Guest Post by Robert R. Sachs of Fenwick & West LLP
Read Part I; Part II; Part III; and Part IV.
The Bilksi decision punted on the question of what is an abstract idea, leaving it the Federal Circuit to devise a test. Judge Rader and Judge Dyk proposed different versions of an “I know it when I see it” test. Sadly, the Prometheus decision is of a piece with Judge Dyk’s approach—boiling the claim down to a point where the court can say it’s nothing more than _____ [pick at least one: abstract idea, law of nature, natural phenomena].
But interestingly the Court punted even more deeply in Prometheus—and perhaps, just perhaps, gave inventors and us crafty patent attorneys an out, a chance for a long return. A key premise of the Court’s analysis is that all of the claim elements, apart from the alleged law of nature, were “well understood, routine, conventional activity.” This not the normal state of affairs, either before the USPTO or before a court in patent litigation. The Court thus held out for another day:
We need not, and do not, now decide whether were the steps at issue here less conventional, these features of the claims would prove sufficient to invalidate them.
This sentence, a model of clarity, not it is. It seems to suggest that had the other steps been “unconventional,” that is non-obvious, the claim would have stood a chance. This is how the Court rationalized the Diehr decision, noting that the steps of “installing rubber in a press, closing the mold, constantly determining the temperature of the mold, constantly re- calculating the appropriate cure time through the use of the formula and a digital computer, and automatically opening the press at the proper time” were “nowhere suggested” as being “obvious, already in use, or purely conventional.” But of course the Diehr court never “suggested” that because the novelty and obviousness of that process was not before the Court then, and it (wisely) did not frame the discussion in that way, no less because it has already stated that it was not going to dissect the claim into old and new parts. To position Diehr in this way is highly disingenuous of the Court. Moreover, I have a very strong feeling that even 54 years ago in 1968, putting rubber in mold, putting the mold in the oven, and taking it out of the oven when it was done was pretty well known in the art.
In any event, if this hint is correct, then there remains a path to patent eligibility, one that seems both relatively straight forward and fraught with complexity, much like any long punt return: just run the ball all the way down the field. On our playing field, you need only (!) make sure that there are at least some elements that “apply” whatever law of nature is in your claim in an “unconventional” manner.
Surely, good advice. Alas, there are several problems with such a facile rule. First, once you start dissecting a claim and evaluating each element by itself, it becomes very easy to map each element onto some prior art. That is after all, what many patent examiners do; I’m just sayin’.
Second, some claims, like those in Prometheus, are by designed to reflect the business operation of the inventor and his company, and avoid problems such as multi-actor infringement. For example, had Prometheus added more “unconventional” limitations to the claims, in particular reciting steps relating to the manner of treating the patient based upon the thiopurine level, the claim would have had significantly less commercial value, if any, since Prometheus was in the business of testing for diseases, not in the business of treating them.
This is, of course, something for which the Court does not evidence an understanding or a concern. But it is something that the Court should both understand and care about—since the entire purpose of the patent law is to encourage innovation through economic incentives. If that is the theory, then the incentives to patent must be aligned with the value proposition that the innovator seeks to exploit. It follows that reducing the value of the incentive should reduce the level of innovation. (I’m not saying here that in fact this is true; I’m merely stating this as hypothesis).
What is the Law?
The Court has spliced together disparate, essentially contrary opinions into a legal virus, a self-validating meme that cannot be defeated by logic or example. I said earlier that the Court’s analysis was “not even wrong.” The Court’s reliance on claim dissection, on hand waving rules of “is it enough?” and “does it add something significant?”; its confusing of statistical relationships with “natural laws;” and its shear daftness in believing that Section 101 must lord over Sections 112, 102 and 103 all combine to create a powerful “means for” invalidating any patent, now extant or in the future. Give me any patent claim, and I can craft an argument using the Court’s Prometheus analysis that it is invalid. And like any theory that is not falsifiable—that is not even wrong—you could not logically defeat my argument: for I could always say: “it’s not enough.”
