Gene Patents: AMP v. Myriad Genetics

The Supreme Court today vacated the Federal Circuit’s decision in AMP v. Myriad Genetics and has ordered the appellate court to reconsider the case in light of the recent Supreme Court decision in Mayo v. Prometheus. To be clear, the Supreme Court’s move here is not a ruling on the merits but rather merely a recognition that the validity of Myriad’s human gene patents may be impacted by the Mayo decision.

I previously wrote that one reasoned result of the Mayo decision is that Myriad’s claims directed toward isolated human DNA are now invalid.

Following Mayo, the court could logically find that the information in the DNA represents a law of nature, that the DNA itself is a natural phenomenon, that the isolation of the DNA simply employs an isolation process already well known and expected at the time of the invention, and ultimately that the isolated DNA is unpatentable because it effectively claims a law of nature or natural phenomenon. One distinguishing point is that Prometheus claimed a process while Myriad claims a composition of matter. As we have seen in recent cases, the Federal Circuit already largely rejects formalistic distinctions between process and composition claims. Here, that distinction is further minimized by the reality that the claimed DNA is functionally characterized by the already well known process of isolating human DNA.

 

About Dennis Crouch

Law Professor at the University of Missouri School of Law. Co-director of the Center for Intellectual Property and Entrepreneurship.

194 thoughts on “Gene Patents: AMP v. Myriad Genetics

  1. ed Heller said in reply to Man Not Nature…

    Man, is that the limit on Congress power, really? Is that your position that the only things that Congress can legislation on vis-a-vis the public domain are with respect to

    What if Congress amended the law to expressly allow patents on any discovered thing, regardless that it was a new plant or animal or anything else, that was not publicly known, and regardless that it was made by man or merely discovered, and provided it was useful. It is your stated position that such would be beyond Congress power?

  2. Maybe the 1600 renewal rate is so low because most of the time the only claims they’ll allow are so ridiculously narrow that they aren’t worth the paper they’re printed on…and maybe it takes the Applicant a couple of years to come to terms with that (or decide, by committee, to drop the maintenance fees that aren’t worth it).

    Oh wait, that’s just the Examiners we get–I see ridiculously high allowance rates for other Examiners in the same art units. If the PTO randomly assigned applications to examiners, our allowance rate would be much higher

  3. Conjecture, you have the burden.

    Give me one case that held that a composition of matter claim was invalid on the legal grounds that it was a product of nature.

    In re Bergstrom flatly rejected that proposition and it is controlling law in the Federal Circuit unless it has been overturned.  Certainly, no Supreme Court case overturned it.

  4. I cannot prove a negative

    You cannot prove anything with what you have shown.

    Other than your propensity for falsehood.

  5. Conjecture, you have the burden, not me, to show me one case, just one, where the court held that a composition of matter was not patentable on the grounds it was  a product of nature.  I cannot prove a negative.  I have looked, but have found none.

  6. My point, in fact

    Absolutely Clueless Ned.

  7. This is standard stuff. Middle school math.

    It’s also a non-answer to the question of “What is the structure of that “standard stuff?” e.g. anything does not cut it for “structure.” Would arsenic work for your e.g.? Sounds more than just a little indefinite as to your high and mighty standards.

    Read, man read.

    As to the second question, you flail with a “Again, you stand corrected when you haven’t done any correcting. You say “Let it go” but you haven’t given anything to let go. You’ve been a bag of hot empty air, vacuous (as usual).

    It’s easy to see that the swearing comes out when you have no real answer.

    Truly pathetic.

  8. Man, OK, just what case held that discovered compositions of matter were not patentable.  Hand, in 1911, thought they were.  So, it must have been after that date.

    Identify the case.

  9. Losing side?  Check the result in Prometheus.  Check the result in Bilski?  

    I know a losing side when I see it.  

    You guys are full of it, aren't you?

  10. sockie X compositions and non-X compositions are not structure. What the h311 is a non-X composition?

    I guess you can always make it more clear for the kindergartner crowd. If you have a composition that consists of at least 95% X, that means that the composition consists of at most 5% non-X. For instance, a 95% pure composition of chicken fat (by weight) may contain no more than 5% non-chicken fat substances, e.g., bone, meat, beak, toenails.

    This is standard stuff. Middle school math.

    The question for functional claiming was obviously to “isolating.”

    Again, you stand corrected. Let it go, sockie. Oh, I forget. You can’t do that because you’re a dissembling axxhole.

  11. did in fact do that in 1793

    Not according to the Supreme Court, the regular courts, the Office (and pretty much anyone else who looks at this rationally).

  12. You sure do enjoy the swagger of 6 and MM (and compared to them, the comments here are downright meek).

    In truth, you are just mad because you are on the losing side again of the GD War.

  13. What if Congress amended the law to expressly allow patents on any discovered thing, regardless that it was a new plant or animal or anything else, that was not publicly known, and regardless that it was made by man or merely discovered, and provided it was useful.

    Then your ramblings might have a chance of being correct.

    Come back and post your nonsense when that happens.

    It is your stated position that such would be beyond Congress power?

    No. It is merely my stated position that such has not happened and that you would need such to happen for your view to have any traction. As it is, you are spouting groundless rhetoric and butchering case law to no end.

  14. Yeah.

    You guys behave like Roseanne Barr who tweeted the address of Zimmerman's parents for the sole purpose of intimidation, retaliation and h*ate.  

    Really nasty folk, she.

  15. Man, is that the limit on Congress power, really?  Is that your position that the only things that Congress can legislation on vis-a-vis the public domain are with respect to man made things?

    What if Congress amended the law to expressly allow patents on any discovered thing, regardless that it was a new plant or animal or anything else, that was not publicly known, and regardless that it was made by man or merely discovered, and provided it was useful.  It is your stated position that such would be beyond Congress power?

    Now, on what do you base your authority?

  16. disregard of manners, civility, due respect, or any other hint that the poster could possibly be one of proper upbringing, a member of civilization, or a gentleman or lady.

    Enjoy the swagger Ned.

  17. Cluesless yet again Ned.

    You attempted to use Golan to say that the subjecte matter of nature can be made patent eligible.

    BZZZZZZZZZZZZZZZZZZZT. Wrong.

    In Golan the subject matter of that case wherein the subject matter was removed from the public domain was ONLY subject matter created by man in the first place.

    Will you please wake up and understand the posts beofre commenting?

  18. Man, My point, in fact. You are not fighting with me, my friend.  We are on the same side here against the poster who said that Golan excluded natural phenomena.

  19. Are you flippin dense?

    The Golan case was explicitly about copyrights as subject matter. Basic copyright law is that copyrights are only available on subject matter created by man. Ergo, the works available to be taken out of the public domain are not those made by nature, but by man. You cannot stretch Golan beyond the controlling facts of that case.

    Works of nature belong to all.

  20. L ia R, OK, cite the case where the Supreme Court clearly held that compositions of matter found in nature were not the proper subject of a patent.

    Cite please.

    Chakrabaty.

    Duh.

  21. No, the poster referenced the Golan case.  Where in that case is the exclusion he claimed was there for Congress' power vis-à-vis the public domain. He said it was there. Now let him back it up. We are not talking about basic copyright law. We are talking about a specific Supreme Court case and what it held about Congress's power to withdraw subject matter from the public domain.  This had nothing specifically to do with copyrights. 

  22. L ia R, OK, cite the case where the Supreme Court clearly held that compositions of matter found in nature were not the proper subject of a patent.

    Cite please.

    I am aware of no such cases anywhere. That is why I said what I said; and it is not a lie, but based upon research.

    In contrast your post is illustrative of your routine disregard of manners, civility, due respect, or any other hint that the poster could possibly be one of proper upbringing, a member of civilization, or a gentleman or lady.

  23. it is clear that the Supreme Court was operating under the assumption that a composition of matter found in nature was not patentable.

    “operating under the assumption”

    A duplicitous way of saying what the Supreme Court clearly understood the state of patent eligible matter.

