Forthcoming Article: Patentable Subject Matter for Diagnostic Methods after in re Bilski

Review by Dennis Crouch

Professor Eisenberg (Michigan) is one of the leading academics focusing on proprietary rights in biomedical research. She has been writing about biotech patents and other forms of protection since the 1980's. Most recently, Professor Eisenberg provided final version of her forthcoming article titled "Wisdom of the Ages or Dead-Hand Control? Patentable Subject Matter for Diagnostic Methods after in re Bilski." The article will soon be published in the Case Western Reserve Journal of Law, Technology & the Internet, but I wanted to highlight the article today because it speaks directly to the pending case of Mayo v. Prometheus. Oral arguments are scheduled in Prometheus for Wednesday, December 7, 2011.

Prior to its 2010 decision in Bilski v. Kappos, the Supreme Court's leading precedent on patentable subject matter was the quartet of cases issued before the formation of the Court of Appeals for the Federal Circuit. See, Benson, Flook, Diehr, and Chakrabarty. In deciding the patentable subject matter question raised in Bilski, the Supreme Court simply pointed back to its old precedent as controlling. Eisenberg writes: "The Supreme Court reaffirmed the authority of these decisions without explanation in Bilski v. Kappos, thereby demanding formal adherence to stare decisis without following the discipline of common law reasoning."

In her article, Professor Eisenberg asks the Supreme Court to use this next opportunity in Mayo v. Prometheus to "not only to clarify the boundaries of patentable subject matter, but to explain what the doctrine of patentable subject matter is all about." She points to three possible uses of the doctrine: (1) PSM could serve as a threshold inquiry that economizes administrative costs by excluding some kinds of subject matter from the front door of the patent system without the need for a full examination. However, Eisenberg recognized that "patentable subject matter doctrine does not and cannot serve that role in its current form." (2) PSM could be useful in "limiting heterogeneity" of the system by narrowing the technological diversity of patentable inventions and excluding technologies for which "less protection is optimal." (3) PSM could serve as a backstop for when other patentability doctrines fail to protect the public domain, properly limit claim scope, or ensure that building blocks of innovation are available for future innovators.

Notes:

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140 thoughts on “Forthcoming Article: Patentable Subject Matter for Diagnostic Methods after in re Bilski

  1. Okay there was one mistyped word here. “NOT” The first paragraph should have said..

    “No, that is not what you argue. You implied that Diehr’s claims as a whole approach was limited to 101 and that the claims at 102 could be dissected into patentable and non patentable subject matter for the purpose of rejecting or deny an applicant their patent.”

    Now that typo was no excuse because of the substantive nature of my post and the in depth references and extensive pincites any intelligent person clearly could understand what my position was.

    Yet Ned “whats a medical method” Heller decided to play dumb and ignore all the facts.

  2. “One might ask whether the person who did the prior “determining” step needs to carry out the other steps as well in order for there to be a direct infringer.”

    All one need do to infringe the claim is make, use (in any fashion) or sell the drug regardless of whether they determined anything or carried out any steps.

    Structure MM, structure.

  3. 6 ” and finally simply an attempt to patent one single use of an abstract idea that has millions of uses which go unclaimed. ”

    6 this is complete and utter non sense. You know there is no way to prove such a thing.

    I beat you on this months ago when you failed to produce one hypothetical example.

  4. 6 ” and finally simply an attempt to patent one single use of an abstract idea that has millions of uses which go unclaimed. ”

    6 this is complete and utter non sense. You know there is no way to prove such a thing.

    I beat on this months ago when you failed to product one hypothetical example.

  5. “Every claim “wholly preempts” the subject matter that it covers; the issue is how broadly one may claim a diagnostic inference.”

    The answer is simple. As broad as the prior art allows.

    If I invent or discover how to make or do anything and no one else has ever done it in the history of the world, guess what?

    I get to preempt the entire field for the next 20 years, even if I am inventing the field itself.

    After all, the entire function of a patent is legal preemption!

    This preemption issue is non sense and has no place in 101 whatsoever.

  6. “The “predetermined” language seems to me to be reciting an additional step, albeit in a strange roundabout way.”

    Drugs do not comprise steps.

    Yes, I know that, 6. “Pre-determining” something, however, comprises a step, just like “pre-washing”, “pre-cutting”, and “pre-mixing” requires a step. One might ask whether the person who did the prior “determining” step needs to carry out the other steps as well in order for there to be a direct infringer.

    But I digress. As I noted above, Paul’s claims are not nearly as awful as Prometheus’ and would almost certainly not raise the 101 flag for most patent attorneys, examiners or judges.

  7. “<>i>Why don’t you just admit you were wrong and move on.”

    Not one of his games. Not something the Shillers pay for.

  8. And they will get smacked down since Diehr is still good law and controls. Now if the Supremes overturn it, you will have won your first legitimate victory. But until then remember the words of AI’s Dear Diehrist ( where ever that good fellow may be)

    BILSKI 14 Baby!!!

  9. Ned none of this was what we were debating. I proved my point and cited the case law to back it up. Now you suddenly claim you can’t read our understand case and cites and then state some irrelevant issue. Why don’t you just admit you were wrong and move on.

  10. One more Bilski number for you Ned – 9

    As in ALL NINE JUSTICES SAID MOT WAS NOT A REQUIREMENT.

    No matter how you try to spin it, you cannot make MOT a requirement when all 9 said NO (which is Nein)

  11. Now if you only had the intelligence and decency to address the obvious hole in your theory.

    Show ONE example of a patent that successfully prevented someone from thinking.

    :: Sound of usual crickets chirping::

  12. Ah yes, the infamous Ned-defines-his-own-world syndrome.

    Very nice for little rubber rooms. Not so nice for dealing with actual law.

  13. but it is entitled to its opinion

    Here’s a clue: everyone’s entitled to their opinion, even after the Supreme Court has ruled to the contrary (hence even Ned is entitled to his continued wrong “opinions” about Bilski.

    The Government’s stated piece was in fact opinion – not law. It is law that does not get “entitlement” even after the Supreme Court has ruled to the contrary (hence Ned is WRONG about the law about Bilski).

    C’mon guys – THINK!

  14. “The “predetermined” language seems to me to be reciting an additional step, albeit in a strange roundabout way.”

    Drugs do not comprise steps.

  15. AI, I am not sure what you said in this post.

    translation: d_amm, pincites to case law that proves me wrong, well, got to fall back to the “I dont understand wat you are saying” game.

    Medical methods,… huh wha?

  16. Now I always listen to Malcolm, because he generally gets it right.

    Sometimes the punch lines just write themselves.

  17. He sits before the Takht upon which the aged and venerable Guru sits and while rocking and nodding he intones in a hushed voice the solemn mantra,

    Bilski 3

    Bilski 11

    Bilski 14

    Billllssskiii 3

    Billllssskiii 11

    Billllssskiiiiiiii 14!

    There, is that better oh guru?

