Mayo v. Prometheus Guest Post: The Hot-Button Issues

By Denise W. DeFranco of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP.

The decision in Mayo v. Prometheus is sure to be a close one, perhaps even a 5-4 decision, like many other Supreme Court's decisions concerning patent eligibility under section 101 of the patent statute. The outcome of the case will probably turn on two fundamental issues about which the justices wrestled throughout the oral argument.

1) After recognizing the "hornbook law" that a law of nature is not eligible for patent protection, but that the application of a law of nature is, Justice Breyer inquired as to how much needs to be added to a claim to transform it from an unpatentable law of nature to a patent-eligible application of a law of nature. Justice Breyer and others seemed concerned that Prometheus's patent claim simply recites an "observation" of a law of nature, which may not be enough. In response, Prometheus's counsel argued that Prometheus's claims include limitations beyond the mere observation of the natural phenomenon, namely that a particular drug be administered to a patient and that the level of metabolites in the patient's bloodstream be measured. The Supreme Court's decision may ultimately turn on whether limitations like those are adequate to transform a law of nature into an application of a law of nature.

2) Many of the justices wrestled with the question of whether an analysis under section 101 of the patent statute should involve at least a "quick peek" at the issues of novelty and non-obviousness under section 102 and 103, respectively. Mayo's counsel argued that the Supreme Court took such a quick peek in the Bilski case and that such a quick peek is appropriate to provide some measure of protection to the medical community from overbroad patents. In response to an observation by Justice Kennedy that its "hard to resist the temptation to peek," the Solicitor General stated that "taking up the temptation to import a look into novelty and nonobviousness in the 101 inquiry [would] be very destabilizing." He further added that the Court in Bilski made clear that patent eligibility under section 101 is a threshold test that turns simply on "whether there is a process."

As in the Bilski case, the justices — across the board — seemed leery of the patentability of Prometheus's claim. In Bilski, though, both the U.S. Patent & Trademark Office ("PTO") and the U.S. Court of Appeals for the Federal Circuit had already concluded that the claims were patent ineligible under section 101. Here, both the PTO and the Federal Circuit found the claims patent eligible. Perhaps that difference will weigh on the minds of some of the justices as they determine whether their leeriness in fact arises not from issues of eligibility under section 101 but patentability under sections 102 and 103.

Denise W. DeFranco is a partner at Finnegan, Henderson, Farabow, Garrett & Dunner, LLP.  She has been representing companies in patent infringement litigation in both trial and appellate courts for almost two decades. She can be reached at denise.defranco@finnegan.com or 617.452.1670.

144 thoughts on “Mayo v. Prometheus Guest Post: The Hot-Button Issues

  1. WHAT YOU SHOULD HAVE DONE…Oh well. When Marcella died WHAT YOU SHOULD HAVE DONE….Oh well. When guerwood stole all my Property and gave it to Ray to disperse, and Ducher fits in there somewhere… WHAT YOU SHOULD HAVE DONE… Oh well. When Guerwood died WHAT YOU SHOULD HAVE DONE.. Oh well. So that tells me I don’t matter to any of you. Soooooo You don’t matter to me! GREEDY GREEDY.. WHEN WHAT WE COULD HAVE HAD. YOU DESTROYED MY WHOLE LIFE. MY WHOLE LIFE! YOU GET NO MORE!

  2. “accountability”

    Now that’s Rich – how exactly is anyone posting on a blog “accountable”?

    I’m sure you know this, shilly, but by “accountable” I mean “responsible for content posted under your pseudonym.” Sort of like you are responsible for holding Gene Quinn up as a model of “gentlemanly” “rational” discourse. That was actually a highly unusual (unique?) example of a comment from you expressing an opinion (even implicitly!) about any subject that wasn’t simply a vapid criticism of one of this blog generally, one of Dennis’ posts or a recitation of your list of grievances about me, Ned, IANAE, 6 or MaxDrei.

    repeating your vacuous positions ad nausem and in complete disregard for the holes that people shoot through your position

    I can’t recall or even imagine anyone who “shot a hole” through any of “my positions” ever being “disregarded” by me. I’m not saying it’s never happened (I can’t admit to reading every single comment posted here in the past five or six years) but are you suggesting that I’ve “disregarded” any alleged “holes” in (or even attempted shots at) “my position” in this thread, or with respect to Prometheus’ claims? Really?

    Because you know, shillywilly, the my position rests entirely on a non-controversial proposition (patents can’t be used to protect thoughts or prevent people from thinking new thoughts) with plenty of Supreme Court and CAFC support. From there it’s only a very very tiny but irrefutably logical step to my conclusion that [oldstep]+[newthought] claims can not be simultanousely eligible, valid and enforceable. The government said as much during oral argument and none of the Justices blinked. Even Prometheus’ counsel did not dare to question (at least not in front of the Justices!).

    Do you disagree with my italicized position, shillywill? If so, explain why. In your explanation, explain to me why a claim to “A method comprising the step of sipping a cup of coffee and thinking [novel, non-obvious thought]” could be enforced against a long-time coffee drinker who starts thinking the recited “new thought” [i.e., a literal infringer of the claim] without said enforcement amounting to an effective claim to the thought, as far as the coffee-drinker is concerned. Explain to me how that works. Explain to me how that can be allowed, legally, without creating an express exception to the non-controversial rule that you can’t protect thoughts with a patent. As we both know, such an express exception does not presently exist. Mental steps are certainly allowed in claims, but no decision has ever held that one can protect a “new thought” merely by reciting an old patent eligible step prior to the recitation of the “new thought”! And there’s a good reason for that: the issue has never been squarely presented to any court. No court has ever addressed the fact (thus far not refuted by anyone) that a claim in the form [oldstep]+[newthought], if both eligble, valid, and enforceable, would effectively removes the new thought from the public domain, at least as far as practitioners of the prior art are concerned.

    So go ahead, “shoot a hole” in “my position.” And no, shilly, stating that “nobody has ever been prevented from thinking by a patent” falls way, way short. Why? Because if that were a compelling answer then why how do you explain the fact that virtually everyone — academics, lawyers, and inventors — agrees without reservation that purely mental processes can’t be eligible, valid and enforced? Why hasn’t anyone shot a compelling hole in that position?

    repeating your vacuous positions

    They are not vacuous, shillywilly. If they were vacuous, I’d know by now. Kevin Noonan or Gene Quinn or some other industry shiller would have addressed the issue I’m raising head on. Instead, they pretend that it doesn’t exist.

  3. You’re not here for answers and you’re not here to learn anything.

    Yes, massa, we all be here to learn from you and the ever great Ned.

    Is that what you mean? Is that the type of response you are expecting?

    First, you would have to actually give answers – answers that stand up to legal rigor. Since you don’t, that avenue is rather moot.

    Second, you would have to assume (and I do mean ASS_U_ME) that what you spew IS the right answer and not merely your philosophical twist on how the patent world should be run.

    As has been pointed out many times – the only thing you actually have is table pounding. No law, no facts, just your little paper table.

    Certainly, you are not hear to listen or to learn – hmm, there we go again, another of your traits – accusing the “other side” of what you do.

    F_oolish hypocrite, so full of yourself. So transparent.

    But keep on Shilling, keep on repeating your vacuous positions ad nausem and in complete disregard for the holes that people shoot through your position. After all, you can always keep on runnning from answering those types of questions and you can always keep on putting down anyone who dares challenge your viewpoint. This is after all, the cyber playground you used to own, and if you pretend that you still own it, then, in your mind, you still do, and after all, what is in your mind is the only real thing of import.

    Are the rubber walls in your room still the same color?

  4. accountability

    Now that’s Rich – how exactly is anyone posting on a blog “accountable”?

    You?

    Ned?

    As I said, the jokes write themselves!

  5. No matter what you say, no, rather, exactly because of what you say, Malcolm, you are the biggest joke on this site. That’s saying a lot given Ned’s naked unabashed Shilling.

    Both of you are full of yourselves, both of you have an annoying habit of denying reality, but your chutzpah give you the edge over Ned.

    Congrats!

  6. MD I do not understand (still) why anybody should bother with sub-categories of element and limitation.

    Based on BB’s comment, I think the reason is to provide a lexicon for judges and other players in the system to articulate rules for finding claims eligible/ineligible or valid/invalid with greater clarity. While a valid goal, I’m pretty sure that it will not be achieved using those particular terms (“element” and “limitation”), however, given the long history of their (careless?) usage to date.

    Even a champion of the use of these terms (e.g., BB) is unable to get the point across without introducing apparent contraditions immediately. Consider:

    An element is ALWAYS either … gerunds (for process claims) acting as a the object of the transition clause, “wherein said method comprises the steps of. . .” etc.

    versus

    Internal “wherein” clauses are limitations, never elements

    I understand what BB is talking about (I think), but good luck getting your average patent lawyer hack to bother even trying to understand.

    Likewise:

    The primary purpose of limitations is distinguishing over the prior art.

    That may be the case for most “internal wherein clauses) but that’s surely also the primary purpose of claim elements in any well-drafted claim. For example, “A composition comprising structures X, Y, and Z.” Is there any “limitation” in this claim? The best bet would be the term “and”. This is headache-inducing. Or maybe that’s just the scotch from last night.

  7. I answer more questions from more commenters than any other commenter who posts here, with the possible exception of Ned.

    LOLZ – the jokes write themselves!

  8. The puirpose of a claim, under the EPC, is to define the subject matter for which protection is sought. The complementary purpose of the specification is to provide a description of that subject matter that is sufficient to enable the skilled reader to practise the invention over the ambit of the claim.

    I do not understand (still) why anybody should bother with sub-categories of element and limitation.

    Validity is to be judged relative to the claim as a whole.

    What the claim means ie what it covers, is what the skilled reader understands to be what the writer of the claim was using the words of the claim to mean (to that class of reader). A doctrine of equivalents is unnecessary to give the owner of the claim a fair scope of protection, and is unhelpful to legal certainty.

    It all seems to me so simple. Why make it unnecessarily complicated?

  9. sockie many have put questions to you that go unanswered.

    Sockie, your dishonesty and pathetic, pathological loathing for yours truly is duly noted. The only way that your statement can be construed to be remotely accurate is if the term “many” means “one or two bona fide blog trxlls” and the term “questions” is limited to backhanded insults such as “when did you stop beating your wife?” and “why do you hxte patents?”.