  24. Chakra Batty (as you call yourself), it is clear that the Supreme Court was operating under the assumption that a composition of matter found in nature was not patentable. That being said, there is no case that I can find anywhere in Supreme Court jurisprudence that has actually held that a newly discovered composition of matter found in nature is not patentable. That issue was never squarely before the Supreme Court and they did not decide it.

    Furthermore, we learned from the recent copyright case that Congress has the power to grant copyrights for works that are in the public domain. So the objection that a composition of matter might be in the public domain is not a proper objection to Congress's power to authorize patents for compositions of matter found in the public domain. The only question is, did Congress authorized the patenting of newly discovered compositions of matter or not, and if they did, did they limit in any way that the compositions may not have been discovered from a product of nature?

    Now for your information, the authority for granting patents and compositions of matter entered the statutes in 1793.  The Patent Act of 1793 read, and I quote,

    "That when any person… shall allege that he… invented any new and useful… composition of matter… not known or used before the application… [shall receive] letters-patent… [on] said invention or discovery…."

    From the recent en banc Zoltek case, we learned that when construing the terms in a statute we look to what those terms meant when they were enacted. Since the granting of patents and compositions of matter were first placed into the statutes in 1793, our understanding of what Congress meant by the terms has to be in reference to understanding at that time.

    We know from Pennock v. Dialogue that "not known or used" before the application meant not known or used "publicly". There is no hint whatsoever in that case, or in any other case of that era, that some composition of matter found in nature but otherwise unknown to the public was not the proper subject matter of a patent.
     
    Furthermore, the very first case the talked about not patenting laws of nature or scientific principles was Le Roy v. Tatham.  There is no hint in that case that compositions of matter found in nature were not the proper subject of patents. That case was all about not being able to claim the laws of nature or principles in the abstract. That case cautioned that principles and abstract could not be claimed, but applications of the laws of nature or principles that produced new and useful results were the proper subject of patents. Mayor politely suggest that a composition of matter is such an application. It is not something abstract.

    So may I politely suggest that there is no authority whatsoever anywhere in the Supreme Court jurisprudence that would clearly hold that the plain act of Congress in 1793 to authorize patents on compositions of matter not known or used has no exception that the composition of matter might be found in nature.
     

     

  25. Why don’t you discover the words of the statute.

    35 U.S.C. 101 Inventions patentable.

    Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

    [1]
    process

    [2]
    machine

    [3]
    manufacture,

    [4]
    composition of matter

    Clearly the judicial exceptions apply after reaching one of the categories. Just as clearly as Ned’s category of choice is process, an equally susceptible category is composition of matter.

    You will note that Ned does not address this logic.

    After noting this, then read the Chakrabaty posts.

    After that, let’s see Ned try again.

  26. I have been considering the body of case law on this topic

    LOL. Is that what you call it?

    I think there’s something faulty alright.

  27. authorize copyrights on works that are in the public domain

    sure – works made by man.

    oops, forgot about that little aspect

  28. Worth repeating:

    Congress thus recognized that the relevant distinction was not between living and inanimate things, but between products of nature, whether living or not, and human-made inventions.

    Products of nature are not patent eligible. Period.

  29. Are you going to defy Thomas Jefferson. Are you going to defy Congress’s plain words?

    No, that’s why we have the Supreme Court. Hey, it’s their three exclusions:

    The Court has long held that this provision contains an important implicit exception.

    [1]
    “[L]aws of nature,

    [2]
    natural phenomena, and

    [3]
    abstract ideas” are not patentable.

    Diamond v. Diehr, 450 U. S. 175, 185 (1981); see also Bilski v. Kappos, 561 U. S. ___, ___ (2010) (slip op., at 5); Diamond
    v. Chakrabarty, 447 U. S. 303, 309 (1980); Le Roy v. Tatham, 14 How. 156, 175 (1853); O’Reilly v. Morse, 15 How. 62, 112–120 (1854);

    Furthermore, how can you call yourself a student of history and not cite the premier and broadest indication of patent eligibility cases, Diamond v. Chakrabarty, 447 U.S. 303:

    While laws of nature, physical phenomena, and abstract ideas are not patentable, respondent’s claim is not to a hitherto unknown natural phenomenon, but to a nonnaturally occurring manufacture or composition of matter — a product of human ingenuity “having a distinctive name, character [and] use.” Hartranft v. Wiegmann, 121 U. S. 609, 121 U. S. 615. Funk Brothers Seed Co. v. Kalo Inoculant Co., 333 U. S. 127, distinguished. Pp. 447 U. S. 308-310.

    [further:]

    This is not to suggest that § 101 has no limits, or that it embraces every discovery … Such discoveries are “manifestations of . . . nature, free to all men and reserved exclusively to none.” Funk, supra at 333 U. S. 130. (See Id. 309)

    [continuing:]

    His claim is not to a hitherto unknown natural phenomenon, but to a nonnaturally occurring manufacture or composition of matter — a product of human ingenuity “having a distinctive name, character [and] use.” Hartranft v. Wiegmann, 121 U. S. 609, 121 U. S. 615 (1887). The point is underscored dramatically by comparison of the invention here with that in Funk. There, the patentee had discovered that there existed in nature certain species of root nodule bacteria which did not exert a mutually inhibitive effect on each other. He used that discovery to produce a mixed culture capable of inoculating the seeds of leguminous plants. Concluding that the patentee had DISCOVERED “only some of the handiwork of nature,” the Court ruled the product nonpatentable…They serve the ends nature originally provided, and act quite independently of any effort of the patentee.” 333 U.S. at 333 U. S. 131.

    [and further:]

    “There is a clear and logical distinction between the discovery of a new variety of plant and of certain inanimate things, such, for example, as a new and useful natural mineral. The mineral is created wholly by nature unassisted by man. . . . On the other hand, a plant discovery resulting from cultivation is unique, isolated, and is not repeated by nature, nor can it be reproduced by nature unaided by man. . . .”
    S.Rep. No. 315, supra at 6; H.R.Rep. No. 1129, supra at 7 (emphasis added). Congress thus recognized that the relevant distinction was not between living and inanimate things, but between products of nature, whether living or not, and human-made inventions.

    As AI says,

    ::Case Closed::

  30. if made to a court would, result in an immediate citation for contempt.

    So would your lies.

    Doesn’t stop you, now does it?

    Try again.

  31. Try again, ""a new physical result." This has already been shot down. Try again."

    How can anybody even begin to address this form of argument?  You don't say who shot it down, where and what by what authority.  This kind of argument, if made to a court would, result in an immediate citation for contempt.

  32. Try, you try.  Why don't you discover the words of the statute.

    Thomas Jefferson was of the view that we should authorize patents on the discovery of new compositions of matter.  That is why it is in the statute.  

    Are you going to defy Thomas Jefferson.  Are you going to defy Congress's plain words?  

    Are you aware of the recent Supreme Court case that said Congress had the power authorize copyrights on works that are in the public domain?  If Congress has the power to do this respect copyrights, does it not have the power to do so with respect to patents on compositions of matter?  Whether a composition of matter is in the public domain or not is quite beside the issue if Congress has the power authorize patents to the first discoverer of the composition of matter regardless that is in public domain.

  33. The statutes expressly authorize a patent on one of the two and not the other.

    Clearly, this is wrong. What are the FOUR enumerated categories expressly authorized by statute?

    Try again.

  34. Correcting, and stop taking things out of context. I am not talking about the discovery of a phenomena of nature. I am talking about the discovery of a composition of matter. The statutes expressly authorize a patent on one of the two and not the other.

    A phenomena of nature is a principle, a law, a motive power. See Le Roy. One may not have a patent for that in the abstrast. One has to provide a useful application; and that means, a new physical result.

    I think Prometheus would have been OK if he had simply completed the claims with a treatment step. What is your take?

  35. Correcting, if you discover a new composition of matter, you may have a patent for it.

    That is what the statute says.

