Patenting Animals Produced through Selective Breeding

By Dennis Crouch

In re Ditto (Fed. Cir. 2012)

In a non-precedential opinion, the Federal Circuit has done it again (ditto) and affirmed the PTO Patent Board decision rejecting patentability. Here, the court affirmed that Mr. Ditto’s claimed cross between a bobcat and a domestic cat is anticipated by the prior art. In particular, the Pixie-Bob has been around for some time.

In the appeal, the USPTO solicitor also argued that the cat claims were all “patent-ineligible because they encompass a product of nature.” Here, the “product of nature” argument is based upon the fact that a domestic cat and bobcat can and will “naturally” mate without further human intervention. However, the Solicitor did distinguish this case from the patenting of animals with particular traits developed through a selective breeding process. An example of this is U.S. Patent No. 5,602,302 (Mikami) that claims a bronchial hypersensitive guinea pig created by brother-sister mating of guinea pigs identified as hypersensitive. In distinguishing the ’302 patent, the Solicitor wrote that:

the claims of the Ditto application do not demonstrate how the claimed cat breed is a product of human intervention. The claims include no detail regarding how the cats are bred, what traits are desired for breeding, or what results are expected. All that is required is that a “purebred cat” is produced by mating a bobcat, lynx, or bobcat lynx with a domestic cat. Id. Moreover, … the specification fails to provide detail regarding what kind of characteristics or traits are required in the claimed “purebred” cat. While Ditto argues that there is no difference between the [patented] guinea pig … and Ditto’s cat, the Mikami patent is different from Ditto’s application in significant ways: Mikami discloses a specific breeding process used to prepare guinea pigs with a particular trait, while the Ditto application requires “[n]o specific amount or type of breeding” and “the breeding program may terminate upon identification of any desired effect.” In short, unlike Ditto’s application, Mikami’s claims recite a specific desired trait and Mikami’s patent discloses a specific method of breeding used to obtain that trait, distinguishing Mikami’s claimed guinea pigs from those in nature.

In its decision, the Federal Circuit refused to decide the subject matter eligibility question and instead affirmed on grounds of anticipation. The court simply wrote that ” we do not reach its section 101 rejection.” In this case, the court followed the course that Professor Merges and I suggested in or 2010 article on the avoidance doctrine. Some on the court have argued instead that Section 101 questions should be treated as antecedent questions that cannot be avoided.

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116 thoughts on “Patenting Animals Produced through Selective Breeding

  1. What nuked the comments on this string?

    Last I can tell MM and Ned were having a conversation about Bucky balls, an item that would actually fit into the destruction of MM’s curious anti-Products of Nature stance, and “poof” – all the comments are gone (Ned’s comments are available through his name link).

    Just curious, but did MM really step that far over the line?

  2. Dennis: In this case, the court followed the course that Professor Merges and I suggested in or 2010 article on the avoidance doctrine. Some on the court have argued instead that Section 101 questions should be treated as antecedent questions that cannot be avoided.

    In fact, in many (most?) cases, the Section 101 issues will not clearly present themselves until after the prior art has been analyzed. I don’t know if this point made it into your 2010 article (although arguably it should have since I was highlighting that aspect of 101 back then).

    Kudos to the Federal Circuit here for getting it right.

  3. mm, read the linked article on Bucky Balls.  They were "discovered" serendipitously, like vulcanized rubber, when lasers were used to make them.  Later, they were discovered to exist in nature, in outer space.

    Were Bucky Balls patent eligible?  

    This is exactly the example you give us all the time.

    The article: link to en.wikipedia.org

  4. I know what C says.  It doesn't say much.  

    Hypo: Inventor discovers and patents Bucky Balls.  link to en.wikipedia.org patented composition consists of carbon atoms arranged in sphere but bonded to other carbon atoms in a hexigon.  The product has unbelievable properties.

    In addition to receiving a patent, the inventor is given a Nobel prize.

    Later, Bucky Balls are discovered in outer space.

    Is the Buck Ball patent valid?

  5. All you guys are doing is trying to re-write the law to your own liking. It’s not going to work.

    LOL. Are you talking about re-writing the “law” that says nothing about “products of nature”? Or the “law” that was re-written by litigators and stamped by judges? Or the “law” that was promoted on blogs like this and re-written to my liking by the Supreme Court in Prometheus, 9-0?

    Please tell us again that “we can’t do that.” I need more bigtime laughs along those lines.