Zeus punished Prometheus for stealing fire—knowledge—from the gods of Mount Olympus and giving it to Man: chaining him to a rock so his innards may be eaten by a bird of prey. So too has the Court sat in judgment of the modern Prometheus, for “stealing” a small bit of knowledge from the equivalent—and equivalently false—god, the laws of nature. Like their namesake, this Prometheus has had its innards exposed for the taking, and its discovery is now available for anyone to feast upon.
There may or may not be laws of nature. Even Einstein’s theory of relativity is not immune to criticism. But there is a law which is universal, immutable and everlasting, a law that will be confirmed yet again by this decision: The law of unintended consequences.
Yes, MM, what say you to the “written directions” of Ned’s claim 4?
IBP, I personally think claim 4, "written directions" skates as close to the edge as possible.
I'd like to hear from Malcolm on this one.
Sent from iPhone
Ned violates his own canons of Supreme Court logic.
Prometheus was a medical method patent.
Prometheus was denied to be patent eligible subject matter as a law of nature.
All medical method patents are categorically not patent eligible as laws of nature.
Why is he wasting his time writing claims that according to his logic are not patent eligible?
Thank-you for that contribution Ned.
Anybody want to comment on Ned’s proposed claims?
JCD–
Either you are most certainly missing something, or your last comment was very funny in a self-deprecating sort of way!
Unless I’m missing something…
even though all the constituents of the combination were well known and in common use before the combination was made. The “novelty” of any element or steps in a process, or even of the process itself, is of no relevance
Because Diehr is still the law of the land, it is worth repeating that there is no point of novelty test for 101.
Astute observation.
Looks like Ned may have learned his lesson seeing how he has cut and run from the Dicta Vs Holding discussion up thread.
Although I am quite certain he will try and conflate the two, I hope the patent community beats him relentlessly on that issue the way he was beaten on the MOT and Business Methods.
fish scales said in reply to MM…
To which cases are you referring, MM?
Ha Ha Ha..MM does not refer to court cases lest he be made to discuss one on the merits,
Srs enough
There is a battle in the Fed. Cir. over software patents as you call them. Prometheus clearly does not help. Probably the way to think about this is that information processing suffer when this law of nature and abstract idea judicial exception is applied broadly. Benson tries to make all information processing methods laws of nature.
What are you a gnat that follows me around and bites me? You need to sharpen your teeth.
Newbe:” All you did was scoff, swear and “run away.”
Loks like MM has found his new NAL!
Puts some underwear on this Moonie, no one needs to see that sight as you run up the hill in your skirt.
MM: ” [oldstep]+[newthought] are effectively claims to the [newthought] themselves, at least as far as those practicing the prior art are concerned.”
AI: When did this become the law? Proper pin-cites please?
::Usual silence::
Ned: “AI, please educate us humble attorneys as to the correct distinction between holding and dicta.”
AI: “We?? No, you mean “I” as in “Ned” all by yourself. ”
Your fellow commenters, which I presumed to be comprised of at least some attorneys have wiped the floor with you.
They already know what the distinction is and I have no doubt you do as well.
However, you like to muddy the difference so that you can conflate the law and twist it like the nose of wax to suit whatever agenda you are paid to shill for at the moment.
This way you can make your outrageous claims such as..
Bilski held business method patents ineligible and ruled the MOT was the exclusive test.
And now, your personal waterloo, Prometheus overruled Diehr’s claims as a whole approach and held MM’s wet dream of a mental steps test as legal precedent!
Even though you know d am well those were not the binding Court holdings in those cases.
It’s the height of intellectually dishonest and just st inks to high heaven!
It tactics like this that make the public h ate attorneys and so called attorneys like you that give the legal profession a bad name.
If I were your professor I would flunk you.
And if I were you client, I would fire you.
GAC,
May I introduce to you the chief “yahoo” who yells (and whines) the loudest their ignorance?
Meet MM.
AI, please educate us humble attorneys as to the correct distinction between holding and dicta. We wait, with baited breadth. Inform us, Mr. Inventor, that we may know.