    When we are talking about laws of nature, you need to provide a useful application.

    That is what the cases say.

    So, where is your problem?

  36. Correcting, the issue of what knowledge is is in fact discussed in Pennock. The question asked by the post is “How do you know what you do not know.” According to Pennock, your own discovery is not prior art to yourself.

  37. Ned,

    Your other posts are not worth repeating as you merely repeat the same mistakes in logic that you already have been corrected on.

    Repeating your mistakes will not transform them your suppostions into correct statements of law.

  38. From Ned’s link, he states the following:

    Nature, Thus, the Court has written that “a new mineral discovered in the earth or a new plant found in the wild is not patentable subject matter.” However, the statute does authorize that discovered compositions of matter are patentable. These are not the same thing as a plant or mineral.

    The rebuttal:

    Ned, here too your asnwer is simply incorrect. You seem to lack an understanding that the judicial exclusions are exceptions to 101. You think that your argument has won the day if only you can get ot a point where you have arrived at fitting into one of the categories and then saying “Aha, it is explicit that I can get a patent on that.

    Need I present any of your comments on processes (which are also clearly listed as a category under 101?

    In essence, your arguments here are 180 degrees opposite your well known stand on business (medical?) method patents. Clearly, any business method is a process, and a process is explicitly covered under 101, yet we both know that the judicial exception can always apply. Just as in processes, the judicial exceptions, all three of them can apply to the other categories enumerated in 101.

    As I have stated, I have better logic than you.

  39. From Ned’s link, he stated the following:

    Benson, phenomena of nature are the laws of nature. See Le Roy v. Tatham for more. These are not compositions of matter, not at all.

    The rebuttal:

    Ned, how many judicial exclusions are there?

    The answer is three, not two. Clearly you are incorrect. For a cite, just look at any Court or court decision that enumerates the judicial exclusions. Three, not two, are always present.

  40. From Ned’s link, he asked the following:

    How do you know what you don’t know? The mere fact that am application for patent has been completed means that the item is known. The applicant while being an individual is also a member of the public. If any member of the public knows of something that is of nature, then the premise of unknown fails. Mere first to find is not enough. There is nothing inventive in that. Much like the Prometheus case ( which WAS MORE than ) a Law of Nature, natural phenomena are a recognized exception Which demands something more.” Asked and answered. See, e.g., Pennock v. Dialog that has a full discussion on this issue. Not known or used before means not publicly known. The discovery is not prior art to the disoverer himself.

    The response:

    Asked and answered; asked yes, but answered incorrectly.

    Repeating your incorrect answer does not change it into a correct answer. No such transformation is possible.

    Your faulty understanding of Pennock has been well versed. At best a mere discovery is a start at a inchoate invitation to an inchoate right. You still have to complete it, not only through the patent process, but more on point to our discussion, you need to have something more, some inventive aspect. See Prmoetheus.

    Just as Prometheus proclaims “just apply it is not enough, the exception, the judicial exclusion which trumps 101 requires something more, something extra to make new in kind. Mere discovery is not new in kind. Further, you must look at this, not through a lens that is 100 years old, but through the lens of Prometheus. Your musings lack an up to date view of the law, which is the point of this discussion.

  41. "How do you know what you don't know? The mere fact that am application for patent has been completed means that the item is known. The applicant while being an individual is also a member of the public. If any member of the public knows of something that is of nature, then the premise of unknown fails. Mere first to find is not enough. There is nothing inventive in that. Much like the Prometheus case ( which WAS MORE than ) a Law of Nature, natural phenomena are a recognized exception Which demands something more."

    Asked and answered.  See, e.g., Pennock v. Dialog that has a full discussion on this issue.  Not known or used before means not publicly known.  The discovery is not prior art to the disoverer himself.

  42. Nature, Thus, the Court has written that “a new mineral discovered in the earth or a new plant found in the wild is not patentable subject matter."

    However, the statute does authorize that discovered compositions of matter are patentable.  These are not the same thing as a plant or mineral.

  43. How do you know what you don’t know? The mere fact that am application for patent has been completed means that the item is known. The applicant while being an individual is also a member of the public. If any member of the public knows of something that is of nature, then the premise of unknown fails. Mere first to find is not enough. There is nothing inventive in that. Much like the Prometheus case ( which WAS MORE than ) a Law of Nature, natural phenomena are a recognized exception Which demands something more.

  44. "Your error is in confusing made by the hand of man compositions with those things NOT made by the hands of man, and ASSuming that which you need to establish.The Court has been clear: the exceptions OVERRULE the categories of 101. Thus, a mere composition of matter, while no doubt a category under 101, STILL must make it past the judicial exception of natural phenomena. Just as you cannot merely say "Apply it" you cannot say "Found it."
    You consistently equate laws of nature with composition of matter.  The two things are not the same thing.  Further, the patenting of discovered compositions of matter is expressly authorized by statute!

  45. "Also, your contention that 101 expressly authorizes the patenting of newly discovered compositions of matter fails in the critical application to compositions of matter in nature (think bacteria for certain legume roots composed to be a mixture of species)."

    In Funk, all the bacteria were known and there was no issue of discovering an unknown composition of matter involved in that case.  None at all.  

  46. In Parke Davis, adrenalin in an unpurified form was KNOWN and was not the discovery of Takamine.  link to books.google.com;

    Takamine was the first to purify Adrenalin, something the discoverer of the compositon, Abel, had tried unsuccessfully to do for some time without success.  See the story in the link above.

    The case involved whether the purified composition was novel and non obvious.  "Different in kind" was a general standard used in 1911 to describe "invention."  We now describe this as the test under 103.

    Nothing in Parke Davis supports the view that had adrenalin not been known that the first discoverer could not obtain a patent therefore.  That issue was not squarely before Hand.   Even so, it was Hand's expressed view that Abel's unpurified compound was patentable:

    [T]he base was an original production of Takamine's. That was a
    distinction not in degree, but in kind. But, even if it were merely an
    extracted product without change, there is no rule that such products are
    not patentable. Takamine was the first to make it available for any use by
    removing it from the other gland-tissue in which it was found, and, while  it is of course possible logically to call this a purification of the principle, it became for every practical purpose a new thing commercially and therapeutically.
    link to stlr.org

    Ditto the asprinin case.  Aspirnine was the purified form of a known compound.

    There is nothing is any of these presidents that even suggests that the discovery of a unknown compostion of matter from nature is unpatentable.  Manifestly, the are patentable.
      

  47. Regarding the quote from  Cochrane v. Badische Anilin & Soda Fabrik, 111 US 293 (I884), the product was a known composition with a known chemical formula.  The court made this abundantly clear.  This case supports my point that the prior cases on compositions of matter all involved KNOWN products.

  48. The Court has been clear: the exceptions OVERRULE the categories of 101

    Someone tell Ned that’s why they are called exceptions.

  49. LOLZ,

    Prometheus rocked Ned’s world so hard that he misses a quote from Benson that he has read like a gazillion times.

    The only question remaining is how big will the fireball be from Ned’s truck’s going off the cliff.

  50. How about “same). Thus, the Court has written that “a new mineral discovered in the earth or a new plant found in the wild is not patentable subject matter.

    The range of examples is illustrative: from the simpliest of minerals to the complexity of a living plant.

    That which belongs to nature belongs to all.

  51. always was an expression of the idea that a claim had to provide a new result.

    Revisionist History Ned at it again. Yet the bone-head blithely is unaware that a little case called Morse provides for the outright explicit policy of multiple patents (for different ways of) reaching the cary same (and thus old) result.

    Ned, when approaching the edge of the cliff in your truck, try to remember that the brake IS TO THE LEFT.

  52. LOLZ at sockie-MM.

    Yet another instance of him accusing others of that which he does.

    Way to smack him around CN.

  53. Silly Ned, tricks are for kids.

    You provided a cite to the very thing you say you cannot find.

    While a new process for producing it was patentable, the product itself could not be patented

    It’s also in Correcting Ned’s post. Right above the neglected words: PAY ATTENTION.