  6. Anon, if you could, could you tell us what you think the product of nature exception actually is?

    HAHAHAHAHAHAHAHAHAAHAHAHAHAHAHHAHHAHA!!!!!!

    That’s pretty funny. That will never happen.

    Or maybe he’ll tell you “it’s what the court said it is” or better yet: “it’s something that’s not changed in kind from what’s in nature.”

    the product of nature exception truly is without meaning

    It is pretty much (but not entirely) “meaningless”, but this is not a problem at all. We have 102/103 to get rid of the claims that read on previously existing compositions (not true for Prometheus-type method claims — a critical distinction) and you can’t sue nature for making things.

  7. Your opinion, while matters naught, is effectively not a lie.

    But the feeling is mutual, rest assured. I’ve never met anyone who takes more words to say less.

  8. MM, but contracts require privity.  Covenants do not run with personal property as they do with land.

    What does the law say about Monsanto's rights in the crop seed planted from the seed it sold the farmer?  In order to separate contract issues from patent issues, one should assume no contracts whatsoever.  Monsanto simply sells the seed.  Is it an infringement for the farmed to plant the seed of the crop grown from the seed purchased from the patent owner?

    Here it is  worthy to note that the farmer has the right to plant such crop seed under the separate Plant Act.  That is the sense of Congress in these matters.

  9. These are only “vague terms” if you do not understand the Supreme Court (and other court) cases from which they arise.

    Right. And you understand all the terms perfectly, anon, becuase you are the Smartest Person Ever. Except that when you are asked either to provide the definitions of the terms or apply those definitions to straighforward, real-world hypotheticals, you suddenly become strangely evasive and prone to waving your hands around and repeating the same lame insults (“you do not understand the Supreme Court”) over and over and over.

  10. When the seed produces new seed, the ancient law says that the farmer, not the original seller, owns the seed. The rightful owner of the seed, by law, has a right to plant it.

    I’m pretty sure the “ancient law” says that the “right” to plant the seed depends on (1) the existence of other laws affecting that right and (2) the existence of contracts affecting that right.

    But hey that shouldn’t stop anybody from just making pointless generalizations which ignore reality.

    It’s funny that you’re so focused on these silly seeds, Ned. What about all those patented microbes that have been reproducing themselves “naturally”? The horror … the horror …

  11. for you to say otherwise would be a direct lie against the policy of the new Patently-O.

    With the possible exception of some of your sockpuppets, you are officially the strangest blog troll I’ve yet encountered anywhere on the Internet. Congratulations?

  12. algorithms are electronic structures” and other convenient fictions

    Nice careful wording there MM – very very close to a direct lie that would go against your admission that programmed to is a structural limitation.

    No fiction there – and for you to say otherwise would be a direct lie against the policy of the new Patently-O.

  13. IANAE, but under this and are we talking about, Monsanto sells the seed to the farmer for the very purpose of planting.  The plants automatically and naturally produce new seed.  The question is who has the right in the this new seed.  Under ancient law and the Supreme Court case law, I think it is abundantly clear that the farmer owns such seed free and clear of Monsanto's patent.

  14. Nexus with use and make – ignored by IANAE once again.

    Don’t you get tired of ignoring critical pieces of the story IANAE?

  15. IANAE, but this is the exact problem, isn't it?  When the seed produces new seed, the ancient law says that the farmer, not the original seller, owns the seed.  The rightful owner of the seed, by law, has a right to plant it.

  16. The well established law fits perfectly.“:

    Yes it does. It is too bad that you keep on ignoring important parts of that well established law.

    OR did you miss the second question put to the Supreme Court in regards to a new exception of the patent exhaustion doctrine?

  17. MM,

    This is bordering on direct lies. I would be careful if I were you.

    You know exactly which admissions you made. One had to do with programmed to being structural claim language and the other had to do with functionally related fitting the exception to the printed matter doctrine.

    Any attempts by you to obfuscate these pure admissions of yours as to their rightful place in law can only be viewed as outright lies by you.

    Try not to be a weasel about it, ok?

  18. IANAE, I don't quite grasp your point about a car infringing thousand of patents was first made.  I assume you are talking about third-party patents.  Otherwise how can a car made by a patentee infringes on his own patents

    The question in Monsanto's case is what rights do purchasers of patented seeds have when they buy them for Monsanto? Under Supreme Court case law, the purchases have a right to use them and to sell them.  Even if Monsanto had a separate patent on planting the seeds, the Supreme Court cases would say that the purchaser has a right under that patent as well.