Ned: Cry baby, again, if you have something of substance to say, do so.
AI: Well, obviously I am catching up to the well deserved beating you have taken thus far in this thread. But I must add that “I Cried” did score a telling point. You preach about the difference of dicta and a holding ( at least to me) then completely ignore that difference when discussing this case and Diehr.
This makes you a hypocrite and adds further credence to your growing reputation as an intellectually dishonest, and ethically challenged commenter on this blog
Ned: “Malcolm, you are to be congratulated as the only person here who consistently advocated that the claims were invalid under 101 because they added a mental step to an otherwise old process.”
AI: Ned, I just read the entire decision and no where did I see the Court express this opinion. Can you please cite an exact reference? Or is this just more of your Ned troll BS?
Ned: Essentially, Stern was arguing that Diehr was wrong to prohibit dissection. Both you and he were right in the end.
AI: Ned, I also did not see the Court express this opinion that “Diehr was wrong to prohibit dissection”. Again, can you please cite an exact reference? Or is this too just more of your Ned troll, lying POS, BS?
And yet, the doctrine of mental steps continues to go untouched…
Take, for example, the most recent opinion authored in the Therasense remand.
What about it? Judge Alsup believes he understands the CAFC en banc opinion. I wonder if Abbott shares that understanding.
JCD, I think the change is immaterial from a 101 point of view. The change may, though, help under 102, as you point out.
This is probably why the SC was unconvinced with the government’s argument that 102 was the proper vehicle for handling claims such as Prometheus’s.
I was being generous. The opinion, like 101 jurisprudence in general, is all over the place. And yes, I believe this is not always the case. Take, for example, the most recent opinion authored in the Therasense remand.
FYI, your post in response to my 6 response clarified your position on this vis-a-vis using 101 to foreclose claims potentially resulting in infringement from practicing of a prior method + a mental comparison to a magic number. No need to type another response out unless you just have further thoughts or comments.
Just making sure I wasn’t missing something. Cheers!
That’s why people are upset.
LOL. “Some people” are “upset”. Notably it’s the same people who are “upset” by EVERY court opinion that doesn’t uphold the eligibility, validity or enforceability of any patent. Notably, that group of people includes a large number of sockpuppets and trolls of this blog.
Go figure.
I’m pretty sure I said that in general a claim that discloses a process for generating a signal does recite patent-eligible subject matter. Am I missing something?
Yes, you forgot to include a “not” in your initial comment, which led to me pretending that one was there. 😉
Sorry. My bad.
Overall, I think my feeling would be that it is, in general, possible to construe the opinion to mean what you appear to be taking it to mean, but the opinion itself is not quite so definite that there will not be alternative constructions. That is most unfortunate.
Boo hoo hoo.
The highlighted text is true of virtually every court’s opinion, particularly in patent law. Have you just started practicing or what?
I’m not disagreeing (or agreeing) with any of that, but I’m not sure how that was something I was missing. 🙂 I was asked about the patent-eligibility of a process for generating a signal. I wasn’t asked about the signal itself.
I was more curious as to why MM thought I had said that such a process would be patent-ineligible. I suspect it was simply an oversight caused by reading too quickly – no biggie.
“You understand, of course, that this is exactly why the claim was held to be ineligible under 101”
The long version: conflation.
The short version: What-Ev
Yes.
The signal may not be patent-eligible, but the process of generating (or generating and using) may be patent eligible.
Different classes, different aims, different effects, different scope, and on and on.
What matters is that the Court has created a mess.
That’s what matters.
That’s why people are upset.
And yet, you have yahoos whoo think that the Court has been consistent, and that the matter is simple.
And that’s why those people who so claim are yelling out their ignorance so loudly that they cannot, will not be ignored.
“Thus, I’m not arguing whether it should or shouldn’t be patentable under 101”
That’s the beauty of conflation. It just doesn’t matter.
Join the Chorus: What-Ev
I’m pretty sure I said that in general a claim that discloses a process for generating a signal does recite patent-eligible subject matter. Am I missing something?