    Also, implicit in the adrenaline case, think about what would have been the result if the purification was not something “of a different kind?” No patent for you!

    Further, you beg CN for a citation to authority, yet shockingly absent is your citation for authority that “new” means “not known.” Please provide a citation for your contention.

    Double standards are not very nice.

    Also, your contention that 101 expressly authorizes the patenting of newly discovered compositions of matter fails in the critical application to compositions of matter in nature (think bacteria for certain legume roots composed to be a mixture of species).

    Your error is in confusing made by the hand of man compositions with those things NOT made by the hands of man, and ASSuming that which you need to establish.

    The Court has been clear: the exceptions OVERRULE the categories of 101. Thus, a mere composition of matter, while no doubt a category under 101, STILL must make it past the judicial exception of natural phenomena. Just as you cannot merely say “Apply it” you cannot say “Found it.”

  54. Correcting, just one small update here:

    Prometheus was about a law of nature, not about a composition of matter.

    I contend that 101 espressly, not implicitly, but expressly authorizes the patenting of newly discovered compositions of matter.

    The only question is whether the composition is “new.”

    I contend that “new” means “not known.”

    If you have authority that actually contradicts this wrt compositions of matter, please give us all the cite. Malcolm and I are not aware of any such case.

  55. Your reading skills really blow MM.

    X compositions and non-X compositions are not structure. What the h311 is a non-X composition?

    The question for functional claiming was obviously to “isolating.”

  56. Correcting, "Invention" means "invention or discovery."  That is only to make the subsequent statutes that mention invention easier to write.  The subsequent references to invention include both. 

    However, section 101 is different.  Expressly recites both invention and discovery.  In this section as opposed to other sections, they do not mean the same thing.

    Without getting into detail, invention requires an act of man, in particular making or doing something that did not exist before.   In contrast discovery means finding or recognizing something that previously existed, as in, "Columbus discovered America."

  57. What’s the exact and precise structure of “95%” pure?

    Typically, if the compositions consists of at least 95% pure X, it means that non-X compositions comprise less than 5% of the composition. Have you heard of the FDA? Or the USDA? They use this sort of language routinely to prevent massive numbers of deaths from the consumption of impure products.

    What’s with the functional claiming?

    I have no idea how the term “95% pure”, in a composition claim, could possibly be deemed to be a “functional”.

    Man, this blog has the dxmbest trolls.

  58. You indicate 101 in blatant oversight of what I did provide you in 100.

    How am I to hold a conversation with you if all you want to do is talk?

    You will never learn anything new with a mindset like that. Now pay attention and review once more my several posts.

  59. Correcting, the MOT always was an expression of the idea that a claim had to provide a new result. The problem was, if one could not dissect the claim into old and new elements and then determine whether there was a new result, old transformations count.

    Even the government brief seem to acknowledge that if all transformations count, the Prometheus claims pass the MOT. However, if one is able to identify what is actually new and determine whether there is a new result, then MOT works the way it was originally intended.

    I am sure that the courts in the future will recognize that the MOT has to be applied with respect to the new elements of claim sets that they operate provide a new result.

  60. Correcting, what you did point out that discoveries in the Constitution also was involved with the copyright clause; but I also think you do not give weight to the fact that both "invent" and "discover" appear in section 101.  You seem to think that the requirements for both have to be identical or at least, substantially the same.  I think that is nonsense.

  61. Prometheus?  I see the problem there.  Le Roy v. Tatham is the case.  Had Prometheus been like Diehr and had actually done something with the correlations, I think the result would have been the same as Diehr.

  62. I'm sorry.  I don't recall you citing any authority at all for your statements.  

    Now if you said that the case law holds this or that without actually citing a case, have you actually cited authority?  

  63. sockie-MM,

    For someone who criticized others about their reading comprehension skills, your application of that skill is rather disappointing.

    First, note that I stated Ned’s MOT-all-but-required doctrine. Thus a sharp distinction between the actual (surviving MOT as a clue) doctrine is clearly indicated. If you are unaware of Ned’s version, you should probably read up on it before jumping to an errant conclusion of what others are talking about. Not only do you look foolish, but you lack the proper tone of respect as well. Playing the fool is no way to go through life son.

    Second, don’t you have a whole boatload of questions addressed to you? Your time would be better spent actually formulating answers in line with real law (as opposed to your famous sniff-test style).

  64. sockie They are effectively natural.

    LOL. What in hxll does that mean, sockie? Why are they “effectively” natural? Nobody is prevented from using any naturally occuring nucleic acid molecule. Why are novel, non-obvious isolated nucleic acid compositions “effectively” natural?

    Are there other molecules that are “effectively natural”? What about a novel, non-obvious isolated derivative of cholesterol with profound anti-heart disease properties? Is that “effectively natural”?

    Man, this blog has the dumbest trolls.

  65. sockie: no matter how tranformative those steps are. as an aside, you do realize that your MOT-all-but-required was laid to rest in this decision, do you not?

    How do you figure that? The claim was found ineligible and it recited transforming steps. If there had been no transforming steps and the claim merely recited “A method of thinking about a correlation between metabolite levels and drug dosages”, it never would have gotten to the Supreme Court.

    MOT is still a huge clue when it comes to determining 101 eligibility.

  66. Further, Ned, I have corrected your misstatement as of your post at 10:19 AM regarding what patent law actually says (and what the constitutional clause says as well). Do you need links to those documents?

    Instead of being surly, you should be gracious. You have a chance of bettering your understanding.

  67. Prometheus required that the law of nature be applied to some useful end.

    Not exactly.

    Would you like an opportunity to rephrase that?

    As for the cases I have uesed, they are of course Prometheus as well as the case you provided.

    That is perfectly clear. No reason to get huffy just because I have the better logic.

  68. Correcting, Prometheus required that the law of nature be applied to some useful end. That is consistent with Le Roy v. Tatham and it progeny. The SC did not same anything to the contrary in Prometheus.

    Without any useful end, the claim was to the law of nature itself.

    Now, if you are citing a case back to us, please tell us what case it is and a preferrably give us a link. Otherwise, your statement is mere unsupported junk.

  69. But this does not mean that the law of nature has to be considered to be prior art with respect to the claimed invention.

    If you provide nothing more than what is in nature, you lack the critical “inventive” aspect, and thus fail 101. This is true for each of Abstract, Laws of nature and Natural Phenomena.

    when one under the statutes has a right to patent for the discovery itself.

    Clearly you are misreading this, as Breyer is trying to tell you. As I mentioned below, your own quote dooms you. A mere “discovery” may net you a patent for the use (if the application is transformative enough) or process of obtainment, but you may not have a patent on the actual thing unless that thing is substantially more (in kind) than its unrefined or unisolated state. Transformation may not include those extra solution steps that are old and conventional.

    Thus says Breyer in Prometheus.

    As an additional aside, when should note the allusion to socialism and communism in the very name of the case:

    link to en.wikipedia.org

    Stop fighting this so much. It really is very straightforward.

  70. Your begging avails you not.

    In the constitution:
    To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries;

    Only one appears.

    In the statute:
    The term “invention” means invention or discovery.

    Thus expressly the terms are defined so that they can be the same thing.

    Your point on “of kind” merely reinforces my post. I will take this that you agree with me on that point.

    It matters not if the thing is unknown. I make no such “assumption per se,” other than provide the effective lesson of Prometheus.

    Read Prometheus again. Mere finding is not enough, as something more, something inventive is required. And that which is required is effectively more than old and conventional steps, no matter how tranformative those steps are. as an aside, you do realize that your MOT-all-but-required was laid to rest in this decision, do you not?

    Read also your own case cite again: it is NOT that one can have a patent for the item, but rather one can obtain a patent for the use of the item, or for a method of obtaining (processing) the item:

    While a new process for producing it was patentable, the product itself could not be patented

    Please pay attention.