  18. “AI, the Bilski claims did not involve machines, articles of manufacture or compositions of matter. I think, in fact, that is why they were declared abstract. ”

    Now who cares what you “think” ? The Supreme Court stated exactly why Bilski was declared abstract and I have copied and pasted that exact quote a thousand times. I know its Christmas time but do you really have to act like such a fruit cake?

    Now repeat after me.

    Bilski 3

    Bilski 11

    Bilski 14

    I just want you to learn your Bilski pages.

  19. AI, you did. But this is when I first realized that you and I were not talking about the same thing when we were talking about the patentability of business methods. You were thinking of things that included making something, while I was thinking of claims like the claims in Bilski.

  20. Of course I have not fully studied the relevant prior art, but neither have most other people at this stage.

    I dare say that Mayo has, and so has Prometheus.

    As I already noted, your claims are an improvement and perhaps a “good start” but I still see inherency issues, and also some functional/”desired result” claiming that may not pass muster. The “predetermined” language seems to me to be reciting an additional step, albeit in a strange roundabout way.

  21. Cage, as in “coffin making” is an example of a business method and therefore is within the Useful Arts?

    Did I say this exactly? But regardless “Coffin Making” a manufacturing process, is within the useful arts. And of course I can absolutely prove it’s a business as well. So never understood why this is the point you would wrap yourself in to feel credible or smug.

    Such are the ways of the Shill I imagine.

  22. AI, the Bilski claims did not involve machines, articles of manufacture or compositions of matter.  I think, in fact, that is why they were declared abstract. 

    AI, while you are entitled to your opinion, you are not entitled to your own facts.  The facts are a given, as stated by the court.

    The Bilski claims did not involve machines, articles of manufacture or compositions of mater.  Period.

  23. The government might be wrong, but it is entitled to its opinion until the Supreme Court has ruled to the contrary.

    Since the 102 issue is not squarely before the Supreme Court, the 102 issue may not be decided.  However, now that the Government has pointed the way, I am sure the Government or Mayo will raise the issue at the District Court level or by filing for a reexamination.

  24. “The problem occurs when a method has nothing to do with a machine, article manufacture or composition of matter. Are such methods within the Useful Arts?”

    Ned, it is impossible to invent a process for making anything, that has “nothing to do with” a machine, article of manufacture or composition of matter. On the other hand that does not require a process be encompassed by or “tied” to a machine, article of manufacture or composition of matter.

    Stop trying to find ways to resurrect the your asinine anti business method MOT requirement non sense.

  25. AI, I am not sure what you said in this post.  However, I am sure that Diehr had nothing to do with 102.  Nothing at all.  You cannot import Diehr's 101 analysis into 102 for any purpose.  

    Section 102 is a search for novelty.  If anything is new, the claim is novel.  Period.  There is not balancing, weighing, deciding or the like. It is simply a question of fact.  Is the claim new.  And, all this requires is that some element of the claim or some combination of elements be new.

  26. Oh, the GOVT is wrong. Remember if the Goverment had it’s way Diehr ( which had mental steps) would not have been granted his patent.

  27. No, that is not what you argue. You implied that Diehr’s claims as a whole approach was NOT limited to 101 and that the claims at 102 could be dissected into patentable and non patentable subject matter for the purpose of rejecting or deny an applicant their patent.

    YOU ARE WRONG!

    The is NOT what Diehr says. AND…

    There is ZERO case law that says such can be done.

    PERIOD!

    Yes, each element in a claim at 102 is looked at to see if its new. This is done to find the claims novel so they can pass 102. Not to eliminate the invention for being non statutory, or C rap, or a business method or some other invention you are paid to say is evil.

    This is the cr a p pf Mooneys dreams and which you s uck on night and day.

    I am sick of it and disgusted by it quite frankly.

    And just to further underscore how wrong you are about dissecting claims at 102 to deny an applicant his/her patent consider the following case law cites and examples, ( not my own).

    “Cited Elements of a Reference Must be Arranged as Required by the Claim. An Examiner is unable to pick and choose various teachings from a cited reference in furthering an anticipation rejection: “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).”
    In view of the above, it is clear that even if the cited reference describes all of the features of a claim included in the subject patent application, an anticipation rejection is likely deficient if the cited elements are not arranged as required by the claim.  More specifically, if the cited elements relied upon are included in disparate disclosures of the cited reference which are “not directly related to each other,” it is likely that the anticipation rejection is deficient because impermissible “picking and choosing” has probably occured (see Arkley).”

    Add to this the FACT you completely ducked the the 35 U.S.C 100b Statute. Which statutorily blocks your dream of dissecting the mental steps out of a claim.

  28. “At least arguably there is a different treatment regime based on individualising dosages for particular patients so that they fall within the therapeutic window”

    They can feel free to claim that anytime they’d like but it isn’t in the claim yet.

  29. AI, I will give you time on this.  I think that eventually you will understand.

    But the bottom line is that Section 102, as opposed to 101, is a search for novel subject matter.  That is what it is all about.  

    When the government says (and you might want to read their brief) that a mental step that has nothing to do with the physical steps in the claim, other than using the data that it produces, is not a process step for novelty purposes.  Here the government speaks only of 102.  How this dovetails into 101 is really a question that the Supreme Court has not yet addressed.  But the government position is that it does not and should not be involved in 101 analysis.

    Malcolm sharply disagrees, and insists that it does.  Now I always listen to Malcolm, because he generally gets it right.  

  30. Good day Kant:

    Unlike Ned, I am glad to speak with you. Do come in. Some tea? Now if the point of novelty test was carried to its extreme, that would no doubt include 101, 102, and 103. After all having a point of novelty test at just one threshold, be it 101, or 102, would not be as extreme as all three. Tell me old chap, do you see it differently?

    Cheers.

  31. Actual Inventor, sure.  If any element of a claim is new, the claim passes 102.  Then one moves on to 103 (or 101, as the case may be) where the question is whether the claim considered as a whole is obvious.  But ever that question, by statute and case law, considers the differences between the claimed subject matter and the prior art.  A lot of what is in the claim can be old and the claim can have a point of novelty.  "Claim as a whole" simply says that one cannot ignore the old elements of a claim in assessing whether the claim as a whole is obvious.

  32. I think if such a case existed Ned and Mooney would have cited it by now. After all its the bedrock thinking of all their anti patent dissectionist wet dreams.

  33. “Therefore, by statute when considering obviousness as opposed to novelty, we do have to consider the old elements in the analysis and therefore we have to consider the claim as a whole. But that is obviousness, not novelty.”

    Well, if you want to talk about statutes then you have to include the definition of a process, which is as follows:

    35 U.S.C. 100 Definitions.

    When used in this title unless the context otherwise indicates –
    (b) The term “process” means process, art, or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material.

    So Ned, your new theory for dissecting claims at 102 would run afoul of 35 U.S.C. 100 b. And the Supreme Court agrees.

