity comes from the pursuit of each not being a useful art. Each is pursued to the delight of the human mind, rather than in any type of functionality. The difference comes from when pure math is applied to a useful end. When this happens, the math is no longer merely a delight of the human mind, but has become a tool and a building block. In fact, it has become just as much a building block as carbon, hydrogen and oxygen atoms, just as much a building block as transitors (virtual or actual) and just as much a building block as nuts and bolts.

    It is easier to see applied math as a common tool, a common claim element than it is to see applied music as such.

    This is not to say that music, or rather applied music, may not one day cross the divide to become a useful art. In fact, applications of “music” in a sense do cross over. The use of acoustic theory to create white noise cancelation types of inventions, for example, surely are now recognized as patent-eligible.

    The Bilski decision has a beautiful nuance on this subject. The majority recognizes that business methods have crossed over to the useful arts. A plurality discusses the emergence of other crossovers, while another plurality would refuse to allow even business methods to have crossed over, and would rewind history. I think that the Stevens plurality lost their majority positioning on this very point and thus itself crossed over from majority to mere concurrence because it tried to force an already Congressionally recognized useful art back into a classification of non-useful art.

    The majority held that “useful arts” must take the modern day (and thus, a living meaning) view. There can be no doubt to anyone that has studied the history and development of modern business methods that such have crossed over to the patent eligible side. If one thinks of business as cold and calculated, as ultimately utilitarian, one easily sees that such belongs in the patent eligible world as opposed to the human delight of music and literature.

    I think the topic of 101 needs to move “up” the “abstract ladder” of a legal debate to the Constitution, rather than “down” the “abstract ladder” to another part of 35 USC that 101 itself refers to (the “subject to the conditions and requirements of this title” poriton). I think the difficulty, an artifically created difficulty, comes from the attempt to use section 101 as just another “condition and requirement[] of this title” instead of what I see as the true purpose of 101: the tie-in to the Constitutional mandate. It is like trying to use a hammer to turn a screw. Yes, a hammer can be used to pound a screw into something, but that is not what it is meant to do, and results in a marred, stripped thread and ultimately failed type of bond.

    If we elevate what 101 means, then we rise above the attempts to misuse that section. We rise above freezing in time what can be considered patent eligible and we allow the progress of useful arts to evolve as that “abstraction” naturally will, unconstrained by current idealogical norms. We not only allow such evolution, we embrace the disruptive unknown that will flow from man’s handiwork and we fulfill the Constitutional mandate.

    Lastly, I apologize for the length of my post; for those who may find my post too long, the points I express are most likely not to register anyway; for those who recognize the points I make, I think you will recognize and agree that the length of the post is necessary to place those thoughts in proper perspective. I do not look for full agreement with my views, but I do look to a discussion that does not twist what I say because of any fundamental disagreement of the Constitutional mandate.

  19. Ned it is when you write stuff like: “…one would consider a claim to a player piano with new music to be directed not to the player piano….” that I start to baulk. I think one should begin with the proposition that before the writer wrote the claim there was a blank white sheet of paper. Then the writer wrote, in words of his own choosing, the claim he wanted, to define his invention in his own words. If he claims a player piano, that’s what he is claiming, and NOT a piece of music.

    Invoking “as a whole” to switch his claim from a claim to a piano into a claim to a new musical composition is disrespectful to the inventor and the writer of the claim.

    And it’s pernicious too. The system should give full faith and credit to what inventors and their patent attorneys say is their invention. If they want a patent on a player piano, new because of the novel roll inside it, are they not entitled to be judged on that claim, as is? For me, the US jurisdiction is full of tweaks which leave the plain words of the claim meaning something to patent professionals which is completely different from the meaning plain to all right-thinking non patent professionals (including engineers, scientists and inventors). 35 USC 112-6 is just one example. Now you want to tell the inventor that his player piano claim is a claim to a piece of music. Excuse me! This sort of lawyer’s spiel is what brings the patent system into disrepute

    So, the task is to find an intellectually credible way to refuse that “player piano” claim. I urge the EPO way, as unassailable. That way, even the music, on a carrier, even by itself, could be patentable, if say it has an evidence-based proven therapeutic effect. We don’t do a “printed matter doctrine” (as such) in Europe (although “the presentation of information” as such, is ineligible).

    With the treatment of “useful arts” in Bilski you nearly (4:5) made it. It could not have been closer. I live in hope.

  20. When you squeeze a general principle into a cabin too small, you begin to realize in short order that something is wrong with the size of the cabin.

    The “printed matter doctrine” is a poster child for the “claimed subject matter as a whole” analysis. This doctrine rejects nominalism, which is the pith and essence of Lourie’s opinion.

  21. I'm sorry anonymous, but I do not understand how concepts of an all-powerful creator relate to patentable subject matter.  You may have had a point here, but I lost it in considering the Big Bang.

    I should also caution you that consideration of a claim as a whole involves a determination of the significance of the difference – in the case of section 101, the difference between the non statutory part of what is claimed and the statutory part; and in the case of prior art, the difference between the new part of what is claimed and the old part.  KSR is nominally directed to considerations of prior art.  It's logic may well apply equally well to section 101 analysis because all it really stands for is that we should use common sense in making these
    determinations.

    I presume, sir, that your God permits the use common sense.

  22. Thanks Al, 

    It appears that the patent office has the "words" correct, but without any real understanding in analyzing whether the statutory subject matter in claims can be ignored for section 101 purposes.  It is quite apparent that the authors of the patent office instructions to the examiner's did not fully understand the Supreme Court case law.  Perhaps they were influenced by the Federal Circuit and the CCPA before them, because it was the Federal Circuit and CCPA cases after all, that were reversed by the Supreme Court.

    I think the Supreme Court made it clear that the claim considered as a whole has to be directed to statutory subject matter.  The answer to this question is simple.  Is the claim considered as
    a whole directed to a new machine, a new process, a new article of manufacture, or new composition of matter.  In considering this question, it is critical to determine whether the statutory part of has a new utility with the addition of the nonstatutory material, or rather does it have the same utility as before such that the claim really is directed, not to the machine, process, article, or composition, but rather to the unpatentable subject matter.

  23. So if the utility is the same, then no invention?

    There goes all human creation – as humans are not God and we only work with what is already out there, and only mimic the utility already present in nature (birds fly, so no flight patents that mimic that utility, T-cells fight infection, so no biological patents that mimic that utility, and so on and so on).

    This, obviously cannot be correct.

    The obvious answer to the KSR question is that KSR is a 103 issue, and in no way is it a 101 issue. The risk of conflation is evident in Sharon’s comment. 103 issues should not be mixed with 101 issues. To throw all of the laws into one soup is to make a mockery of the laws.

  24. 6,
    I think the real reason that the Benson claim was held unpatentable was not because that the use of the claimed algorithm was limited to the computer, but because the purpose for a computer was to calculate mathematical algorithms. Changing the particular algorithm calculated is essentially like changing the role of music on a player piano. Under these circumstances, the claim considered as a whole was directed not to a machine process, but to the mathematical algorithm itself — just as one would consider a claim to a player piano with new music to be directed not to the player piano but to the music.

  25. Oh and are there any exceptions to the exception to the printed matter doctrine?

    Yes:

    Ainaey – the academic I don’t like that part of the law so I am not going to think it does not apply exception

    Meany – the huh what, I don’t understand and let me insult and denigrate anyone who does not agree with me exception

    Miney – the I follow the law that I have declared to be law through my great personal history except when I cannot twist the law to what I want so in those cases I am absolutely quiet on that law and maybe it will not really be there exception

    Mo – the I would rather sidetrack the discussion to juvenile levels of physics and completely disregard the actual real world goings on exception.

    Unfortunately* none of these exceptions to the exceptions are legally recognized.

    *unfortunate that is for anyone wanting to use these lame positions in a gentleman’s debate on the subject.

  26. The “printed matter doctrine” (as I understand it) is itself an exception to the “everything useful made my man” rule. I always thought that, whenever possible, exceptions should be construed tightly.

    But now we are discussing the exception to the exception, and some contributers want to give the exception to the exception an expansive construction. So, is that then narrowing the first order exception that is the printed matter doctrine. Cabining it, if you will? How much exactly does the printed matter doctrine exclude from patentability? Does anybody know?

    Oh and are there any exceptions to the exception to the printed matter doctrine?

  27. Look’s like someone doesn’t know what a tool is. Hmmm, what does one call one such as that? Someone help me out, it’s right on the tip of my tongue…

  28. Ned I already wrote extensively on the subject. I’m not doing it again. Maybe some day I’ll write you a book.

    ” “It should be noted that, in Benson, there was a specific end use contemplated for the algorithm — utilization of the algorithm in computer programming. See In re Chatfield, 545 F.2d 152, 161 (CCPA 1976) (Rich, J., dissenting).”

    Lulz, yeah, a “specific use” that just happened to be all uses which you could possibly use the algorithm for.

    “Flook did modify Benson to the extent ”

    I agree.

    “but it is not entirely clear why a process claim is any more or less patentable because the specific end use contemplated is the only one for which the algorithm has any practical application.”"

