Funk Brothers v Kalo – Eligibility or Unobviousness?

Guest post by Paul Cole, European Patent Attorney, Partner, Lucas & Co; Visiting Professor, Bournemouth University, UK.

New patent eligibility guidance issued by the USPTO (Andrew Hirshfeld, 4th March) will be the subject of a discussion forum this Friday 9th May.

Since the Kalo case, 333 U.S. 127 (1948) has been discussed in recent Supreme Court opinions including Chakrabarty, Myriad, and Mayo and is proposed to form the subject of an example forming part of that guidance, reflection on the true legal basis of the opinion is timely. Despite dicta in Chakrabarty and Myriad it is arguable that when viewed in its timeframe Funk concerned unobviousness not eligibility. If that view is correct, then the Kalo fact pattern should not be used as an eligibility example under current law.

The Kalo appeal was from a lengthy and careful opinion by Judge Walter C. Lindley in the Court of Appeals for the 7th circuit, 161 F.2d 981 (1947). At first instance the claimed subject matter which related to a composite culture of mutually non-inhibitive bacteria for inoculation of leguminous plants was held to be a product of nature and hence not patent-eligible. Judge Lindley reversed this finding in the following terms:

The mistake of the District Court, we think, lay in its conclusion that this did not amount to patentable invention within the meaning of the statute. Though the court recognized the value of Bond’s work, it thought that he had merely discovered a law of nature, whereas in fact the evidence is clear that what he discovered was that certain existing bacteria do not possess the mutually inhibitive characteristics which had previously prevented a successful commercial composite inoculant and that those uninhibitive species may be successfully combined. It was this contribution of noninhibitive strains which successfully combine that brought about a new patentable composition. This was application of scientific knowledge to things existing in nature and the utilization of them in a desirable composite product which had not been previously achieved but which he did achieve and of which the public now has the benefit.

We think this is clearly within the decisive definitions of patentable invention… Bond taught the method by which the composite is to be made and claims the product composed by that method, namely, a composite inoculant, comprised of different species of bacteria in sufficient numbers of each species. The noninhibitive property of bacteria was not previously known and when Bond discovered it and taught a successful composition of noninhibitive strains in combination of elements in one inoculant operating successfully on several different groups of legumes, he did much more than discover a law of nature. He made a new and different composition, one contributing utility and economy to the manufacture and distribution of commercial inoculants.”

A reader of Lindley is bound to wonder why such a conventional and straightforward opinion should have been selected for certiorari. An explanation of the significance of new effect in established patent law can be found as long ago as 1822 in Evans v Eaton 20 U.S. 356 (1822) and its evidential nature was explained by Justice Bradley in Webster Loom v Higgins
105 US 580 (1881), subsequently approved e.g. by Justice Brown in Carnegie Steel v Cambria Iron Co 185 US 402 (1902):

It may be laid down as a general rule, though perhaps not an invariable one, that if a new combination and arrangement of known elements produce a new and beneficial result, never attained before, it is evidence of invention.

The majority opinion of the Supreme Court Kalo decision was authored by Justice William O. Douglas.

His starting position was that a law of nature cannot be monopolised and he recognised the existence of the relevant non-inhibitory bacterial strains as an example of such a law. He went on to hold that invention must come from the application of the law of nature to a new and useful end and that the aggregation of select strains of the several species into one product was an application of the newly discovered natural principle. He acknowledged that there was advantage in the combination because the farmer need not buy six different packages for six different crops. He could buy one package and use it for any or all of his crops. The packages of mixed inoculants held advantages for dealers and manufacturers by reducing inventory problems, and the claimed subject-matter provided an important commercial advance.

Against this strong evidential background what was the basis for his reversal? A key to his reasoning may be found in his earlier opinion in Cuno Engineering Corp. v. Automatic Devices Corp., 314 U.S. 84 (1941) that (as the law then stood) novelty and utility were necessary but not sufficient requirements for patentability. In addition the claimed subject-matter had to reach the level of inventive genius that the Constitution authorized Congress to reward.