    “It is inappropriate to dissect the claims into old and new elements and then to ignore the presence of the old elements in the analysis. This is particularly true in a process claim because a new combination of steps in a process may be patentable even though all the constituents of the combination were well known and in common use before the combination was made. ( Diehr).

    Again, Ned, note the use of the word “patentable” not statutory subject matter. Patentable covers 101, 102, and 103, even “IF” all the steps are old.

    Again, our statue allows patents on “new uses” of old processes. U.S.C. 35 100 b.

    There is just no way around the law here.

    Now if you want to theorize why the law should be different go ahead.

    But I a not interested.

    Just don’t conflate your personal theory, with the actual statute and case law.

    Okay?

  34. Well Paul, the Supreme Court asked that very question. Mayo argued that they would have to actually claim administration of a drug to a patient in response to the test. Prometheus argued that that is not the way doctors practice medicine in that they may not actually adjust the dosage if, in the doctor’s opinion, the dosage is what he wants considering the special needs of the patient.

    From the government’s point of view of course, ending a claim with a mental step is not patentable under section 102 if the other physical steps are old. Here they are admittedly old. Thus the government has declared that in their opinion the Prometheus claims are unpatentable under section 102. Because the government has a right to invoke a re-examination of the issued patent based upon prior art, what should the government do in this case having declared that Prometheus patent, or at least these claims, are invalid?

  35. Perhaps. But Paul, you have to take into consideration that one cannot file broader claims in a reissue if the reissue is filed more than two years after the basic patent issued.

    Ditto re-examinations.

  36. Isn’t there a differene between “Novelty” and “Point of Novelty”?

    Isn’t there more than one difference?

  37. Ned, can a non dissected claim be anticipated at 102 and still non obvious at 103? If yes, please elaborate and show such an example.

  38. Actual Inventor, you asked whether there is a logical reason for dissecting claims in 102 analysis – set aside for a moment 103. And the answer is yes, because the whole search in 102 is to find what of the claimed subject matter is new. There is an assumption that one can mix into a claim both old elements and new elements and that sometimes the relationship between the old and the new is the invention. It is the examiner’s job in the patent office and the defendant’s job court to demonstrate that there is nothing new in the claim. He is not required in this process to demonstrate that even if some element is new that the claim is obvious considered as a whole. That is a different question entirely. Once we identified something new in the claim, the question moves on to whether the claim nevertheless is obvious.

    Therefore, by statute when considering obviousness as opposed to novelty, we do have to consider the old elements in the analysis and therefore we have to consider the claim as a whole. But that is obviousness, not novelty.

  39. Paul, first, more congratulations for your post of 8:52 am, it appears to be a model of coherency.

    Now take what happened in oral arguments, and try to accommodate it in your analytical paradigm–where and how does it fit?

    The answer is that it doesn’t. So far, everything about Prometheus is akin to fumbling around in the dark. I will be extremely surprised if anything good comes in the ultimate opinion–and if it does, it will be because somebody read a blog, or due to the miraculous work of some clerk.

    We need a specialized court. This should never have made it to the USSC.

    And on the matter of disrespect–believe it or not, I don’t like to disrespect others either…but sometimes I do, and for good reason. More often I disrespect what they have done. In this case, I have no idea who set out the initial claim form, who directed or authorized the final claim form, what the agreed-upon strategy was if there was any at all, or how and what the attorney communicated to the client and when.

    What I DO know is that, as Malcolm would say, the claim at issue is a joke. That it ever made it past the PTO is a bigger joke yet.

    When I said it was IMHO below an acceptable minimum threshold, I was referring to a theoretical situation in which the claim was the result of solely the attorney’s efforts and authority. I don’t know exactly what happened, but in my experience with how applications proceed with large clients and how those clients interact with their prosecution counsel, it is likely the case that the claim was the result of only the attorney’s efforts.

    This case should have proceeded as an appeal from an examiner rejection and board affirmation of invalidity, not from an allegation of infringement of the claim of an issued patent.

  40. I realise I have given an insufficient answer.

    At least arguably there is a different treatment regime based on individualising dosages for particular patients so that they fall within the therapeutic window. if the window or the method of ascertaining it was hitherto unknown, and there was a genuine benefit in terms of improved therapeutic outcome, I would think that the prtospect of such a claim being allowed and of surviving third party opposition would be excellent. Of course I have not fully studied the relevant prior art, but neither have most other people at this stage.

  41. I do not like to disrespect others, but tend to agree with the comment in the 5th paragraph.

    The US claim, I agree is below an acceptable minimum threshold, and the European claim is similar. But as I do not know who drafted the case and what instructions were received, I do not have evidence to impugn the professional skill of anyone and am reluctant to do so. In Europe we have rules of professional conduct and do not criticise our colleagues without good reason. The claim, though, I can and do criticise.

  42. The novelty is that the level is predetermined for the individual patient so that the dose produces a level within the required threshold. And that in turn depends upon the finding of what the level of 6-TG would be.

    You would not infringe simply by handing out 125 mg tablets which simply happen to hit the window in an individual patient. That is the prior art, but as we know it is not sufficiently reliable. But you do infringe if you deteremine for that patient what does hit the window and then deliveer that dose. So there is no inherency – the industry and clinics can carry on as before, but if they use they test and prescribe patient-specific dosages they infringe. And it appears for this particular family of drugs that patient-sepcific dosages are needed.

    That is why the words “for said subject” appear. When interpreted in context they avoid inherency. A 125 mg dose is not “for said subject” – it is for all patients which is the cause of the problem.

    One might refine the language in prosecution but this is at least a starting point.

  43. What’s the number for using the doctrine as a nose of wax?

    That number would be: (2) PSM could be useful in “limiting heterogeneity” of the system by narrowing the technological diversity of patentable inventions and excluding technologies for which “less protection is optimal.”

    Because choosing optimality is twisting the nose of wax. Patent law simply is not about choosing to narrow technoloigcal diversity – that’s the anti-thesis of patent systems.

  44. Yup there’s the blood spots again – everyone is out to get Malcolm, therefore everyone is a single person.

  45. 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.” (emphasis added – no other commentary required)

  46. Ned I can see why you are confused because the outcome in Diehr was finding the claims, statutory, a 101 issue. So on the surface it seems simple to just say that Diehr only applies to 101 and not 102, or 103. However you have to read the entire case closely to understand the full range of it’s implications.

    Let’s start here, which may be the source of your confusion. The Court says:

    “While a scientific truth, or the mathematical expression of it, is not a patentable invention, a novel and useful structure created with the aid of <209 USPQ 9> knowledge of scientific truth may be.” Mackay Radio Corp. & Telegraph Co. v. Radio Corp. of America, 306 U.S. 86, 94, 40 USPQ 199, 202 (1939).11 We think this statement in Mackay takes us a long way toward the correct answer in this case. Arrhenius’ equation is not patentable in isolation, but when a process for curing rubber is devised which incorporates in it a more efficient solution of the equation, that process is at the very least not barred at the threshold by §101.”