    In fact, as all non-trxll readers of this blog understand, I answer more questions from more commenters than any other commenter who posts here, with the possible exception of Ned.

    Let me also remind you, sockie, that for reasons that I’ve stated numerous times (and which never really needed to be stated in the first place), it’s not really in anyone’s interest to respond to jxrks like you who hide behind ever-changing pseudonyms that leave it impossible for the rest of us to hold you accountable for the inxnx bxllcrxp you spew here. As you know, it hardly matters what answers are provided to sociopaths such as yourself. You’re not here for answers and you’re not here to learn anything. You’re here to trxll and recite your script: “Any position that makes it harder for any person to obtain any patent is anti-patent and therefore must be met with a jackxss comment attacking the position and the motives of the commenter.”

  10. Again, though, your “legal argument” is ambiguous and does not hold water.

    Any time you descend into an “effectively thus” position, you are lost.

    It is quite unambiguous that you are not allowed to dissect claims for a 101 analysis.

    Yet you persist in attempting to do so (desparately, I might add).

    Please stop.

  11. Impossible to answer without a meaningful definition of the term “thought”.

    An idea, opinion or mental picture produced by thinking or occurring in the mind.

    Again, IBP, raising this as an issue seems to be a desperate attempt to NOT understand the problem. Claims that require one to think a “new thought” in order to be literally infringed but don’t recite any tranformative or otherwise non-mental, eligible acts can not be eligible, valid and enforceable. Why? Because such claims are effectively claims to the new thoughts themselves, at least as far as practitioners of the prior art are concerned.

    None of this is the least bit ambiguous.

  12. It is disingenuous for you to post that you are waiting on someone else’s answers when many have put questions to you that go unanswered.

    Do you really expect more than what you have already been given?

  13. But playing such games and posting the same crrp over and over again, and getting paid to do so, is a pretty nice gig, wouldn’t you say?

    Especially when you don’t have to be accountable for what you say, and you get to pretend that because you signed your name that somehow the crrp you spew is somehow more accountable than all the legal arguments that are on point and that none of the questions that blast holes in your endorsed positions ever have to be answered.

    Uh oh, I feel an Umbrage Game coming on…

  14. “Way to kill the conversation before it even begins. Now anything Ned has to say will amount ot pure gibberish because he has to overcome actaul case law cites”

    Ned can’t respond in an intellectually honest manner so he will use his usual fallacious arguments and evasive tactics of straw man, red herring, non sequitur, and feigning ignorance routines ( what’s a medical method? business method? abstraction? ). Followed by his signature move of accusing everyone of exactly what he is doing. And that pretty much sums up Ned Heller.

  15. Then you raise a distinction without a DIFFERENCE.

    Stop wasting everyone’s time on such foolishness.

  16. Course I do; that’s exactly what I argued above.

    But you musta’ jumped in without following the thread.

    I said: “Basically, I agree with you that the applicant is entitled to a “claim as a whole” analysis with respect to obviousness. But no other statute requires that. 101 certainly doesn’t.”

    And then AI came up with a brilliant non sequitor:
    “Diehr requires it.”

    That may be, it may not be, but it’s irrelevant to my point that there is no statutory — statutory – as in, like, statutes . . . you know, laws — requirement for a claim-as-a-whole analysis of patentability under 101, which prompted my sarcasm.

    Rhenquist employing 103 claim-as-a-whole language in Diehr doesn’t change my factual assertion. It is not at all clear that his intent was to apply claim-as-a-whole analysis to 101. When his glasses fogged up, he was liable to write all sorts of gibberish.

  17. Nothing like shooting yourself in the proverbial legal foot by starting a post asking:

    Beg pardon?? Is Diehr a statute?

    Babble – you do recognize that the force of law comes from judicial as well as legislative avenues, do you not?

  18. The primary purpose of limitations is distinguishing over the prior art.

    No.

    The primary purpose is to actually describe the invention, to set the metes and bounds of what the inventor thinks he deserves a patent for.

    Prior art is merely a secondary consideration and not a prime driver.

  19. D_amm – that’s sure to preempt Ned asking for a legal cite to support that legal theory.

    Way to kill the conversation before it even begins. Now anything Ned has to say will amount ot pure gibberish because he has to overcome actaul case law cites.

  20. TO THE MANUFACTURING SECTOR OF THE USA

    I was reading an article in Popular Mechanics. It is about Hacking. WHAT DO THEY NEED TO HACK FOR THEY HAVE EBAY.
    Hit highest priced… And bingo they make em. Look at Mermaids. Mermaid Lamps. At the bottom I see these real cool wall Lamps. So cool I look further. The Lamp 11.80 the Shipping 3 to 4 times the price. Of course that is because of trade wars I suppose! THINK AMERICA. Make them yourselves. Why can’t each one of you do what they are doing HIT HIGHEST PRICED. EBAY THE BIGGEST LITTLE SECRET WE HAVE!

  21. “Beg pardon?? Is Diehr a statute?”

    No, Babble Boy, Diehr is not a statute. And there is nothing in the 101 statute that says the claims must be taken as a whole either

    However the Diehr Court took the language in the 103 Statute and applied it to 101.

    You may ask, why didn’t they also address and then directly apply it to 102?

    The obvious answer is that Diehr was a 101 case so it was not necessary.

    However that does not mean the Court gave carte blanche to dissect claims at 102 for the purpose of denying an applicant his patent. The Court could have easily said so if that was their intention.

    In fact to dissect, ignore, or not give patentable weight, to certain steps at 102, be they novel, physical, technical or mental would run counter to the logic the Court used for not allowing such a policy for 101. ( See the Diehr Cite 12 and 13).

    There is nothing in 102 that requires such dissection steps. And as a matter of fact the Federal court has taken just that position in cases that support taking the claims as a whole when finding novelty at 102.

    ( see the cite history. )

    12 It is argued that the procedure of dissecting a claim into old and new elements is mandated by our decision in Flook which noted that a mathematical algorithm must be assumed to be within the “prior art.” It is from this language that the Government premises its argument that if everything other than the algorithm is determined to be old in the art, then the claim cannot recite statutory subject matter. The fallacy in this argument is that we did not hold in Flook that the mathematical algorithm could not be considered at all when making the §101 determination. To accept the analysis proffered by the Government would, if carried to its extreme, make all inventions unpatentable because all inventions can be reduced to underlying principles of nature which, once known, make their implementation obvious. The analysis suggested by the Government would also undermine our earlier decisions regarding the criteria to consider in determining the eligibility of a process for patent protection. See, e.g., Gottschalk v. Benson, 409 U.S. 63, 175 USPQ 673 (1973); and Cochrane v. Deener, 94 U.S. 780 (1876).

    13 Section 102 is titled “Conditions for patentability; novelty and loss of right to patent,” and provides:
    A person shall be entitled to a patent unless —
    (a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or
    (b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in the country, more than one year prior to the date of the application for patent in the United States, or
    (c) he has abandoned the invention, or
    (d) the invention was first patented or caused to be patented, or was the subject of an inventor’s certificate, by the applicant or his legal representatives or assigns in a foreign country prior to the date of the application for patent or inventor’s certificate filed more than twelve months before the filing of the application in the United States, or
    (e) the invention was described in a patent granted on an application for patent by another filed in the United States before the invention thereof by the applicant for patent, or
    (f) he did not himself invent the subject matter sought to be patented, or
    (g) before the applicant’s invention thereof the invention was made in this country by another who had not abandoned, suppressed, or concealed it. In determining priority of invention there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other.

    “In an anticipation rejection, ‘it is not enough that the prior art reference . . . includes multiple, distinct teachings that [an ordinary] artisan might somehow combine to achieve the claimed invention.’ Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008).
    Rather, the reference must ‘clearly and unequivocally disclose the claimed [invention] or direct those skilled in the art to the [invention] without any need for picking, choosing, and combining various disclosures not directly related to each other by the teachings of the cited reference.’ Id. (quoting In re Arkley, 455 F.2d 586, 587 (CCPA 1972)).  Thus, while ‘[s]uch picking and choosing may be entirely proper in the making of a 103, obviousness rejection, . . . it has no place in the making of a 102, anticipation rejection.’ Arkley, 455 F.2d at 587-88.” (see Ex Parte Zebedee et al. Appeal No. 2010-6014 (BPAI))
    The Federal Circuit in Therasense, Inc. and Abbott Laboratories v. Becton, Dickinson and Company, and Nova Biomedical (CAFC 2009) stated:
    “The requirement that the prior art elements themselves be ‘arranged as in the claim’ means that claims cannot be ‘treated . . . as mere catalogs of separate parts, in disregard of the part-to-part relationships set forth in the claims and that give the claims their meaning.’ Lindemann Maschinenfabrik GMBH v. Am. Hoist & Derrick Co., 730 F.2d 1452, 1459 (Fed. Cir. 1984). ‘[U]nless a reference discloses within the four corners of the document not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the claim, it cannot be said to prove prior invention of the thing claimed and, thus, cannot anticipate under 35 U.S.C. § 102.’ Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008).”

  22. Boy, does this topic toot my whistle, Max. I’m trying to write a book on this. Failing that a review article. Failing that a reply to your comment on PatObv.

    This is the way I figure it: An element is an elemental component of a claim. That is, it is a structure or step that is required in order to make a claim sufficiently functional to meet 101 utility requirement. The independent claim should have the bare minimum of elements required for 101 utility. The dependents may expand the number of elements, or may modify the elements of the independent, or both.

    An element is ALWAYS either 1) nouns/noun phrase (for articles, manufactures, compositions) acting as objects of the transition clause, “where said ___ comprises . . .” or 2) gerunds (for process claims)acting as a the object of the transition clause, “wherein said method comprises the steps of. . .” etc.

    Limitations are always modifiers — adjectives, adverbs, adjectival phrases, adverbial phrases, etc.. They modify the elements and they modify other limitations. The primary purpose of limitations is distinguishing over the prior art.

    Glenn Seaborg’s famous claim: “Element 95.” No limitations needed because there was no art to distinguish over. (I think it was 95)

    Internal “wherein” clauses are limitations, never elements, even if they recite structure.

