Guest Post by Robert R. Sachs of Fenwick & West LLP
Read Part I; Part II; and Part III.
It seems like only yesterday the Court told us that the “machine or transformation” test was “a useful and important clue, an investigative tool, for determining whether some claimed inventions are processes under § 101.” The Court’s reasoning suggested that while passing MoT was not necessary, it was still a sufficient condition for patent eligibility, and if nothing else indicated that the invention was not an abstract idea, law of nature, or natural phenomena.
Now, less than two years later, the Court diminishes the test further: “we have neither said nor implied that the [machine-or-transformation] test trumps the ‘law of nature’ exclusion.” What this means in practice is that even if a claim satisfies the MoT test, it could still be deemed unpatentable subject matter, especially by a fact which follows this Court’s method of a) stripping claims down to ”instruction manual” glosses, and b) finding the presence of “natural relations” to be dispositive evidence of a “natural law” in the claim.
In short, before Prometheus, you could assert that your claim was patentable subject matter because it satisfied MoT. Now MoT does you little if any good—it’s gone from a sufficient condition to a mildly interesting one.
Standing Up for the Patent Bar
For some reason the Court seems to delight in denigrating the role of patent counsel in drafting claims, treating patent attorneys as either mere scriveners or crafty manipulators of words and phrases, clauses and conjunctions. “Those cases warn us against interpreting patent statutes in ways that make patent eligibility depend simply on the draftsman’s art.” Indeed, in calling patent attorneys draftmen, apparently the Court believes that all we do is make fancy pictures. Name me another legal discipline in which there is a special bar exam, not to mention to a requirement of an engineering or science degree. What is it about patent law that makes the Court think we’re not lawyers?
Second, I ask you: what’s wrong with making patent eligibility depend on our skill? The patent is a contract, a quid quo pro: disclose the invention and in exchange obtain the exclusive right. The patent act requires patents to recite claims that define the invention, the USPTO examines the claims, and infringement is based on the claims. The validity of every other legal document depends on the “draftsman’s art,” upon the skill of the lawyer—just ask any licensing attorney, securities lawyer, or trusts and estate attorney. Why are patent attorneys somehow not given the same level of recognition by the Court, that what we do is a legal activity, that claims are first and foremost legal definitions? That we are charged not just with describing the implementation of an invention to meet the legal test of an enabling disclosure—but with defining by way of a claim the “metes and bounds” of the invention. We are trusted with carefully carving out a space for the broadest yet most precise statement of the invention, surrounded on all sides by the prior art, using nothing more than a single sentence. Where other legal writers suffer no consequence for employing laundry lists of verbs, nouns, adjectives—to throw in the kitchen sink of do not fold, spindle, mutilate, tear, shred, distort, etc.—we are compelled by case law to consider every word as critical. A misplaced comma, the use of “the” instead of “a,” “at least one” instead of “each,” can spell the difference between a patent worth millions and patent worth less than wallpaper. The California Civil Code includes a section of codified Maxims of Jurisprudence; my favorite is “Superfluidity does not vitiate.” True for every attorney but patent attorneys. Show me another area of legal drafting that is as highly constrained in both form and substance as patent claim writing.
The Court also seems to think that inventors arrive at the patent attorney’s door step with their inventions fully formed, fully understood, and fully explained and explainable. In some cases, in some fields, that may be true—say for those funny hats with fans, beer cans, and scrolling LEDs. But for the majority of technologies, the patent attorney is an active and necessary participant in the creation of the patent and its value. Many inventors simply do not know what they have invented, they lack the framework for understanding their inventions, first in the context of the prior art, and second in the context of how the USPTO and the courts analyze inventions under the law. Senior patent attorneys often have significantly more exposure and breadth of experience in their particularly technology areas than the inventors that they advise. They combine their understanding of the patent law, the technology, and the business goals of the inventor to create something that did not previously exist: an intellectual property right. This is no mere scrivener’s recording, from the inventor’s lips to the patent examiner’s ear to the court’s gavel. This is legal counseling and crafting at its best.