    So I know Ned, you read the last line above, “not barred at the threshold by §101″ and thought to yourself, “okay this case is only applicable to 101 so I can turn off my brain and go to sleep.”

    But if you read the line in it’s entirety you would have realized it said, “that process is at the very least not barred at the threshold by §101.”

    Note, Ned the use of ” at the very least” which implies this case has implications beyond 101 subject matter. And the Court makes good on that promise when it said the following:

    “In determining the eligibility of respondents’ claimed process for patent protection under §101, their claims must be considered as a whole. It is inappropriate to dissect the claims into old and new elements and then to ignore the presence of the old elements in the analysis. This is particularly true in a process claim because a new combination of steps in a process may be patentable even though all the constituents of the combination were well known and in common use before the combination was made.”

    Ned, note, the use of the words, “may be patentable ..” The Court did not say may be statutory subject matter, which would have explicitly limited the holding to 101. In order for an invention to be “patentable” it must not only pass 101, but 102, 103, and 112. Further more, the Court could have expressed that the claims could be dissected at 102, or 103, but obviously chose not to do so.

    And just in case you are still fuzzy read footnote 12, which is as follows:
    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.

    Note, again Ned the Court said “unpatentable”, not non statutory subject matter.

    Finally there is no logical reason for the Diehr Court to have created the precedent of taking the claims as a whole, only to allow dissection at 102, or 103. If that was their intent they could have just agreed with Steven’s in Flook and dissected Diehrs claims and denied his patent.

    So now if you can cite controlling case law that over rules Diehr and explicitly says claims can be dissected at 102 and 103 then by all means cite it now. Otherwise remain quiet or I promise you WILL end up looking as foolish as you did during your year long Bilski debacle claiming the Supremes banned business methods and upheld the MOT as the sole test.

  47. Shapiro might not know anything either, as on the end of page 56 and the beginning of page 57 he appears to suggest that utility is not a part of 101.

  48. Indeed MM.  The government has its opinion that the mental step claims at bar are not novel over the admitted prior art.  The Director has the duty to protect the public NOW by ordering a reexamination based on the admitted prior art and the lack of novelty in adding a mental step to an old process.  

    In the meantime, the SC could remand the case for future proceedings under 102, thereby mooting the 101 issue.

  49. A hole, the kibitzer opined that the novelty of a claim over the prior art did not involve a “point of novelty” analysis.

    Obviously the kibitzer has no clue. You really are not defending the proposition, are you?

    The simplest way to defeat an examiner’s rejection under 102 is to show that the prior art does not have an element of the claim.

    Now think about that for a moment.

    What the kibitzer seem to suggest is that this argument would be unavailing. I find that whole notion bizarre.

  50. Richard (“Dick”) P. Bress is a perfect example of how the quality of a senior attorney is determined by the perceived desirability of his or her clients.

    Dick P. doesn’t seem to know the first thing about patent law, but that’s OK in the appellate stratosphere, where Justice Roberts knows even less.

    The problem is that neither of them cares.

  51. Ooh, I can’t wait to read it.

    What does the panel care? I don’t think anybody briefed on the utility issue, and if not briefed, the panel wouldn’t know it from a hole in the ground.

  52. Thanks for the transcript, Ned. My first impression after reading it is that our court system is a complete joke. The oral arguments were a complete waste of time. For the most part the judges seemed completely clueless about the facts.

    Most disappointing to me is that, in a case where the presented claims were admittedly patentable only because of a recited mental step, the issue of the ineligibility of claims that prevent otherwise non-infringing actors from thinking about certain facts was only danced around. The term “mental” was used only three times during the oral arguments.

    I think Mr. Shapiro (counsel for Mayo) did an absolutely terrible job of explaining the issues to the court.

    And then of course there was Mr. Verilli from the USPTO who was also not helpful but who at least made a couple interesting statements. This one in particular:

    Mayo is correct that you can’t get a patent by tacking a mental step onto an utterly conventional process for administering drugs and testing their effects.

    So how was it, Mr. Verilli, that Prometheus got its patent? A patent that it’s been using to deplete a hospital of millions of dollars in attorney fees?

    CHIEF JUSTICE ROBERTS: I was just going to say, what is the great advantage you see of putting this critical question off until the 102, 103 analysis, rather than cutting it off at the beginning, 101, which I understand your friend to say is very important because you don’t want people to have to pause terribly long to see if this is something they can do?

    GENERAL VERRILLI: As a practical matter, at the PTO, Mr. Chief Justice, it doesn’t make any difference, because the PTO examiner gets a patent application and answers every question, 101, 102, 103, 112, and makes a decision about all of them. So it’s not going to lead to any benefit at the PTO.

    So how was it, Mr. Verilli, that Prometheus got its patent? A patent that it’s been using to deplete a hospital of millions of dollars in attorney fees?

  53. You’ll love the parts in the transcript, IBP, where the lawyers and the judges manage to confuse utility with enablement. Prometheus’ counsel actually discusses the utility prong of 101 and then, in practically the same breath, argues that utility is not a 101 issue.

  54. Is it proving a negative if you say a doctrine is alive and people want you to show that it is alive?

    More like it, is that you are just full of shtt.

  55. Not A Sockpuppet

    That’s funny.

    what’s wth calling everyone sockie?

    What’s with the stxpxd pseudonym that you change all the time, sockie?

  56. From the tradingcharts article:

    The Supreme Court at times appeared to struggle with how to distinguish patents on laws of nature, which are prohibited, from patents that apply the laws of nature, which are allowable.

    Well, there’s a very, very easy way to distinguish those two types of patents.

  57. and adjusting the dose accordingly.

    I almost forgot: Prometheus’ broadest methods do not even include this step.

  58. First news from the front:

    link to news.tradingcharts.com

    Prometheus lawyer Richard Bress said the Supreme Court has never suggested that there are extra legal limitations that prevent patents on developing new information. He argued that the company’s patents don’t claim laws of nature, but instead protect new methods that allow doctors to analyze a patient’s blood to determine if a drug dose is too low and ineffective, or too high and potentially toxic.

    “We are simply claiming the fact that we found,” Bress said.

    Justice Samuel Alito immediately jumped in with an objection. “And that’s a natural phenomenon,” he said.

    Justice Elena Kagan, noting the concerns of Prometheus’s critics, said, “All you have done is pointed out a set of facts that exist in the world.”

    Mayo lawyer Stephen Shapiro said the court should invalidate the patents to “protect the storehouse of information that doctors really need. They have to be able to look at the body’s reaction to injections, pills, chemotherapy, radiation; and different hospitals have to have different opinions to safeguard the health of our people.”

    Wow, Bress kicks up some dust and then, thinking that nobody will notice, he puts his foot in his mouth. “He argued that the company’s patents … protect new methods that allow doctors to analyze a patient’s blood to determine if a drug dose is too low and ineffective

    None of the actual steps (alone, or combined in their recited order) in the claimed method are new. The only “new” part of the claim is the part where the infringer thinks about the result of the old data-obtaining method and compares the result to a “new number” that Prometheus published in their specification. Even if one includes the “thinking” step, the claimed method includes within its absurd scope the old/obvious method of administering the drug, discovering that the dosage was extremely high and/or extremely low based on metabolites in the blood (and other symptoms) and adjusting the dose accordingly.