    If a wheel is an element of the claim then in “. . . wherein said wheel has a rim”, “rim” is not an element, it is the subject of an adjectival phrase modifying the element “wheel”. It’s a part of a limitation.

    But if a dependent claim uses an external “wherein clause” such as “. . . wherein said wheel of Claim 1 comprises a rim” then “rim” is an element of the dependent claim. It depends on whether the rim is claimed as something essential for the utility of the invention of the claim or is claimed to distinguish over the art by modifying “wheels.”

    There is also an implicit limitation of all claims with more than one element, and that is their combination. In the old days this limitation used to be explicit: “I claim _______, comprising, in combination: . . .”

    I like the Canadian approach where an element and its limitations are isolated and considered together as a claim “feature” and it is that complete feature that is evaluated for novelty/obviousness. The US examiners often as not just look at the elements, ignore their limitations, and try to figure out where the novelty is. No wonder there’s a backlog for the BPAI.

    When you look at the case law, the judges/justices are all over the map with respect to what is an element and what is a limitation. It is comical. You’d think they’d have this basic semantic point ironed out by now. Helllllooo. It’s only been 220 years.

    Pauline seems to be the only one who is struggling to make any consistent sense out of this elements v. limitations morass. I will dedicate my book to her. Failing that, I will dedicate this reply to her.

    I’ll bet a bunch of folks pop their aneurysms over this because everybody has their own take, which they are willing to defend to the death. Usually, it’s whatever their IP prof told them in year 3.

  23. Beg pardon??

    Is Diehr a statute?

    Rhenquist’s opinion and Stevens’ dissent in Diehr were both so scrambled as to be laughable. However, Stevens was a lot closer than the gumball chief, whose appointment to the USSCt should have been revoked when Nixon turned out to be a crook. Surely the Constitution says crooks are not permitted to appoint USSCt justices.

    Also Stevens’ his history development is very useful. I keep forgetting that until I go back and read the case again. How any times, pray tell, have we read Diehr? I have molten synthetic rubber running out of my ears and if I ever run into Arrhenius in a Starbucks, I’ll throttle the dude.

    But the whole case exposed the idgit underbelly of patent jurisprudence from the BPAI upwards.

    In Diehr there was absolutely no question that the claims cited a process for transforming rubber from one form to another. You have a work piece, you have transformation of the work piece by the process. End of 101 analysis. How did this case ever get traction? Although one can’t rely on the machine/transformation test as the only test to determine 101 patentability, if a claim PASSES the test then the analysis is over and the claim is 101-compliant.

    As Stevens noted, Rhenquist scrrrewed it by saying that the point of novelty was measuring temperature INSIDE the mold, when the claims say nothing about inside and the spec mentions it only in passing. But the point Stevens missed is that in a 101 analysis who cares what’s novel? What was Stevens blathering about novelty for?

    Everybody flogs Flook, but Diehr was a far worse decision than Flook. Fortunately for Mr. Diehr the outcome was correct, even if for the wrong reason.

    Basically, the suit who wrote the Diehr claims was dense as a concrete block. Why would anyone write the Arrhenius eqn into the claim??? Classic case of a claim-drafter thinking he/she has to explain how the invention works in the claims.

    “Step d) calculating an optimal cure time using thermal data transmitted from the mold.”

    That’s all he/she had to say. Leave Arrhenius for a dependent. If he/she needed Arrhenius to distinguish the base claim over PA, he/she was dead in the water anyway. Fence post for a brain. Small fence post.

    The Babble has spoken. [The line for autographs forms to the left. The left of Renhquist, for sure.]

  24. I think this is where “sockie” is supposed to smile and point up to the scoreboard.

    (August was so long ago, wasn’t it?)

  25. I can’t imagine that Ned wants to start an argument that there is a technological Arts requirement for patents.

    Such a position would be absurd and easily defeated on its face.

    But then again he did argue that Bilski banned business methods and upheld the MOT as the sole test.

    So anything is possible with this one.

  26. His premise rests on removing ANY mental step

    Funny that you would think that when I’ve expressly said the exact opposite.

    On second thought, reading incomprehension isn’t funny.

    Keep strugglin’, sockie. Your fluffin’, strugglin’ ways are about to end and someday soon you’ll lack back at your glory(hole) days with a bitter tear in your pig eyes.

  27. Ned, there is no requirement in Research Corp that processes be limited to technology.

    It’s not a li e.

    It’s not my mere statement or opinion

    It is a fact.

    In fact, Research Corp relies on Diehrs, (DCAT )and there is no holding in Diehr for a technology requirement of any kind.

    Again,

    It’s not a li e.

    It’s not my opinion

    It’s the law.

    See the cite:

    “Although the term “process” was not added to 35 U.S.C. §101 until 1952, a process has historically enjoyed patent protection because it was considered a form of “art” as that term was used in the 1793 Act.7 In defining the nature of a patentable process, the Court stated: That a process may be patentable, irrespective of the <450 U.S. 183> particular form of the instrumentalities used, cannot be disputed. ( Diamond V Diehr, paragraphy II)

  28. claimed as such, without the recitation of any mental step<”

    Which again draws back to the questions that Malcolm refuses to answer.

    His premise rests on removing ANY mental step – but that simply is not the law.

    Gee, I wonder why he avoids answering the question (not really, becuase the answer shows plainly that his legal thinking is in the toilet).

    Talk about your sideshows….

  29. Ned if there is a functional relationship between the new mental step and the old physical step such that the physical step is modified, in truth, the physical step is not old. It is new.

    I have no idea how a mental step can “modify” a physical step, Ned, such that the physical step becomes “new”. Even if this patent-law equivalent of Yuri Geller is “real”, I don’t see any reason why a “new” physical step can not simply be claimed as such, without the recitation of any mental step.

    More importantly, Ned, whatever you are talking about I can guarantee it is a sidehow that is not relevant to the Prometheus claims or the reasons for the invalidity/ineligibility of those claims.

    (ignore the repeated comment below; formatting got effed up)

  30. if there is a functional relationship between the new mental step and the old physical step such that the physical step is modified, in truth, the physical step is not old. It is new.

    I have no idea how a mental step can “modify” a physical step, Ned, such that the physical step become “new”. Even if this patent-law equivalent of Yuri Geller is “real”, I don’t see any reason why a “new” physical step can not simply be claimed as such, without the recitation of a mental step.

    More importantly, Ned, whatever you are talking about I can guarantee it is a sidehow that is not relevant to the Prometheus claims or the reasons for the invalidity/ineligibility of those claims.

  31. Malcolm, if there is a functional relationship between the new mental step and the old physical step such that the physical step is modified, in truth, the physical step is not old. It is new.

    However, the Prometheus claims merely “use” the physical process steps as data gathering as an input to the mental step. This is a whole difference kettle of fish.

    The distinction I make here has long been recognized in the law.

  32. Something about “there is no technological arts” requirement rings to mind….

  33. Four days, is that all?

    Many have waited for answers from you for dar longer.

    Answers to far more simple questions.

  34. AI, there is a difference between “marketplace processes” (your statement) and “technology in the marketplace” (from Research Corp., not Diehr, btw).

    You KNOW the difference. Which is WHY YOU LI E.

  35. Is there a logical flaw in the proposition that a claim in the form [old step]+[new thought] is, effectively, a claim to the new thought? If so, what is the flaw? If there is no flaw, can you articulate a policy reason for granting such claims while maintaining an absolute bar against patenting claims that recite only mental processes?

    Four days later, still waiting for the great Denise W. DeFranco, the attorney who helped bring us the Bilski decision, to respond to the straightforward question above.

    Maybe someone can call her at 617.452.1670 and ask her if she is not allowed to respond to the questions due to conflicts. Or are they too hard for her? I wonder what the problem is.

  36. Yes, IANAE–and the way to give legal effect to that position is via the specific, substantial, and credible utility criteria.

  37. the funy thingis that Dennis Crouch keeps feeding the 101 articles, as if the beatings of Ned, MM and 6 are somehow going to change “this” time.

  38. NED: “But check, then, the marketplace bit. AI knows this is a li e, and yet he states it as fact, not his opinion.”

    Ned, I am talking about the DCAT.

    It’s not my opinion.

    It’s not a li e.

    Its the law.

    Here, let me explain it to you.

    The DCAT, pronounced DEE CAT, is a mnemonic device for remembering and summarizing the Diehr Concept and Application Test/Analysis. The ONLY Supreme Court sanctioned test and controlling analysis for 101 Subject Matter for the last 30 years!

    The DCAT works exactly like the Court used it in Diehr.

    1.You take the claims as a whole, including the concept.

    2. Then analyze the claim to see if there is an application to a specific industrial and/or marketplace process.

    3. If the answer is yes you pass 101!

    Its worked well for 30 years!

    Now I know there are attorneys that argue for narrowing the patent law and make no, or only inconsequential reference to Diehr, let alone the DCAT. But those attorneys are obviously arguing an anti patent agenda and it would not be of their interest to use DCAT as it would cause trouble for their case. Such is the case in Mayo. However it remains the law especially with the powerful clear and concise order by the Supreme Court in Bilski, at page 14.

    See the cite history as follows:

    ( Diehr) : It is now commonplace that an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection. See, e.g., Funk Bros. Seed <450 U.S. 188> Co. v. Kalo Co., 333 U.S. 127, 76 USPQ 280 (1948);Eibel Process Co. v. Minnesota & Ontario Paper Co., 261 U.S. 45 (1923); Cochrane v. Deener,94 U.S. 780 (1876); O’Reilly v. Morse,15 How. 62 (1853); andLe Roy v. Tatham, 14 How. 156 (1852).

    (Research Corp): Indeed, this court notes that inven- tions with specific applications or improvements to technologies in the marketplace are not likely to be so abstract that they override the statutory language and framework of the Patent Act.

    (Ultramercial): Although abstract principles are not eligible for pat- ent protection, an application of an abstract idea may well be deserving of patent protection. See Diehr, 450 U.S. at 187 (“an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection”)

    ( Bilski) Page 14 : Finally, in Diehr, the Court established a limitation on the principles articulated in Benson and Flook.

  39. 6, you, Ned and MM can all malign me all you want. But you can’t beat me on the case law or the facts. Simply calling me names and saying I am wrong does not cut it.

    Face it 6, you are really upset because I used logic to expose the fallacy and folly of your preemption theory. Notice you did not reply again after I beat you there.