It seems like only yesterday the Court told us that the “machine or transformation” test was “a useful and important clue, an investigative tool, for determining whether some claimed inventions are processes under § 101.” The Court’s reasoning suggested that while passing MoT was not necessary, it was still a sufficient condition for patent eligibility, and if nothing else indicated that the invention was not an abstract idea, law of nature, or natural phenomena.
Now, less than two years later, the Court diminishes the test further: “we have neither said nor implied that the [machine-or-transformation] test trumps the ‘law of nature’ exclusion.” What this means in practice is that even if a claim satisfies the MoT test, it could still be deemed unpatentable subject matter, especially by a fact which follows this Court’s method of a) stripping claims down to ”instruction manual” glosses, and b) finding the presence of “natural relations” to be dispositive evidence of a “natural law” in the claim.
In short, before Prometheus, you could assert that your claim was patentable subject matter because it satisfied MoT. Now MoT does you little if any good—it’s gone from a sufficient condition to a mildly interesting one.
The composition of very good. Give me a lot of help, gave me a big inspiration! Hope to continue trying to write something better!
The composition of very good. Give me a lot of help, gave me a big inspiration! Hope to continue trying to write something better!
Publics, Hans Blix?
I know who is speaking. Moreover, mm has always been honest. He doesn't play games with me even though we have disagreements.
Sent from iPhone
Not reading “sockpuppet” posts means that you do not read MM’s posts (he has admitted to and has been caugfht using sockpuppets).
Clearly, you are not consistent.
Further, as I have pointed out to you, pseudonymous use is a perfectly valid form of commuincation, oftenused by our founding fathers.
For you to unilaterally dismiss parts of the conversations “based on sockpuppet” is to effectively stick you fingers in your ears and chant “NANANANANANANANA.”
Clearly, your effectiveness and responses are severely hampered by such a decision.
While suffering “sockpuppets” may be arduous, the results of a dialougue are still greatly enhanced by actually paying attention to what is being said.
As I have promulgated, it is better to simply ignore the “who” of the message and listen to the “what” of the message.
Not only does that keep me from appearing to be a fool ignoring actual valid points made, it lets me glean the gems from sources that maybe less than savory, but still have gems to offer.
Ned,
I don’t read answers to my questions in the form of non-answering questions.
I view that as worse then sockpuppet posts, because even (especially for some of) those who post in non-sockpuppet format can tend to be disingenuous.
Let’s see if you can avoid being classified so.
Chakrabarty, I am sorry now that I attempted to continue a substantive discussion with you. You clearly are one of them.
Capitulate, I don't even read sock puppet posts.
Let me ask you a question: per Lourie in the Federal Circuit opinion, is a difference in chemical structure a difference in "kind."
““found in an African berry, are not?””
Sounds an awful lot like:
“Thus, a new mineral discovered in the earth or a new plant found in the wild is not patentable subject matter.”
Supreme Court, and yes that’s a direct quote.
Something is wrong with Ned Heller.
Ned,
You have not answered me with either a quote from law or a paraphrased quote from law to counter the points made in Chakrabarty.
You state, without fact, that I ignore the facts of Parke-Davis. I do no such thing. In fact, your discussion points out that Parke-Davis does not hold what you thought it did (Conjecture Amuck took you to task on this at link to patentlyo.com ) Inparticular, see the posts at 5:22 PM and at 6:22 PM.
Your premise that “kind” is inapposite is without legal basis, and simply misunderstands when teh term comes into play, and more importantly, why that term comes into play. Do you understand why? And it is not because we do not want to make nature infringing. Think of how silly that senence sounds when you repeat it aloud. “We” make nature infringing? That borders on being pathologically self-centered, and ignores the plain fact that nature is independent of our innovation. The plain truth is that we cannot invent what is already in nature. That fails the concept of something “new.”