    I’m sure Bress will sleep well regardless. Belly full of koo-aid and all that.

  59. Did I say either of those would pass? No? Ok then

    Then I simply do not understand what it means to “include an inference” in a claim. Bear in mind, we are surely talking about claims in which the only novel limitation in the claim is the inference. Otherwise: who cares? So, what does it mean to “include an infererence” in an “otherwise patent eligible” claim?

  60. sockie Why does MM see “Quinnie Poo” spots everywhere?

    Why is only sockpuppets who care so deeply about this occasional feature of my comments?

  61. But it’s not their theory, or proposition as you have called it.

    It’s yours.

    You are the author.

    You thought it up.

    Thank you for acknowledging this. If someone articulated my “effective patenting of a mental step” test for 101 eligibility before I did, I’d appreciate knowing where and when that happened.

  62. I was going to go but ended up writing an OA into the wee hours of the night so I didn’t make it :( Also it was really raining outside at 5:30 so I didn’t want to stand in the rain. On the other hand I might could have just shown up and there may have been no line at 9.

  63. Interesting:
    link to scotusblog.com

    UPDATED: A recusal in Mayo case?
    Update 10:06 a.m. December 7: Justice Breyer is participating in the case. The stock in question was owned by Mrs. Breyer and she arranged to sell it after learning of the conflict last night. Confirmation of the sale was received before oral argument began this morning.

    Whew!

  64. conflate patent-eligibility under 35 USC 101 with patentability under 35 USC 102/103.

    Is looking at the effect of a claim on the ability of practitioners of the prior art to think about what they are doing equivalent to “conflation” in your opinion, EG?

  65. Just noticed this:

    Nov 22 2011 Motion of the Solicitor General for leave to participate in oral argument as amicus curiae and for divided argument GRANTED.

    That’s cool.

    Also, the arguments were at 10 EST. So they are over now. What’s the word on the street? When do the transcripts/recordings get posted?

  66. Love how Noonan completely ignores the arguments in the government’s brief and in Mayo’s brief about the effective patenting of a mental step. He’s never addressed them

    compare:

    The Federal Circuit again reversed the District Court, finding that the claims recited sufficiently transformative steps that they satisfied the Bilski “machine or transformation” test. The Court rejected the District Court’s characterization that the claims consisted of three steps: (1) administering the drug to a subject, (2) determining metabolite levels, and (3) being warned that an adjustment in dosage may be required, wherein the first two steps were “data-gathering,” leaving the third step as merely an unpatentable mental step, comprising the correlation, because no step requiring a change in administered dose.

    W

    T

    F

  67. How is that EP claim not anticipated? They already had the drugs they’re using in the app at the time of filing I thought. All the rest of the bs in your claim doesn’t change the drug one bit.

  68. link to patentdocs.org

    Love how Noonan completely ignores the arguments in the government’s brief and in Mayo’s brief about the effective patenting of a mental step. He’s never addressed them. Just more relentless, shameless shilling for Kevin’s beloved pharma industry.

  69. (US) A method for treating a subject suffering from ulcerative colitis, Crohn’s disease or another immune-mediated gastrointestinal disorder, which comprises administering to said subject a drug providing 6-thioguanidine (6-TG) at a predetermined therapeutically effective and non-toxic dose for said subject such that the level of 6-TG in 8 x 10*8 red blood cells is between 230 and 400 pmol.

    (EP) A drug providing 6-thioguanidine (6-TG) for administration to a subject suffering from ulcerative colitis, Crohn’s disease or another immune-mediated gastrointestinal disorder at a predetermined therapeutically effective and non-toxic dose for said subject such that the level of 6-TG in 8 x 10*8 red blood cells is between 230 and 400 pmol.

    They seem much better from an elibility perspective, Paul, but much worse from a novelty perspective, particulary given the likelihood of inherent anticipation.

  70. Paul, regarding the “functional expression,” if it is deemed that, 112(6) will not save the claim from Perkins Glue and Wabash. 112(6) is specifically and intentionally limited to combination claims to specifically address Halliburton (see also, Faulkner v. Gibbs) and to not address Perkins Glue and Wabash.

    *link to scholar.google.com

  71. Paul, regarding your US claim, AFAIK, that is not the claim before the Supreme Court, as I understand it, but I may be wrong. Here is the claim I think is under consideration. I just copied it from the Mayo brief:

    1. A method of optimizing therapeutic
    efficacy for treatment of an immune-mediated
    gastrointestinal disorder, comprising:
    (a) administering a drug providing 6-thioguanine
    to a subject having said immune-mediated
    gastrointestinal disorder; and
    (b) determining the level of 6-thioguanine in said
    subject having said immune-mediated gastrointestinal disorder,
    wherein the level of 6-thioguanine less than
    about 230 pmol per 8×108
    red blood cells
    indicates a need to increase the amount of said drug subsequently administered to said
    subject and
    wherein the level of 6-thioguanine greater than
    about 400 pmol per 8×108
    red blood cells
    indicates a need to decrease the amount of
    said drug subsequently administered to said
    subject.

  72. I wonder at times how one can arrive at the conclusion that the sole novelty in the claim is the otherwise unpatentable X unless one has already determined that through a 102 filter.

    It may occasionally require a 102 analysis, but it was admitted in Prometheus and it’s not always such a subtle thing in a claim that would normally be subjected to a 101 analysis in the first place.

  73. that the sole novelty in the claim is the otherwise unpatentable

    PSSSST – point of novelty is D E A D.

  74. I agree with Paul that it is sad to see the Supreme Court wasting its time considering claims that failed to satisfy the utility requirement.

    Paul, your US formulation solves that problem very precisely, congratulations. I like your claim, depending of course on there being adequate description in the spec of “treating” and “therapeutically effective”, such that the 3 prongs of the utility requirement are all met.

    I know I’ve criticized you in the past, but this post of your is a shining beacon. I can’t stand it when courts bend over backwards to help out large concerns on theories such as “settled expectations” and the like.

    My expectation is that the no-doubt registered patent attorney who was paid by Prometheus and who drafted the claims, and the committee/IP manager who approved its filing, are all competent to draft the best claim possible within the limits of their experience and expertise.

    The claim, as drafted, is below the minimum threshold for acceptability in my opinion, for any registered patent attorney.

    Paul has shown us how it should be done, so that we can stop wasting time on 101/112, and move on to other considerations such as 102/103.

    Bravo Paul.

    I think that everybody’s trying to save a buck on up-front costs, and that they are getting what they paid for in terms of claims.

    Paul’s claim demonstrates what can be produced by somebody who is ACTUALLY INTERESTED in what they are doing, and not just working to make a quick buck.