    Same thing that made MM cut and run when his proposition to dissect/ignore mental steps was exposed as being illogical and without cause.

    Of course who can forget the year long debacle of Ned’s anti business method tirade arguing Bilski ruled MOT as the sole test.

    Imagine he is still reeling from being pummeled by the case law, and his fellow attorneys on that one.

    So you three can go ahead and post all the personal attacks you want. It only goes to show the intellectual weakness of your positions and that you have in effect loss the debate.

  40. No respose from Denise yet.

    I suppose I shouldn’t be surprised. If I’m not mistaken Denise and her friends represented Bilski at the Supreme Court. I don’t think she’s allowed to express a coherent thought about the issues at play here.

  41. MM: “In your opinion, is there a logical flaw in the proposition that a claim in the form [old step]+[new thought] is, effectively, a claim to the new thought?”

    Impossible to answer without a meaningful definition of the term “thought”.

    Until one is provided, the question is DOA.

  42. Perhaps when you get back Babble you can help me with the notion of a sub-claim particle, and how many distinct types of such particle exist. I had thought there was either just one type, or else an infinity of different types, but I gather that there might be just three; the “element”, the “limitation” and the very energetic Blog-boson.

    From where I am based, there is no contradiction between the notion of “dissecting” the claim to discover its substantive content, and the notion of treating it “as a whole” for the purposes of assessing whether it does or does not embrace within its ambit any subject matter that is obvious. But I gather from these threads that others don’t see it like that at all.

  43. Go on, then. If you say something remotely interesting and understandable, i’ll do my best to respond.

    You first.

    Or maybe I will respond to your nonsense, as I have done so far.

    Either way the merry go round goes round and round. The conflators will continue to try to conflate the substantive portions of the law into each other, muddying their meaning and the la-de-da What-Ev crowd will not care.

  44. Says the man who didn’t understand Ebay until he went through intensive long hand-holding…

    But in any event, JAOI you should know dam well AI doesn’t pwn anyone at anything on these boards except trolling, of which he is truly a master. He might be eligible for a minor in Making Up Things In Court Rulings, but since his musings fail even the lol test, I’m not sure if we can count those credits towards anything but the aforementioned trolling.

    IRL I imagine he is probably quite a scamster though and my hat is off to him in that respect.

  45. Alright AI, I will go 200$ 7-2 or worse for mayo on my side, 6-3 against mayo on your side, a wash if anything in between. No bet until you set up an apt. at the starbucks near the PTO and shake on it.

    I would go more but I just don’t care about this case enough.

  46. Well, Actual Inventor can be annoying and is not anyones patent expert thats for sure. But you have to admit, he pretty much owns you it when comes to the Diehr case.

  47. I have no idea what you think the point of discussion is. I was predicting what SCOTUS would do, and it seemed that maybe you thought any mention of novelty was a conflation of 101/102/103. Since we’re talking about what SCOTUS would do, it’s relevant that they discuss these statutory provisions together.

    Go on, then. If you say something remotely interesting and understandable, i’ll do my best to respond.

  48. “Basically, I agree with you that the applicant is entitled to a “claim as a whole” analysis with respect to obviousness. But no other statute requires that. 101 certainly doesn’t.”

    Diehr requires it.

  49. Hi Ned:

    I searched this thread and did not find any such comments from myself. So I presume you read another article or post by Dennis, fond a comment I made, and copy and pasted some selects words from that comment, then pasted them into this thread, in a new unrelated post, so that everything is completely out of context, and no logical argument can be made or followed by anyone, then concluded your post by calling me names notably “pugnacious snot” and by implication, a liar.

    WOW!

    This has to be the mother of all conflation and fallacious posting!

    Now if you really want to have an honest debate on the issue being discussed go to any thread where I have made a post, reply directly to my comment and I will be happy to wipe the floor with you as usual.

  50. I don’t see the 101 problem with that claim, subject to clarification/definition of a few terms, but I still think it’s kind of a silly claim to press when an apparatus claim is staring you in the face.

  51. because apparently you know of a legal principle that they do not, stated roughly as “when interpreting a first part of a statute, thou shalt not look at any other parts of the statute

    Now we are playing the misrepresentation game.

    Sweet.

    Except I never said that, did I?

    I also notice that you pull the Flook quote out of context – from the section leading up to the cabbining of Benson and Flook by Diehr.

    All of which is some mighty fine dust kicking. Shall we return tot the actual point under discussion?

  52. SteveW By your logic, SCOTUS is a conflater (maybe the C stands for Conflaters, not Court).

    Well played, Steve. The fact that the Supreme Court and the Federal Circuit must “dissect” claims (= “conflation”) so they can discuss the merits of the claims in light of the various patent statutes has been pointed out to sockie before. But sockie doesn’t “get it” or pretends not to.

  53. Ned,

    You are over reading and over reacting.

    Further, the claims as a whole aspect is NOT what you have gone on about.

    The sight is indeed clear here.

  54. Malcolm, when one says that the discovery of a new use for an old machine, article or substance has to be claimed as a process and does not justify another patent on the machine, article or composition, is his statement, which is undeniably true, a statement made under Section 100/101 or is it under 102? Clearly the issue involves a determination that everything is old but the new use.

    If 101, then how can one distinguish new uses of old processes, which is similarly listed in 100?

    I think this really is the statutory clue here. The discovery of a new use has to be claimed as a process, and does not entitle one to reclaim the old machine, the old article, the old substance or even the old process, which is what is claimed in the Prometheus claim.

  55. 101 certainly doesn’t.

    Same Babble Boy preaching about case law?

    Is this a snub at Diehr?

  56. Interesting.

    Magnetism and attraction/repulsion is the law of nature?

    So, the discovery that magnetized items tend to point North when free to rotate (and not near iron objects such as one’s sword) is not a law of nature and the first to discover it could obtain a patent on it, such as

    1. A method of determining North by placing a magnetize item in a suspension where it is free to rotate without substantial resistance?

  57. You’ve just got to love it.

    According to AI: Diehr stands for

    “The DCAT works exactly like the Court used it in Diehr.

    You take the claims as a whole, including the concept.

    Then analyze the claim to see if there is an application to a specific industrial and/or marketplace process.”

    (emphasis supplied)

    Now, when I have said exactly the same thing, and I have number and numbers of time, excluding the marketplace bit, I am accused of conflating, of dissecting, of relying on Stevens and a point of novelty test.

    AI, you’re game is revealed. You are a pugnacious snot.

    But check, then, the marketplace bit. AI knows this is a lie, and yet he states it as fact, not his opinion.

    And yet when I state an opinion, he calls me a liar.

    We can all see who the liar is, AI.

  58. Max: I struggle to get a grip on what “invention” means.

    Thank you, Max, for your honesty. All of us struggle to get a grip on what most of the most elemental terms in patent law really mean, but only the intrepid will admit it. I have started the fight on this blog repeatedly over what “element” means and how it is different from “limitation.” And Dennis has chimed in with at least one post on the difference vel non between element and limitation.

    I have a couple of additional thoughts on “claim as a whole.” But I also have a deadline looming and a client who foams easily at the mouth. Please excuse me if I beg off for the moment and continue this topic with you in a day or two. Basically, I agree with you that the applicant is entitled to a “claim as a whole” analysis with respect to obviousness. But no other statute requires that. 101 certainly doesn’t.

  59. MM: guess you missed the satirical part where I provided an example of an “argument” as ridiculously inane as the “argument”

    AI: Yes Malcolm we are all aware of your penchant for replying with Straw Man. The Straw Man fallacy is committed when a person simply ignores a person’s actual position and substitutes a distorted, exaggerated or misrepresented version of it.

    But your skill at evasion and straw arguments will not hide the false assumption of your proposition that says a physical, mechanical or technological act followed by, or combined with an unexpressed thought, will prevent anyone from thinking “any” thought.

    MM:I’m ready now to return to my habit of not responding to any of your jackxss comments for a month or two.

    AI: Yes Malcolm we are also all familiar with your tendency to cut and run when confronted with facts, law, and logic that exposes the weakness of your arguments. And as usual when you decide to emerge from hiding in the closet, the law, facts and logic will be waiting for you. As scary as that may be to you it no doubt is exactly what awaits.

  60. It seems that

    No. It does not. This is a purely legal argument. One you need to accept.

    Lower your French.

  61. As explained at Dec 12, 2011 at 02:00 PM the cure for cancer would be :

    1. Do a mental step.

    2. Do a mental step.

    3. Do a mental step.

    4. Apply a math equation step.

    5. Old physical step (draw blood).

    7. Observation/New thought ( determine gene is reprogrammed)

    6. Old physical step ( inject blood).

    Of course if we used [old step]+[new thought] = no patent the inventor of the cure for cancer is scre wed.

    So goes the logic of Malcolm and the anti patent crowd.

  62. “But I’m not saying that the entire claim is old, I’m saying that the only thing that is new equates to a mental step. It seems that whether or not a mental step is eligible for protection would be decided under 101.”

    Hi Austin:

    That’s called dissection and it’s not allowed. You must take the claims as a whole. Whether you agree or disagree that’s the law. The Diehr Court had some good reasoning as to why. Let’s take a look at it.

    “To accept the analysis proffered by the Government would, if carried to its extreme, make all inventions unpatentable because all inventions can be reduced to underlying principles of nature which, once known, make their implementation obvious. The analysis suggested by the Government would also undermine our earlier decisions regarding the criteria to consider in determining the eligibility of a process for patent protection. See, e.g., Gottschalk v. Benson, 409 U.S. 63, 175 USPQ 673 (1973); and Cochrane v. Deener, 94 U.S. 780 (1876).” Diehr

    To me this reasoning makes good sense and is perfectly logical. If the Government should get the power to start dissecting claims and taking out, ignoring, or not counting the mental steps then we go down the slippery slope of discriminating against certain types of inventors and their inventions and that would hurt society.

    For example, let’s say I invent a process for extracting the soft mass from a Neutrino particle and inserting it into a mathematically theorized location that brings the visibility of the Higgs Boson particle into existence. Now I admit that although this took years of work and millions of dollars it’s only a bunch of mere mental steps/decisions, determining, followed by the use of a known math equation. So let’s say so far the elements of the invention are composed of.