In other words, you are making that position up out of whole clothe. You have neither law, paraphrased law or even paraphrased dicta to support such a naked assertion. Nature, by definition is prior art. You seek to merely define it otherwise and have no rational basis for doing so. Discover simply is not enough. This is clear in Chakrabarty because Chakrabarty took it directly from Congress. Thus, this is not merely a judicial fiat, this is the Court interpreting what Congress wrote, an interpretation from the highest Court.
You will need to produce something much more on point and something that directly negates both what Congress set forth and what the highest Court has interpeted that to mean in order to validate your hypothosis. You will only be able to do so with reasoned responses, not with games, tricks and mere conjecture that “Chakrabarty must be wrong.”
I am perfectly willing to listen to reason. But that reason must be compelling and it must address the plain words and plain meaning made so evident. The discussion over several threads have not been kind to you and your position. I can easily cull the non-ad hominem portions to counter anything that you have attempted so far. The only thing left for you is to acknowledge waht the law, both legislative and judicial, have laid out in plain view. It is hard to imagine any other response that you can make that would stay within the bounds of reason.
Note 12 from Diehr is being horribly misquoted.
You are not even talking about the same legal principle.
In my chambers, you would be sanctioned for such a move.
Nonsense.
You have waived away any such notion of “IN KIND and accuse me of ignoring the factor.
That’s quite some chutzpah.
Perhaps you would care to discuss why “IN KIND” is present to distinguish from in nature and actually make something “new” in the legal sense of the word (and it is not because it was “new to you.”
And you sire are back to ignoring why a difference is kind is required.
Difference "KIND" relates to obviousness, but it is not required if the law of nature or composition of matter is not prior art. See note 12 from Diehr.
Well, I will agree that whether it is necessary or not is the issue.
Ned,
You mean that is miscovers that topic.
You are back to posting nonsense. I suspect it is because you have no answers to what others have posted today.
Your lack of addressing actual point made, ignoring them and introducing wacky new concepts (product by process anyone?) fools no one.
I hope you realize that.
Ned,
Your post at 2:55 is complete nonsense and has absolutely nothing to do with the rest of the conversation here.
Get back to the basic points already discussed.
And please include Chakrabarty if you are going to go on tangeants (at least that way you may be able to stay somewhat in the ballpark).
“Kind simply is THE issue.”
Fixed.
Errant, see the post I just made to you. It covers this topic as well.
Errant, you assume that there is a case that held that because a law of nature or a product of nature is ineligible subject matter under 101, that it must be considered prior art to the discoverer. That point was actually discussed in both Flook and Diehr. The final say on THAT issue is from Diehr at FN 12:
"It is argued that the procedure of dissecting a claim into old and new elements is mandated by our decision in Flookwhich noted that a mathematical algorithm must be assumed to be within the "prior art." It is from this language that the petitioner premises his 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 petitioner would, if carried to its extreme, make all inventions unpatentable because all inventions can be reduced to underlying principles of nature which, once known, make their implementation obvious. The analysis suggested by the petitioner would also undermine our earlier decisions regarding the criteria to consider in determining the eligibility of a process for patent protection. See, e. g., Gottschalk v. Benson, supra; and Cochrane v. Deener, 94 U. S. 780 (1877)."
May I respectfully suggest that consider this rejection of your proposition that simply because something is ineligible it is prior art to the applicant under 102.
Now, may I also suggest that you brush up on the law of invention prior to the '52 Act created §103. That law required a change in "kind," rather than "degree." See, e.g., the Eibel Process case.
In Parke-Davis, L. Hand had to find that the purified adrenaline was inventive over in pure adrenaline which was prior art to the applicant. In doing so, he held, that the purified adrenaline was different in kind from the impure adrenaline.
In Parke-Davis, and indeed in every other case involving compounds that I am aware of, the un-isolated, un-purified, naturally occurring compound was known, publicly known, prior to the isolation or purification. In such cases, not only must the isolated or purified form be novel, but it must be nonobvious. Thus the source of the rule that the isolated or purified compound must be different in kind rather than degree from the prior art compound.
I hope this helps. I have explained this to you before, but it doesn't seem to sink in.