  71. Going back to Le Roy v. Tatham, the Supreme Court has only required that the inventor provide a useful application of the law of nature. The one exception to this might be Funk Bros., where to Supreme Court said that the "application" had to be something more than just a statement of the law of nature. Prometheus basically said the same thing. But this does not mean that the law of nature has to be considered to be prior art with respect to the claimed invention.

    Again, all the cases that I found concerning isolated or purified compositions of matter involved compositions that were known. This required some invention over the prior compounds. There are no cases that I know of that talk about whether a previously unknown composition of matter was prior art with respect to the claimed invention. It seems an oxymoron that one has to invent over one's own discovery, when one under the statutes has a right to patent for the discovery itself.

  72. “Discovery is the same thing as invent, nothing more.”

    I beg to differ. Both words are in the statute and they cannot mean the same thing. Furthermore, in cases such as Corning vs. Burden, the Supreme Court made a distinction between the two.

    In the cases requiring “marked differences,” mean differences in kind rather than degree, that is an issue that the Supreme Court traditionally required of invention: a difference in kind rather than of degree. See e.g., the Eibel process case for the same rule in another context.

    There is nothing at all in this that suggests that one cannot patent an unknown composition of matter albeit it is found in nature. What the Supreme Court cases and Parke-Davis suggest that if a compound is known, that the isolated or purified form of that compound has to have some utility different kind rather than degree from the known composition.

    As I said, I have found no cases were Supreme Court is actually said that one cannot patent a composition merely because it is found in nature. “Finding” is what discovery is all about. Where is one going to find compositions of matter?

    Regarding your theory that things of nature are the property of the whole human race, what benefit is this if that thing is unknown? You assume too much, that everything in nature is known.

    With regard to laws of nature, the cases beginning with Le Roy v. Tathum, have said that one cannot patent a principal in the abstract, and by principal they meant law of nature. But one can have a patent to a practical application of it. In the case of a composition of matter however, the composition of matter itself may be useful, and one one who first discovers the composition and a use for it seems to have a right to a patent for it under the statutes of the United States.

  73. Nature is not prior art. We can and should agree to that.

    Most assuredly nature is prior art. We must agree with that. We cannot disagree.

    To hold otherwise would be to hold hopelessly conflicting views on exactly why the three items of Abstract, Laws of Nature and Natural Phenomena are not patent eligible.

  74. The case rather depended on whether the purified adrenaline was new.

    Not exactly. See below.

    correct me on this if I am wrong

    Consider yourself corrected.

    There appears to be something faulty and overbroad about rule that things of nature cannot be patented.

    Why? In what sense do you feel it allowable to take from nature that which is freely available to all, and provide a patent for nothing effectively different? It is abundantly clear that Prometheus holds that something more, something inventive is required beyond the keep outs of Abstract, Laws of Nature and Natural Phenomena. How is your desire to patent that which merely “is” not rejected?

  75. You see no inconsistency because your eyes are closed.

    Several posts here point to the larger Supreme Court interpretation that will prevail on this point: that which is of nature is not to be patented, as it belongs to all men.

    Clearly (albiet weakly), the cases for isolations and purifications only permitted patenting when the end product was substantially different (in kind, rather than merely in degree).

    It is quite arguable that Prometheus draws a tighter noose around any such “isolation” patents, as it quite clearly now eliminates those elements that are old or conventional, or that are extra-solution.

    Further, your view of “discover’ is muddled, and you see ambiguity where there is none. Keep in mind that the constitutional clause dealt with copyright as well as patent. In that view, “discover” is analagous to invent. Nothing more.

  76. MM’s sweating, now that the middle of a Twix bar, branch, and DNA strand are not patentable sublject matter!

  77. Malcolm, you seem to want to add in “made by man,” which implies “invention.” However the statute reads, in material part, as follows:

      Whoever …discovers any new and useful …composition of matter may obtain a patent therefor….

    The word “discovers” implies that the subject matter was pre-existing and found. Both the Constitution and the patent statutes allow a patent on discoveries. The case law regarding laws of nature and abstract ideas requires in addition some practical application. But one who discovers a new composition of matter has a right to a patent under the statutes and apparently under the Constitution, provided that it is new and useful.

    So how can we resolve the inherent conflict between the word “discover” which requires that the subject matter discovered be found, in the word “new.” It seems to me, and correct me if I’m wrong, that what the statutes and constitutions mean is that discovered subject matter, the composition of matter, be unknown. The first discoverer of a previously unknown composition should have a right to a patent to it under both the statutes and the Constitution.

    I can find no cases in Supreme Court jurisprudence which have actually held that the first discoverer of a new composition of matter has no right to to a patent to it if the composition of matter occurs in nature. What I discovered by reviewing the Supreme Court cases (including L. Hand’s Parke Davis case) is that the compositions found in nature were already known. The questions the court resolved in those cases where whether isolated or purified versions were novel given that the naturally occurring versions were known. But this says nothing at all about whether one can patent a previously unknown composition of matter that occurs in nature.

    The closest case on point is Chakrabarty, where the Supreme Court suggested, in dicta, that “minerals” could not be patented:

      “Thus, a new mineral discovered in the earth or a new plant found in the wild is not patentable subject matter.”

    But a mineral is not a composition of matter, which Supreme Court defined to be

      “all compositions of two or more substances and . . . all composite articles, whether they be the results of chemical union, or of mechanical mixture, or whether they be gases, fluids, powders or solids.”

      Shell Development Co. v. Watson, 149 F.Supp. 279, 280 (DC 1957) (citing 1 A. Deller, Walker on Patents § 14, p. 55 (1st ed.1937)).

    Frankly, I see no inconsistency between the “law of nature” doctrine and the statutory framework which allows patents for discoveries of new compositions of matter, albeit those compositions are found in, i.e, are discovered from, nature by the disoverer.

  78. Sure. But they aren’t “purely natural.”

    They are effectively natural. Breyer in Prometheus readily acknowledges that the claims there were not laws of nature either, but they still failed because they were effectively laws of nature.

    To assert otherwise is simply to reveal yourself as an ignoramus or a dissembling jxrk.

    Yes, you are looking directly at the mirror of your position. You now see “yourself as an ignoramus or a dissembling jxrk” because now it is your backyard in the cross hairs.

  79. I can take the isolated nucleic acid, add some

    1) Were the claims at issue the result of the “add some” or were they to the isolated nucleic acid?

    You are not clear, and I want to make sure that I am reading you precisely.

    2) Are the steps of the “add some” old and conventional post-solution steps and thus irrelevant? Or are you distancing yourself from this aspect of the Whatever Prometheus decision?

    You are not clear on this either, and your past comments now seem unsustainable and counter to your defense of gene patents.

  80. I think there is a false premise going on here that has to be directly challenged.

    Which false premise is that? That things of nature belong to all men freely?

  81. It’s true regardless.

    It’s also determinative if your claim is effectively similar to a natural phenomena or law of nature.

    Welcome to the updated world care of Prometheus.

    I see your over-exurbance on the baseless and much conflated decision has started to wane, with you all of a sudden clamoring for preciseness where your “effectively” and what-ever mode of conflation had previously served your purposes when you disliked other art unit neighborhoods.

  82. Welcome to the fruits of your very own What-Ev standard, wherein the differences between Law of Nature and Natural Phenomena just does not matter.

    Your neighborhood has been invaded.

  83. Ned, those are good questions. I need to reread the case. But, big picture. The SCOTUS would not have vacated unless they think there is an error in the reasoning. So, where is the error? And, they likely thought the error was dispositive to at least part of the holding or judgement. Given Prometheus, I suspect we now have ourselves a law of nature in anything the that DNA is being used for already, and claims that are not going to be considered as a whole.

    I think we are going the way of Franklin:
    “… as we enjoy great advantages from the inventions of others, we should be glad of an opportunity to serve others by any invention of ours; and this we should do freely and generously.”

  84. sockie those steps old and conventional as they are are nothing but identifying the relevant crowd interested in the natural law

    Isolated novel nucleic acid compositions are not “natural laws.”