    1. Do a mental step

    2. Do a mental step

    3. Do a mental step

    4. apply a math equation step

    Now I add to the invention by placing the Higgs Bons particle with the soft Neutrino Mass into a glass tube containing genes predisposed to creating cancer cells and as a result the gene is reprogramed to never create a cancerous cell, thus resulting in a cure for cancer. The last step was as simple as drawing blood and placing it in a tube with Higgs Bonson and the giving an injection of the modified blood back into a patient. Using your dissection of mental steps test the cure for cancer would not be patentable if someone choose to dissect all mentals steps out the claim and all that was left was the old steps of drawing blood, giving injections, and making particles appear in a glass tube. Then say some housewife one day invents a new shaped ice cube tray that makes ice in the form of fruit, and she of course gets her patent since no mental steps are claimed. So we, society get fruit shaped ice but no cure for cancer because Malcolm’s dissection of mental steps proposition is allowed to become law. Now austin, do you really think this is good policy?

  63. Thanks for that Babble, but it does not help me out of my difficulty.

    I struggle to get a grip on what “invention” means. There is no definition in the European Patent Convention, for example.

    But I do know that the purpose of a claim, its raison d’etre, is to define the invention for which protection is sought. So I struggle to see the vital difference betwen your “claim” and my “invention”. And I do think that, in fairness to the inventor, one must look at the full substance of the claim, taking the claim “as a whole”.

    Following both UK and EPO, I think I can see the merits and de-merits of conflating 101 with 102/3. What is interesting for me will be the argument that each SCOTUS member will resort to, to support their individual conclusion on this issue. Until then, I will follow this thread with interest (unless it degenerates).

  64. The law of nature in the abstract, which is unpatentable, is that magnetized items point North.

    No, the fact that a particular magnetized item points north is a property of a particular device wherein the magnet is lightweight and free to rotate about a vertical axis. It is a very specific and useful application of the general (and unpatentable) law of nature that opposite magnetic poles attract.

    If you’re claiming that particular device, which we’ll assume is novel, you should be well clear of 101 issues. If you’re claiming a method of looking at that device and “determining” that the north-seeking needle is pointing at the world’s largest south magnetic pole (the Earth’s magnetic north pole), then your claim is to thinking about general principles of magnetism and you have a problem.

    This is the problem with using preemption as a test for abstraction. Every claim preempts its scope, but not every claim preempts an abstract idea or a law of nature.

  65. By your logic, SCOTUS is a conflater (maybe the C stands for Conflaters, not Court). You need to straighten those guys out, because apparently you know of a legal principle that they do not, stated roughly as “when interpreting a first part of a statute, thou shalt not look at any other parts of the statute, regardless of any absurd results that may follow.” It’s a good principle for blogation, although I can’t find it in Black’s Law.

    A couple of excerpts from Bilski, although it is admittedly only someone’s Opinion:

    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.

    Petitioners’ remaining claims are broad examples of how hedging can be used in commodities and energy markets. Flook established that limiting an abstract idea to one field of use or adding token postsolution components did not make the concept patentable. That is exactly what the remaining claims in petitioners’ application do. These claims attempt to patent the use of the abstract idea ofhedging risk in the energy market and then instruct the use of well-known random analysis techniques to help establish some of the inputs into the equation. Indeed, these claims add even less to the underlying abstract principle than the invention in Flook did, for the Flook invention was at least directed to the narrower domain of signaling dangers in operating a catalytic converter.

  66. MM: “I can’t protect my idea with the claim:”

    This is where the problem really lies. There’s absolutely nothing wrong with discovering or patenting a better way to administer medicine or do something using a computer or cure rubber or regulate a catalytic conversion process.

    The problem arises when claims are directed to mental steps or instructions instead of actually carrying out the process that was invented. Prometheus even acknowledges as much in the oral arguments – they would have claimed actually adjusting the dosage, but they wanted to capture more people as infringers.

    Draft a proper claim to the useful thing that was actually invented, and watch the 101 issues disappear.

  67. “A magnetic needle.”

    Article of manufacture. Could be old or obviuos though.

    “Placing a magnetic needle on water….”

    Singel means claim? If not, method. Could be old though.

  68. BB Do you want to argue that Congress always gets it right or that the courts have no constitutional role?

    sockie just wants “everything under the skull” to be patentable, BB. That’s the “argument” and the conclusion.

  69. dr2chase I gather instead that your objection is that for this invention, the only secret sauce is (a) a fact of nature (appropriate drug levels) and (b) entirely mental — everything else is not at all novel, and the general framework (that a drug could have a therapeutic range, and that the effective dose could be measured with a blood or urine test, and that the prescription could therefore be modified) is incredibly obvious.

    You’re close. From my perspective, when considering claims in the form [oldstep]+[newthought], the obviousness of the discovery/”framework (e.g., “drug metabolites are a proxy for drug sufficiency/toxicity”) is utterly irrelevant. It doesn’t matter how profound/valuable/earthshattering the “new thought” is.

    For example, let’s say I discovered a way to prevent a 1/2 million children from dying of leukemia each year. The way to do that is to burn an albino bat at midnight on a day when it takes between 122 and 187 seconds for my coffee to cool down so it’s comfortable to gulp. Remember: this is incredibly valuable information, that will save countless lives blah blah blah.

    I can’t protect my idea with the claim:

    1. A method of optimizing health of leukemia patients, comprising:

    sipping a cup of coffee at least once every thirty seconds until its cool enough to gulp (old, transformative step),
    wherein if it takes between 122 and 187 seconds for the coffee to cool, a need to burn an albino bat at midnight is indicated.

    As in Prometheus’ case, the wherein clause will be interpreted as a step of thinking. The claim is ineligible (or anticipated per se) because it is, effectively, a claim to the mental step itself. It’s a claim to thinking about the concept of the invention, and it doesn’t matter that the concept is revolutionary and nobody could have predicted it and it will change the future of medicine. Completely irrelevant. What’s relevant is that you can’t protect an idea by claiming (1) the abstract idea underlying the inventive process or composition; (2) thinking about that idea; or (3) thinking about that idea after the practice of some old transformative step in the prior art.

  70. “If you were any type of attorney that respects the law, you would cringe at the thought of purposeful conflation to achieve some philosophical end result.”

    Case law IS the law. And when you look at the dung Congress passes, you can appreciate how important case law is. Do you want to argue that Congress always gets it right or that the courts have no constitutional role?

    “Which makes me wonder, are you an attorney, Babble Boy? Do you represent clients with inventions before the USPTO or article III courts?”

    Yes, I am an attorney. I mostly sue other attorneys, particularly patent attorneys, for malpractice and fraud, and do pretty well. I would be delighted if you would send me your client list so I can make inquiries as to whether any of them require my assistance.

    This Email is hereby marked “Attorney Advertising” in compliance with the Virginia State Bar rules on attorney advertising.

  71. But I’m not saying that the entire claim is old, I’m saying that the only thing that is new equates to a mental step. It seems that whether or not a mental step is eligible for protection would be decided under 101.

    If I came up with some evidence the showed the optimal amount of time to brush your teeth was from 150-160 seconds and got a patent for brushing your teeth for that amount of time, you’re saying it’d be invalidated under 102/103? Why? Assuming that the claim as a whole was sufficiently novel (e.g., it was a unique enough number), it seems it should pass 102/103 since novelty isn’t determined piece-wise, but for the whole. Maybe it requires some “peeking at 102/103″, as others have suggested, to determine that this claim is of the form [old process] + [thinking about it], but it seems that the metnal step should be invalidated under 101, since the whole thing could be considered non-obvious enough to pass 102/103 but should still be ineligible.

  72. My point, such as it is, is that I thought one of the objections was that this patent ended at the step of “figuring something out” without specifying a next, non-figuring step. The oil field example was an attempt to point out that the information could be valuable, even though the world of “next steps” was too large and complex to sensibly be written into the patent (and if it was “drill or not drill”, would selling the field to a subsidiary side-step the patent? If the raw data was sent to Canada for analysis, would that side-step the patent?)

    I gather instead that your objection is that for this invention, the only secret sauce is (a) a fact of nature (appropriate drug levels) and (b) entirely mental — everything else is not at all novel, and the general framework (that a drug could have a therapeutic range, and that the effective dose could be measured with a blood or urine test, and that the prescription could therefore be modified) is incredibly obvious.

  73. What-Ev I call it, the concept is the same, and that concept already has been ruled upon.

    I think “bootstrapping” may be more of an appropriate term for your word games than my clarifying the concept for you.

  74. Conflate here – for What-Ev purpose, and where do you stop conflating?

    Follow the law. If you don’t like the law, change the law. And change it the proper way, not by judicial fiat which makes the law more murky (you cannot just “conflate” in your idealized zone – you do realize that examiners and others far less adept at law will use (and misuse) any such conflation).

    If you were any type of attorney that respects the law, you would cringe at the thought of purposeful conflation to achieve some philosophical end result.

    Which makes me wonder, are you an attorney, Babble Boy? Do you represent clients with inventions before the USPTO or article III courts?

  75. austin,

    See my comment at 9:34 AM.

    I understand your lack of appreciation for law for your continued “buy-in” to Malcolm’s “What-Ev” way of thinking, but real law (and real attorneys) know better.

    There is a place for removing “doing nothing that they haven’t been doing for years” and that is most decidely not at 101. Quite contrary to your continued (and by now, should-be-informed thinking), this is a 102/103 issue.

    Lower your French, and try to listen.

  76. The point is that, in effect, this is a patent on a mental step. You don’t turn everybody that thinks about this into an infringer, but a lot of the people that you turn into infringers are doing nothing that they haven’t been doing for years apart from “thinking these numbers”. That’s not a 102/103 issue.

  77. “Point” of novelty is your word. They will do something to avoid such bootstrapping as “I claim [law of nature] and a blue pen.” Call it what you will.

  78. Max: Science being the study of laws of nature, and the useful arts being the application of those laws, every invention “combines” a law of nature with a process, machine or composition.

    You have misstated my assertion, have you not? I wasn’t talking about what “inventions” combine, I was talking about claims.

    All I’m saying is that when you have two features of a claim and one is a mental step/law of nature and the other is as obvious as an Amy Winehouse tattoo, the claim should not be valid under either 101 or 103. (Sorry, Amy. RIP.)