The point, repeatedly made, is that if you discover a process for replicating something found in nature, you cannot obtain a patent for the thing, but you may be able to obtain a patent for your replicating process (a method patent).
This too is bedrock. To ignore this is unconscionable.
“it is not eligible “prior art” albeit being of nature.”
Cite please.
By definition and by Supreme Court policy, the patent laws cannot take from the warehouse of nature that which belongs to all and give to any one man.
Something in nature is by definition prior art as it existed before the inventor. Whether one is aware that it existed prior to the “invention” is simply immaterial.
It is only when the inventor does something, introduces the hand of man AND makes a change to the level of IN KIND has the statutory “new” been met.
This is well known and well understood law. It is present in the new law. It is present in the old law. It is present in the congressional record. It is present in all cases fromn teh courts and the Court.
This is bedrock.
Any deviation is immediately suspect, and any “logical” thoughts built on such a deviation fail at the onset.
“Errant, the point is that “kind” from Hand’s Parke-Davis meant “inventive.” ”
That’s not a quote from law.
That’s not even a bad paraphrase from a quote from law.
Repeat after me: “new to you” is not “new.” See Chakrabarty. And no, your mere pronouncement that something must be wrong with Chakrabarty is not a persuasive legal argument. If anything, it highlights your lack of legal basis for the view thatyou merely want to be so.
“KIND” precisely is an issue when it comes to isolated or purified. EVERY single case cited on this thread makes that distinction. Think of isolating a leaf from a tree by merely plucking it.
It’s as if you have closed your eyes and ignored every point made on multiple hundred-post threads “because you want to.”
There simply is no basis for doing so. Try to stay honest in your postings.
Errant, the point is that "kind" from Hand's Parke-Davis meant "inventive." Today, that means new and non obvious. That was necessary in Parke-Davis because Adrenalin was publicly known. All the inventor did was invent its purification process.
If a compound is discovered from nature, in contrast, it is not publicly known even though it may not be claimable per se under 101. It is not technically prior art under 102. For this reason, obviousness is NOT an issue. Read the statute (103) please.
Therefor, all one need is novelty to claim a compound isolated from or purified from nature. Kind simply is not an issue.
Repeat after me:
“new to you” is not “new”
Further.
Your point 4) needlessly messes up the already perfectly clear understanding of the level of interaction from man to distinguish from nature: you need to make a difference in KIND.
Why do you keep attempting to mess this up?
Ned,
Your point 2) injects confusion about “known” needlessly. I am sure that you are aware of the Pennock case (amongst others) that for the patent context exand “known” to encompass those things made by trade secret. And that is even ignoring for the moment the added confusion injected by your equating nature and man made things (whIch you cannot).
Thus your point 3) is a fallacy with no true logical basis.
If only you would realize the message you just posted applies to 95% of your posts…
Cry, if you have a substantive point to make, please make it. Otherwise all you were doing is wasting everybody's time with your inane, and animadversitic posts.
Angry? Perhaps. You would be angry too if you had to read the schlock being posted in comeplte ignorance of the points being made on this blog.
Do you even bother reading what has been posted Ned Heller? Case after case, point after point leave you with nothing but your “wants.” And yet you post as if you undestand the law.
It’s enough to make any sane person mad. Or sad. Or both.
Cry baby, that's two. You sir are a pathetic, angry sock puppet regular.
Sent from iPhone
This has to be one of the worst applications of logic I have ever seen.
The bottom line on Myriad:
1) Wild DNA, being of nature, is not patentable per se.
2) Being of nature does not mean it is known. The formula for COKE is not know merely because COKE is publicly available.
3) If Wild DNA is not known, it is not eligible “prior art” albeit being of nature. Compare, COKE formula.
4) Ergo, isolated DNA is patentable as a novel and unobvious composition of matter when the wild DNA is otherwise unknown because the wild DNA is not prior art simply because it is a product of nature.