That rationale makes perfect sense – notably, it does not mean that the claim would be anticipated or obvious – but it is a perfectly acceptable policy rationale for why the claim should be invalid under 101.
That is why I thought the exemplary proposed claim would have been much more interesting – it would have allowed for a clearer articulation of a standard one way or another. I have no idea how the court would have come down, and it may indeed be the way that you believe they would, but I still would have preferred to see an opinion based on a claim like that, as opposed to the strange claim language the Court dealt with.
Overall, I think my feeling would be that it is, in general, possible to construe the opinion to mean what you appear to be taking it to mean, but the opinion itself is not quite so definite that there will not be alternative constructions. That is most unfortunate.
JCD [Yes, generally speaking,] a claim that discloses a process for generating a signal recite[s] patent-eligible subject-matter under 101?
I would love to hear you explain why a novel, non-obvious process for generating, say, a laser beam (let’s say it’s ten times more powerful than any existing laser beam) is “generally speaking” a patent-ineligible process.
[grabs popcorn]
MM, you assert that the offered alternative recitation of “determining whether the level of 6-thioguanine in said subject having said immune-mediated gastrointestinal disorder is less than about 230 pmol per 8×108 red blood cells” is “no different [than] the claim that was tanked [and] surely anticipated and/or obvious in the view of the prior art, which taught detecting metabolite levels for the purposes of calibrating drug dosage.”
You further query, “[d]oes anyone believe that a level of metabolite ‘less than about 230 pmol per 8×108 red blood cells’ was never measured in any patient in the past?”
I think this is the wrong question. The exemplary language I offered didn’t say “determining a level of x that is less than y”, it said “determining whether the level of x is less than y”.
As I noted above in responding to 6, technically, determining a value of “x” is different than determining whether “x” is less than “y”. If you were going to write out the steps for each of these methodologies, the latter methodology would have an extra step comprising “comparing x to y”. Would this step be trivial? Sure. But anticipation analysis doesn’t let you exclude trivial steps – that’s what obviousness is for. However, I’m not sure how you can say it would be obvious to compare x to y if you don’t know the import of the value y.
You close by alleging that “[I] seem to be arguing that thinking specifically about the magic number (230 pmol per 8×108 red blood cells) should be enough to impart patentability to an otherwise anticipated claim.”
However, I’m not saying that “thinking specifically about [a] magic number (230 pmol per 8×108 red blood cells) should be enough to impart patentability to an otherwise anticipated claim”, instead I am simply noting that I don’t believe a method of determining a value of x anticipates a method of determining whether x is less than y. I do not have a firm opinion on whether such a claim would have been held to satisfy 101, thus why I was curious as to how the Court would have come out.
Thus, I’m not arguing whether it should or shouldn’t be patentable under 101, I was simply wondering if the Court’s opinion would have changed had the claim language been slightly different. It’s my understanding that you believe that it would not have been, and I would welcome any thoughts or explanation as to why that is the case, but I don’t think it’s helpful to simply assert that the Court’s opinion is obviously equally applicable to different language without explaining why that is the case.
Cheers!
JCD anticipation analysis doesn’t let you exclude trivial steps – that’s what obviousness is for. However, I’m not sure how you can say it would be obvious to compare x to y if you don’t know the import of the value y.
You understand, of course, that this is exactly why the claim was held to be ineligible under 101. Your hypothetical claim effectively turns practitioners of the prior art into literal infringers when they think about the relationship between a first number (the measured levels, obtained by an old conventional technique) and a second (patent ineligible) number with non-obvious “meaning.”
It’s dead in the water, JCD. Let me know if you need further explanation. I hope not.
I’m going to elaborate on the substantive issue without dignifying your comment with a response.
I’m not saying that the argument would be a winner or that it would not, but I can definitely see the argument.