    The stumbling block here, and I think Moonbeams would agree, and I KNOW Ned would, is Rich’s idgit wording of 103 — claim as a whole, which is a pus-filled canker in US patent law. Because of that phrase, the whole 103 analysis gets hopelessly mired in semantics and metaphysics whenever some slick patent lawyer includes a law of nature or mental step in a claim that is otherwise painfully obvious. But 103 is the law as it is written, not as we would like it to be written.

    The way around this nonsense is to modify the case law as proposed — in a way that lets examiners use 101 to boot these sick claims that don’t have a single non-obvious feature. That’s exactly why the USSCt may “peek” at the 102/103 issues in this 101 case. Peek my tush, they ought to be turning the krieg lights on this issue.

    Does this proposal conflate 101 and 103, of course it does in the limited situation where mental step/laws of nature are claimed in order to produce a “claim as a whole” imbroglio. That’s the beauty of it.

  79. The problem is this

    That is not the problem. That is not even the question.

    Unless you do not like your laws to be well understood, you do not conflate those laws.

    Your “problem” is a 102/103 issues, and specifically not a 101 issue.

  80. The problem is this. The testing of drug metabolites is old news, and it is done all the time. Before this patent, they were testing the exact metabolites that Prometheus is claiming. Lab techs, physicians, etc, look at those numbers all the time and make decisions based on them. There are a lot of potential cutoffs for what values might suggest what decisions. However, after Prometheus claimed their numbers, anybody who may have seen those numbers and subsequently looks at a metabolite panel is an infringer. Of course not everyone who thinks about anything is an infringer, but a substantial amount of people who are doing nothing more than think about something are.

  81. Stunning logic?

    sort of like “What-Ev”?

    MM, please establish first that you are capable of some logic. “Because I don’t like” is not an acceptable form of logic.

  82. downstream of the novelty

    Downstream of the point of novelty…?

    Hello everyone, 101

    (Wow, I guess if you repeat something often enough you do get some people to believe “What-Ev” you want)

  83. BB may have a better idea of what he was talking about, however ….

    Or he may not.

    I think he was just tired of reading MM’s whining.

  84. I’m guessing that they will remain patent eligible, as long as the “old transforming step” is affected by the “new thought.” I think trying to separate the two is more difficult than SCOTUS wants to get into, and it wouldn’t achieve much due to future artful claim drafting if that were to happen. In any event, it’s not required for SCOTUS to go that far to decide this case.

    I’m not suggesting what “should” be at all, I’m not a policy maker. It doesn’t really matter what the law is, arguments and positions can be taken accordingly.

  85. SteveW These claims reach too far, because none of the change in the real world occurs downstream of the novelty.

    Are you suggesting that claims in the form [new thought]+[old transforming step] should be patent eligible?

  86. WLPT(TM) The only thing you had to respond with was a juvenile personal attack?

    I guess you missed the satirical part where I provided an example of an “argument” as ridiculously inane as the “argument” you presented. I guess I’m not surprised that you didn’t get it, or pretended not to. I’m ready now to return to my habit of not responding to any of your jackxss comments for a month or two.

  87. IMHO, the patents are not going to stand. These claims reach too far, because none of the change in the real world occurs downstream of the novelty.

    The stated reasoning will be that they need to make an affirmative method step that is “materially affected” by the “law of nature,” even if that method step is not necessarily novel on its own (they will not want a bright line rule that the affirmative step is novel, although that would be an indicia that it clearly passes 101). That will be sufficient to overcome 101, which will continue to be read broadly even though these patents will be gone. The affirmative step will force the patentee to describe an action, which commits the patentee to a position that can clarify the 102/103 analysis and weed out the truly obvious blather while allowing valuable claims like these (e.g. where dosage levels or methodology are actually difficult to discover).

    There are too many bad consequences of requiring a strictly novel downstream step. For one, is that novelty at the time of filing or invention (which would then change again in 2013 one would suppose)? Are the references available for this novelty the same as 102? Are we now going to consider the novelty of just a portion of a claim, instead of the claim as a whole? Is the novelty of just the downstream step, or is it taken in light of the earlier portions of the claim? SCOTUS is not going to want to go down this path, so they will require the downstream step since that eliminates these patents, and disavow the creation of any bright line rule.

    Caveat – unlike most of the posters here, I’m not an actual member of SCOTUS, so this is my wild speculation. Your mileage may vary.

  88. Really Mooney?

    The only thing you had to respond with was a juvenile personal attack?

    Well, I guess that pretty much sums up the substance of your position.

  89. 6, I thought you were saying that the claim John wrote preempted what you wrote was the abstract idea of that claim.

    If this is true, then what I wrote above demonstrated your position is not correct.

  90. MD Science being the study of laws of nature, and the useful arts being the application of those laws, every invention “combines” a law of nature with a process, machine or composition. So all he is saying is that if it ain’t novel , or if it’s obvious, then it fails 101.

    I don’t think you made much of an effort to try to understand what BB is saying, MD. I believe when BB said “a law of nature or other 101 non-compliant matter” he wasn’t referring to a “law of nature” embodied within some application or composition (which you seem to be suggesting), but a natural fact presented in the form of a “new” mental step of thinking about the fact (a la Prometheus), or in the form of a “new” (but inevitable) result/property of the recited eligible steps and/or recited structures. Note that the latter type of claim is typically invalidated under 102/103 by relying on the doctrine of inherency.

    BB may have a better idea of what he was talking about, however ….

  91. If the public can still think the thought there has been no effective claims to the mental step itself.

    LOL. “I just infringed a dozen patent claims. I guess patents don’t really protect anything.”

    More stunning logic from the World’s Lamest Patent Txxbxgger (TM).

  92. I was right on Bilski and willing to go double or nothing. So I say..6-3 against Mayo. The libs are not as strong without Stevens for whom 101 was a blood thirst issue. I bet either Breyer or Kagan will abandon them.

  93. correction: I just read prometheus claims and nothing prevented me from doing them in my head or thinking about “ANY” of the steps in whole or part.

  94. “Why? Because allowing the prior art to be overcome by the mere addition of mental steps allows claims to be granted which are effectively claims to the mental steps themselves.”

    If the public can still think the thought there has been no effective claims to the mental step itself.

    I just read prometheus claims and nothing prevented me from doing or thinking about “ANY” of the steps in whole or part.

    Thus your proposition has no rational, logical or legal reason for existence whatsoever.

    ::Poof Goes The Mooney::

  95. “The only problem 6, is you can’t prove that the application of this concept preempts…anything”

    I don’t need to. No “application” of this concept is claimed. The concept itself is claimed.

    “”placing a magnetic needle on a boat on a surface of a pool of water and determining the direction which the needle points and not be barred at least at 101 by the original invention.””

    Thanks for going along with my position AI.

    “Therefore, factually and logically no preemption has occurred of any abstract idea or concept. ”

    The concept, or “abstract idea” which I wrote down is preempt. I swear to go d AI, how do you not understand this? It is so simple. I’m not taking a position on any hypothetical “applications” you might try to later claim. They may very well be patentable.

  96. MM:”is there a logical flaw in the proposition that a claim in the form [old step]+[new thought] is, effectively, a claim to the new thought?

    AI: Yes

    MM: If so, what is the flaw?

    AI: The false assumption that a physical, mechanical or technological act followed by, or combined with an unexpressed thought, will prevent anyone from thinking “any” thought.

  97. “The abstract idea that a magnetic needle will point in a direction when placed on water and observed appears to be preempt. ”

    The only problem 6, is you can’t prove that the application of this concept
    ( which is not abstract BTW) preempts anyone from using the concept to improve it, develop a new use of it, or new inventions based on it.

    For example, I could invent:

    “placing a magnetic needle on a boat on a surface of a pool of water and determining the direction which the needle points and not be barred at least at 101 by the original invention.”

    or I could invent:
    “placing a magnetic needle on an enclosed apparatus in a car, airplane or knife and determining the direction which the needle points, and not be barred at least at 101 by the original invention.

    or I could invent:

    “placing a magnetic needle on a surface of a pool of water and
    determining the direction which the needle points at fish that have swallowed metal objects, and not be barred at least at 101 from the original invention.”

    Therefore, factually and logically no preemption has occurred of any abstract idea or concept.

    Such is the weakness and fallacy of your so called preemption doctrine.

  98. Babble suggests:

    “Where a claim combines a law of nature or other 101 non-compliant subject matter with a process, machine, manufacture, or composition, but the process, machine, manufacture, or composition is not independently non-obvious or novel, then the claim does not constitute patentable subject matter under either 101 OR 102/103.”

    Science being the study of laws of nature, and the useful arts being the application of those laws, every invention “combines” a law of nature with a process, machine or composition. So all he is saying is that if it ain’t novel , or if it’s obvious, then it fails 101. A bit circular, no?

    How can we judge obviousness “independently” of the underlying law of nature? I had thought we would need to judge the technological (as in “laws of nature”) obviousness or non-obviousness of the claimed subject matter, not its commercial, financial or artistic obviousness.

    But, Babble, if I misunderstand you, do please clarify. Thanks.

  99. I’m aware.

    “I don’t see a straightforward way to reject the proposed claim.”

    I’m aware.

    Try this one on for size.

    The abstract idea that a magnetic needle will point in a direction when placed on water and observed appears to be preempt. Next time put some effort into the analysis and spare us these supposed hard claims.

  100. Conflaters Unite!

    Who cares about actual legal reasoning?

    P.S. If you are doing this just because of the whining (“Moonbeams is gonna’ need a stent if this keeps up much longer“) – the whining won’t go away – the whining will have found a place to feed and you will be stuck with the whining – forever.

  101. drschase I’m a little mystified at the focus on the mental process

    Why? For many, many years the ineligibility of purely mental processes has been a fundamental and uncontroversial aspect of our patent system. Claims such as Prometheus’s claim that were granted only because they recite a novel mental step (all other steps being old and well-known in the art) invite our attention. They are, effectively, claims to mental processes.

    isn’t it possible to have a patented procedure for figuring things out?

    It’s certainly not possible if the process of “figuring something out” is carried out in the human brain.

    suppose I determine a new way of telling how much oil is accessible in a reservoir. I don’t see how a patent could be written to encompass all the reasons to extract (or not extract) that oil

    Your point?