    This has been another been edition of “Man This Blog Has The Dxmbest Trolls.”

  85. You are going to have up keep up with Breyer, MM, as those steps old and conventional as they are , are nothing but identifying the relevant crowd interested in the natural law and thus are

    Wait

    Wait

    Are irrelevant

  86. One man’s iceberg is another man’s nucleic acid chain

    Certainly that’s true if you are incapable of reading a claim properly.

  87. sockie All up in arms about someone thinking a thought,

    Nope. Patenting a thought? Yup.

    but a free pass to someone keeping someone else from a (also) purely natural thing?

    The claimed isolated nucleic acid compositions are not “purely natural.” The claimed compositions are no more “purely natural” than a novel, non-obvious backscratching tool carved from a single human fingernail.

    Do the claimed compositions resemble compositions found in nature? Sure. But they aren’t “purely natural.” To assert otherwise is simply to reveal yourself as an ignoramus or a dissembling jxrk.

  88. Ned

    Do you know of a Supreme Court case that squarely held that an unknown chemical found in nature could not be patented by the first discoverer of the chemical who also describe a utility for the chemical?

    Nope. Recognize that nearly all such competently drafted claims refer to the isolated chemical or some degree of purity of the chemical, which would prevent the claim from reading on the chemical in its natural state. Likewise for most claimed combinations of chemicals, too.

  89. :It’s OK for all other’s massive numbers of completely unrelated novel inventions to be dragged into ridiculous factually bankrupt arguments (the Prometheus arguements that Malcolm refuses to discuss in detail

    There is a big difference between (1) your chicken little whining about these hypothetical “unrelated” inventions that you refuse to describe and which I will bet my life are quite different from the [oldstep]+[newthought] claims at issue in Prometheus; and (2) taking an argument such as the one Dennis proposed to its logical conclusion without making a single additional assumption.

    If you can’t see the difference, well …

  90. What’s the exact and precise structure of “95%” pure?

    What’s with the functional claiming?

  91. sockie Your talking about process steps.

    Yes, I’m refuting your ignorant assertion about what “nature can do”, sockie. Try to keep up.

  92. sockie: It’s certainly not novel if it exists in nature

    The claims don’t read on the claim “as it exists in nature”.

    Once again: Why is a claim reciting the purity of a novel, non-obvious composition “funny”?

    Anyone?

    MTBHTDT

  93. Ned thinks the swagger of MM and 6 is so endearing. Funny how that perspective changes when the swagger comes from the other side of the great GD War.

  94. Your talking about process steps.

    Do you have a product-by-process claim?

    Didn’t think so.

    STFU now ‘lil boy, grownups are discussing your (short) future.

  95. of a novel, non-obvious composition

    Kind of assumes the point in contention, doesn’t it?

    It’s certainly not novel if it exists in nature (even if you were not aware of it and then went and recreated it in a lab).

  96. You can suggest it.

    But you might suggest how to differentiate that obvious phenomena of nature from the jaws of the great What-Ev machine.

    (Suggest quickly, you are running out of time)

  97. erect strawmen, chase red herrings, play word games, misstate other peoples positions, quote out of context, and the like

    That’s funny. The same comments have been posted about you. Just as the comment of you following Malcolm’s lead and accusing others of what you do.

  98. Best line of the day, given Malcolm’s ever strident speaking out against software “shortcuts.”

    Just another sign of his hypocrisy.

  99. Hmmm … must nature be enabled to be valid prior art?

    Is nature always enabled?

    Never?

    Just asking.

  100. The more interesting hypothetical is when that previously unknown chemical becomes known to be found in nature.

    The basic premise behind the judicial exception is that there are certain things that cannot be patented because they belong to all. Clearly, something found in nature is such a thing, be that natural phenomena of electricity or an exotic chemical.

    Once it is shown that the claimed item is of the kind and type (which helps with the rather weakly held adreniline case) that is found in nature, the patent is berift of its made by man distinction. It matters not the timing of whether the discovery was made in a lab before the discovery in nature. It matters not how the item was made (unless you want to do a product-by-process claim, and even then we all know how MM feels about those), the actual claim is what nature provides and the Court has been clear about such an intrusion on what can only be called the true commons.

    All up in arms about someone thinking a thought, but a free pass to someone keeping someone else from a (also) purely natural thing?

    And you don’t see the hypocrisy in that?

  101. I don’t even care about Myriad’s isolated nucleic acid claims getting crushed. I just don’t want them to be crushed based on a ridiculous factually bankrupt argument that drags in massive numbers of completely unrelated novel isolated compositions with it

    It appears that the great Malcolm Mooney What-Ev principle of seamless law only is supposed to come up to his neighborhood and not enter.

    It’s OK for all other’s massive numbers of completely unrelated novel inventions to be dragged into ridiculous factually bankrupt arguments (the Prometheus arguements that Malcolm refuses to discuss in detail) because it’s someone else’s neighborhood that is affected by those ridiculous factually bankrupt arguments of the Great What-Ev.

    While Ned is an avid lapdog student, Malcolm is the master of hypocrisy.

  102. 6, I think that if one cannot patent the unknown wild DNA variant upon discovering its utility, then one cannot patent the isolated form of it.

    Therefor, we need to squarely look at the underlying proposition: that the first discoverer of a naturally occurring chemical who also discovers a specific utility for the chemical cannot patent a chemical on the basis that it is naturally occurring.

    I think there is a false premise going on here that has to be directly challenged.

  103. Do you know of a Supreme Court case that squarely held that an unknown chemical found in nature could not be patented by the first discoverer of the chemical who also describe a utility for the chemical?

  104. Even if this battle is going to continue for years, Myriad competitors may now treat these patents as non-existent.

  105. Malcolm, I have been considering the body of case law on this topic, and I think the following might be right and would like your views:

    If I discover an unknown chemical or compound from nature, and discover an useful application for it which I describe in the specification, I should be able to claim the chemical or compound.

    There appears to be something faulty and overbroad about rule that things of nature cannot be patented. I think this really means that principles in the abstract cannot be patented. However useful applications can, and chemicals are not abstract, but useful.

    I think the jurisprudence regarding compounds and natural phenomena depends somewhat, in every case, on the fact that the compounds or chemicals were known. See, for example, Cochrane v. Badische Anilin & Soda Fabrik, 111 US 293 – Supreme Court 1884, where the court said,

      “There is another view of the case. According to the description in No. 95,465, and in No. 4,321, and the evidence, the article produced by the process described was the alizarine of madder, having the chemical formula C14H8O4. It was an old article. While a new process for producing it was patentable, the product itself could not be patented, even though it was a product made artificially for the first time, in contradistinction to being eliminated from the madder root. Calling it artificial alizarine did not make it a new composition of matter, and patentable as such, by reason of its having been prepared artificially for the first time from anthracine, if it was set forth as alizarine, a well known substance. The Wood Paper Patent, 23 How. 566, 593. There was, therefore, no foundation for reissue No. 4,321, for the product, because, on 312*312 the description given, no patent for the product could have been taken out originally.”

    I think Hands’ Parke Davis opinion also assumed, and correct me on this if I am wrong, that the adrenaline in the unpurified form was known. The case did not depend on the fact that the adrenaline was a product of nature. The case rather depended on whether the purified adrenaline was new.

  106. “does this not imply that the “isolated” DNA is isolated “from” an existing, namely, old DNA.”

    Ned, go see Kev’s posts on this. “isolated” means more than simply chopping off the ends, at least so far as I could tell. However, this case is going to turn on claim construction, you watch. And that is a crp shoot at best.

  107. sockie: “I just don’t want them to be crushed based on a ridiculous factually bankrupt argument that drags in massive numbers of completely unrelated novel isolated compositions with it.”

    Methinks you are the one whining here.

    Not whining, sockie. Merely correcting your b.s. I do occasionally grow tired of doing that, though.