    It is entirely clear to anyone who understands Benson. A process claim is less (read: not) patentable if the specific end use contemplated is the only one for which the algorithm can be used. Why is that? Because to grant such a claim is in practical effect a claim to the algorithm itself. That is, there is no point in preventing people from patenting the algorithm itself if you’re just going to give them a claim that covers every single embodiment they would have got with the claim to just the algorithm itself. That is, you cannot do an end run around the judicial exception by reciting a “specific use” which is broad enough to capture all uses which you would have had a claim to with the claim which would be excepted outright to just the algorithm.

    This isn’t rocket science Ned. And if it isn’t clear to you by now it is because you’re ret arded. I’ve walked you through it 5 or 6 times now.

  29. um no, if I overlooked a point you made that you thought important, I apologize.  I at times, have to stop what I am doing here to attend to work or my wife or whatever.   I don't have time to respond to all the points raised in long posts, so I don't even try.
     
    In the future, I will pay closer attention to your posts.

  30. I wish max, I wish. If I had my own cabin then I wouldn’t live in Alexandria on the side of I-95.

    A bud of mine from hs is building his own tho.

  31. Ned:

    The Office instructs it’s Examiners that “insignificant” extra solution activity in the context of 101 means steps such as “data gathering, or outputting.”

    Data gather is the act of gathering information, and outputting means producing the result.

    When you read the claims as a whole, and in light of the specification, and find the invention is directed solely to a mental process, which legally includes pure acts of communication, mental concepts, pure math, A.K.A. abstract ideas, or a law of nature/natural phenomenon, then the mere act of gathering information prior to executing the process, or stating the outcome of the process after its complete, is considered insignificant extra- (pre or post) solution activity and does not save the claim from from being non statutory subject matter under 101.

    And just for the record, it’s not a slam dunk that Benson and Flook would be denied their patents today under the Diehr standard. They may need to rework the claims and the spec in light of Diehr and SCOTUS Bilski, but it’s entirely possible they could get pass 101.

    Especially with Bilski, paragraph 14, reaffirming Diehr as controlling precedent and in effect cabining Benson and Flook.

  32. anon, if you would simple debate issues like a gentleman, you would be welcome to any discussion.

    Ned, would that be a discussion wherein on eparty makes a point and the other rudely ignores that point?

    Not exactly sure how you define “gentleman,” but let me remind you that I only turned rude after your refusal to debate a point or even acknowledge a point that I had made.

    Seems you keep on running into this type of issue. Have you ever thought why?

  33. you know, ping, you and Lourie sound a lot like the dissent in Flook. Lourie did not want to introduce obviousness into his thinking, rejected it out of hand with any composition of matter. This is what the Flook dissent said of the Flook majority as well: that concepts of novelty and obviousness should be left to 102/103.

    But, since the Supreme Court has repeatedly upheld Flook, and has continued to look at the claim as a whole thereby focusing the attention to the fact that claims can include patent-eligible elements and still be held unpatentable under 101.

    Lourie’s opinion fails precise because he does not undertake a consideration of the claimed subject matter as a whole to determine whether it is claiming a new composition of matter or whether it is rather claiming the unpatentable genetic code.

  34. “Of course, anyone that can read realizes that Diehr most definitely changed Benson and Flook – and changed those decisions dramatically.”

    Not according to INANE, MM, IQ6, and Ned. The Three Stooges and a Shemp, of the anti patent crowd. Not sayin who is Shemp.

  35. 6, I think they did not ingore the rest of the claim. They just found that the rest of it was obvious, and that the “application” (why do you think that important?) considered as a whole was not directed to patentable invention.

    Flook did modify Benson to the extent that Benson required the algorithm to be “wholly preempted” before the claim became non statutory. In the body of the opinion, and in fn. 11, they emphasized that “whole preemption” was not important at all. What was important, by implication, is that the computer elements of the Benson claim were “insignificant,” representing no more than a specific application. The claim as a whole was not directed to a statutory process.

      FN 11, “It should be noted that, in Benson, there was a specific end use contemplated for the algorithm — utilization of the algorithm in computer programming. See In re Chatfield, 545 F.2d 152, 161 (CCPA 1976) (Rich, J., dissenting). Of course, as the Court pointed out, the formula had no other practical application; but it is not entirely clear why a process claim is any more or less patentable because the specific end use contemplated is the only one for which the algorithm has any practical application.”
  36. 6 correcting Ned on Supreme Court law..

    good point there 6. The PTO does need a few more good examiners like yourself. Keep up the good work.

    T O O L

  37. “Flook, not Diehr, originated the consideration of the claim as a whole”

    If you look at your quote it says that Flook looked at the application as a whole. Not the claims.

    “What were they talking about with this caution? ”

    The dissenting opinion which made an error in its claim construction.

    “So, what was new, if anything, in Diehr?”

    Nothing, they just didn’t like Stevens making a claim construction that left out the old and then evaluating the claim construed thus under 101. In other words, he wanted to expand the exceptions by ignoring all that was old in the claim.

    Notably, the USSC knows this is how Diehr limited the holdings in Benson and Flook.

    It isn’t really rocket science, some people just refuse to read the decisions several times through.

  38. “The “cabin effect”? There’s no talk of cabins in Bilski. The only person around here with a cabin to sell is AI, and I have no idea where he got it from.”

    NAL. That’s where he got it.

  39. Lulz,

    Oh right, the “I don’t like the law so I am going to disregard that portion” exception to the exception*

    *taken by right that IANAE is an academic and will do what he pleases anyway.

  40. anon, since you seem to disagree with many of us here, can you deign to tell us just how, in your opinion, Diehr changed Flook and Benson? Before you do so, you might consider this from Bilski:

      Flook held the invention was not a patentable “process.” The Court conceded the invention at issue, unlike the algorithm in Benson, had been limited so that it could still be freely used outside the petrochemical and oil-refining industries. 437 U. S., at 589–590. Nevertheless, Flook rejected “[t]he notion that post-solution activity, no matter how conventional or obvious in itself, can transform an unpatentable principle into a patentable process.” Id., at
      590. The Court concluded that the process at issue there was “unpatentable under §101, not because it contain[ed] a mathematical algorithm as one component, but because once that algorithm [wa]s assumed to be within the prior art, the application, considered as a whole, contain[ed] no patentable invention.” Id., at 594. As the Court later explained, Flookstands for the proposition that the prohibition against patenting abstract ideas “cannot be circumvented by attempting to limit the use of the formula to a particular technological environment” or adding “insignificant post solution activity.” Diehr, 450 U. S., at 191–192.
      Finally, in Diehr, the Court established a limitation on the principles articulated in Benson and Flook. The application in Diehr claimed a previously unknown method for “molding raw, uncured synthetic rubber into cured preci-sion products,” using a mathematical formula to complete some of its several steps by way of a computer. 450 U. S., at 177. Diehr explained that while an abstract idea, law ofnature, or mathematical formula could not be patented,“an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.” Id., at 187. Diehr emphasized the need to consider the invention as a whole, rather than “dissect[ing] the claims into old and new elements and then . . . ignor[ing] the presence of the old elements in the analysis.” Id., at 188. Finally, the Court concluded that because the claim was not “an attempt to patent amathematical formula, but rather [was] an industrial process for the molding of rubber products,” it fell within §101’s patentable subject matter. Id., at 192–193.”

    Note, that Flook, not Diehr, originated the consideration of the claim as a whole, and that Diehr cautioned against ignoring “the old elements.” What were they talking about with this caution? Not Flook, but perhaps some PTO or lower-court misunderstanding of Flook?

    Flook made it clear that mathematical algorithms when claimed as part of machines or processes could be patentable, citing cases such as the Eibel Process case. Where the claim as a whole claimed a new (machine or) process (an inventive application of the law of nature or abstract principle), Flook confirmed that such were patentable. So, what was new, if anything, in Diehr?

  41. the exception to the printed matter doctrine

    Oh right, the “printed matter that can be read by computers is different, honest” exception. Sometimes formulated as the “functional relationship to whatever unclaimed entity reads the printed matter, which we’ll pretend is the ‘substrate’ if it gets us our claims” exception.

  42. anon, if you would simple debate issues like a gentleman, you would be welcome to any discussion.

    You must do marvelously in the PTO when you disagree with an examiner. I take it, you call into question his intelligence is your amendments and interviews?

  43. Now we get to the essence, and thanks 6.

    We have had a number of folks here argue that the Supreme Court did not consider the claims in Benson to be a machine process wherein a computer was programmed to execute the BCD-binary algorithm, and that the case stood only for the proposition that a mathematical algorithm was unpatentable as a process.

    This is the “kind” of thinking that leads one to suggest that the Supreme Court would have approved the Benson claims had they only recited the programmed machine as apparatus instead of as a process. It was this kind of thinking that leads some to believe that Alappat approved the patentability of all programmed computers regardless that the Federal Circuit went out of its way to demonstrate that the claimed rasterizer did something that was new and useful physically.

    I will agree that the a claim to an old process, an old machine, an old article, or an old compositon, that varies from the new only in its information, where the information is useful, is where the fault line lies in our debate.

    I think the Supreme Court has already answered that question, particularly in Flook. But some, apparently, disagree.

  44. Seriously you peons, the answer has been already supplied and lies in the exception to the printed matter doctrine (printed matter in this case encompasing, as a group, any matter that does not belong to a patent ELIGIBLE class).