Capitulate, I will assume that you are right about the wild composition of matter not be patentable as such under 101. That does not mean that it is prior art under 102, which is the necessary prerequisite for a claimed isolated or purify non naturally occurring compound to be found obvious over the wild compound.
I think for the SC to hold the isolated DNA obvious, one must first demonstrate that the wild DNA is prior art under 102.
Capitulate, you ignore the facts of Parke-Davis, the very case that initiated the "kind" test. That case involved a claim to purified adrenalin, where unpurified adrenalin was known. "Difference in kind" was then the test for "invention" over the prior art.
I am merely suggesting that when the wild compound is unknown, that the issue of "kind" is inapposite because the wild compound is unknown and is not prior art.
“ I would hope that the courts interpret “otherwise available to the public” in the new statute in a manner consistent with public knowledge and public use.”
Is that a legal quote, a paraphrased quote or naked wishful thinking without any backing in law?
Given the case law and actual quotes in law, I would say that you are hoping on a prayer without any backing.
“New to you” is just not “New” And you cannot take away from nature’s storehouse. You have not posted any rationale at all when these well known precepts in Supreme Court jurisprudence would all of a sudden disappear.
Your new placement on the table of trade secret use is most defintely use in the public, albeit indirectly. I am sure that you know the case law that stated this. It is the primary reason why trade secret use is not eligible for patenting, and apppears to be a very desparate attempt to still co-opt that which is in nature into the patent sphere.
As I have repeatedly instructed you, the Supremes simply will not allow that. The warehouse of nature belongs to all men, and is simply not patent eligible.
Your response here is not reasoned at all. You sound desparate and you have no more points to make other than pie in the sky wishful thinking.
It is time for you to face the music and acknowledge the better logic and the better position .
Ned,
My answers have been removed.
In a nutshell, you contineu to be in error because you do not eaccept the proper reasoning and yo stick with you tfallacious reasoning.
As to the Chakrabarty, the principle you suggest is flased because you are taking out the differenc in Kind that must be obtained by the hand of man. Merely doing what is in nature is not invention.
Lastly, your final paragraph is deeply flawed, as the items you state (isolation, purificaiton, and extraction ALREADY provide patentable subject matter – as long as the new in kind is met.
Why are you twisting this and trying to get rid of the new in kind?
Capitulate, I thank you for the discussion. It has been interesting.
Concerning the remand the case on isolated DNA, I think in the end that it will come down to whether the wild DNA constitutes prior art to the isolated DNA. I think the Federal Circuit cannot just simply rely on the different chemical structure between the two. That only addresses novelty. It does not address obviousness; but obviousness critically depends on whether the wild DNA is prior art. The wild DNA may be proscribed from patenting based upon a judicial exception, but it is not necessarily prior art.
"Known or used" by the public remains the critical criteria for determining whether something is prior art. I would hope that the courts interpret "otherwise available to the public" in the new statute in a manner consistent with public knowledge and public use. Thus while while DNA may not be patentable, it is not necessarily prior art unless it is publicly known, or a public use in some recognized sense. For example, I placed on the table for your consideration trade secret use. That is not prior art because the public does not know about it and certainly the use is not in public. Perhaps the courts will craft a similar exception for compositions of matter that are not known, yet are in nature.
Your repeat reply garners a repeat reply from me:
“the reason I advanced in my prior post”
is wrong.
Still.
Whether you agree with an incorrect reason is immaterial. The fact that you cling to a wrong reason shows that you are not mature enough (yet) to reason through to the correct understanding.
“they are also not prior art to a claim to a man-made version of that thing per Chakrabarty.
Would you agree to this in principle?”
No. For the simple fact that what is “new to you” is not “new.” If the item, even “man made” is not new because it is not of a different “KIND,” there is no reason to give a patent on the item (you may be able to get a patent on the process).
This has been explained to you many times now.
You keep on peddling this in various forms. Wouldn’t it be easier if you just accepted the rationale and went from there?