  108. “I just don’t want them to be crushed based on a ridiculous factually bankrupt argument that drags in massive numbers of completely unrelated novel isolated compositions with it.”

    Methinks you are the one whining here. If you are looking for “ridiculous factually bankrupt arguments,” then let me introduce you to SCOTUS.

  109. “Would sockie also laugh at ‘95% pure’, I wonder?”

    It’s pretty funny.

    Why is a claim reciting the purity of a novel, non-obvious composition “funny” to you, sockie?

  110. Ned LMalcolm, I need some help here. When one says

    “Isolated”

    does this not imply that the “isolated” DNA is isolated “from” an existing, namely, old DNA.

    No. It means that the DNA is substantially purified from other DNA molecules. It implies NOTHING about how the DNA came from.* The DNA could very well have been synthesized from the individual nucleic acids using a machine, with no involvement whatseover of any “old DNA”.

    It is not as if the genes with the mutations were not known to the inventors before they discovered their association with breast cancer.

    Yes but the discovery of the utility of the mutated nucleic acid sequences occurred simultanously with the discovery of their association with breast cancer. Again: to the extent the claimed sequences read on naturally occuring DNA sequences (e.g., sequences in cells of any organism), they are surely invalid or ineligible (and it doesn’t make any difference to me which one you pick). But if the claims cover new, non-obvious nucleic acids with a patentable utility that was previously unknown, they are surely eligible and valid. And that could certainly be true of the isolated nucleic acid claims.

    Consider you have the sequence in your chromosome “AGTCTCTCGCA …[1000 nucleotides deleted to save space] …GCGCAAA”. Nobody knows what the sequence is for. The only published research on the sequence says that it is non-expressed and deleting it from humans causes no adverse affects to embryonic or adult humans. I discover by testing 10 trillion different nucleic acid sequences that I’ve synthesized chemically that an isolated 527 nucleic adic subsequence of the above-mentioned sequence causes back hair to fall off instantly when a solution containing 0.001 M of the sub-sequence (in water) is rubbed on.

    What possible patent policy or legal argument justifies denying me my claim to the isolated 527 base nucleic acid composition??????

    Nature is not prior art. We can and should agree to that.

    Well, I don’t necessarily agree to that statement, at formulated. If I broadly claim a certain form of ice that is unknown, but it turns out later that my broad claim reads on a 2000 year old iceberg, I certainly don’t own that iceberg. I believe the claim is invalid (or ineligible, I suppose). Those are the chances one takes when trying to obtain a broad claim. That is why only a fxxxxing idxiot would claim a relatively short novel nucleic acid sequence without using the “isolated” limitation: the odds are good that the sequence is out there, somewhere.

  111. 6, might I suggest this:

    The first discover of a chemical found in nature, and who also describes its utility, has the right to patent that chemical under 101.

  112. Night, I will agree with Malcolm to this extent: if I describe a chemical structure in a patent before its homologue is known to me or to others, its subsequent discovery by another should not be prior art to me on the basis that it was something of nature.

    However, if I discover a chemical in nature, should I be able to simply claim that chemical if I also discover its utility? What are your views?

    The more difficult question becomes whether a patent should issue on an isolated form of the chemical that I find in nature. Like aspirin, that should depend upon whether the isolated form has properties markedly different from the natural form. A subsidiary question is whether the isolated form, albeit markedly different, is nevertheless obvious from the wild form because its chemical structure itself in known from the wild form.

  113. end italics

    However, when the SCOTUS monster turns its ponderous, unsophisticated eye towards gene patents, his smile turns upside down and MM exclaims “wait, you were only supposed to go after those patents I don’t care about!!!!”

    Hmmm…. remind me why I fully supported (and predicted) that many of Myriad’s method patents would get tanked under 101?

    I don’t even care about Myriad’s isolated nucleic acid claims getting crushed. I just don’t want them to be crushed based on a ridiculous factually bankrupt argument that drags in massive numbers of completely unrelated novel isolated compositions with it. I don’t think you want that either, sockie, which is what makes your whining especially pathetic. Maybe time to get a life? Or a new job?

  114. Malcolm, I need some help here. When one says

    “Isolated”

    does this not imply that the “isolated” DNA is isolated “from” an existing, namely, old DNA.

    I see and fully understand your point that finding something in nature after you have described it in your patent should not invalidate your patent. Nature is not prior art. We can and should agree to that.

    Nature can be prior art if it is known, and perhaps even used, but not otherwise.

    I think we can agree to that.

    But what we are talking about here, after all, in THIS case, is the discovery that certain gene mutations of humans cause breast cancer. The sequences of the mutated genes were identified and then claimed in isolated form. It is not as if the genes with the mutations were not known to the inventors before they discovered their association with breast cancer.

    If I am wrong in any of the above from a factual point of view, please explain.

  115. sockie: “directly transform ”

    1) this is not more than what nature can do

    A lot of biochemists are wondering what you’re smoking, sockie. We’re wondering why we even bothered with centrifuges, purifying restriction enzymes, and other purification processes. All we really needed to do to express a specific human gene was scrape off some skin cells and drop them into a bacterial culture. Voila! Maybe if we “prayed” or something we’d get even better results than the ones you get on your planet.

    Man, this blog has the dxmbest trolls.

  116. There aren’t actually accounts on PatentlyO at least as far as I can tell.

    It’s sarcasm, sockie.

    MTBHTDT

  117. MM cheered when the SCOTUS monster devoured the likes of KSR, Bilski, and Prometheus. “These were bad patents,” MM states, “they deserved to die.”

    However, when the SCOTUS monster turns its ponderous, unsophisticated eye towards gene patents, his smile turns upside down and MM exclaims “wait, you were only supposed to go after those patents I don’t care about!!!!”

    The intellectual property eating monster of SCOTUS, however, has not been satiated. It needs to devour more intellectual property and gene patents are on the menu.

    “Yum, yum, yum … more nonstatutory patents more my tum” growls the SCOTUS monster.

  118. Trxll, all you folks do is erect strawmen, chase red herrings, play word games, misstate other peoples positions, quote out of context, and the like. You lecture people instead of explaining your views. You strut like peacocks, and demand attention.

    It is amazing just how unpleasant you folks are on a consistent basis. It really would be nice if Dennis put you folks in your place.

  119. directly transform

    1) this is not more than what nature can do.
    2) is a conventional and old in the art step.

    Double Fail.

    Thanks for playing.

  120. The royal “we” is hilarious given the swagger that MM and Ned are seen wlking with after visiting each other.

    For the rest of us, “We” are laughing AT MM and Ned.

  121. Completely True.

    (your turn)

    Okay, sockie. I can take the isolated nucleic acid, add some ligase and a vector backbone, and obtain another composition that can be used to directly transform a bacterial cell for expressing the gene.

    As a matter of indisputable fact, that’s “more” than the chromosome comprising the similar sequence found “in nature” can do. To put it more plainly, the “so-called isolated-as-structure claimed item does … more than what the Law of Nature-Abstract-Natural Phenomenon What-Ev does,” directly contradicting your false statement.

    Or maybe you have a different meaning for the term “more”, sockie. Go ahead and tell us what different meaning is.

  122. So am I.

    The Federal Circuit is going to have to justify its ruling that isolated DNA is patentable when considering that the so-called wild DNA it describes is a natural phenomena. You can’t simply, I believe, state that the chemical structure is different. While that might be true, there still the question of whether patenting the isolated DNA is essentially patenting the while DNA without more.

  123. “Would sockie also laugh at ‘95% pure’, I wonder?”

    It’s pretty funny. Not as funny as “Isolated is a term with physical/structural meaning…” but pretty funny.

    What’s going to be funny is when the Fed. Cir. or Supremes find your “isolated” protein bits and DNA fragments ineligible.

  124. Note to DC: this trxll’s account is a ripe account for termination.

    This has been a true statement for MM forever.

    Someone just posted that you have arrived when MM requests DC to ban. I really think (like most of MM’s stuff) that that bar is excessively low.