    The wanking circle-jerk you all have is pathetic.

  45. Everyone except oh, the USSC

    The USSC has already spoken on this – see Bilski.

    Others have posted the pincite.

  46. “And still, your player piano claim is probably on more solid legal footing than a medical diagnostic claim, which is more along the lines of somebody listening to the new music and deciding whether or not it’s any good”

    Exactly.

  47. “Of course, anyone that can read realizes that Diehr most definitely changed Benson and Flook – and changed those decisions dramatically.”

    Everyone except oh, the USSC and everyone else who has a brain.

  48. The player piano example helps to highlight the real issue here.

    Okay, so, is the question whether the original composer of new music should/could get a valid claim to a known music-playing machine “structured” to play the particular new music? With the qualification that it was well known that the machine was always capable of playing any music you might choose to put into it encoded in the machine-recognized format?

    To my mind, that’s not far off from taking a known mechanical device and painting it a color that nobody had ever imagined before. Sure, it’s technically novel, but all you’ve done to the (statutory) device itself is made a routine aesthetic modification that anybody who had given it a moment’s thought would have instantly known (1) how to do, and (2) would work in a predictable way.

    And still, your player piano claim is probably on more solid legal footing than a medical diagnostic claim, which is more along the lines of somebody listening to the new music and deciding whether or not it’s any good.

  49. Max and IANAE, the question is important. In my view, both Flook and Diehr, as affirmed by Bilski, require a new machine or a new process, not just the addition of unpatentable subject matter to an old process or a machine that does not result in a new machine or a new process.

    The discussions here rage on this distinction. The Feds appear to have gone the route of approving claims that do not result in a new machine, a new article, a new composition or a new process when it approve claims to diagnostic methods, for example, that differ from the prior art only in unpatentable mental steps or in the unpatentable genetic code.

    The player piano example helps to highlight the real issue here.

  50. IANAE says the work of genius, the unforgettable and inspiring new melody, is “surely” nothing more than a “trivial” workshop modification.

    What a give-away. I hereby out you, IANAE, as an EPO Examiner, and claim my reward.

  51. Consider a claim to a player piano with a roll that varied from prior rolls only in the music.

    Nobody’s going to buy a whole new player piano just to get the one song. Consider instead a player piano-readable medium containing code which, when executed by a player piano, causes a particular tune to be played.

    At least it has the advantage over a computer-readable medium that you could easily reverse-engineer the “structure” of the code from its function, provided you know enough about the player piano. But you still have the problem that you’re claiming the function instead of the structure, and you could produce the claimed functionality from any prior art roll by appropriately redesigning your player piano.

    And then we come to your question – is new music the “right kind” of novelty/invention? Probably not, even if the particular music is not taught in the art. Surely, encoding any music on a known roll for a known player piano is a trivial workshop modification, for purely aesthetic purposes no less, even absent a specific teaching in the art.

    Now, if you could somehow code a roll that makes the piano do something fundamentally different from playing music, that’d be impressive. But you’d have to positively recite the piano.

  52. At the EPO, Ned, it falls (with 100% certainty) at the 103 hurdle.

    In the USA, Ned, I have no idea, despite your quote, high up above, that examination whether new music is “obvious” is an impossible job for the USPTO, and despite its nevertheless routinely examining design patent applications for “obviousness”.

  53. Consider a claim to a player piano with a roll that varied from prior rolls only in the music. Does one consider this claim to be a claim to a player piano and therefor statutory under 101, and then allow the claim because the music could not be found in the prior art, or do we treat the claim as an attempt to patent the music with the player piano being considered “insigificant?”

  54. Crikey, IANAE, I had not seen the parallel till you pointed it out. As you say, Mac allowed himself to be overly swayed by his three authorities. Indeed, that was the tragedy.

    Don’t worry about Topiary AI. The Scottish police just took him into custody, and I think he is not yet free to move around on bail.

  55. Yes, Eileen,

    Reading is dangerous because you might learn something, something that would force you to abandon beliefs based on feelings.

    Better not to read, is it not?

  56. Macbeth expressed himself to be cabined, cribbed, confined (by events).

    Mac went crazy at the end, didn’t he? And all his predictions based on the words of three authorities came true, but they were his undoing. I remember that much, at least.

    If AI is feeling cabined, perhaps he should be on the lookout for ambulatory topiaries.

  57. Macbeth expressed himself to be cabined, cribbed, confined (by events). It would appear to me that AI is a Shakespeare nut, and IANAE is not. BTW, are there still some people who live in little log cabins, deep in the woods, for whom the word “cabin” holds a special resonance? 6?

  58. Interesting way to phrase the cabin effect:

    The “cabin effect”? There’s no talk of cabins in Bilski. The only person around here with a cabin to sell is AI, and I have no idea where he got it from.

    Of course, anyone that can read realizes that Diehr most definitely changed Benson and Flook – and changed those decisions dramatically.

    Of course, anyone that can read realizes that Benson and Flook would still have their claims rejected under 101 today (it’s the law), and everything else is dicta.

    The differences between Diehr’s claims and the Benson/Flook claims are so striking that it’s hard to believe the three are ever cited in the same sentence at all.

  59. Interesting way to phrase the cabin effect:

    you’ll find that Benson and Flook are still very much good law, with all the authority of Diehr.

    Almost makes it sound that Diehr did not change Benson and Flook at all.

    Almost.

    But not quite.

    Of course, anyone that can read realizes that Diehr most definitely changed Benson and Flook – and changed those decisions dramatically.

  60. Reading that diretribe, with relish, something springs to mind about moats and ayes. From the bible, as I recall, or weight, was it Shakespeare? Where is Michael Thomas when one needs him.

  61. no dam dissection,,,PERIOD!

    Unless, for example, you need to dissect Bilski to get where you want to go.

    Taking Bilski as a whole, you’ll find that Benson and Flook are still very much good law, with all the authority of Diehr. And if you actually read Benson and Flook, you’ll find that Diehr doesn’t limit their actual holdings very much, if at all.

    But more importantly, you’ll notice (if you read more than one paragraph) that Bilski is a case in which the applicant was denied his patent, and it is therefore good authority for denying similar claims to others, whatever else you may make of it.

    Other than that, Bilski really doesn’t say much at all. They could have saved a lot of time by letting Rader write the decision.

  62. There is no wonder that sockpuppet theorists run rampant.

    A liar always believes that everyone else always lies.

    The bias and unwillingness to accept what the law actually says leads to such perversions of repeated suggestions to ignore parts of claims, to embrace conflation when it should be disdained and to mouth the words “as a whole” while not understanding what that means and doing the opposite because of the conflation of the law of 103 and the law of 101 – in direct disobediance of !!! BILKSI 14 !!!.

    To enjoin this radicalness, this disbelief of what the law actually is, the guilty must be made to understand the ascendancy of Diehr. Diehr is no merely clarification and strengthening of Benson and Flook – Diehr rips the heart out of those earlier decisions.

    Not so clever terms like Diehrbots only serve as a source of pride to those who truly understand what the Supremes have said, how the Supremes have carefully worked to undo the false and venomous antipatent leanings of Benson. The words of Diehr have culminated in Bilski. Not, as Ned would have us believe the words of Benson. It is Diehr that controls. !!! BILSKI 14 !!! The Supremes have spoken. Do not ignore what has been said.

    Ned Heller, you have let the end state of what you want blind you to the actual words and meaning of the Supreme Law as given in Diehr and confirmed in Bilski. You seek to dismiss the importance just as suredly as Malcolm, only not as directly. Your snakelike whispering has not gone unnoticed. The cabinning of Benson and Flook was no mere clarification – it was the closest thing to outright reversal without using those words because it cabinned the heart of the early decisions and went the opposite way. You must ask yourself why the defeat of Malcolm was so thorough when Bilski came out, why Malcolm is so bitter over what the law says, and it was so because his illegitimate parsing under 101 was officially legally destroyed. You seek to do by conflation with 103 the exact same thing even though you mouth “as a whole.” Go back and read Bilski. Go back and read Diehr. Eliminate Benson. Eliminate Flook.

    Dennis Crouch, your attempt to subvert the clear meaning also has not gone unnoticed. Your paper wishes to confuse the 101 analysis by trying to say that analysis is too difficult to make and that no analysis should be done. You actively advocate the conflation that would then undermine the clear voice that has been given to 101. The only “difficulty” in 101 is for those who wish to use 101 improperly, now that the clear voice has been made manifest in !!! Bilski 14 !!!. There is no need to subvert and make difficult the notion that 101 is a wide gate. Kappos has already understood this and given directions that 101 is to be used sparingly and only for those claims so egregious and so clearly failing the teachings of the applied Diehr test. It is only dificult to those who do not want particular areas to be covered by patents. It is false to proclaim 101 as difficult and then to proclaim that conflation is good and that patentability doctrines overlap anyway. It is only in this type of direct muddling that the pre-Diehr portions of Benson and Flook can be attempted to be resurrected.