    /end rant

  75. It is not always a good idea to ask courts to derive broad general principles from specific cases. You may receive what you have asked for and it may not be to your liking, or to the long-term benefit of the law.

    It is better for the court to decide the case before it, identifying such rules as it must to resolve the controversy, but leaving other situations to be decided in future cases.

    In the UK the House of Lords (until recently our highest court) gave a decision on passing-off. Two of the judges identified essential features of the tort and they agreed that there were five features. But as I recall (and it is some time since I last read the judgment) that there were three features common to the two lists. And any experienced practitioner could identify factual situations where passing-off would succeed but were outside the definition. So I would be cautious about any court (and especially a non-specialist court) attempting to lay down thr law in a specialised field.

  76. The cases cited make a very interesting and relevant point. However, in a post such as this it is appropriate to address one point at a time, and the scope of the definition of the drug is not dealt with in the proposed claims because it is not the central issue in the present appeal.

    However, there are strong arguments that the definition is too broad and the authorities cited appear to be well in point.

    It also troubles me whether “a drug providing 6-thioguanidine (6-TG)” is a functional expression caught by 35 USC 112(6). Since the term “drug” covers any human or animal administrable compound that has a physiological effect, its structural significance is vanishingly small. The rest of the definition is mere function. So it is strongly arguable that 112(6) indeed bites.

    The further question arises whether the claim is broader than the invention. The specified compounds have a narrow therapeutic window, and hence the dose has to be tailored to the individual patients. There may be members of the class which are therapeutically useful and produce 6-TG but do not have the narrow therapeutic window so that e.g. 125 or 250 mg tablets would suffice for most patients and individual dose estimation was not necessary. As patent attorneys we are in the business of obtaining the broadest possible protection for our clients, but we should not fall into the traps of over-speculation or irrationally broad claims, especially when the drugs of interest are (as here) quite specific.

  77. EG, I wonder at times how one can arrive at the conclusion that the sole novelty in the claim is the otherwise unpatentable X unless one has already determined that through a 102 filter.

    Still, take the program-bearing CRM. Here the sole novelty is admittedly the program. Is the “claimed” CRM new?

    Perhaps Prometheus will has some bearing on this question in a tangential way as the issues seem comparable: if the only variance from the prior art (process, machine, article, composition) is in information, is the prior art (process, machine, article, composition) even new in a patentable sense?

    Is information patentable?

  78. And yet,

    …a rather vocal minority on these boards actively seek the conflation position.

    If only the empty wagons could be loaded with some legal insight, the deafening clatter would abate.

  79. Why does MM see “Quinnie Poo” spots everywhere?

    The post by D’OH! has no tell-tale signs, yet still Malcolm sees the blood spots where they are not.

    Hark, is that a heartbeat coming from beneath the floorboards?

    Oh what to do? Dear Malcolm, what will you do?

  80. What is more unfortunate in the Prometheus case, Paul, is that the US courts are so focused now on patent-eligibility under 35 USC 101 (still governed by a very subjective standard) that they completely forget about 35 USC 102/103/112 issues (governed by objective standards0 with these Claims. Or worse yet, as SCOTUS may do tomorrow during oral argument, conflate patent-eligibility under 35 USC 101 with patentability under 35 USC 102/103. I agree with Professor Michael Risch’s view on patent-eligibility (i.e., should be interpreted to encompass rather than restrict) which is cited in Eisenberg’s article.

  81. Agree completely with you, Les. That conflation/confusion was evident during SCOTUS oral argument in the Bilski decision.

  82. It is sad to see the Supreme Court picking up the pieces after unfortunate claim drafting. Two claims are set out, one in European format and the other in US format that would have avoided the problem:

    (US) A method for treating a subject suffering from ulcerative colitis, Crohn’s disease or another immune-mediated gastrointestinal disorder, which comprises administering to said subject a drug providing 6-thioguanidine (6-TG) at a predetermined therapeutically effective and non-toxic dose for said subject such that the level of 6-TG in 8 x 10*8 red blood cells is between 230 and 400 pmol.

    (EP) A drug providing 6-thioguanidine (6-TG) for administration to a subject suffering from ulcerative colitis, Crohn’s disease or another immune-mediated gastrointestinal disorder at a predetermined therapeutically effective and non-toxic dose for said subject such that the level of 6-TG in 8 x 10*8 red blood cells is between 230 and 400 pmol.

    The novelty in each case is that the dose is predetermined for each subject such that it resides in the narrow therapeutic window below which the drug is ineffective and above which it is toxic.

    To the best of my knowledge, methods of treatment of disease are considered patentable in US. And for us in Europe a purpose-related product claim is now recognised in the EPC and is clearly patentable (depending of course on novelty, obviousness, etc).

    I think these claims took me about 40 minutes to write after seeing the patent.

    Note that TypePad does not do superscripts, hence *.

  83. Why does this TV have only one channel (101) and is stuck showing the same re-runs of the anti-software patent crowd being hammered?

  84. But it’s not their theory, or proposition as you have called it.

    It’s yours.

    You are the author.

    You thought it up.

    One would think you would at least have the intellectual courage, to respond to inquiries and challenges.

    As it stands now, and as it has for the last 6 months since you first proposed this policy change, and would be law, you can’t show ONE example of a patent that successfully prevented someone from thinking.

    Not ONE!

    Thus your idea for in effect dissecting claims into mental and physical steps in order to find them non statutory has no rational basis or any foundation in law or fact.

    ::And down goes MM, again! ::

  85. tools and machines which more quickly, conveniently and accurately obtain information are called computers

    Really?

    Patent blogs have some of the dxmbxst sockpuppet commenters on the Internet. And they all seem to love Quinnie Poo. Why is that?

  86. But what she means, in context, is that you could very well include an inference in an otherwise patent eligible claim and likely come out ok

    “A composition, wherein said composition comprises a bicyle and [novel inference X].”

    Really?

    “A method, wherein said method comprises [old step producing old result A] and [thinking a new thought about old result A]”

    Really?

  87. Well, certainly this underscores both the ridicules nature of MM’s proposition and the potential danger, as such policy could and would spill over into statutory subject matter such as TV sets and Anesthesia.

  88. “You can do it by showing ONE example of a patent that successfully prevented someone from thinking.”

    bedebedebede what about a patent on a TV set? Or an anesthetic?

  89. Why don’t you respond to it?

    Especially since is a your claim?

    You can do it by showing ONE example of a patent that successfully prevented someone from thinking.

    Go ahead Malcolm. I double dog dare you.

  90. On the other hand, patents on tools and machines which more quickly, conveniently and accurately obtain information which can be then be used to diagnose or study disease will help immensely

    Those are called computeres and typically have software components.

  91. “This is poorly written.”

    Somewhat. But what she means, in context, is that you could very well include an inference in an otherwise patent eligible claim and likely come out ok. Just as you could slap the arrhenius equation into a claim to a very particular use you could throw a diagnostic inference on as well. At least under the old caselaw. Perhaps the USSC will adopt your position tomorrow MM.