    The Supreme Court would have to overrule his prior cases in order to come to a different result in Monsanto case.  Even so, IANAE, you continue to insist that the purchaser of a seed does not have a right to plant that seed.  I don't understand your thinking.  I know the Federal Circuit said that planting seed under circumstances where Monsanto did not give the express permission to plant the seed was an infringement, this flies in the face of Supreme Court case law.

  19. The case and controversy is in front of the court now.

    Sometimes the wheels of justice move slowly, unlike in your universe where actions are immediate.

    Keep your eyes open, you might learn something about this universe.

  20. Except when the farmer is the perpetrator

    You mean in the case where you (keep on) ignoring the exhaustion doctrine?

    Sorry IANAE, for obvious reasons, when you ignore critical components of the facts and law, your arguments carry zero weight.

    The real problem is that you want to argue in some alternate universe where the existing rules of law and existing facts don’t apply.

    You can go ahead and have that conversation with Michael R Thomas, but to post that conversation on the general blog here is simply laughable.

  21. No, you do not get to dismiss the Products of Nature prong so easily.

    Of course I do. Ned presented a fact pattern involving refined oil, most definitely not a product of nature, to which the exact same non-issue applies. Whatever it is you’re so up in arms about, it’s clearly nothing to do with whether the infringing article is a product of nature. It’s a simple question of evidence of infringement.

  22. because Title 35 says you can’t.“:

    Dead wrong – and completely ignores the judicial exceptions which say the exact opposite. IANAE, have you even bothered reading the pertinent SC case law on this yet? You are making statements in complete disregard for the existing jurisprudence.

  23. Supposing the product of nature exception truly is without meaning. Why is that a problem?

    The problem is that the exception is NOT truly without meaning. You might as well disband all of the judicial exceptions.

  24. From a patentability point of view, I think they have to mean one thing, that the product of nature was known.

    Wrong. This has been explained many times – see Chakrabarty.

    Once gain, you and MM are seeking to invoke a 102-style time frame into a 101 judicial exception. The judicial exceptions simply do not work like that.

    I have pointed out that the time sense is simply different. I had no takers to the conversation at that time and expect no (reasonable) takers this time.

    All you guys are doing is trying to re-write the law to your own liking. It’s not going to work.

  25. assume for the moment that patentee has a separate patent, a method patent, on planting the seed.

    I’ll go you one better and assume that he doesn’t. Because it’s a complete red herring.

    The question is whether the owner of a patented article can make copies of it for resale without a license from the patentee. It’s one of the easiest questions to answer in all of patent law.

  26. Yes, I see your point that this issue is in no way specific to products of nature.

    No, you do not get to dismiss the Products of Nature prong so easily. That prong is tied to the Judicial Exception which the Supreme Court has stated is implicit in how Congress wrote the rule of law in 101.

    It is not avoidable, no matter how much you and MM wish to run and hide from it.

  27. One cannot encumber a sale with post sale conditions on use or sale. The purchaser takes free and clear of the patent. It is exhausted. That is the law.

    And yet, it is also the law that the purchaser who takes free and clear of the patent becomes an infringer when he uses the product he owns to make additional copies for commercial resale.

  28. IANAE, assume for the moment that patentee has a separate patent, a method patent, on planting the seed.  Even here, that patent is exhausted by the sale of the seed.  In fact, that was the fact pattern in Quanta.  The Federal Circuit had held that the sale of the product did not exhaust the method patent.  But SC overruled and held that it did.

  29. These are only “vague terms” if you do not understand the Supreme Court (and other court) cases from which they arise.

    You are dodging (again ) MM.

  30. Tell THAT to your wife diving her Volt while listening to her iPhone.

    Yes, well, obviously they sell them on at some point. It would take a particularly oblivious person to claim that they manufacture them for the sake of manufacturing them. But at the time they make them, they own them just as much as the farmer owns his crop.

    And yet, each one that rolls off the line infringes thousands of patents by the mere fact of its manufacture.

  31. IANAE, commercial scale IS a problem, I grant you.  This is the hole in the argument in the copyright case, after all.  The bootlegger was buying retail and selling wholesale.  He was a smuggler.