    No wonder the trio of Crouch/Mooney/Heller are blind to the true meaning – they want a desired end state and thus are only too willing to perversely ignore outright the law or obfuscate and conflate the law to support their position. When faced with the real truth, arguing in circles and accusations of being others is the only comeback. They would advocate running from the truth. They would advocate directly confalting the law. It is their only way to not accepting the direct and uncomplicated direction and welcoming that is 101.

    Embrace the truth: 101 is a gateway, a welcoming matt. It is not the law of “new.” It is not the law of “obvious.” There is no reason to force 103 into 101, other than to try to pervert what patents cover because of a belief structure that at its core irrationally wants to exclude certain fruits of the labors of man.

    !!! Bilski 14 !!!

  63. Agreed. Lourie framed the supreme court test incorrectly. He stopped when he found that cDNA was man made and chemically different from wild DNA. In this, he elevates form over substance, because the utility of cDNA is in the genetic code. That is the same.

  64. Hard, it is you insistence that obviousness has no place in 101 law that is way off base. It is your insistence that if one speaks of obviousness that one is speaking only of 103 that is wildly wrong.

  65. Anon, you really do not know what you are talking about. You make distinctions when there are none. You substitute sarcasm for discussion. If you are not ping, you are his clone.

  66. Dennis wrote: “If the discovered map itself was unpatentable as merely information and the process to create the isolated DNA was already known, then where is the invention?”

    In a new use of a known process or a combination of known processes, machines, or materials.

    Please see 35 USC 100(b)

    This is why at 101 it does not matter if parts of the claim are old or the entire process is old . Deal with that at 101 if you can.

    Also remember that Deihr cabined Flook and Benson and we can no longer look to either Benson or Flook in isolation when applying 101 law. This fact is established in paragraph 14 of Bilski SCOTUS.

    These cases must be viewed thru the lens of Diehr. Which means take the claims as a whole and no dam dissection,,,PERIOD!

  67. the Supreme Court itself interpreted Benson the way I did.

    Most definitely not – the Supremes did not repeatedly claim that the Benson claim was a claim to a programmed computer – the claim rejected in Benson was to a method. The fact that the shift register was vastly overlooked in the Benson analysis only goes to show how far off your view of the case is from reality, how far off your own view of your arguments are from anything remotely recognizable to the position actually taken by the Supreme Court (wrong as that position was).

  68. Rather than play guessing games as to whom I may or may not be, you would be better served to actually draft a cognizant question that you want some substantive answer to.

    As is, you do not address the fact that you have simpy confused 103 and 101 and you have not provided any type of response to my post – neither substantive nor sarcastic – basicly all you have is a non-answer to a very damming criticism that you do not appear to know the difference between 101 and 103.

    Do you even have a clue as to how lost you are?

  69. Kubin, the claim does not have to be directed per se to that which is in the public domain.  It can nominally be directed to patentable subject matter.  But if the differences between the claimed subject matter and the public domain subject matter encompassed by the claim, when taken as a whole, are insignficant, the claim is directed to the public domain subject matter and is unpatentable.

    Now, another way of saying this that clearly invokes the familiar test we see in the
    context of prior art, is obviousness.  But obviousness is not only invoked in the context of prior art, but also with respect to 101, in interferences with respect to claimed subject matter not patentable distinct, and also obvious-type double patenting.  Obviousness analysis is not limited to just prior art.

    Now go read Parker v. Flook and insignificant post-solution activity.  How did the Supreme Court describe it?  Yes, that's right.  They used that term of art.  Now, just let's see what that might be.  Ah, yes, there it is.  How did they describe "insignificant?"

    "Obvious."

    So when I say the claim to cDNA and isolated DNA is obvious over the wild DNA, am I speaking about 103 obviousness or about 101 obviousness?  You decide.

    Just a note, Sweet would acknowledge that isolated DNA and cDNA are man made.  But that is also true of the programmed computer claimed in Benson.  It would also be true of a player piano or a CD ROM with new music, or a book with new words, or a cup with a new label and so on.  All are man made.  All claim subject matter that differs from the prior art only in terms of subject matter that is not patentable.  Such subject matter, taken as a whole, is patentable only if the claimed subject matter
    provides a substantial new utility.  See. L. Hand in Parke-Davis, and Diamond v. C., Flook, Diehr and Bilski.

    Now Sweet would say that the claimed DNA's utility lies in the genetic code.  I think he is right.  If so, this is not different from the wild DNA.  It is the same, rendering the claim unpatentable under 101.

     

  70. How does KSR fit in with this? Where is the unexpected and non-obvious result? There is none!!!

    It is entirely predictable that RNA will create cDNA which will reflect the cancer genes. The genes aren’t inventive, it’s straight-forward hard work leading to a predictable result.

    The only difference I can see is that judges can understand braking systems (like KSR) but can’t understand straight-forward biotech experiments.

  71. Alappat, Flook, Diehr, Bilski, Parke-Davis…

    None of those terms or cases mean the same as “obvious per se.”

    Give me a proper legal citation to this holding of law that holds up your house of cards.

    I do not care for your made-up beliefs – those will not suffice.

  72. NWPA, the PTO may have conducted point of novelty analysis, but Flook did not. The Flook court noted that the use of laws of nature and mathematical algorithms were approved in prior cases when claimed as part of otherwise patentable processes or machine, citing for example, the Eibel process case. The court advised that one must determine what was being claimed in substance, the unpatentable subject matter or rather the patentable subject matter. The caution was not to fall into the trap of formalism, where form trumped substance.

    If a claim is directed to the unpatentable subject matter regardless of form, the claim as a whole was unpatentable. That is what Flook taught us.

    Thus a patent on a cup having new words, a piano player with new music, a programmed computer with a new mathematical algorithm, were directed not to the cup, not to the piano player and not to the computer, but rather to the unpatentable subject matter: the words, the music or the mathematical algorithm.

    Why?

    I think the cases teach us that such claims are directed to the unpatentable subject matter because they did not produce any new technical effect, any new utility, or anything of that ilk. They were nominally new machines, processes or articles of manufacture. They were very non obvious over the prior art. But they nevertheless were still unpatentable under Section 101.

  73. anon, obviousness over the prior art is a determination of the significance of the differences between the claimed subject matter and the prior art. Do you dispute this?

    Now, if one is determining patentable subject matter based on a claim as a whole, what are we doing, in point of fact?

    You are quick to critize, anon. But you, in you ping guise, do not do answers. I will therefor assume you will not provide a substantive response to this post, but only some sarcastic remark.

  74. curious, the Supreme Court has always maintained it insistence that the claims not cover the independent inventions of others, while creating the equitable doctrine of equivalents to prevent a fraud on the patent. Thus, to determine infringement by equivalents, one must determine that the infringer was using essence of the teaching of the patent while avoiding nominal limitations. See, Graver Tank for more.

    There is a current debate in the Federal Circuit about whether equivalents can cover patented variations. They try to avoid a per se rule, here. But the patent on the variation should, I think, be evidence of lack of equivalence, if not conclusive evidence.

  75. anon, why were claims in Benson deemed by the Supreme Court to be, in point of fact, directed to the mathematical algorithms? They were nominally directed to a programmed computer. Every subsequent Supreme Court case on this topic treats the Benson claims as directed to the mathematical algorithm because the recital of the computer did not change the substance of what was being claimed.

    Flook noted that the use of laws of nature and mathematical algorithms in practical applications was well known to be patent-eligible, citing cases such as the Eibel Process Case. But, they cautioned that the present of post-solution activity was not deemed significant because it was conventional and obvious, and essentially elevated form over substance. Now one can see why the recital of the computer in Benson was deemed insignificant. It did not change the essence of what was being patented — the algorithm.

    Diehr did no more than confirm Flook’s observation that when the claim considered as a whole is directed to a otherwise patentable process, the presence of a mathematical algorithm does not remove it from patentablity.

    What we learn from these cases is the nominal nature of the claim being within the four classes is not sufficient if the claim, considered as a whole, is directed, not to patentable subject matter, but to unpatentable subject matter.

    Lourie’s opinion is about the nominality. He demonstrates that isolated and cDNA are man made and then stops his analysis. He needs to go further to determine whether such claims are directed to compositions that have marketed different utility from that found in nature or rather are directed to compositions, albeit, man made, that have the same utility?

    Sweet’s opinion got to the essence. The utility of the isolated DNA or cDNA is in the genetic code. That code is the very thing that cannot be patented.

    Lourie disparaged Sweet’s analysis in one critical sentence. It reads,

      We disagree, as it is the distinctive nature of DNA molecules as isolated compositions of matter that determines their patent eligibility rather than their physiological use or benefit.

    If anything, the Supreme Court cases suggest that nominality is not sufficient and Lourie, even if he is ultimately sustained by the Supreme Court, is wrong in his analysis.

  76. How would that case come out in today’s law with the doctrine of equivalence (assuming no amendments during prosecution)?

  77. Reiner, O’Reilly v. Morse confirmed the claims to the code; but disallowed claims to the use of EM to communicate over any distance. Morse had disclosed the repeater. That is how he got signals from one “zone” to the next, before the signal from a battery died and was unable to move the dot-dash marker. The Supreme Court believed the claims had to be limited to the means and methods disclosed lest they cover the independent future inventions of others that accomplished the same result but did not partake of anything that Morse had actually invented.