    “As I’ve alluded to you before, there is an industry of non-productive skimmers out there who seek to capitalize off the trade of genetic information. There are commenters out there who believe that this industry deserves to be coddled and treated exceptionally (much like the proponents of software patents believe that they should be treated differently) merely because some wealthy people hope to become even more wealthy by gambling on the value of the information. Those commenters are invariable shilling for their self-interest. ”

    Perhaps so but I’m not in much of a position to do anything about it. Just yet.

    ” At the bottom of the cesspool, of course, are the insurance companies who seek to patent their methods of profiting from control of the information.”

    Sounds like the game I need to get into :)

  92. it’s impossible for a claim to remove mental processes from the public domain.

    Maybe Professor Eisenberg or Professor Crouch will respond to the statement quoted above.

    In fact, I dare them to respond to it. ;)

  93. “6, look at the discussion at ns. 282-286 on pages 90-2. There the author suggests that one gets “wholly preempt” etc., if the claim is so broadly stated as to not be limited to a particular use, but instead claims the principle in the abstract.

    I think this makes sense and is essentially my understanding of Benson. Bu, what is your take?

    That’s the bottom line I’ve been impressing upon you for the last few years. Although I doubt from your repeated backslidings into nonsense whether or not you truly understand w tf that means.

  94. “But if the Supreme Court will simply tackle this easy question of claims that effectively remove mental processes from the public domain, that would suffice for yours truly and a great many other like-minded folks.”

    The only problem with that question is that it’s impossible for a claim to remove mental processes from the public domain.

    And pop goes the weasel!

  95. Eisenberg: “Every claim “wholly preempts” the subject matter that it covers; the issue is how broadly one may claim a diagnostic inference.”

    This is poorly written. In fact, it doesn’t matter if a “diagnostic inference” is narrow or broad. “Diagnostic inferences” are not patentable subject matter. “Diagnostic inferences” are merely facts or, if you prefer, abstractions.

    An article of manufacture, e.g., a kit or a machine, that converts a human sample into information (i.e., “more drug is needed”) is certainly eligible and, if it incorporates novel elements in a non-obvious fashion, may very well be patentable over the prior art. But the inference itself is not eligible for patenting (indeed, inferences of any sort have never been eligible for patenting). The only way inferences can be “protected” is by keeping them secret.

    As I’ve alluded to you before, there is an industry of non-productive skimmers out there who seek to capitalize off the trade of genetic information. There are commenters out there who believe that this industry deserves to be coddled and treated exceptionally (much like the proponents of software patents believe that they should be treated differently) merely because some wealthy people hope to become even more wealthy by gambling on the value of the information. Those commenters are invariable shilling for their self-interest. Granting patents on claims such as those Prometheus is pursuing does absolutely nothing to promote progress in understanding or treating human disease.

    On the other hand, patents on tools and machines which more quickly, conveniently and accurately obtain information which can be then be used to diagnose or study disease will help immensely. The people who develop such tools and machines deserve to be rewarded. The people who seek to protect the information obtained using those machines are invariably skimmers, contributing nothing and increasing the cost of treatment for everyone else. At the bottom of the cesspool, of course, are the insurance companies who seek to patent their methods of profiting from control of the information.

  96. 6, look at the discussion at ns. 282-286 on pages 90-2. There the author suggests that one gets “wholly preempt” etc., if the claim is so broadly stated as to not be limited to a particular use, but instead claims the principle in the abstract.

    I think this makes sense and is essentially my understanding of Benson. Bu, what is your take?

  97. Professor Eisenberg asks the Supreme Court to use this next opportunity in Mayo v. Prometheus to “not only to clarify the boundaries of patentable subject matter, but to explain what the doctrine of patentable subject matter is all about.” She points to three possible uses of the doctrine: (1) PSM could serve as a threshold inquiry that economizes administrative costs by excluding some kinds of subject matter from the front door of the patent system without the need for a full examination. However, Eisenberg recognized that “patentable subject matter doctrine does not and cannot serve that role in its current form.” (2) PSM could be useful in “limiting heterogeneity” of the system by narrowing the technological diversity of patentable inventions and excluding technologies for which “less protection is optimal.” (3) PSM could serve as a backstop for when other patentability doctrines fail to protect the public domain, properly limit claim scope, or ensure that building blocks of innovation are available for future innovators.

    Yes, the Supreme Court could do all this and they would please as many folks as they infuriate.

    On the other hand, the Supreme Court could also simply hold that to the extent practitioners of the prior art are turned into infringers merely because said practitioners of the prior art are thinking new (and unpatentable) thoughts, Prometheus’ claims are ineligible under 101 or alternatively anticipated per se (because mental steps can not be relied on to turn a prior art method into a new method).

    This solution to the “problem” presented by claims such as Prometheus’ claims has the benefit of being incredibly easy to apply and is also 100% consistent with previous Supreme Court jurisprudence on what constitutes ineligible subject matter, i.e., claimed inventions that literally or effectively remove mental processes from the public domain are ineligible for patenting.

    I’m guessing that by the end of the day tomorrow, in spite of Prometheus’ best efforts to cast themselves as the Protectors of Human Health and the Future of the United States (thereby making Kevin Noonan insanely jealous), the Supreme Court will know exactly what to do. The Prometheus will not look anything like the Bilski decision, nor will it look much like Professor Eisenberg’s dream decision. That said, I sympathize with Professors Eisenberg and Crouch (and others) in their desires. I’m just not convinced that our legal system is set up to answer broadly-relevant “big” questions of patent law in an efficient, effective and lasting manner.

    But if the Supreme Court will simply tackle this easy question of claims that effectively remove mental processes from the public domain, that would suffice for yours truly and a great many other like-minded folks.

  98. And Cage, Ned is an expert at looking like a fxxl.

    (hey, just more truth Ned, just more truth)

  99. Cage, as in “coffin making” is an example of a business method and therefore is within the Useful Arts?

    AI and his fellow travelers are full of themselves. They spout nonsense and merely assume that everyone else agrees with them. They frankly admit to delusions of grandeur, and that they are engaged in “holy” war with the likes of Douglas, Stevens, Stern and yours truly who are, in their view, trying to confine patentable subject matter to the industrial age processes.

    That AI?

    He actually says in recent threads that he “has instructed” me on the reason the Bilski court held the claims in that case to be Abstract. Really? Absolutely everyone agrees that the Supreme Court did not explain its reasoning at all. See, e.g., the Eisenberg article at Section II, beginning at page 29.

    To even begin to suggest that AI is credible on this topic is to make yourself, whoever you are, to look like a fxxl.

  100. “sticking strictly to what the courts have told us and save herself a lot of breath and a lot of time .”

    6, if you would do that you would save us all a lot of time.

  101. “While some exclusions from patentable subject matter have provided clear rules for a period of time, such as past exclusions for business methods and living things,226 often these exclusions have eventually proven to be overinclusive in the face of technological change.227 Technological change makes categorical exclusions that may have made sense in an earlier era seem out of date and unworkable.”