Your last paragraph is again “discombobulated,” as the items you list (isolated, purified and extracted) ALREADY may provide enough of change to evidence the hand of man without the public domain versions (an odd way of saying natural products) constituting prior art. It seems that you are trying to make the difference in kind requirement disappear.
Why would you do that?
Why do you continue to fight so hard not to understand? Your responses are not reasonable.
“the reason I advanced in my prior post ”
is wrong.
Still.
Whether you agree with an incorrect reason is immaterial. The fact that you cling to a wrong reason shows that you are not mature enough (yet) to reason through to the correct understanding.
“they are also not prior art to a claim to a man-made version of that thing per Chakrabarty.
Would you agree to this in principle?”
No. For the simple fact that what is “new to you” is not “new.” If the item, even “man made” is not new because it is not of a different “KIND,” there is no reason to give a patent on the item (you may be able to get a patent on the process).
This has been explained to you many times now.
You keep on peddling this in various forms. Wouldn’t it be easier if you just accepted the rationale and went from there?
Your last paragraph is again “discombobulated,” as the items you list (isolated, purified and extracted) ALREADY may provide enough of change to evidence the hand of man without the public domain versions (an odd way of saying natural products) constituting prior art. It seems that you are trying to make the difference in kind requirement disappear.
Why would you do that?
Why do you continue to fight so hard not to understand? Your responses are not reasonable.
Capitulate, I will agree with the reason I advanced in my prior post that a reason, if not the only reason to exclude from eligibility, things of nature is precisely because you cannot or should not make them infringements.
That said, I would suggest that while things of nature when first discovered may not be the subject of a patent, they are also not prior art to a claim to a man-made version of that thing per Chakrabarty.
Would you agree to this in principle? This would allow discoverer of a new composition of matter found in nature to claim “isolated” or “purified” or “extracted” versions of the composition of matter without the public domain versions constituting prior art.
Capitulate, I will agree with the reason I advanced in my prior post that a reason, if not the only reason to exclude from eligibility, things of nature is precisely because you cannot or should not make them infringements.
That said, I would suggest that while things of nature when first discovered may not be the subject of a patent, they are also not prior art to a claim to a man-made version of that thing per Chakrabarty.
Would you agree to this in principle? This would allow discoverer of a new composition of matter found in nature to claim "isolated" or "purified" or "extracted" versions of the composition of matter without the public domain versions constituting prior art.
Another cut and run by Malcolm (or MM or Hans Blix or whoever the sock puppet of the moment is).
I guess it doesn’t take a NAL to make Malcolm run like a little girl.
MM has had his chance to explain his theory in view of several different cases that explicate the mental steps doctrine. For reasons known only to him, he becomes abusive, sullen and refuses to engage in an honest discussion. I believe that he fears his sound-byte example would be tanished.
“Something is wrong with Chakrabarty.”
Is that a quote from law, paraphrased law, or just a losing, last gasp attempt at denying reality? It certainly is not a reasoned response.
Seriously, I have never seen someone fight so hard to not understand something.
Ned,
You do understand that if “isolated” does not make a change in kind, you get no patent, right?
Think leaf plucked from tree.
“the primary reason “isolated” makes sense that one does not want to make nature infringing.”
No. Not even close. Your logic is scary. Man cannot “make” nature do anything. Nature exists independent of man.
It is not that we don’t want to make nature infringing, it is because nature cannot infringe. Patent eligibility is barred for those things in nature because our law has been intepreted to mean precisely that.
Why is this so difficult for you? Stop fighting.
Can you find a quote in law for that? Or are you just paraphrasing?
You have never quoted the holding of the case.
Try it. You might find it enlightening.
Capitulate, the primary reason "isolated" makes sense that one does not want to make nature infringing.
I can see this and it make sense.
Something is wrong with Chakrabarty.
Discovery does not mean invention.
“Aren’t we elevating form over substance?”
Not at all. In fact, we are requiring substance.
Glad to see you getting the “patent for use” angle. That’s a step in the right direction.
Now let’s focus on the hands of man that makes a change in kind.
Do you understand what this phrase means?