  32. GM owns every car it produces?  Apple owns every iPhone?

    Tell THAT to your wife diving her Volt while listening to her iPhone.  Tell THAT to the Supreme Court who in recent oral argument listened incredulously to Olson who seemed to be making this argument.

    These "licenses" are not licenses and never have been.  They are sales.  That companies continue to go through the motions as if they were licenses is the puzzle.

    Listen up, IANAE.  Read the petitioners brief in the Monsanto case on the law of exhaustion.  Its principle is simple.  One cannot encumber a sale with post sale conditions on use or sale.  The purchaser takes free and clear of the patent.  It is exhausted.  That is the law.  

    The law.

    And it has been the law since the dawn of mankind in the case of personal property.

    In the case of land, encumbrances can run.  But that is the exception, the only exception that I am aware of.

  33. We start with the proposition that the rightful* owner of a seed has the right to plant it.

    That’s where your circle starts. You have absolutely no legal basis for the proposition that the owner of a thing is allowed to perform a patent-infringing act with it. Even if that patent-infringing act is done using an old process. Ownership is not a defense to patent infringement. In fact, defendant’s ownership is more or less an element of the patentee’s case.

  34. Otherwise, the product of nature exception truly is without meaning.

    Good, we’re making progress.

    Supposing the product of nature exception truly is without meaning. Why is that a problem?

    If a particular article is produced without human intervention, that’s fine. That’s obviously a non-infringing event, because there’s nobody to sue. But that doesn’t mean you can start a factory/farm/whatever-it-is-that-makes-more and deliberately make more on a commercial scale, because Title 35 says you can’t.

  35. IANAE, but this is totally circular.  We start with the proposition that the rightful* owner of a seed has the right to plant it.  I think is incumbent on the patent owner that he prove infringement, meaning that the seed planted was not the product of an authorized sale.

    *Rightful owner is the purchaser of an authorized sale, or the seed produced by the plant made from the authorized sale.  Here, I apply the law well established since prior to even the establishment of written codes — I think archeologists can prove this, probably from the campfire leavings of the original Cro magnons —  that the owner of a plant or animal owns its offspring.

  36. Ned: May I suggest that we have to fit such patents into the fabric of well established law and not the other way around?

    Of course, if you insist on doing this, nothing is more easily accomplished. All you need to do is make up a fact that achieves the result you want and voila! problem solved. See, e.g., “algorithms are electronic structures” and other convenient fictions used to justify the granting of B-claims.

  37. MM, no.  I raise the issue solely to provoke thought.  As with you, I like to truly understand what the rationale of a rule of thumb doctrine is.  When people say, "product of nature" what do they mean?  From a patentability point of view, I think they have to mean one thing, that the product of nature was known.  But we have SC dicta that suggests otherwise.  

    If something is unknown, as in a DNA sequence, the first discoverer should be able to patent it.  But, you and I seem to want to confine the patents to man made versions, e.g., isolated DNA.  But in the case of plants and animals, the patent is on something that reproduces in nature.  How can such a patent be?  But if we do allow such patents, I think the scope of infringement as to not include such products of nature itself, the offspring of sold plants, animals or seed.  Otherwise, the product of nature exception truly is without meaning.

  38. May I suggest that we have to fit such patents into the fabric of well established law and not the other way around?

    The well established law fits perfectly.

    You seem to think that the farmer’s ownership of the second-generation seed is relevant. It’s not.

    General Motors owns every car it produces. Apple owns every iPhone it produces. They still need licenses to all the patents they infringe by making and selling them. Automating the factory, or even controlling the iPhone factory using an app on one’s iPhone, doesn’t change the law.

  39. we are dealing with something entirely new….: patents on sexually reproduced plants and animals.

    Hmm. I don’t remember Harvard’s mouse being limited to an asexually reproduced organism. Nor am I aware that the thousands of claims to various recombinant microbes are limited to microbes that are produced asexually. Nor is it clear to me exactly what the heck difference it makes whether these things reproduce sexually or asexually when considering whether or not there is infringement of a composition claim to the organism in question.

  40. Monsanto discovers that the seed on his farm is of the patented variety. Does he infringe?

    Yes.

    What does the rightful owner of a seed have a right to do with that seed?

    Most anything that doesn’t infringe a patent or run afoul of the FDA, I assume.

  41. let’s not forget your admission

    Was that the same thread, anon, where you admitted that you were wrong about Prometheus and you apologized to me for all the lies you told about the case so many times afterwards? Or was that the thread where you and David Stein misleadingly and pathetically equated functional limitations in B-claims with terms like “liquid” in composition claims?