  102. Moonbeams has been frustrated over the distinction between 101 and 103 for years, and few things on this blog are more entertaining than watching him/her struggle with this. The angst, the angst. . .

    I would like to see the USSCt to come up with a rule that would let Moonbeams sleep at night. I believe it would be along the lines of:

    Where a claim combines a law of nature or other 101 non-compliant subject matter with a process, machine, manufacture, or composition, but the process, machine, manufacture, or composition is not independently non-obvious or novel, then the claim does not constitute patentable subject matter under either 101 OR 102/103.

    As the law stands now, any claim that combines 101 non-compliant subject matter with 101 compliant subject matter is patentable under 101 regardless of the outcome of the 102/103 analysis. Moonbeams is gonna’ need a stent if this keeps up much longer.

    I think this analysis is what is meant by the USSCt “taking a peek” at the 102/103 issues. They just need to fold those peeks into an explicit rule.

    As a pharmacologist I can tell you that adjusting drug dosage based on metabolite levels is brain-ded obvious even if the claim does include numerical blood concentrations. It is just a matter of routine experimentation to determine what the optimum dose is for any metabolite level. This claim should be rejected under 101 OR 103 under the proposed rule because it combines 101 compliant subject matter with obvious subject matter under 103.

    How this wad of goat snot got past the examiner is a whole mystery in and of itself. It makes one worry about that USPTO “examiners’ education” fund that applicants can contribute to. Wink, wink. Use Mail Stop 12 if you wish to donate. I don’t know if you can attach a check to a response to an office action or not.

    Denise, Mitt Romney and I are in a position to offer you a $10,000 bet that this will not be a 5-4. I’m guessing, 7-2 or worse against Prometheus. Perry thinks it will be 4-4.

  103. I tried to concoct an example that was easy enough to stimulate some discussion, even from us mechanical guys. If I were king, I think I’d write the patent statute to make my example ineligible. However, under the statute as written and interpreted by SCOTUS, I don’t see a straightforward way to reject the proposed claim.

    It seems to me that the proposed method only applies a law of nature, but does not claim the law of nature, per se.

  104. There is no practical difference between doing the same analysis and reaching a conclusion under 101 or reaching a conclusion under 103 because the analysis is the same and the conclusion is the same. All that is changed is the number of the section being invoked.

    There is a practical difference in the sense that the concept of patentable weight is narrowly applicable to printed matter. We are stuck with this notion that novelty and obviousness can’t be used during 101 and we have no case law that applies some concept of patentable weight to forms of Speech which are not printed matter. I agree that it doesn’t matter whether we go one way or the other but if we are going to bar patents on Speech it has to be one of the two. Otherwise there is no way to tell a genuine process with some new and nonobvious elements which are not Speech from a patent on Speech drafted as a process.

    Viewed this way, the printed matter doctrine is an escape to make sure the problems of not looking at 102 and 103 issues during 101 and never revisiting 101 after 102 and 103 is done are not made apparent by granting a patent on a novel. I see it as an admission that the standard patent analysis will not catch patents on Speech and some separate doctrines are required.

    I think changing the choice of words to frame 101 issues as issues of Speech simplifies the discussion because Speech is allowed to have a real world embodiment and still be non patentable. This should eschew the complexity of trying to distinguish abstract ideas and laws of nature from their applications. It underlines that it is the knowledge which must be protected from patenting and the freedom to use this knowledge is inherent to freedom of Speech.

  105. LOLZ at the choice of wording in MM’s end tag attempts – as it was his bold and italics mistakes that he was fixing.

    So like him to accuse others of his own deeds.

  106. the issue of effectively claiming” = dissection.

    This methodology is bankrupt no matter the result of the Supreme Court

  107. I’m a little mystified at the focus on the mental process; isn’t it possible to have a patented procedure for figuring things out? For example, suppose I determine a new way of telling how much oil is accessible in a reservoir. I don’t see how a patent could be written to encompass all the reasons to extract (or not extract) that oil; it could even be the case that the company measuring the reservoir intends to sell it, rather than drill it.

  108. sockie One giant piece of stawman work there. No one ever, anywhere has said anything has “per se” eligibility.

    As I made very clear in my earlier comment, sockie, I was addressing the statement in Denise’s article (attributed to the government) that the Court in Bilski made clear that patent eligibility under section 101 is a threshold test that turns simply on “whether there is a process.”

    It’s hardly erecting a “strawman” to clarify that determining that a claim is a “process” is just the beginning of the analysis, i.e., 101 eligibility “turns on” far more than a claim’s status as a “process.”

    Keep struggling, sockie. It’s a pleasure to watch.

  109. Paul: I think it is clear that we can’t stop patents on Speech unless we can ascertain the claim contains no new and nonobvious element outside of the Speech elements and bar the claim on this basis. I guess this is why the printed matter doctrine uses the concept of patentable weight during 103 instead of patentable subject matter during 101.

    Your guess may be correct as a historical matter. But as a practical matter, I don’t see how it would have made any difference to patentees or to the public if the “printed matter doctrine” had been developed as an extension of 101 jurisprudence to remove from eligibility those inventions which differ from the prior art only by their inclusion of a new “thought” or a non-functional “writing”.

  110. Denise, I would like to say how much I (as a European) am looking forward to reading how SCOTUS solves the puzzle, whether to recognise the state of the art, when deciding 101 OK Y/N.

    That’s because it is also an issue in Europe. Under the EPC, should one do it the EPO way, or the way England does. England thinks the EPO is on the wrong path, and vice versa, and neither shows any sign of deferring to the other.

    I guess then that a 5:4 split on the issue in SCOTUS would be about par for the course.

    I predict that the majority will tell us you can’t just wilfully ignore the notorious state of the art.

    How long till we get to know. Anybody care to estimate?

  111. Have I caricatured that approximately right?.

    That is an approximate caricature of the oral arguments. The oral arguments, however, were a caricature of the actual issues in this case. The briefs are a bit better but there is still a great deal of dancing around the real issue. The focus on “natural laws” is a distraction and the Justices seem to recognize (correctly so, in my opinion) that it is extremely difficult to articulate a distinction between “natural laws” and other facts that would allow you to determine when a claim to a process, reciting a step or steps), is so broad that it is effectively a claim to a “natural law.” The reason (and the judges seem to acknowledge this) is that every new, non-obvious and useful process can be described as “embodying” and “pre-empting” at least one new “fact”, albeit an often trivial fact. I agree with many others that, absent a glaring foul (“I claim a natural law, wherein said law is …”) “natural law” issues presented by a bona fide process claim are best resolved by a proper analysis under 102/103, typically involving the invocation of the inherency doctrine.

    As noted in my lengthy comment elsewhere in this thread, because Prometheus’ claims are in the form [old step]+[new mental step], the issue of effectively claiming a mental process is far more salient than any issue relating to the “pre-emption” of a so-called “law of nature”. Focusing on that issue would also allow the Supreme Court to reach a relatively narrow and very clear holding which would rid the patent universe of patents such as the one asserted by Prometheus, but would cause very little damage to the portfolios of innovators who rely or have been relying on competent attorneys/agents to draft their claims.

  112. ). But the Supreme Court was unambiguous in Bilski that merely presenting an invention as a “process”, even a process with undeniably matter-transforming steps, was not sufficient to accord per se eligibility

    No one ever, anywhere has said anything has “per se” eligibility.

    One giant piece of stawman work there.

  113. My apologies, dr2chase. I tried to get fancy with the html and forgot to preview the comment before posting. Revised version below.

  114. Denise, thanks for your article. Ignore the previous comment I posted — I screwed up the formatting. :(

    I have a couple commments and some questions for you:

    the Solicitor General stated that “taking up the temptation to import a look into novelty and nonobviousness in the 101 inquiry [would] be very destabilizing.” He further added that the Court in Bilski made clear that patent eligibility under section 101 is a threshold test that turns simply on “whether there is a process.”

    With respect to the first sentence, I understand what the Solicitor General is suggesting but I disagree (more later). The find the second part of the government attorney’s statement to be a bit misleading, on one hand, and utterly false on the other.

    With respect to the misleading bit, while it’s true that Section 101 has been described as a “threshold test”, the Supreme Court has never said — and I’m sure that it would never agree — that 101 issues must be addressed first and then can not ever be revisited again during the course of the case. Like standing, eligibility issues are certainly important and it may be efficient to take a look at patent eligibility first to determine if there is an immediate, glaring problem. For instance, nobody would dispute the ineligibility of a claim written as “A law of nature, wherein the law of nature is the law that says certain drugs are metabolized at rates which correlate with the toxicity and/or effectiveness of the drugs.” Likewise, the claim “An idea about administering more of drug X when drug metabolite levels are lower and less of drug X when drug metabolite levels are higher” is going to be squashed immediately under 101, without controversy.

    But it’s also certainly true that a 101 issue could present itself later in a given case, whether the claims are being examined at the USPTO or during litigation, just as claim construction itself may be revisited as more information from experts, etc. is obtained or otherwise reveals itself.

    I’ll come back to this but I wanted to first address the plainly false bit in the government’s statement (at least, the statement as it was presented in your article). And that is the idea that “section 101 … turns simply on ‘whether there is a process.'” This is obviously untrue. I will grant that, as shown above, it’s easy to dismiss a claim as ineligible if the claim is plainly drafted as a non-process falling squarely within one of the articulated ineligible non-process subject matters (i.e., law of nature, abstraction). But the Supreme Court was unambiguous in Bilski that merely presenting an invention as a “process”, even a process with undeniably matter-transforming steps, was not sufficient to accord per se eligibility to the claim (hence the theoretical diminishment of the MOT test as a mere “clue” to ineligibility). The most obvious example of an ineligible process, of course, would be a claim that recites a purely mental process (e.g., “A method, wherein said method comprising thinking a new thought about X.”)

    And so we come to what is (in my opinion) the most important and interesting statement made during the oral argument, a statement by the US government attorney which went uncontested (as far as I can tell) by any of the parties and which I’ve yet to see addressed by any patent law commenter except by myself and this blog’s Jason Rantanen (many months ago; please let me know if I’ve missed any prominent analysts squarely addressing the issue):

    “[Y]ou can’t get a patent by tacking a mental step onto an utterly conventional process for administering drugs and testing their effects.”