Technically, determining a value of “x” is different than determining whether “x” is less than “y”. If you were going to write out the steps for each of these methodologies, the latter methodology would have an extra step comprising “comparing x to y”. Would this step be trivial? Sure. But anticipation analysis doesn’t let you exclude trivial steps – that’s what obviousness is for. However, I’m not sure how you can say it would be obvious to compare x to y if you don’t know the import of the value y.
In general, I suspect my answer would be yes, although it’s impossible to say for sure in the abstract without seeing a particular claim. Obviously, though, it’s not my opinion that matters.
Get a Clue, Diehr said the novelty of the claim elements was irrelevant. Obviously, dissection was afoot in Prometheus. So, when the Court in Prometheus give positive approval to Diehr, one tends to think the court is approving of the result in that case if not the entirety of the legal reasoning.
I think MM approves of the result of Diehr as well, but I am not sure. What is clear, though, is that the SC continues to believe the result in Diehr was correct.
However, and you must admit this, that the SC now seems to suggest that adding “conventional” steps that add nothing to the correlations, even if those conventional steps involve transformations, is insufficient. But, what is this but dissection?
What matters, it seems to me, is whether the claim as a whole produces a new result. This seems to suggest that old transformations are not the kind of transformation the SC was talking about in Diehr. There has to be a new transformation, a new result, caused by the otherwise unpatentable law of nature.
I guess I’m a conflationist, but here’s my restatement of the rule:
A claim does not become patent eligible if the only difference between the claim and that which is known is one of the exception to patentable subject matter.
I think that this rule is actually a relatively common sense rule and not difficult to apply.
Yup.
Only the Mayo Nays are too stxpxd to understand this. Or too invested in The Game to admit that they understand it (Paul Cole, Robert Sachs, Gene Quinn, Kevin Noonan etc.).
I guess I’m a conflationist, but here’s my restatement of the rule:
A claim does not become patent eligible if the only difference between the claim and that which is known is one of the exception to patentable subject matter.
I think that this rule is actually a relatively common sense rule and not difficult to apply.
IBP, yes.
I think this might do the trick:
1. A method of optimizing therapeutic efficacy for treatment of an immune-mediated gastrointestinal disorder, comprising:
(a) administering a drug providing 6-thioguanine to a subject having said immune-mediated gastrointestinal disorder; and
(b) determining the level of 6-thioguanine in said subject having said immune-mediated gastrointestinal disorder,
(c) providing a first output indicium, said first output indicium a physical signal, when said level of 6-thioguanine is less than about 230 pmol per 8×108 red blood cells; and
(d) providing a second output indicium, said second output indicium a physical signal, when said level of 6-thioguanine is greater than about 400 pmol per 8×108 red blood cells.
2. The method of claim 1 further including the step of increasing the dosage of said drug in a next administration according to step (a) if said level of 6-thioguanine is less than about 230 pmol per 8×108 red blood cells.
3. The method of claim 1 further including the step of decreasing the dosage of said drug in a next administration according to step (a) if said level of 6-thioguanine is greater than about 400 pmol per 8×108 red blood cells..
4. The method of claim 1 where said first physical signal and said second physical signal are each selected from the group consisting of written directions, audible sounds, electronic messages, visually perceptible signals, and control signals.
JCD–
In your opinion, does a claim that discloses a process for generating a signal recite patent-eligible subject-matter under 101?
6–
Are you serious?
Ned–
I see people are still throwing around undefined, and ill-defined terms as though they had an understood definition.
Ned, in your opinion, would a claim in the form “A process of generating a signal, said process comprising…”, recite patent-eligible S-M under 101, assuming that all other statutory requirements were met?
And claims to old element + new element are supposed to be dealt with using 103 where he fact finder determines whether or not it would have been obvious to add the new element.
AI,
Whether it pleases you or not, you should note that this is familiar floor that Ned is being used to wipe up with: 101. He just cannot seem to get it right.
It is no small irony that “101” is often synonomous with “basic” and that Ned is beaten like a red-haired step child on the most basic of patent law.
If medical methods were not just categorically excluded by the Supreme Court in Prometheus, I would suggest that someone invent a medical method to take Ned’s body parts that have been scattered to the four corners and mend him back together again.