Here’s a hint: A corollary can be found in the Prometheus case. Clearly, the fact that man must be involved, and not only superficially invokes your notion of substance, does it not?
I have quoted the exact language from Bergstrom many times.
“Why the distinction?”
Because the Courts have interpreted patent law to not cover things in nature belonging to all men (See Chakrabarty).
It really is as simple as that.
“Indeed, if one simply claims the composition and discloses a use, how in the world is anyone going to invalidate that patent unless the inventor actually admits that he found the composition in nature?”
Invalidated by finding the composition in nature. Did you think that was a difficult question?
That’s quite simple and logical. And again, you can perhaps have a patent for the use. This is not a new understanding. Why have you having so much difficulty?
“what does it get us? ”
It gets us what the Supreme Court has stated time and again – Nature’s warehouse belongs to all men. All else do you understand that?
“Compositions discovered by serendipity”
Serendipity is fine. As long as the hand of man is involved and the change to what is in nature is one of “in kind” you can have a patent for it. I don’t see your problem.
“found in an African berry, are not?”
That’s a pretty lame example, as I am sure that something would need to be done by man to that African berry to get your cure for cancer. And if not, then by what right should somebody get a patent on an African berry? You might get a patent on the process of curing cancer with that African berry, though. Isn’t that enough?
Again, this is all well understood stuff. Why are you not understanding this?
Perhaps you are right. We shall see.
What are your views on the following:
I discover that eating a particular berry cures cancer. I presume I can claim the use of the berry for that purpose. But what if I further determine the exact chemical formula of the composition that causes the cure? I suppose you would suggest that I could get a patent on an isolated version of the composition, but why isn't that the same thing as obtaining a patent on the composition itself? The one is obvious over the other? Aren't we elevating form over substance?
35 USC 100 (a) The term “invention” means invention or discovery.
A quote from the law.
“in re Bergstrom challenged”
Your own words:
“Quote the law, not a paraphrase.”
And please quote the holding, not some “snippet” that you want to bend (i.e., the reuting an argument is not the holding of the case).
Because quite frankly, your paraphrasing has been shown to be false, the holding of the case is not what you think it is and finally, you need to accept reality that things in nature are not patent eligible unless you make a change (in kind).
Capitulate, in re Bergstrom challenged the PTO to do just that (use 102). They could not. Found in nature does not appear in 102.
Invent?
Agreed.
The statute also permits the patenting of discovered compositions of matter.
The statute had words that literally permit this.
A discovered composition previously existed by definition. It just cannot be publicly known or publicly used. You figure it out.
Made by man is an attribute of manufacture and invention. Discover implies that phenomena or the thing was preexisting.
The statute reads, "discovers …a composition of matter … may obtain a patent…" This has been in the statutes since 1793, and originally excluded only things that were not known or used (later construed to mean, not publicly known or publicly used.)
There is no obvious exclusion in 1793 that a composition found in nature, but whose identity and utility was hitherto unknown or in use by anyone. Indeed, if one simply claims the composition and discloses a use, how in the world is anyone going to invalidate that patent unless the inventor actually admits that he found the composition in nature? But, assuming such an exclusion exists in fact, what does it get us? Compositions discovered by serendipity, as in vulcanized rubber, are patentable, but compositions discovered by investigation and the use of the scientific method, such as for example a cure for cancer found in an African berry, are not? Why the distinction?
I think he was.
Law of nature, the exclusion, why, and what and how one claims a patentable application are Curtis's topics. Breyer just doesn't go into detail Curtis does on the just what is necessary to claim an application of a law of nature. But they cite the same cases.
“Quote the law, not a paraphrase.”
You are the absolute last person who should be instructing others with that phrase.
to make it easy for you:
unless—
1. the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public
Nature is available to the public. That’s the point. It needs to be kept available to the public. That’s the meaning behind the warehouse belonging to all men. Whether or not you or any particular person is aware of nature’s availability to the public is immaterial. That’s why mere finding it is not enough. You cannot take what is in the public, otherwise available to the public, out of the public. The new 102 clearly states this.