  78. Try again – read and understand the law – get your pet Ned to provide the case cites and legal understaning.

    My question wasn’t “did a judge say it?”

    My question was “how is this anything other than a completely arbitrary and meaningless distinction made by somebody who was groping in the dark for a way to make software per se patentable?”

  79. Try again – read and understand the law – get your pet Ned to provide the case cites and legal understaning.

    Boy, your pontification doesn’t go as far as it used to.

    Thanks for small favors – at least you didn’t try to pass yourself off as an attorney this time.

  80. “Functionally related”

    Because a computer can read and follow instructions on a disk in a way it can’t read and follow instructions on a sheet of paper, right?

    If only somebody could invent a way for computers to optically recognize characters printed on paper. Or even parse a series of holes in a sheet of paper.

    Boy, a Shilling doesn’t go as far as it used to.

  81. “Functionally related”

    Seriously – case law on the exceptions to the written matter doctrine have already been brought up on this thread (and many many others like this) – Logical: yes. Persuasive: I woouldn’t try bothering to persuade someone who refuses to be persuaded by reason. One of these two aren’t bad – especially given a third and infinitely more important answer: It’s the law.

    Back to the tower with you IANAE.

  82. “6: it occurs to me that you are supposing that, once the new and cute tax program on the disc has got over the eligibility hurdle, it is plane sailing through to issue for that subject matter. Not at the EPO. For at the EPO the obviousness issue is also confined to technology. Does the tax program on a disc solve some problem in technology? No. Then it fails the EPO’S 103 hurdle.”

    Nah I know about your other tests, and I applaud them, but they should be the backstop, not the “forestop”.

    “After a while, one can really warm to the EPO’s approach to these matters. But meanwhile, do me a favour will you? Point me to published articles and learned papers which take the EPO approach apart, and rubbish it persuasively. There are some English patent judges who would be very grateful if you could do them that favour.”

    I have no doubt that you can. Again, this is how corruption works.

    As to “learned papers” I doubt if there are any. The people who are “learned” and write “learned papers” are the ones trying to corrupt the system.

    Although I will note that, as with the Bilski approach, I don’t mind the EPO approach as badly as some other proposals. In other words, it isn’t good, but it sure isn’t the worst thing you could have.

  83. I intended it to be rhetorical, but I’d love to hear from anybody who disagrees and can give me a logical and persuasive answer.

  84. “6: many English patent judges think the EPO is crazy, with this way of thinking. But they are coming round to it gradually.”

    Coercion eh? A bit of “wear down the judges” perhaps? Just keep hitting them over the head with nonsense until they can’t remember what they were even thinking about at the beginning?

    I believe it. There’s nobody there to speak sense into their ear, just a bunch of lawltards spouting nonsense.

    This is how corruption works Max. I should know.

  85. In such case, the particular musical composition will define an arrangement of minute pits in the surface of the compact disc material, and therefore will define its specific structure.

    How is this different in a legally significant way from a particular literary composition defining a specific structural arrangement of thin strips of graphite on the surface of a sheet of wood pulp? Or, indeed, an arrangement of dye molecules on the surface of a coffee mug?

  86. Music in Alappat.  "Insignificance" in Flook, Diehr, Bilski.  Marketly different utility, Learned Hand in Parke-Davis.
     
    Why did the Supreme Court think the claims in Benson were directed to mathematics?  They were nominally directed to a programmed computer?
     
    There can be differences between the claimed subject matter and the unpatentable subject matter, but the claim as a whole must be directed to patentable subject matter and not to the unpatentable subject matter.  The claim as a whole must be doing something "marketed different" in terms of its utility.  New music is different, but not different in the right way.  The new number, not tied to any use, provides no new
    utililty.
     
    Sweet thought the utility of isolated DNA and cDNA to be the same as the wild DNA.  This case, if not over, will turn on that difference, not whether it is made by man.

  87. I agree that cert may well be denied on the composition-based 101 issue.

    I think the correct outcome was achieved at the CAFC, and that the SupCt has bigger fish to fry.

    But I could see an en banc review, however I think it would achieve the same outcome.

  88. Diehr merely clarified Flook and Benson.

    Your understanding of “merely” is woefully inadequate.

  89. There is no other interpretation.

    WRONG – if htere was no other, then the entire triology of cases makes no sense and Diehr would not have been decided the way it was and Bilski would not have made this distinction.

    You are either closing your eyes to this because you do not want to understand what the law means or you actually just do not understand what the law means.

    Either way, you are in the wrong profession.

  90. If the differences between the claim subject matter and the subject matter in the public domain are insignificant, the subject matter is unpatentable. It is unpatentable under 101

    If you believe this, then you are a lost cause. You have described the 103 test – NOT the 101 test.

  91. True Mr Bakels, the EPO does take care to tell us whether it is objecting under Article 52 EPC or Article 53 EPC. And so?

    I Googled you. Are you today a member of the Pirate Party? Are you a Member of Parliament too?

  92. Mr Bakels, is it that you do understand the difference between patent-eligibility and patentability, and are being deliberately obfuscatory, or is it that you don’t understand the difference? Getting over 101 (or Art 52) does NOT render something “patentable”. We agree on that, do we not?

    Readers, the thing to watch for, when debating 101/103 is technical character/technical effect. You can give a business method technical character, and so render it eligible, by claiming it implemented by computer. But that won’t be enough to render it patentable. Right, Mr Bakels?

  93. Let’s now discuss whether breast cancer gene tests are “technical”!

    The EPC makes a fine distinction between matter that is excluded because it is not considered an invention (patentable subject-matter, in US terminology) (art. 52 EPC), and matter that is considered an invention, but still is not deemed patentable (art. 53 EPC).

    In the latter category are medical methods practitioned by doctors (including veterinaries). This distinctin suggests that teh former category is excluded because it does not fit in the system of patent law, while the later category does so, but still is excluded.

    Patens may be seen als a means to corerct market failure. In fields where access to inventions is essential for ethical reasons, like in medicine, other means can be considered to remedy market failure. No, I am not necessarily talking about subsidies. A government controlled pricing policy could be sufficient.

  94. I am aware that the protection from copyright has a different nature than the protection from a patent. Still, I wonder what the effect would be of an invention patent for an (old) CD with new music on it. I guess nobody else would be allowed to manufacture a CD with that particular piece of music on it without consent of the patentee. Is that result very different from the result of copyright? Well, it is actually narrower: this imaginary patent would not prevent copies to be made on other media, I guess, while copyright does so.

    Why is this relevant at all? Because this iaginary case suggests that a breakdown of an application into novel and non-novel features is appropriate. Like Diehr said: conceivably novel inventions do not have a single new feature! That is, if you check all features individually. The combination to features is the invention.

    A similar misconception often mentioned is that a “whole contents approach” simply requires the patent agent to quote some patentable subject-matter (in Europe: something technical, like a printer for a computer applications) to “make” the invention patentable. The mistake: only features may be quoted that are needed to accomplish the result claimed in the application.

    Incidentally, there is a fine literature (on both sides of the Atlantic) about *wordings* that apparently make the difference between patentable and non-patentable subject-matter.

    While the purport of this complaint basically is that words can change non-patentable subject-matter into patentable subject-matter, also the opposite has occurred, when the a German court rejected an application for a patent for a payment system – because it was deemed a non-technical business method. On appeal, this decision was reversed, due to the “technical” security features of the communication network being used.

  95. anon, but 101 analysis does include a “significance” test. The claimed subject matter can literally be within the four classes but still be unpatentable. This is the lessen of Benson and Flook. It has been maintained through Bilski.

    What is “insignificance.” If the differences between the claim subject matter and the subject matter in the public domain are insignificant, the subject matter is unpatentable. It is unpatentable under 101 if the “patentable” aspects of the claim are insignificant, old, and the claim as a whole has no new utility.

  96. Hard, the Supreme Court itself interpreted Benson the way I did. They said the claim in Benson was to the mathematics. They were viewing the subject matter of the claim as a whole. There is no other interpretation.

    The whole notion of “insignificance” admits that the claim can literally not be directed to the unpatentable subject matter, just as a claim can not be literally directed to the prior art. But the analysis is the same. If the differences are “insigificant” the differences are immaterial.

    I think you have a nomenclature problem.

  97. Not German, not EPO, not academic, just a humble coalface worker, with US corporate applicants amonst his clients.

    You write: “The theory to distinguish patentable from non-patentable subject-matter just has not sufficiently been developed.” which begs the question what you mean by “sufficiently”.

    With the 24 Technical Boards of Appeal of the EPO pumping out well over a thousand decisions per year, on patentability and patent-eligibility, and with none being a Binding Precedent over any of the others, the EPO has by now built up a corpus of law which allows ordinary coal face workers like me to give their clients ever more confident advice what in the EPO is sustainable and what is untenable. Is that still not “sufficient”?

    I know. Academics and judges don’t like it. They used to lay down the law. Now the EPO does it instead. Some rather bruised ego’s around, I fancy.

  98. The opinion of “the UK patent profession” is perhaps not very relevant

    I would suggest that “relevancy” needs to be aligned with which body of law you are talking about.

    There is no universal law on patent-eligible subject matter.

    If we are going to be “relevant,” we must be clear as to whose law we are discussing. We must not make the mistake of pre-assuming that eligible subject matter is the same everywhere.