“This is similar to Funk where the bacteria were known”
Actually that is not true.
Reread the facts of the two cases again. In one instance a livingthing was created by the hands of man that had never been there in nature before. In the other, the bacteria were not changed in kind from what did exist in nature before. The court results follow the line of thoguht that you keep on fighting.
WOW!
Just goes to prove that I don’t even have to be here in order for Ned to get beat down.
Well, I have a real patent case to over see.
But I do check in from time to time to watch the ritual wiping of the floor with Ned.
“ 101 embraced the whole statutory scheme defined in 101/102/103/112.”
Now Ned, try on Chakrabarty.
Hmmm, Ned saying “something must be wrong” (and sayign so with no quotes to law, not even paraphrases to law) against what he Supreme Court clearly states in Chakrabarty can only mean one thing.
Ned is a liar.
In context:
In determining the eligibility of respondents’ claimed process for patent protection under § 101, their claims must be considered as a whole. It is inappropriate to dissect the claims into old and new elements and then to ignore the presence of the old elements in the analysis. This is particularly true in a process claim because a new combination of steps in a process may be patentable even though all the constituents of the combination were well known and in common use before the combination was made. The “novelty” of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter. 12
12 It is argued that the procedure of dissecting a claim into old and new elements is mandated by our decision in Flook which noted that a mathematical algorithm must be assumed to be within the “prior art.” It is from this language that the 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).
Emphasis added. – the point is that there is no “point of novelty” under 101 and that for 101, a claim only of old elements can still be patent eligible. This section of the law has nothing at all to do with the ban on products of nature, which as Ned has sworn a blue moon to is not dictated by 101.
Another beatdown on Ned because he just doesn’t get it.
“FN 12 of Diehr is the last word on this topic, as far as I know.”
Leave it to Ned to want to cite as controlling a portion of Diehr that he has also said has been overruled.
Ned, you do realize what paragraph footnote 12 goes to, right?
You are an Fn fxxl.
Ned’s lack of legal reasoning can be seen in his bouncing from one latest reading to the next: it’s 101, no its 102, no its 103, it’s Learned Hand (it’s not) In re Bergstrom (it’s not), no in re Bergstrom was expresly overruled, no In re Bergstrom is controlling, Chakrabatray says nothing about it, Chalrabarty merely says it in dicta, Chakrabatry is about manufactures, Chakrabarty is not on point, it’s products by process, its footnote 12….
The incessant goal post moving makes it more than clear that Ned is just lost and beyond his knowledge level.
It’s so very sad.
More of Ned’s misquotes.
Not the same subject Ned – not even close.
Is Leopold prescient? How can he be talking about my comment before I make it?
Must be part of the special gift that makes reading Supreme Court decisions and holdings not so broad and sweeping (and knowing which to pick and choose from). Must be nice to know which big picture applies and which does not, especially as multiple big pictures are now in play.
While you did not say anything directly about a comparison between Prometheus and Diehr, you did say “And it’s not that radical a departure from the law that came before” which no matter how prescient you are, is simply BS (you need a different godly power to deal with that).
As for my characterizations, all I have doen is shown what the court has provided, therefore they are the Court’s, not mine.
I’m pretty sure that it is NOT OK to ignore those, even if they are conflicting.
I believe Diehr and fn. 12 are after Chakrabarty.
Moreover, in Chakrabarty, the plasmids were known. The inventors just put them into a single bacteria. This is similar to Funk where the bacteria were known, and Parke-Davis where unpure Adrenalin was known.
FN 12 of Diehr is the last word on this topic, as far as I know.
Not according to the MM/Hans troll.
“seemed to”
If you are going to overrule a Supreme Court case, you better show me an actual legal citation that says that.
“Actually they did a pretty good job of cleaning up the mess they made in Diehr.”
Comments like this tend to keep MM’s credibility at negative levels.