  42. IANAE, we are dealing with something entirely new, here IANAE:  patents on sexually reproduced plants and animals.  May I suggest that we have to fit such patents into the fabric of well established law and not the other way around?

  43. IANAE, I think we can deal with it in as you say, but we must not, in that process, make legal assumptions that are contrary to well accepted law.  That law includes the legal presumption that the offspring of one's own plants and animals is legally owned by the owner of the plant or animal.

  44. It gets worse, a lot worse

    1) Exactly what is “it”?

    2) If you believe that “sexually-reproduced plants” or “sexually-reproduced organisms” should not be eligible for patenting, just say so. It’s not an unreasonable view.

    But for the love of cripes please don’t try to make the already meaningless, hand-wavey “product of nature” test more meaningless by suggesting that it should be interpreted to block the patenting of man-made organisms that are capable of sexually reproducing.

  45. IANAE, a farmer harvests and replants, and has done on his property from before living memory.  Monsanto discovers that the seed on his farm is of the patented variety.  Does he infringe?  

    Add to this that he discovers that his crop is glyphosate resistant.  He uses it to weed.  His crops are now 95% of the patented variety.  Does he infringe?

    A farmer buys seed from Monsanto sans any contract, who owns the seed produced by the crop?  What does the rightful owner of a seed have a right to do with that seed?

  46. anon: you keep on avoiding giving any answers.

    To your questions? Why would anyone bother answering your questions, except to mock the banality of the questions and/or note that the question is incomprehensible?

    Maybe you should go back and review, say, the latest ten threads in which anyone here has engaged you in any conversation about any topic. There’s a pretty predictable pattern that emerges.

    Here’s a typical example:

    anon: What is fair about a law that says that a [vague term1] is [vague term 2] when [vague term 3]?

    AnyoneElse: Can you define “vague term1″ and “vagueterm2″?

    anon: It doesn’t matter how they are defined. Use whatever definition you want.

    AnyoneElse: Well, if [vagueterm1] means X, then the question seems sort of inane. Are you trying to make the point that [insert reasonable interpretation here].

    anon: Dennis says lies aren’t allowed here. Stop running away and answer the question.

    etc., etc. wash, rinse, repeat

  47. who legally owns the offspring?

    The owner of the parent, obviously.

    Since when is ownership of an infringing article a defense to a charge of infringement? If it were, all patents would be worthless.

  48. But what if the refined oil produced is indistinguishable from refined oil from non infringing processes. Merely showing the end user has oil of that nature says nothing about whether that oil is the product of an infringing manufacture or sale.

    Yes, I see your point that this issue is in no way specific to products of nature.

    Which is why, as I keep saying, we deal with this issue in the exact same way for “products of nature” that we do with other articles of manufacture for which it’s not immediately apparent whether (1) they were manufactured by an infringing process, or (2) they were, in fact, made by Company B who is not a party to the infringement action. We treat it as a rather straightforward question of fact.

  49. MM, it is my understanding that recent research has allowed the production of plants that do not produce viable seeds. In this case, I think, it can safely be said that if the farmer has in his possession seed that was not sold to him by the patentee or by a licensee, that the seed is the product of an infringing making or selling. In such a case, his planting the seed would be an infringing use.

    But otherwise? In the case of sexually reproduced plants, the seed may have come from the patentee or his licensee in the first place — or it may have come from an infringer. One cannot tell, as seeds bear no indication of whence they come AFAIK.

    By analogy, consider a patent on a oil refining process. The oil produced is an infringement. But what if the refined oil produced is indistinguishable from refined oil from non infringing processes. Merely showing the end user has oil of that nature says nothing about whether that oil is the product of an infringing manufacture or sale.

    It gets worse, a lot worse when we have sexually reproduced plants that once exposed to nature spread on their own. Just showing that a farmer has the patented seed does not automatically suggest that it came from an infringement.

    Hopefully, the Supreme Court will figure this one out. But, in the end, I really don’t think they will.

  50. and it was not sold to him by the patentee or by a licensed seller,

    That’s not a fact you can typically ascertain without significant investigation and/or discovery. Whether even that fact supports a valid “legal presumption”, or whether it even permits identification of the actual infringer (much less implicating the end user defendant as the infringer), I’ll leave to the courts to decide on the facts of each specific case.