    Let’s get a couple issues out of the way up front: there is no dispute about the fact that Prometheus’ claims are exactly the type of claim being referred to by the US government. (1) The transforming steps recited in Prometheus’ claims and relied on by the Federal Circuit to find the claims eligible are old. (2) The “wherein” clause in Prometheus’ claim is a mental step of “thinking about a fact” or “having an idea”, specifically an idea that certain measured metabolite levels (recited as numbers) in human blood indicate a “need” to administer more or less drugs, which never need be administered to literally infringe the claim.

    Based on the government’s brief in Prometheus, it’s clear that government’s counsel has taken the position that Prometheus’ claims are anticipated per se because they are in the form [old step]+[new thought]. The government’s position (and this is from the brief, not the oral argument) is that the novelty and/or non-obviousness of the mental step must be ignored when determining the anticipation or non-obviousness of such a claim. Why? Because allowing the prior art to be overcome by the mere addition of mental steps allows claims to be granted which are effectively claims to the mental steps themselves. This is readily understood if one considers the impact of issuing such claims on practitioners of the prior art who, without engaging in single new transforming act, are suddenly turned into literal infringers by virtue of having learned something new and daring to think about it.

    My view (promulgated here for quite some time now) is that there is no practical distinction between finding claims in the form [old step]+[new mental step] anticipated per se or ineligible under 101 per se. The analysis is the same: compare the claimed process with the prior art. If the transforming steps are unpatentable without the mental step, the claim is ineligible for patenting (because it is effectively a claim to a mental process, which is ineligible subject matter) or it’s invalid as anticipated/obvious (because if we allow the mental step to carry patentable weight, it is effectively a claim to a mental process, which is ineligible subject matter) or, if we allow the mental step to be given patentable weight, the claim is unenforceable (because it is effectively a claim to a mental process, which is ineligible subject matter).

    So here’s my question for you, Denise. In your opinion, is there a logical flaw in the proposition that a claim in the form [old step]+[new thought] is, effectively, a claim to the new thought? If so, what is the flaw? If there is no flaw, can you articulate a policy reason for granting such claims while maintaining an absolute bar against patenting claims that recite only mental processes?

    Note: I’m not asking you to evaluate the likelihood that such arguments will be found persuasive in a court (e.g., I’m not interested in whether the result of following the logic is inconsistent with one of the controversial/conflicting/unintelligible holdings in previous Supreme Court decisions). I’d just like to hear an evaluation of the logic of the argument from a legal professional with a depth of experience similar to my own. If you are unable to answer because of client conflicts (potential or existing), just say so. I truly understand.

    Thanks a lot! I genuinely look forward to your answers.

  115. So (speaking as a non-lawyer) the pro-Prometheus argument would be “it’s not (just) a law of nature because of the drug administration and metabolite measurement, and it’s novel because until now, we did not know the appropriate levels for the metabolites”. And the anti-Prometheus argument would be “the only novelty is a law of nature — the therapeutic/safe level of the drug in the bloodstream”.

    Have I caricatured that approximately right?

  116. Denise, thanks for your article. I have a couple commments:

    the Solicitor General stated that “taking up the temptation to import a look into novelty and nonobviousness in the 101 inquiry [would] be very destabilizing.” He further added that the Court in Bilski made clear that patent eligibility under section 101 is a threshold test that turns simply on “whether there is a process.”

    With respect to the first sentence, I understand what the Solicitor General is suggesting but I disagree (more later). The find the second part of the government attorney’s statement to be a bit misleading, on one hand, and utterly false on the other.

    With respect to the misleading bit, while it’s true that Section 101 has been described as a “threshold test”, the Supreme Court has never said — and I’m sure that it would never agree — that 101 issues must be addressed first and then can not ever be revisited again during the course of the case. Like standing, eligibility issues are certainly important and it may be efficient to take a look at patent eligibility first to determine if there is an immediate, glaring problem. For instance, nobody would dispute the ineligibility of a claim written as “A law of nature, wherein the law of nature is the law that says certain drugs are metabolized at rates which correlate with the toxicity and/or effectiveness of the drugs.” Likewise, the claim “An idea about administering more of drug X when drug metabolite levels are lower and less of drug X when drug metabolite levels are higher” is going to be squashed immediately under 101, without controversy.

    But it’s also certainly true that a 101 issue could present itself later in a given case, whether the claims are being examined at the USPTO or during litigation, just as claim construction itself may be revisited as more information from experts, etc. is obtained or otherwise reveals itself.

    I’ll come back to this but I wanted to first address the plainly false bit in the government’s statement (at least, the statement as it was presented in your article). And that is the idea that “section 101 … turns simply on ‘whether there is a process.'” This is obviously untrue. I will grant that, as shown above, it’s easy to dismiss a claim as ineligible if the claim is plainly drafted as a non-process falling squarely within one of the articulated ineligible non-process subject matters (i.e., law of nature, abstraction). But the Supreme Court was unambiguous in Bilski that merely presenting an invention as a “process”, even a process with undeniably matter-transforming steps, was not sufficient to accord per se eligibility to the claim (hence the theoretical diminishment of the MOT test as a mere “clue” to ineligibility). The most obvious example of an ineligible process, of course, would be a claim that recites a purely mental process (e.g., “A method, wherein said method comprising thinking a new thought about X.”)

    And so we come to what is (in my opinion) the most important and interesting statement made during the oral argument, a statement by the US government attorney which went uncontested (as far as I can tell) by any of the parties and which I’ve yet to see addressed by any patent law commenter except by myself and this blog’s Jason Rantanen (many months ago; please let me know if I’ve missed any prominent analysts squarely addressing the issue):

    “[Y]ou can’t get a patent by tacking a mental step onto an utterly conventional process for administering drugs and testing their effects.”

    Let’s get a couple issues out of the way up front: there is no dispute about the fact that Prometheus’ claims are exactly the type of claim being referred to by the US government. (1) The transforming steps recited in Prometheus’ claims and relied on by the Federal Circuit to find the claims eligible are old. (2) The “wherein” clause in Prometheus’ claim is a mental step of “thinking about a fact” or “having an idea”, specifically an idea that certain measured metabolite levels (recited as numbers) in human blood indicate a “need” to administer more or less drugs, which never need be administered to literally infringe the claim.

    Based on the government’s brief in Prometheus, it’s clear that government’s counsel has taken the position that Prometheus’ claims are anticipated per se because they are in the form [old step]+[new thought]. The government’s position (and this is from the brief, not the oral argument) is that the novelty and/or non-obviousness of the mental step must be ignored when determining the anticipation or non-obviousness of such a claim. Why? Because allowing the prior art to be overcome by the mere addition of mental steps allows claims to be granted which are effectively claims to the mental steps themselves. This is readily understood if one considers the impact of issuing such claims on practitioners of the prior art who, without engaging in single new transforming act, are suddenly turned into literal infringers by virtue of having learned something new and daring to think about it.

    My view (promulgated here for quite some time now) is that there is no practical distinction between finding claims in the form [old step]+[new mental step] anticipated per se or ineligible under 101 per se. The analysis is the same: compare the claimed process with the prior art. If the transforming steps are unpatentable without the mental step, the claim is ineligible for patenting (because it is effectively a claim to a mental process, which is ineligible subject matter) or it’s invalid as anticipated/obvious (because if we allow the mental step to carry patentable weight, it is effectively a claim to a mental process, which is ineligible subject matter) or, if we allow the mental step to be given patentable weight, the claim is unenforceable (because it is effectively a claim to a mental process, which is ineligible subject matter).

    So here’s my question for you, Denise. In your opinion, is there a logical flaw in the proposition that a claim in the form [old step]+[new thought] is, effectively, a claim to the new thought? If so, what is the flaw? If there is no flaw, can you articulate a policy reason for granting such claims while maintaining an absolute bar against patenting claims that recite only mental processes?

    Note: I’m not asking you to evaluate the likelihood that such arguments will be found persuasive in a court. I’m just interested in the opinion of a legal professional with a depth of experience and time spent considering such issues that is similar to my own. If you are unable to answer because of client conflicts (potential or existing), just say so. I understand.

    Thanks a lot, Denise! I genuinely look forward to your answers.

  117. 2)…”taking up the temptation to import a look into novelty and nonobviousness in the 101 inquiry [would] be very destabilizing.” He further added that the Court in Bilski made clear that patent eligibility under section 101 is a threshold test that turns simply on “whether there is a process.”

    Translation: NO CONFLATION.

    The Conflation “What-Ev” crwod are not going to like that.

  118. I wonder if it would help to see laws of nature and abstract ideas as elements of Speech on the grounds that this knowledge is part of what is Speech in the First Amendment sense.

    The difference is that Speech is an activity which must occur in real life. There is always some steps for gathering of information as input, some analytical steps which derive more information by means of logic and/or mathematics, and some post-solution step to communicate the results. If we itemize these steps, Speech can be claimed as a process.

    What happens when we bundle a new and non obvious thought or analysis with some old steps that pass MoT? This claim will pass 101 because of the old steps passing MoT and it will pass 102 and 103 because the Speech is new and nonobvious. This analysis offers no way to block patents on Speech. Then people have to worry whether their thought are owned because they occur in a context which has been claimed by someone.

    I think it is clear that we can’t stop patents on Speech unless we can ascertain the claim contains no new and nonobvious element outside of the Speech elements and bar the claim on this basis. I guess this is why the printed matter doctrine uses the concept of patentable weight during 103 instead of patentable subject matter during 101.

  119. the intracies of posting truncated my thoughts and your reply preempted my edit. I continue:

    A method of determining direction comprising:
    placing a magnetic needle on a surface of a pool of water and
    determing the direction which the needle points.

    The requirements of 102 and 103 would then follow based on the scope and content of the prior art.

  120. JR But I would submit that the following claim is patent eligible:

    A method of determining direction comprising:

    John, did you forget something? Surely you aren’t suggesting that any claim beginning with the preamble you recited is eligible per se ….

  121. It would be helpful in the SC would define “law of nature.”

    Just as it would have been helpful if the SC had defined “abstract idea.”

    Presumably, the fact that certain metals are magnetic is a law of nature. And the fact that one of the poles of a magnet points North is a law of nature.

    But I would submit that the following claim is patent eligible:

    A method of determining direction comprising:

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