Given that Breyer stated he was enforcing existing precedent, that Diehr was the best case on point and that NO precedent was changing, (and yet he completely missed on the very precedent he was “enforcing”) only means that the “mess” is even worse because nothing in Diehr can be said to be overruled.
MM has been invited to actually discuss the legal ramifications, and the fact that not only can he NOT see any, but somehow thinks that a mess in Diehr is cleaned up by a later case only speaking positively about Diehr shows his utter lack of legal acumen.
“(i) a method of determining a level of 6-thioguanine is not the same thing as determining whether the level is less than a specific value, thus no anticipation,”
Sometimes I can’t believe the people posting here are really attorneys.
MM: How do you apply that to the nitroglycerin/angina scenario of my last posting?
JCD The problem is that the Court’s decision, whether intentionally or unintentionally, goes too far with some of its language. In doing so, it makes a further mess of the quagmire that is 101 jurisprudence
Actually they did a pretty good job of cleaning up the mess they made in Diehr.
To me, a much more interesting claim would have included the following limitation:
“determining whether the level of 6-thioguanine in said subject having said immune-mediated gastrointestinal disorder is less than about 230 pmol per 8×108 red blood cells”.
That’s no different the claim that was tanked. Also, it’s surely anticipated and/or obvious in the view of the prior art, which taught detecting metabolite levels for the purposes of calibrating drug dosage. Does anyone believe that a level of metabolite “less than about 230 pmol per 8×108 red blood cells” was never measured in any patient in the past? I’m sure that very low dosages of 6-TG were administered to patients in the prior art, just as very dosages of 6-TG were administered to patients in the prior art.
You seem to be arguing that thinking specifically about the magic number (230 pmol per 8×108 red blood cells) should be enough to impart patentability to an otherwise anticipated claim. Guess what? That’s exactly the problem that the Supreme Court just solved in its 9-0 opinion.
I’m shocked, shocked to find that gambling is going on in here!
The problem is that the claim made no sense. The wherein clauses didn’t say anything about any of the steps that were actually recited – I can’t figure out how they limited the process in any way, shape, or form.
In one sense, the court’s opinion maybe even makes sense, although they did a terrible job explaining it. Imagine you’ve just discovered that falling objects accelerate at around 9.8 m/s^2, could you claim “dropping an object, wherein the object accelerates at around 9.8 m/s^2”, of course not. This the same sort of nonsense.
The problem is that the Court’s decision, whether intentionally or unintentionally, goes too far with some of its language. In doing so, it makes a further mess of the quagmire that is 101 jurisprudence. It would have been way easier to simply say that this claim is anticipated under 102, and that the “wherein” clauses don’t actually limit the scope of the process claimed (if anyone thinks they do, I would love to hear an explanation of what narrowing effect they have, e.g., it would be useful to detail a process that would infringe the claim without the “wherein” clauses but does not infringe the claim with the “wherein” clauses).
To me, a much more interesting claim would have included the following limitation:
“determining whether the level of 6-thioguanine in said subject having said immune-mediated gastrointestinal disorder is less than about 230 pmol per 8×108 red blood cells”.
Sure you could argue whether known techniques of determining a level of 6-thioguanine anticipate or render obvious a claim including this limitation, but I think there is at least a pretty decent argument that (i) a method of determining a level of 6-thioguanine is not the same thing as determining whether the level is less than a specific value, thus no anticipation, and (ii) known methods of determining a level of 6-thioguanine don’t teach determination of whether a level falls below that specific value, thus no obviousness.
Overall, I’ll be the first to admit that I don’t have any knowledge of this particular area, but I can’t believe the type of claim presented in this case was ever commonly accepted. The problem is that we all have to deal with precedent established while Courts are dealing with claims like this (and like those presented in Bilski). I can only speak for myself, but I am not surprised or upset that the Court struck down this claim, instead I am simply disheartened by a lot of the language contained in the opinion.
You were the one to bring up the printed matter doctrine, bright boy.
Well W TF is the matter with that concise statement of the test?
IBP, I don’t get your dismay. Really. While I was surprised that the Court abandoned Diehr’s prohibition of dissection, even without dissection, the government still supported the unpatentability of the claimed subject matter, but under 102 and not under 101.