    But in the case of products of nature, sexually reproduced plants and animals, for example, is that assumption at all reasonable?

    I’d say that’s equally fact-sensitive. If you find one Roundup-Ready canola stalk at the edge of someone’s wheat farm, just by the side of a major grain shipping road, and across the street from 40 acres of licensed Roundup-Ready canola, probably not.

    Conversely, suppose you find that your unlicensed defendant has his own 40 acres of Roundup-Ready canola, all growing in neat little rows, and a barn full of Roundup herbicide nearby, I think it’s pretty safe to conclude that the product of nature is sufficiently integrated into the farmer’s activities to become an infringing application of the product of nature.

  51. IANAE, with ordinary machines, products of man, and the like, if one finds an item in the possession of a end user and it was not sold to him by the patentee or by a licensed seller, then one can safely make the legal presumption that the item was the product of an unauthorized sale or making.

    But in the case of products of nature, sexually reproduced plants and animals, for example, is that assumption at all reasonable?

  52. I suggest that you start with Chakrabarty.

    If Chakrabarty was a legitimate problem for the Roundup-Ready patents, they’d have been invalidated a decade and a half ago. Unless you don’t think all those patent litigators had heard of Chakrabarty either?

  53. And let’s not forget your admission made in discussions with David Stein and myself. Remember, no outright lying on the new Patently-O.

  54. The problem is that nature itself is the perpetrator.

    Except when the farmer is the perpetrator, in which case you find the infringing farmer and haul him into court.

    So what’s the real problem? Other than you can’t collect royalties for the otherwise-infringing acts that are done “by nature”, which nobody was expecting to collect for anyway.

  55. IANAE,

    I think you need to read a few court cases to get a handle on this concept. I suggest that you start with Chakrabarty.

  56. That’s an awful lot of hand waiving and an awful lack of any answers MM.

    As to “It only means whatever you want it to mean,” maybe because you keep on avoiding giving any answers.

  57. How do you enforce a patent that covers things that purely happen or are found in nature?

    Same way you enforce any other patent. You find a guy who is infringing, and haul him into court.

    Explain to me again why this poses a problem particular to your fact pattern.

  58. did the specification disclose an actual program or did it simply parrot the functional language that appears in the claim?

    I know the answer, anon. So do you.

  59. let’s use the hypothetical that the item “found in nature” is found complete and with no evidence of the hand of man

    Just like the claimed compositions in the Myriad case, right? LOL.

    Seriously, anon, your hypothetical will have great relevance when useful, novel and non-obvious compositions of matter begin appearing in “complete” form out of absolutely nothingness. Perhaps the appearance will be accompanied by a lightening book, just like in those glorious days of yore.

    No doubt patent law will undergo a seismic shift when that starts happening.

    Until then, your “product of nature” test is just handwavey horse—t, along with your silly hypothetical. It means only whatever you want it to mean, just like everything else you write here.

  60. I’ll let the defenders of this p.o.f.s. answer the obviosus question

    Translation: MM does not do answers. Least of which answers that shoot his pet theories and agendas all to h311 (or at least he tries not to, but every once in a while he stumbles into substantive territory and just ends up self-defeating).

  61. For whatever reason, the loudest proponents of vague, hand-waving “product of nature” tests seem incapable of discussing these basic, well-known, obvious facts

    Nice, but the ball is in your court. I notice that you STILL haven’t answered a very basic question on enforcing a patent when a later finding turns up that the item you have a patent on is found in nature. To makes things simple for you, let’s use the hypothetical that the item “found in nature” is found complete and with no evidence of the hand of man.

    You are one to complain for lack of answers, but the lack is coming from you. This question has been circulating for months and you have fought long and hard to evade it. How do you enforce a patent that covers things that purely happen or are found in nature?

  62. Thanks for the shopping tip, MM! I’m getting all of my Christmas presents at Nature’s Warehouse this year!

  63. when you make an intentional modification to the genes, I don’t see how it matters whether the cat is running the woods or inside a lab, it’s a cat. What does “part of nature” mean?

    I think one argument is that the individual genetically modified cat in the lab is not “part of nature” because as long as it’s locked up and kept from other cats, it can’t “do it’s thing”. It’s existence as a composition of matter depends on the whims of its owner(s).