Quoted or paraphrased, the result is the same. 102 rules out items of nature. That’s why the case law demands a change in kind. Once you understand that, you will be at peace.
Because a composition found in nature is not “novel” under 102. You did not invent it. It was there before you found it.
“New to you” is not new.
Now if you found a new use, congrats, you may be able to get a process patent.
This has all been explained to you.
You did not invent if it is already in nature and you did nothing to make it new (under 102) by changing it in KIND.
This has been explained to you many times now.
“New to you” is not new.
So is “process.”
So what?
Maybe because Breyer wasn’t trying to say what Curtis said
If I do not tell you where I discovered the composition in the specification, tell me why a patent to a novel (under 102) composition that has a disclosed use is invalid?
The new law is not "otherwise available, is it?"
Quote the law, not a paraphrase.
I’ve not only read Sperry, I’ve studied it, reread it, and inwardly digested it.
The takeaway point in this context is that patent prosecution, whether performed by patent attorneys or patent agents, is the authorized practice of law. Whether practicing law is more than an elevated form of scrivening is another question.
As for terminology, dictionaries are of little use here (and I wish that Examiners and Judges would realize that this is also true of terms of art employed in patents). The legal meaning of the terms is all that counts in the present context. That said, 37 CFR refers jointly to patent attorneys and patent agents not only as patent practitioners, which is well known, but also as counsel, which your dictionary will tell you is a synonym for lawyer. Ignore the dictionary, because you may call a patent agent counsel, but you must not use the term lawyer.
This patent agent knows one lawyer who is a partner in a small firm who took the patent bar six times before passing it. It would not be very charitable to let on who he is, suffice to say I have never actually worked with him, so nobody can figure it out that way.
I, OTOH, passed it first time. I forget whether that particular exam was his second or his third attempt. I think he just didn’t attach enough importance to it and didn’t study much, which is understandable the first and maybe even the second time, but after that begins to look like carelessness.
Capitulate,
Breyer's opinion reads a lot like Curtis, but Curtis said it better.
One word, you reduce everything to "manufacture." Discover is in the statute as well.
Your last paragraph is completely out of line.
Very–
I see you’re just trying to pick a fight.
As is plainly obvious, I was not trying to PROVE “it” in the original post, so no matter how you try to spin it, there is no “circlejerk”.
You are improperly importing a value judgment into the word “failure”, when there is none. I used the term merely descriptively.
A “failure to submit a claim containing eligible s-m” is just that–the submission of a claim, which claim does not contain eligible s-m.
If you want to discuss something, then do so–my analysis above is far from perfect–but if you want somebody to fight with about a non-issue that you have invented, go somewhere else.
IBP,
Your comment is circularly self-reinforcing. “It is” because you define it to be, regardless of any actual touchstone with reality.
It’s a circlejerk of one. No better at all than that which you complain of.
Don’t you have other radical departures to make?
Like the one at Mar 08, 2012 at 09:41 AM ?
link to patentlyo.com
Very–
Your point may contain something worthwhile, but I cannot for the life of me make sense of it.
Assume a failure? No, I DEFINE it as failure, because that’s what it is: failure to submit a claim containing eligible s-m.
Every legal conclusion is predicated on a finding of fact. Yes, there is 101 eligibility law, but no 101 analysis can be made without reliance on facts, which in this case include the substance of the claims, in which a patent attorney is not held to any sort of standard of expertise. You must remember that every claim must be construed (if not formally, according to Rader) in order to be analyzed under 101, and that the 101 s-m eligibility criteria include SS&C utility, not just the statutory categories criterion.
It would be helpful if you could post other comments, each addressing only a single specific issue.
“that Diehr was the best case on point, and that he was purposefully and explicitly NOT departing from that precedence, even though he was.”
Diehr said the claims should be allowed. Therefore, any decision that invalidates a claim is a radical departure from Diehr.
Hiding behind “syntax” or form when what is needed from you is substance.
No wonder you are so despised.