  99. The problem is that Flook was a bit incomplete. Diehr clarified that if the subject matter taken as a whole was directed to patentable subject matter, it was patentable. But what does this mean in fact? It means that the claimed subject matter when viewed as a whole must “do” something new, something improved or the like. If it merely does what was done before with no new technical effect, it is, considered as a whole, directed to the non statutory subject matter.

    In the case of the player piano with new music, the claim is directed to the new music.

  100. Is a man-made piece of man patentable under 101?

    Whether that man-made item (a molecule, a finger or whatever) is “obvious” under 102 isn’t the issue.

  101. Your pseudonym suggests that you are German – then you are probably aware of the “Rauhreifkerze” case (1972, still old spelling used). In that case you also know the classical Suppenrezept (soup recipe) and Garagentor (carport) cases.

    The theory to distinguish patentable from non-patentable subject-matter just has not sufficiently been developed.

    I may refer also to Justine Pila (IIC IIC 2010, p. 906-926) who concluded that eventually patents should only be granted for physical subject-matter. Still, there is an abundance of case law that shows that this idea has been tried many times in history and invariably led to inconsistencies: either it was abandoned, or the notion of “physical” was interpreted in a sense, eh, that includes non-physical subject-matter. For instance, the “machine or transformation” test recently derived from (eventually) the 19th century Cochrane v. Deener case – despite the fact that it was often written that this case does NOT imply a physicality requirement.

  102. I was startled to read your “german writers note that the EPO interpretation violates the EPC”. I should not have been. Here in Europe, anything at a European level is a convenient punchbag and whipping boy for the deficiencies of any organ of any EU Member State. The EPO these days takes such criticisms in its stride.

    I hope England continues to be critical. Its English common law system gives it endless opportunities to pick out the weaknesses of mainland European civil law legal systems. One of those weaknesses is routinely failing to distinguish fact from opinion.

    The English are by now beginning vaguely to realise that, in today’s world, their system is open to criticism too. Good so.

  103. Thus, the only patentability issue that can properly be appealed is subject matter eligibility.

    This is key. For if even any attempt to apply different parts of the Statute (either on obviousness or obviousness per se – whatever that means) is undertaken – that result would not have force of law as such wold not address the only issue before the court.

  104. I think a personal attack is very inappropriate. I cite EPO critics who claim to have arguments and you should react using arguments.

    Unless you are an EPO employee, it is inappropriate per se to argue that you are an “EPO supporter”, which apparently implies that you are inclined not to be critical on the EPO approach. This does not help the EPO! Eventually, EPO’s arguments must be able to stand critical scrutiny, and if they don’t, constructive criticism helps.

  105. Thanks for the support. Yet the mistake presented by Ned if *very* common, at least in EPO case law. It sounds intuitively right. At first sight. But it leads to gordian knot of contradictory corollaries.

    See “Ticketmaster”, T 688/05: “… claim features which do not contribute to the definition of an “invention” .. must therefore be taken into consideration for the examination as to inventive step while at the same time not being permitted to contribute to it.”

    Those of you who read German *must* read Von Hellfeld, GRUR Int. 2008, p. 1007. It is miserable and very funny at the same time.

  106. Apart from music, we might debate the invention in which a coffee mug, old in every other respect, carries on its outer surface some new and inventive “matter” that is “readable” by the finger tips of the user, and achieves stunning commercial success. How to decide patent-eligibility of a claim that begins: Coffee mug, comprising…

    Shall we, for example, sort out what in the claim is distinct and what is indistinct?

  107. I am fully aware that UK courts nowadays arrive at results more similar to the EPO results. Still, they haven’t given up their fundamental criticism.

    The opinion of “the UK patent profession” is perhaps not very relevant. And I certainly hope they haven’t used words like “misguided”, “ignorant” and “swallow their pride”. As I noted, even german writers note that the EPO interpretation violates the EPC.

    Re “other tool to stop non-technology”: frankly, this is the wrong question. As a British court noted, the technical character test is a “restatement of the problem in more imprecise terminology”. So what else?

    Firstly, 35 USC 101 and 52 EPC deal with the properties of the application, i.e. to a test to be performed independent of the state of the art, while 54/56 EPC = 35 USC 102/103 refer to a relative test where the state of the art does matter. I guess the test that should do the work here is in the former category.

    As I said, the American “abstract ideas” exclusion is more promising. But it must be “re-invented” after “Bilski v. Kappos” that rejected the “machine or transformation” test (rightly, imho).

    There is a consistent misconception (fostered by economists) that patents serve the purpose of appropriation of any costly/useful knowledge. This basic premise must be rethought before a proper solution can be found.

  108. Reiner,

    You hint at more conflation – the 70 years after death type of protection is not the same as the type of protection afforded by patents. They are not meant to be so easily conflated. One has to do with expression, the other function.

    In fact, both protections are available on different aspects of the same creation.

    The concept of the written matter doctrine folds nicely into the conversation here (and I am surprised that no one has decided to introduce it). Of course, the well-known, even “ancient vintage” of the exceptions to the written matter doctrine must also be introduced into the discussion.

    Ned, care to do the honors…?

  109. This cite fails. Alappat is not a proper citation to the concept you are depending on.

    Please try again – “obvious per se” – and not your opinion, your feelings, your guess, your “understanding.”

    Give me a proper legal citation to this holding of law that holds up your house of cards.

  110. It is an age-old trick-question “can a CD be a novel invention under a ‘whole contents apprach’ if just the music on it is novel?” It is entirely theoretical: why would someone patent an object that is protected until 70 years after the death of the author?

    European case law shows more realistic cases of alleged inventions with aesthetic aspects. As German courts have found, generally this is no objection. Aesthetic aspects are often entangled with technical aspects. Here again the EPO has created some very confusing case law.

    For Americans: the (present) European dual adjudication system is complicated. Basically the European Patent Offices (including its boards of apepal) decides om patentability until grant, national courts decide afterwards. Only two coutries really matter in practice: Germany and the UK. German and “EPO” law are closely related, the UK fosters its own perceptions, and often the critical remarks of the British courts really make sense.

  111. Mr Bakels each to his own. Each sees what he wants to see. You are an EPO basher and I am an EPO supporter. I welcome the exchanges. Readers here can read both of us and then draw their own conclusions.

  112. Hardworking and Calling for Ned to Update His UNderstanding of Law and Stop Making the Same Mistake Over and Over Again says:

    In 101 analyis, the unpatentable subject matter is deemed old, as it should be

    Ned – this is wrong. This Stevens/Douglas monstrosity has been put to rest. Do not attempt to revive it. Stop.

  113. stop patents on inventive subject matter that just is not technology… What’s yours?

    The US already has that tool – it is called “the useful arts.”

    Of course, there is a difference between our “useful arts” and your “technology” – but that is OK, as there are plenty of differences throughout the laws that govern our respective spheres.

  114. Reiner, “point of novelty?”

    Read our statute and Graham v. John Deere. Part and parcel to every obviousness analysis is to dissect the claim into old and new and determine the significance of the differences. In 101 analyis, the unpatentable subject matter is deemed old, as it should be. Then, per Diehr, if the claim as a whole is directed to traditionally patentable subject matter is passes muster under 101. If the claim, however, is directed to the unpatentable subject matter with the stuff that would otherwise be patentable being insignificant, then the claim fails.

    Diehr merely clarified Flook and Benson.

  115. Hardworking and Trying To Correct Ned From Using the Law in a Known and Recognized (Think Diehr, Think Bilski) Manner says:

    Ned,

    This indeed is not rocket science so it amazes me to see how you keep getting it wrong.

    Just like here, you quote Benson, but neglect to note that Benson – by itself – is not good law – ESPECIALLY on this very point.

    You are misquoting law. Stop.

  116. Mr Bakels, I suppose you have not yet read recent publications by the UK patent profession, urging the UK Government and the UK courts to give up their misguided and ignorant criticism of the EPO approach on patent-eligibility, to swallow their pride, and try to see the elegance of the EPO approach (just like the Supreme Court in Germany recently realised, after 30 years of grumbling, that the EPO line on patentable novelty is the intellectually rigorous one).

    Hard, I note what you say about excluding 103 from the 101 analysis, but then you need some other tool to stop patents on inventive subject matter that just is not technology. The EPO has it with its 103 tool. What’s yours? For example, is a new screenplay or soundtrack patentable? If not, why not? If it is meaningless to ask if it is “obvious” is it just as absurd to issue a patent on it (because issue implies that it is to be considered as NOT obvious)?

  117. The Supremes use obviousness in 101 in the same way.

    This is not correct.

    Obviousness is used to judge patentabilitynot patentelibibility.

    Stop conflating.

  118. British judges and writers disagree with the EPO “technical character theory”. The EPO argument that all the items listed in art. 52(2) EPC lacks technical character is weak – wich is even admitted occasionally by the EPO. The interpretation of the “as such” proviso in art. 52(3) EPC that the particular subject-matter is still patentable if it is technical nonetheless leads to strange contradictions, and requires constructs like the “further technical effect” to avoid (further) consistencies.