    Meh, not really.

    “Conversely, subject matter exclusions that operate as flexible standards, such as that for “abstract ideas,” have proven more durable over time, but their meaning is too vague and uncertain for them to serve as gatekeepers in a way that economizes on administrative costs.”

    True but irrelevant as economizing administrative costs is not the purpose.

    “As categorical field exclusions have disappeared, remaining limitations on patentable subject matter, such as the exclusions for abstract ideas and natural phenomena, are more likely to require careful claim-drafting than to keep an invention from crossing the threshold of the PTO.”

    Not really. It does what it always has done, policed the scope of what you can get when it comes to the big three. Furthermore, it endeavors to ensure that you cannot get around that by the drafting art.

    “As Professor Chiang explains, the prohibitions on patenting abstract ideas and scientific principles are not about excluding certain subject matter from the patent system entirely but rather about avoiding unduly broad claims.234″

    Amazing, maybe you should have put that up a little bit above what you just got through writing about for 10 pages.

    “Such limitations may be useful as a means of avoiding the allowance of unduly broad claims, but they do not serve as threshold tests that economize on administrative costs.”

    Really blowing my socks off there sista!

    All in all the paper isn’t bad so far, and her commentary and conclusions at the end are decent. But at the end of the day she could leave out noting the tar d arguments and also put in blatant things like the purpose of the BFDB line of cases and that of the subject matter exclusions while not messing with them and still have a decent paper. Perhaps in her next paper she will more fully incorporate my opinions by sticking strictly to what the courts have told us and save herself a lot of breath and a lot of time running down rabbit holes that need not be trodden.

  102. “But without understanding what patentable subject matter boundaries are supposed to accomplish,”

    The purpose is exactly what we see happening in Benson, Flook and Diehr. You see an attempt to patent excluded subject matter by utilizing the drafter’s skill, an attempt to avoid being invalidated yet again by the drafter’s skill, and finally simply an attempt to patent one single use of an abstract idea that has millions of uses which go unclaimed. In other words, the purpose is to ensure that the patentable subject matter exclusions are observed and additionally are not subverted by the drafter’s skill.

    “Commentators have stepped into the void, producing a rich and varied scholarly literature.”

    … with apparently none of the ones that she has read (or bothers to mention) bothering to correctly identify the purpose of the exclusions and the subsequent caselaw addressing them by simply, oh idk, reading the decisions.

    She goes on to note some other policy objectives etc. for having the subject matter exclusions, but she neglects the one overarching purpose that she herself brought up awhile back. The entire issue is over how broadly one may claim a given thing in three specific categories and that is according to her own paper, me, everyone else and the USSC. That is the entire issue, and it is “purpose” of the decisions which have implemented the exclusions to set precisely just how broadly you may claim a given thing in those categories, which she notes has been stated on many occasions by the USSC. That is the only purpose. However, she seems to wish to make up additional purposes for them to exist. There is no need to make up additional purposes.

    “First, if the threshold test is to provide a useful screen, the exclusions should rest on at least a rough assessment of whether patent protection is socially desirable for different categories of invention, thereby excluding patents in areas where they are either unnecessary to promote innovation or impose monopoly costs that exceed corresponding benefits in the form of innovation incentives.223″

    And yet, magically, the test the courts have been applying just happens to have that as a side effect.

  103. “Every claim “wholly preempts” the subject matter that it covers; the issue is how broadly one may claim a diagnostic inference.”

    It is always nice to see my opinions show up in later scholarly works.

    “Intuitively it may seem odd to rest the determination of patentable subject matter on the transformative character of incidental claim elements that do not otherwise contribute to the patentability of the invention. But arguably the Supreme Court did just that in Diamond v. Diehr,134 when it affirmed the patent eligibility of a computer-implemented “method of operating a rubber-molding press with the aid of a digital computer,”135″

    Only if the person so arguing is of the tar d caste of patent commentators. He who has a mind to understand and eyes to read can easily understand Diehr after having read such a few times through. And Diehr is most certainly not resting on “incidental” claim elements.

    “over a vigorous dissent pointing out that the only patentable difference between the invention and the prior art was the use of an unpatentable “algorithm” to calculate the rubber cure time.136″

    Indeed, but that which goes un-noticed by most commenters on this is the claim construction which the dissent adopted which differed wildly from that of the majority. And what is then also ignored is that the dissent noted that if it went with a different construction then the result would likely be different, in other words, if their claim construction was the same as the majority then they’d probably join the majority.

    “If that is all it takes, it would seem that Claim 1 of the ’623 patent could likewise be saved by inserting explicit claim steps of “obtaining a DNA sample from a patient” and”

    Yes, but what happens to the intended infringer in such a scenario?

  104. Just so you do not get too enthusiastic, I think passing the MOT clearly defines subject matter within the Useful Arts.  Machines, article manufacture and compositions of matter constitute patentable subject matter by statute.  Processes constituting methods of making and using machines articles of manufacture and compositions of matter are also clearly within the Useful Arts.  The problem occurs when a method has nothing to do with a machine, article manufacture or composition of matter.  Are such methods within the Useful Arts?

    That question is different from the question of whether a particular claim is abstract or not.

  105. Dennis, there is a error in this footnote. The author cites Kennedy’s concurrence. The concurrence was by Stevens.

    “18 Bilski, 130 S. Ct. at 3229-30 (“[T]he Court resolves this case narrowly on the basis of this Court’s decisions
    in Benson, Flook, and Diehr, which show that petitioners’ claims are not patentable processes because they are
    attempts to patent abstract ideas. Indeed, all members of the Court agree that the patent application at issue here falls
    outside of § 101 because it claims an abstract idea.”); id. at 3235 (Kennedy, J., concurring) (“Although I happen to
    agree that petitioners seek to patent an abstract idea, the Court does not show how this conclusion follows
    ‘clear[ly],’ [] from our case law.”) (citation omitted).

  106. “Older precedents that might have called patentable subject matter into question,12 although never clearly overruled, had seemed destined to be lost in antiquity,”

    … But then, when all hope had died, and the hour of doom seemed at hand… a young man clothed in the anonymity of the internets appeared as if from nowhere. Wielding the caselaw in his right hand and the internets in his left, he sealed the darkness away and gave the land light.

    Remember boys and girls, oral args at the USSC tomorrow!

  107. In a sense, I agree with you. The Supremes never clearly stated why the Bilski claims were abstract, but they were convinced that the claims were notoriously old, obvious and too broadly stated. These are not 101 issues, at least, they should not be.

    The more I think of it, the more I like the government brief in Prometheus where they suggested that the modification of a old process by the addition of a non functional mental step was not a 101 problem, but a 102 problem.

  108. The first thing the Supreme Court should be asked to do is comprehend the difference between 35 USC 101 and 35 USC 103 and to stop asking questions directed at 103 during oral argument.

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