    Of course, as alluded to by NatureBoy even in the lab the cat’s DNA is being damaged and repaired and readily detectable mutations are spontaneously arising all the time, as is the case for all living creatures, including ourselves. To the extent that the term “product of nature” is defined as any composition that is changed “naturally” with respect to man-made compositions in the prior art, then it’s accurate to say that essentially all living things “naturally” become “products of nature” shortly after they are created by man.

    A similar argument could be applied to many non-living compositions as well. For whatever reason, the loudest proponents of vague, hand-waving “product of nature” tests seem incapable of discussing these basic, well-known, obvious facts. They just love to repeat vapid aphorism about “Nature’s Warehouse”, “changed in kind” and other gobbledeygook.

  64. Nature, its genes spread naturally to nature.  Once there, those genes are part of nature. 
     
    If there is indeed a doctrine that one cannot patent nature, I would like to know what it means in the case of sexually reproduced plants and animals.

  65. The claim: a controller … adapted for changing a sense of direction of said flexible substrate in said chamber …

    The specification: a controller … programmed to control the valves in relation to the substrate direction

    I’ll let the defenders of this p.o.f.s. answer the obviosus question: did the specification disclose an actual program or did it simply parrot the functional language that appears in the claim?

  66. programming or some other structure

    Absurd.

    MM has already admitted on the record the truths that “configured to” is structural language.

    Right. That’s in the same thread where you admitted that you enjoyed taking pictures of kids from behind a bush near the kindergarten. I’ll never forget it.

  67. Hey 6 and MM, looks like the BPAI doesn’t agree with your assertion that any reference showing a processor can be used to reject any software claim.

    From another blog:

    “One of the claims in Ex parte Fischer was directed to a plasma deposition apparatus, and included “a controller … adapted for changing a sense of direction of said flexible substrate in said chamber …” The Examiner asserted that the “adapted for” language was intended use, and found that the controller in the reference would have been capable of performing the function. On appeal, the Applicant argued that “adapted for” was not intended use, and that the reference must teach a controller that is programmed to support the claimed function. The Board agreed. The Board looked to the Applicant’s specification and found it described a controller that was programmed to control the valves in relation to the substrate direction. The claimed controller thus becomes “a special purpose computer structured via programming to perform the control … recited in the claims” (citing In re Alappat). Comparing that controller to the prior art controller, the Board explained that the “capable of” test was a much higher bar than that used by the Examiner:

    While it might be possible to install software that would allow Lu’s controller to control the valve opening based on the sense of direction of the substrate, the “capable of” test requires that the prior art structure be capable of performing the function without further programming. Typhoon Touch Techs., Inc. v. Dell, Inc., 659 F.3d 1376, 1380 (Fed. Cir. 2011) (discussing Microprocessor Enhancement Corp. v. Texas Instruments, Inc., 520 F.3d 1367 (Fed. Cir. 2008)). When the functional language is associated with programming or some other structure required to perform the function, that programming or structure must be present in order to meet the claim limitation. Id. While in some circumstances generic structural disclosures may be sufficient to meet the requirements of a “controller”, see Ergo Licensing, LLC v. CareFusion 303, Inc., 673 F.3d 1361, 1364 (Fed. Cir. 2012) [*22] (citing Telcordia Techs., Inc. v. Cisco Sys., Inc., 612 F.3d 1365, 1376-77 (Fed. Cir. 2010)), that is not the case here.
    (Emphasis added.)

  68. What’s the utility of a crossbred cat/bobcat?

    Entertainment — one of the lowest forms of patentable utility. It’s a step above “detecting the presence and/or expression levels of a nucleic acid in a cell” and a step below “makes dog food taste better.”

  69. Plain old housecats are old. I don’t think it’s interesting or worthwhile to discuss the eligibility of compositions that can not be the subject of valid patents. 102 and 103 exist for a reason.

    It’s theoretically possible to genetically engineer a housecat so it would have some desirable feature (e.g., increased resistance to Feline Leukemia Virus). A claim to that sort of cat would be eligible, I believe, if the engineering was novel and non-obvious.

  70. What about a plain old housecat that doesn’t involve any unusual pairing of species? Is that patent-eligible, or a natural phenomenon?

  71. Question for the Peanut Gallery: how many cases are known where someone walking around saw thing “in nature,” e.g., a rock, a pool of water, a hamster, a piece of fruit … and then literally claimed the “thing” exactly as they found it, just as someone might file a claim to a gold mine back in the day?