    Art. 27(1) TRIPS requires patentability for all fields of technology without discrimination. The emphasis is on “all”. The EPC allegedly was adapted by using the same words – but here the word “all” is supposed to mean “only”. Which is another reason to be critical on the technical character theory.

    American courts consistently exclude “abstract ideas, natural phenomena and laws of nature”. The “abstract ideas” exclusion sounds promising. Unfortunately, all attempts for a simple interpretation rule failed so far: the FWA test in the 1980′s, the “useful concrete and tangible” test of the 1990s and the recent “machine or transformation test”.

    Perhaps the answer is the 1854 O’Reilly v. Morse decision, where the SCOTUS disallowed Morse to claim *all* applications of his code. A fine summary was given by the SCOTUS in 1966 when it said: “a patent is not a hunting licence” (Brenner v. Manson).

  119. Hard, when viewed as a whole, Benson’s claim to a machine process was deemed unpatentable under 101. The differences between a pure claim to mathematics and the claim to a programmed machine implementating the mathematical process was deemed “insignificant.” This thinking is obviousness-speak. You also see it in interferences with the term “patentably indistinct.”

    Obviousness pervades 101 just as it pervades novelty. It is part and parcel to both, and always has been.

    Now if you want to pervert the language and cabin phrases to particular statutes, you would be the one to draw distinctions where there are none.

    When the differences between the claimed subject matter and the prior art (the stuff which is in the public domain), when considered as a whole, is obvious, then the claim is to the unpatentable subject matter.

    This is not rocket science.

  120. Ah Hagbard, you seem to be saying that Applicants at the EPO have the burden of proving non-obviousness. Contrast the EPO approach with the position at the USPTO, where the Examiner has the burden of proving, by real evidence, that the claim embraces something that is “obvious”. Try doing that, when the subject matter of the claim is a brilliantly new, original, mood-enhancing, depression-curing, guitar riff. How can you even start?

    Art 52(1)EPC requires an “inventive step” before a patent “shall be granted”. Looks like the burden falls on the inventor, to reveal the presence of that thing, not on the Examiner to prove that it isn’t present.

    That said, it is Art 56 EPC which fleshes out the “inventive step” test at the EPO, reciting that if subject matter is not obvious (that guitar riff) it “shall” be “considered as involving an inventive step”. Nobody would deny that the guitar riff in question includes at least one inventive step (giving “inventive step” its broadest reasonable interpretation). So, why is it not patentable?

    The EPO would find it lacking the sort of “inventive step” contemplated by the EPC. That I would contend, is because one must always construe words in the context in which they appear. Inventive musicianship or inventive musical composition is not inventive technology.

    Intriguing, what?

  121. An approach very similar to the “conflation” of 101 and 103 is now commonplace in EPO Board of Appeal case law, where the non-obviousness requirement is interpreted used in the sense that the application should be non-obvious in a non-excluded field.

    British courts have qualified a similar approach as “not intellectually honest”, and even German writers start complaining that the European Patent Convention is not interpreted faithfully.

    Anyway, my understaning of American patent law is that the “point of novelty” approach was abandoned in 1952. In Flook something similar was attempted, but in Diehr it was rejected again.

  122. MaxDrei,

    Thanks for the introduction, as that quote is a good starting point.

    Ned,

    Let’s take each of the two issues that you appear to be lumping together in separate bites, lest we choke on the conflation.

    It is not entirely clear where you are deriving “obvious per se” from in the Alappat case, nor is it clear what you intend that phrase to mean.

    In fact, the “per se” phrase is used only twice in that case, and I think a better quote from Alappat concerning the treatment of the “per se” meaning is:

    The fact that one element of the claimed process or product is a programmed digital computer or digital electronics performing a mathematic function does not necessarily preclude patent protection for the process or product. In this way, the door remains open to the advancement of technologies by the incorporation of digital electronics. But the mere association of digital electronics or a general purpose digital computer with a newly discovered mathematic operation does not per se bring that mathematic operation within the patent law.” There is only one other use of “per se” in the Alappat case, and that use does not concern our discussion.

    Thus we see pure math is treated in a “per se” manner. Is this where you are creating your use of “per se”?

    There is a big difference though – clearly, applied math, as individual components in a claim are allowed and are not “obvious per se.” Your attempt to use the phrase to mean “automatically” does not flow from the case.

    It seems to me that you are misusing that term – using that term in an almost opposite effect – as in a color comparison, you are saying that something is so black, it is white. You appear to be bastardizing the meaning – Music, not being able to be judged under obviousness, must be all obvious.

    This view is a monstrosity, and has been noted – a perversion of legal thought. “Not able” simply does not mean “all is.” Too black is not white.

    Let’s keep the terms clear and use those terms how the law intends. Let’s expressly keep away from adding “per se” to something and thus spoil the actual meaning of the root word in the law.

    MaxDrei,

    I note that your interpretation on this concept is the proper interpretation for the US as well – even though both Ned and Malcolm are not pleased or fully comprehend that interpretation. Here, 101 is a gateway condition. I have noted on a sister thread that Ned fashions himself a student of history – thus, he should be aware of exactly this gateway intention of the 101 law. Instead, he disregards that history and seeks to rush into conflation. As his example of music indicates, he blindly pushes past any understanding that music in and of itself does not pass the gateway and attempts to dress music with the garb of obviousness, misinterpreting Alappat which clearly indicates that music cannot wear that garment.

    For an equally unappealing visual analogy, think of a morbidly obese person wearing spandex – some combinations are just not meant to happen.

  123. Not following you Ned. Sorry. You write:

    “The Supremes use obviousness in 101..”

    and I’m saying that the EPO does not “use” obviousness at all, in its analysis of patent-eligibility.

    Where am I not understanding you?

  124. Max, did I say anything different.  The Supremes use obviousness in 101 in the same way.  They just call the otherwise patentable structure, steps, insignificant when viewing the claims a  whole.  Ned

  125. “A computer program on a disc has technical character”

    Note: at the EPO, a computer program can have technical character – and thus be patentable – regardless of whether it is claimed on a disc. A computer program that doesn’t have technical character itself can pass “eligibility” by being claimed on a disc, but will then fail non-obviousness because, as Max notes, the question of non-obviousness is applicable only to technical subject matter and non-technical subject matter cannot, by (EPO) definition, be non-obvious.

  126. I’m indebted to Ned for the quote above from Alappat:

    “Because the patent law cannot examine music for “nonobviousness,” the Patent and Trademark Office could not make a showing of obviousness under Section 103″

    That may be so in adversarial USA, but not at the EPO. The EPO would say that it is here to examine non-obviousness in all fields of technology. Whether a new piece of music or literature or math is or is not “obvious” in a patent law sense is a meaningless question, not examinable.

  127. 6: it occurs to me that you are supposing that, once the new and cute tax program on the disc has got over the eligibility hurdle, it is plane sailing through to issue for that subject matter. Not at the EPO. For at the EPO the obviousness issue is also confined to technology. Does the tax program on a disc solve some problem in technology? No. Then it fails the EPO’S 103 hurdle.

    After a while, one can really warm to the EPO’s approach to these matters. But meanwhile, do me a favour will you? Point me to published articles and learned papers which take the EPO approach apart, and rubbish it persuasively. There are some English patent judges who would be very grateful if you could do them that favour.

  128. Ned, Ned, Ned, patent-eligibility is not patentability. Think of EPO patent-eligibility as a threshold test “Are we even talking here about something technological”. Only with a Yes to that question can we go on to look at patentability. We do that under the usual tests: novelty, non-obviousness, clarity, enablement over the width of the claim.

    At the EPO, the threshold eligibility test is easy to pass, except when you want a patent for a mental act or a bit of financial engineering.

    Ned your bit about inventions “communicated” to England from abroad is a novelty issue, local novelty or world-wide novelty. Nothing to do with patent-eligibility.

    6: many English patent judges think the EPO is crazy, with this way of thinking. But they are coming round to it gradually.

  129. when considered as a whole, they are obvious per se.

    If there ever was someone who thought two wrongs made a right, it would be Ned Heller.

    Butchering both “as a wholeandobvious per se” with only his shear thoughts – getting the “as a whole” completely out of context, and still not giving any context to “obvious per se,” all Ned achieves is the spinning of gibberish.

  130. The player piano with a new music role is novel, player pianos are patentable subject matter, but when considered as a whole, they are obvious per se. Ditto the CD with new music. I think that is why the courts simply declare such claims to be unpatantable without more.

    cDNA is like the player piano with a new music role. It is new. It is a manmade composition. But, it varies from the prior art only in its unpatentable content. It is obvious per se when one considers the claim as a whole.

    The discussion from Alappat is not beside the point. It merely discusses concepts so well know and of ancient vintage as to be well accepted.

  131. Hardworking and Looking forward to the Ensuing Discussion But Recognizing that Ned's Quote Really Isn't On Point To Anything In the Current Thread says:

    Ned,

    I am on the go, so cannot currently discuss at length, but your double post of the In re Alappat quote actually addresses neither position that you post under – it is neither a Supreme Court direction on “claims as a whole” nor a citation to the “obvious per se” position.

    It is an interesting discussion point on “useful arts” as well as a slam to Malcolm’s cannard of “structure, structure, structure.”