  125. There is no need to be insulting, $$$MM$$$.

    I think the question they may ask is not whether the new structures are added with old techniques, but whether the new structures themselves add enough over the law of nature. Are the new structures well known structures to other molecues? Do the new structures add anything significant or are they simply the equivalent of post solution activity.

    I am afraid, that this may be held invalid. The bigger picture here is that the Fed. Cir. may not want for another case to go back up to the SCOTUS to spank them again.

    And, given that it sounds very much like this can be easily held invalid under Prometheus that that may be the outcome. I’ll have to reread the privious Fed. Cir. case.

  126. Oh cripes, I just responded to NS III, not NS II.

    Note to DC: this trxll’s account is a ripe account for termination.

  127. sockie the function of this so-called isolated-as-structure claimed item does nothing more than what the Law of Nature-Abstract-Natural Phenomenon What-Ev does

    Completely false.

  128. LOL. As opposed to the continuous filling up of the armchair whiners that habitually inhabit these boards.

    Gotcha.

  129. NSII – I believe you are responding to a sockpuppet named “Not Ned Heller”. Just fyi.

    I LOL’d at your point (2) above, though.

  130. A natural (law) of rebuttal:

    I think a majority of judges on the Supreme Court are operating at a substantially lesse sophisticated level than you…”

    …because they ascribe to the What-Ev view of patent law.

  131. “Isolated is a term with physical/structural meaning…”

    BWWWAAAHHHHHAAAAAAHHHHHHAAAAHHHHHAAAA!!!!!!!!!

    Would sockie also laugh at “95% pure”, I wonder?

    Man, this blog has the dxmbest trolls.

  132. In addition to the “old and conventional,” realize that the function of this so-called isolated-as-structure claimed item does nothing more than what the Law of Nature-Abstract-Natural Phenomenon What-Ev does, so it is effectively (sort of like similarly for the reading comprehension-impaired) exactly like the Promoetheus case and the very same (beloved) What-Ev logic applies.

  133. Natural Breakdown Processes

    LOL. Suddenly the comments are filling up with armchair biochemists and their desperate speculations.

  134. I get the feeling that what they may do is say that the law of nature is the DNA structure and assume that is part of the prior art and then look to see what is added, which is going to be all old and well known. So, conclusion is invalid.

    True of nearly all novel, non-obvious molecules, all of which comprise “old structure” relative to a composition found “in nature” and “added” structures which are added according to “old and well-known” processes. Do all these molecules become “ineligble” upon identification of the “similar” structure inn “nature”? Or just isolated nucleic acids that resemble a human DNA sequence? Can you handle this level of “technical” detail, NWPA? Doesn’t sound like it.

    I think a majority of judges on the CAFC are operating at a substantially more sophisticated level than you. Time to step it up or give it up.

  135. “Isolated is a term with physical/structural meaning…”

    BWWWAAAHHHHHAAAAAAHHHHHHAAAAHHHHHAAAA!!!!!!!!!

  136. I get the feeling that what they may do is say that the law of nature is the DNA structure and assume that is part of the prior art and then look to see what is added, which is going to be all old and well known. So, conclusion is invalid.

    Not committed to this outcome, but I think it is very possible. I’ll have to re-read the previous opinion before committing to this, but I am afraid it could get this bad.

  137. sockie The person is trying to have a patent on soemthign found in nature.

    This is completely false, by the way. As anyone in the field will tell you, we draft claims carefully to prevent them from reading on compositions “found in nature.” And the USPTO Examiners in the chem/bio art units are quite diligent about identifying claims which fail in this regard.

    It’s very difficult to have an intelligent conversation with sockie when sockie can’t get the most basic facts straight. But we keep trying. If nothing else, the world can see what a complete ixiot and/or habitually dissmbling axxxhole sockie is.

  138. If the thing claimed is found in nature, it is not rightly to be excluded from others.

    Please check your reading comprehension skills. Look again at my comment and pay particular attention to the term “similar.” Also, recognize that I’m talking about isolated compositions, which are not found in nature in their isolated state. Isolated is a term with physical/structural meaning and does not require that the composition in question was obtained by isolation from a natural source). Also recognize that just about any novel, non-obvious composition is “related” structurally to other compositions that may exist somewhere in “nature”.

    Thanks.

  139. This GVR makes little sense. Either grant the writ or not. My belief is that the petition should have been denied, since isolated DNA and cDNA do not exist in nature. The correlation method claims were already killed by CAFC and nobody is challenging that. The screening claims were upheld by the CAFC and nobody is challenging that. This is weird.

  140. potentially ineligible based on the post-filing discovery of similar compositions in “nature.”

    So? What’s the problem? If the thing claimed is found in nature, it is not rightly to be excluded from others. How is this anti-patent? The person is trying to have a patent on soemthign found in nature. Is there a more axx-backward, screwed up, pro-patent result possible than that?

  141. Those are your patent–I could care a less about them. But, now these here patents, these are MY PATEENS. Keep your stinking hands off of them.

    Wow, what a whine we may hear from MM….better hope that the anti-patent contingent on the Fed. Cir. doesn’t carry the day.

  142. And just to be clear, DC: I’m not dissing the “reasonableness” of your analysis. It certainly smells of “reasonableness” but the reasoning leads directly, without making a single additional assumption, to a result that surely strikes 95% of anybody who knows a darn thing about patents (including allegedly “anti-patent” (LOL!) folks such as myself) as impossibly wrong.

    Now, if the CAFC wanted to limit the 101 ineligibility “arbitrarily” to novel, non-obvious isolated nucleic acid compositions where post-filing non-identical “homologues” were identified in human beings they could certainly minimize the damage. But I don’t believe they have the power to do that.

  143. Prometheus makes it clear that medical method patents are categorically not eligible for patenting.

    Don’t feed the trxll.

  144. DC: the DNA itself is a natural phenomenon, that the isolation of the DNA simply employs an isolation process already well known and expected at the time of the invention, and ultimately that the isolated DNA is unpatentable because it effectively claims a law of nature or natural phenomenon.

    As noted, the logical problem with this argument, as stated, is that it renders any novel, non-obvious nucleic acid composition (regardless of how it was synthesized) and, indeed, any other isolated molecule composition potentially ineligible based on the post-filing discovery of similar compositions in “nature.”

    Is there a more axx-backward, screwed up, anti-patent result possible than that? I don’t think so, Dennis. That makes the horrorshow envisioned by the Prometheus chicken littles sound like a walk in the park. But that is the obvious, logical result of your analysis, Dennis: all novel, non-obvious chemical composition claims are potentially (?!?) subject matter ineligible based on the post-filing discovery of similar (not identical) compositions in “nature.”

    I don’t think even the CAFC is that bxtt-ignorant.

    Myriad’s claims will be upheld as eligible subject matter. All the relevant arguments have already been presented and considered. Take it to the bank.

  145. As far as any Gene Patents that are written as medical methods, they are out. Prometheus makes it clear that medical method patents are categorically not eligible for patenting.

  146. 6,

    You really are dense if you think that was an insult on the esteemed Prof. Crouch.

  147. I think that absent something else, these claims should now be dead on arrival, which, truthfully, ought to be the right result.

    I am all for patenting a useful and novel application of the isolated DNA. I’m all for patenting novel means for isolating the DNA. But, I think it goes too far simply to claim the DNA form that exists and/or to claim its “natural” function.

  148. Anyone every tried to request a refund of maintenance fees/etc from the PTO after the Supreme Court invalidated their client’s patent?

  149. There are certain cases that transcend certain rules (as in cases of pregancy).

    Is this case pregnant for a hands(off) of man?

  150. I previously wrote that one reasoned result of the Mayo decision is that Myriad’s claims directed toward isolated human DNA are now invalid.

    Crouch, you are now a “sockie” per the great MM What-Ev machine.

    Welcome to the club.

  151. I hope they revisit the standing question and throw this out for lack of standing. Then they won’t need to consider patentability.

Comments are closed.