    Just curious. Did this ever happen?

  72. Once you expose them to nature, they become part of nature.

    True of every composition, depending on how you define “nature.”

    Dude creates a lamp shade. A tiny insect chews some holes in the shade. Dude sees the pattern from the holes made by the lampshade on the wall and realizes it has utility as a cat toy. But of course his invention is ineligible because the lampshade with those particular holes in it is part of Nature’s Warehouse. As such, it wasn’t designed by man, “merely discovered.” Do I have that right?

    the fact that a domestic cat and bobcat can and will “naturally” mate without further human intervention

    The only way that is possible to know that a domestic cat and a bobcat “can and will” mate without human invention is because someone has seen it happen or otherwise proved that it happened. This is a 102 issue, not a 102 issue.

    Or is someone sincerely suggesting that if I can demonstrate that a patented composition could have been made “naturally”, then that composition becomes ineligible as a “product of nature” even when the “naturally made” product never in fact existed or exists? Is there a case that dealt with this issue expressly and came to this conclusion? Or is it just something people like to say without thinking much about the implications.

  73. “Once you expose them to nature, they become part of nature”

    Sorry, can you explain that? All genetic lines have selection pressure – man has influenced almost all of the genetics you see in the wild today. But when you make an intentional modification to the genes, I don’t see how it matters whether the cat is running the woods or inside a lab, it’s a cat. What does “part of nature” mean?

  74. I still have a problem, generally, with patenting plants and animals that sexually reproduce. Once you expose them to nature, they become part of nature. How one can have a patent on nature remains a wonder.

    Might I add that the offspring of a plant or animal, IMHO, is ownerd by the owner of the plant or animal. Period.

  75. Pixie Bobs are claimed to have no bobcat DNA to avoid legal issues and TICA issues. DNA testing has had mixed results on varying breeder lines.

  76. In any possible way, since quite in fact an application may well pass all requirements except 101.

    Unless you think otherwise and think that 101 is quite superfluous to the rest if the patent statute. You aren’t saying that, are you?

  77. with the supposition that the anticipation problem is taken care of (and then in response to Prof. Crouch, that all other non-101 items are taken care of).

    In what possible way do you imagine all those other items could be taken care of, that would make it meaningful to address the 101 issues for the currently pending claims?

  78. Are you arguing that the Federal Circuit should have resolved the 101 question in this case? If so, why?

    No. I am asking about compact prosecution, with the supposition that the anticipation problem is taken care of (and then in response to Prof. Crouch, that all other non-101 items are taken care of).

    It’s a relatively straight forward question.

  79. So, to be slightly pedantic myself, assume all other issues are successfully resolved and only the 101 issue remains. Do we need a trip back to court on the 101 issue?

    Yes, if Mr. Ditto feels it necessary.

    Are you arguing that the Federal Circuit should have resolved the 101 question in this case? If so, why?

  80. assume all other issues are successfully resolved and only the 101 issue remains.

    The 102 rejection is pretty solid, being as it is from the Federal Circuit. It won’t be “successfully resolved” without a significant claim amendment, so there’s not much point in determining the 101 issue now.

    Also, considering that this is a pro se appeal, and taking into account the pro se caliber of the dependent claims reproduced in the decision, I doubt there’s much basis in the spec for successfully resolving the 102 rejection.

  81. I based on no bad assumption, but clearly premised the question on the ability to survive the anticipation issue.

    Nonetheless, the point to be made is that ALL requirements must be passed in order to have a patent granted, and the Office has a policy of compact prosecution (it’s that policy that the issue pivots on).

    So, to be slightly pedantic myself, assume all other issues are successfully resolved and only the 101 issue remains. Do we need a trip back to court on the 101 issue?

  82. Another incredible victory for the legal eagles of the solicitor’s office over a very formidable opponent!!!!!

    Bravo!!!!!

  83. Perhaps, but the the inquiry should be based on what would be obvious to a housecat of ordinary skill in the rat.

  84. Although your argument makes sense, it is based upon a bad assumption. Almost all claims that are seemingly invalid under Section 101 (subject matter) are also invalid based upon some other patentability requirement.

  85. Assuming that the anticipation grounds can be overcome (I list this only for arguments sake), the 101 grounds would eventually need to be addressed for the application to issue.

    What of compact prosecution in a case like this? Let’s say the anticipation is overcome. Do we need a trip back to court on the 101 issue?

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