    Let’s see what develops…

  132. I disagree. I think the district court was right.

    Isolated DNA and CNA are both manmade, but per se obvious, i.e., the only novelty in the claim is obvious as a matter of law, in every case, over the pre-existing wild DNA. The claims, after all, must be considered as a whole.

  133. Broken, explain this from Alappat:

    link to digital-law-online.info

    “Consider for example the discovery or creation of music, a new song. Music of course is <31 USPQ2d 1566> not patentable subject matter; a composer cannot obtain exclusive patent rights for the original creation of a musical composition. But now suppose the new melody is recorded on a compact disc. In such case, the particular <33 F.3d 1554> musical composition will define an arrangement of minute pits in the surface of the compact disc material, and therefore will define its specific structure. SeeD. Macaulay, The Way Things Work 248-49 (Houghton Mifflin 1988). Alternatively suppose the music is recorded on the rolls of a player piano or a music box.
    Through the expedient of putting his music on known structure, can a composer now claim as his invention the structure of a compact disc or player piano roll containing the melody he discovered and obtain a patent therefor? The answer must be no. The composer admittedly has invented or discovered nothing but music. The discovery of music does not become patentable subject matter simply because there is an arbitrary claim to some structure.
    And if a claim to a compact disc or piano roll containing a newly discovered song were regarded as a “manufacture” and within Section 101 simply because of the specific physical structure of the compact disc, the “practical effect” would be the granting of a patent for a discovery in music. Where the music is new, the precise structure of the disc or roll would be novel under Section 102. Because the patent law cannot examine music for “nonobviousness,” the Patent and Trademark Office could not make a showing of obviousness under Section 103. The result would well be the award of a patent for the discovery of music. The majority’s simplistic approach of looking only to whether the claim reads on structure and ignoring the claimed invention or discovery for which a patent is sought will result in the awarding of patents for discoveries well beyond the scope of the patent law.”

  134. Kubin, of course: In re Alappat. This from that case:

    “Consider for example the discovery or creation of music, a new song. Music of course is <31 USPQ2d 1566> not patentable subject matter; a composer cannot obtain exclusive patent rights for the original creation of a musical composition. But now suppose the new melody is recorded on a compact disc. In such case, the particular <33 F.3d 1554> musical composition will define an arrangement of minute pits in the surface of the compact disc material, and therefore will define its specific structure. SeeD. Macaulay, The Way Things Work 248-49 (Houghton Mifflin 1988). Alternatively suppose the music is recorded on the rolls of a player piano or a music box.
    Through the expedient of putting his music on known structure, can a composer now claim as his invention the structure of a compact disc or player piano roll containing the melody he discovered and obtain a patent therefor? The answer must be no. The composer admittedly has invented or discovered nothing but music. The discovery of music does not become patentable subject matter simply because there is an arbitrary claim to some structure.
    And if a claim to a compact disc or piano roll containing a newly discovered song were regarded as a “manufacture” and within Section 101 simply because of the specific physical structure of the compact disc, the “practical effect” would be the granting of a patent for a discovery in music. Where the music is new, the precise structure of the disc or roll would be novel under Section 102. Because the patent law cannot examine music for “nonobviousness,” the Patent and Trademark Office could not make a showing of obviousness under Section 103. The result would well be the award of a patent for the discovery of music. The majority’s simplistic approach of looking only to whether the claim reads on structure and ignoring the claimed invention or discovery for which a patent is sought will result in the awarding of patents for discoveries well beyond the scope of the patent law.”

    link to digital-law-online.info

  135. (lowercase) max, of course I do not understand it, but you do. So help me here just a bit.

    Are you suggesting the EPO would grant patents on old compositions, known to exist in nature, to the first discoverer?

    I know we had this discussion awhile back when talking about what “discovery” meant in the constitution. The founders did not think the discovery of a new land, a product of nature or anything of that ilk was the kind of discovery they were talking about. That is akin to the English laws of “importation” where the invention may have been known outside England and the patent was granted to first to bring it to England. That importer might be the first discoverer in a sense, but he discovered something old.

  136. Ned, I’m not sure you understand the EPO’s “absolute” approach to patent-eligibility. If the subject matter of the claim has “technical character” it is over the eligibility hurdle. A computer has technical character. A molecule has technical character. A computer program on a disc has technical character. BUT: a law of nature does not, a mental act does not and an abstract idea for a business method does not.

    Recall that the European Patent Convention excludes from patent-eligibility a list of things (as such) including: programs for computers, methods for playing games or for doing business, and mental acts. In EPO shorthand, these things, as such, lack technical character. GATT-TRIPS ties patent-eligibility to a field of “technology”. Mental acts and laws of nature are not “technology” but man-made molecules are. OK?

  137. Max, I think the EPO is right in its approach. Genomic DNA is old, a product of nature and in the public domain. cDNA is a manmade manufacture, but obvious per se over genomic DNA.

    Now the PTO tends to grant patents on that which it has no prior art. Not having examples of mutations, they will tend to grant patents on mutation cDNA because 1) cDNA is manmade; and 2) there is no prior art describing it.

    But, this analysis is wrong when the claim is considered as a whole. The patent on cDNA is a patent on a per se obvious variant on something old and in the public domain. We should not be granting patents on such “inventions.” We should be patenting the “correlations” to diseases and the like in the form of patent-eligible tests. The correlation is the real discovery.

  138. Everybody in Europe thought that you had to do patent-eligibility on a “contribution” basis. Only the EPO thought otherwise. But then, the EPO has its special, tried and 30 years tested, 103 tool. Only when you do obviousness the EPO way can you avoid the contribution approach when exploring patent-eligibility.

    In case that is gobbledygook, I should say that the EPO does 101 as if the state of the art does not exist. Rather than follow a relativist approach, comaring the claim with the prior art and then deciding patent-eligibility, the EPO follows an absolute approach, under which the prior art is irrelevant to the 101 analysis.

    I know MM disapproves, but then so would any PTO guy who is not from the EPO.

    Only saying.

  139. Do you want to play now?

    Diehr sure does (and guess what – Diehr will win).

  140. “One of the games in removing inventions from 101 is to separate the invention into parts: (1) new and (2) everything that was known.”

    OMG I haven’t played that in forever! Do you want to play now?

  141. Malcolm,

    The Supreme Court has already spoken on the issue of: “Or simply ignore“.

    Claims must be taken as a whole.

    Shame on Dennis for trying to reintroduce the discredited notion that ineligible portions must be de facto prior art – that was a (thankfully short-lived) Supreme bastardization of patent law.

    Know history – learn from history.

    Conflation in law is not a good thing. seeking conflation in law (as in the Court not a good thing.

  142. One of the games in removing inventions from 101 is to separate the invention into parts: (1) new and (2) everything that was known. Then you assess 101 using only (1). Another game that the Moore’s and Stevens of the world attempt to get away with.

    Thank goodness there are still a few civilized people left in this country.

  143. The conflation between obviousness and subject matter eligibility can go at least two-ways: (a) during the obviousness analysis, consider portions of an invention that are not subject-matter eligible (like the DNA sequence itself) as part of the prior art

    Or simply ignore those portions.

    and (b) during the subject-matter eligibility analysis, do not give any weight to portions of the invention that would have been obvious once the core discovery (i.e., the DNA sequence) had been discovered.

    Or ignore those patent-eligible portions that were already in the prior art.

  144. If we go down this rabbit hole, then don’t ideas for inventions in the minds of inventors become prior art because they are abstract (and exist in nature too btw)? How then, can any reduction to practice (constructive or otherwise) by the inventor occur prior to the idea being conceived in his or her head?

    Why should non-patent eligible subject matter be considered prior art, even when it does not meet any of the criteria under 102 that Congress set forth for what is prior art?

    The line of “reasoning” required to arrive at this type of rule escapes me.

  145. I would not be suprised if the Supreme Court simply denies cert on the composition issue. There is very little that is new or interesting here.

  146. Can the Supreme Court analyze obviousness and disregard the plain words of the law (Patentability shall not be negatived by the manner in which the invention was made)?

  147. The district and appellate courts both decided the case on subject matter eligibility (101) grounds. Thus, the only patentability issue that can properly be appealed is subject matter eligibility.

    The conflation between obviousness and subject matter eligibility can go at least two-ways: (a) during the obviousness analysis, consider portions of an invention that are not subject-matter eligible (like the DNA sequence itself) as part of the prior art and (b) during the subject-matter eligibility analysis, do not give any weight to portions of the invention that would have been obvious once the core discovery (i.e., the DNA sequence) had been discovered.

  148. When a published article is amended and republished, isn’t it protocol to note that such amendments have been made?

  149. Regarding the last sentence of the post, If the Supreme Court takes up this line of reasoning will they be analyzing subject-matter eligibility or obviousness?

  150. Dennis,

    Get better soon – the number of spelling and grammar mistakes in this post is a bit frightening.

  151. “In a number of cases, the Supreme Court has worked to conflate the issues of patentable subject matter with issues of obviousness and novelty.”

    Absolutely true. You can see this “conflation” problem in the oral argument in the Bilski case. It’s pretty obvious (pardon the pun) that several of the Justices can’t understand the difference between patent-eligibility (under 35 USC 101) and patentability (under 35 USC 102 or 103).

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