In the end, if the only thing new in a claim is a law of nature (or abstract idea) presented as just information such that the information, the correlations, can be published in a book making any practicer of the old and commonplace physical steps (administer drug, test for metabolite level) an infringer simply by knowing of the correlations, then there has to be something radically, and I mean radically, wrong with the claim.
Shocked, Diehr heavily relied on In re Bergey (Rich, J.) for its statement that novelty was not to be considered under 101, primarily because 101 was to be considered before 102 and was the reason, according to Rich, that Congress separated 101 and 102 in the '52 Act.
The question therefore of whether a particular invention is novel is "wholly apart from whether the invention falls into a category of statutory subject matter." In re Bergy,596 F. 2d 952, 961 (CCPA 1979) (emphasis deleted). Diehr, 450 US, 175 at 190.
Diehr seemed to endorse this analysis from Bergey:
"The first door which must be opened on the difficult path to patentability is § 101 (augmented by the § 100 definitions), quoted supra p. 956.[4]
[4]The Supreme Court has directed that the determination that statutory subject matter under § 101 exists "must precede" the inquiries under §§ 102-103. Parker v. Flook, supra, 437 U.S. at 593, 98 S.Ct. 2522, 198 USPQ at 198-199.
In re Bergy, 596 F.2d 952, at 960.
Funny.
Yeah I kind of want to be a Mayo Nay and I’m not even a Mayo Nayer.
“and for any who disagree, I invite them to post a concise statement of such a test.”
Determine whether or not the claim is an attempt to claim judicially excepted subject matter. If so, they lose.
“Too bad they haven’t figured out information processing.”
If only they’d “figure it out”! They just have a hard time “figuring” it! They need to learn to do figures!
Ned said: “The shock in this case is the overruling of Diehr’s prohibition on dissection of a claim into old and new. That prohibition all but forced the Federal Circuit to come out on the wrong side in its own analysis of this case.”
You’re shocked? I’m shocked shocked that it took all the bozos so long to figure out to ask, “Where in section 101 does it say anything about the claim as a whole?” Breyer and Scalia figured out that in Diehr Burger had been reading section 103 and mistaking it for section 101. Then Breyer as a copyright guy just used analytic dissection — that’s what you patent guys call “point of novelty.”
don’t forget the exceptions to the printed matter doctrine.
Don’t forget to wipe your xxx.
Any other non-sequiturs we need to discuss?
Ned said, “The shock in this case is the overruling of Diehr’s prohibition on dissection of a claim into old and new. That prohibition all but forced the Federal Circuit to come out on the wrong side in its own analysis of this case.”
You’re shocked? Where in section 101 does it say to consider the claim as a whole? Were you reading section 103 and thinking it was 101? Breyer and Scalia must have figured out that Burger had been reading the wrong section of the statute when he complained about dissection.
“You seem to just want to trxll.”
Hmmm. Not really.
It appears more to be the usual case that MM accuses others of what he does. He wants to troll with his soundbyte and avoid any discussion of the mental steps doctrine, even with self-professed newbies.
How sad.
“ So, too, does the printed matter doctrine”
lolz ON MM – don’t forget the exceptions to the printed matter doctrine.
“But it is important for the rest of us to appreciate how incredibly childish they are.”
Like your posts?
newsock Except
There is no “except” newsock. I’ve stated the workable rule. No claim in the form I described ([oldstep]+[newthought]) is patent eligible in the US.
Are there prior Federal Circuit cases inconsistent with that holding? Yes. Prometheus for starters. The CAFC decision was overturned. Are there other CAFC cases that contradict the holding in Prometheus? I don’t really care. I’m not sure why you care. You seem to just want to trxll.
I am delighted to be numbered as as a Mayo Nay (what a superb phrase – it deserves more widespread use). And to be called childiish at my age is not unwelcome – if I was 30 I would feel differently. Or perhaps it is second childhood.
So thanks MM!