Several reasons supported the conclusion that the Kalo invention did not meet the standard of inventive genius. Each of the species of root nodule bacteria contained in the package infected the same group of leguminous plants that it always infected. No species acquired a different use. The combination of species produced no new bacteria, no change in the six species of bacteria, and no enlargement of the range of their utility. Each species had the same effect it always had. The bacteria performed in their natural way. Their use in combination did not improve in any way their natural function. They served the ends nature originally provided, and acted quite independently of any effort of the patentee. The claimed inoculant was not the product of invention unless invention borrowed from the discovery of the natural principle itself. It was hardly more than an advance in the packaging of the inoculants. Packaging was a simple step once the discovery had been made and all that remained were the advantages of the mixed inoculants themselves which were not enough.

The Funk opinion, amongst others, was relied on in Chakrabarty for the proposition that laws of nature, physical phenomena, and abstract ideas are not patent-eligible. As to the patentability of the Chakrabarty microorganism it was distinguished on the facts.

In Myriad Justice Thomas treated Funk as a patent-eligibility case, observing that the Bond composition fell squarely within the law of nature exception because the patent holder did not alter the bacteria in any way. Arguably such a position is inconsistent with the finding of Justice Douglas that the claimed product was an application of the principle discovered by Bond and hence implicitly patent-eligible. Classification of Funk as an unobviousness opinion accords with the reasoning of Justice Douglas whereas classification as an eligibility opinion is difficult to reconcile with his reasoning, especially against the background of his explicit reference to Cuno.

The USPTO example takes the position that the bacteria in Funk were not changed in any way, but that position is factually untrue. The naturally occurring bacteria have been the subject of a selection process to identify those strains that do not interfere, and the non-interfering strains have been cultivated and mixed. The claimed composition does not occur in nature, is produced by human intervention and has new utility. It is far from clear that the decision that was reached in 1948 would have been reached under the law as it exists post-1952 since the “flash of genius” test was rejected by Congress in favour of § 103.

For the above reasons it is submitted that the wiser course would be to delete Example D from the USPTO guidance.

213 thoughts on “Funk Brothers v Kalo – Eligibility or Unobviousness?

  1. The key point: when Funk Bros. was decided, there was no section 102 or 103. There was (what is now only) 101. For a long time, however, the courts construed the word “invention” to require more than just novelty, even though “new” and “useful” were the only words in (what was then) 101.

    In 1952, Congress did its level best to destroy the word “invention” and replace it with 102/103. Read Chief Judge Rader’s opinion in CLS Bank.

    So, Kalo was deciding the substantive meaning of a word that, after 1952, should have none.

    I hate this mess the supremes have made by not reading the statute!

    1. David, when considering the differences between the claimed subject matter and the prior art, is there any statutory basis in 103 for ignoring ineligible subject matter? How does one deal with printed matter, for example?

      May I suggest that if the only difference is the ineligible, that the only recourse the PTO and the courts have is to shift to 101 and provide a test. One cannot simply ignore the ineligible per Prometheus.

      1. How does one deal with printed matter, for example?

        Asked and answered Ned – many many many many times now.

        How dare you act as if I have not presented this answer, given how many times you have run away from the conversations.

    2. And, David, if only 102/103 apply, then there is no statutory basis for excluding a claim to a product nature newly discovered, particularly since §102(f) has been repealed.

      Thus if one reads the statutes literally, they lead to a conclusion that is unacceptable from a constitutional perspective. Thus the courts have to construe the statutes in a way that avoids the constitutional problem.

      1. Thus the courts have to construe the statutes in a way that avoids the constitutional problem.

        That is not the only recourse, and surely if (especially in the patent arena, given the EXPLICIT delegation of authority in the Constitution) any such “interpretation” that amounts to re-writing (as would have happened in Bilski had Stevens not lost his majority position) would result in a violation itself of the doctrine of separation of powers.

        This is no silly government appointment at the heart of this issue – this is the entire legal engine of innovation and something explicitly decided by our founding fathers in the very fabric of the constitution.

        The Court (note the capital, as that is where the buck must stop) CANNOT create a new constitutional problem in their attempts to maintain their implicit writings and not let those writings become dead letters when it becomes evident that the 1952 Act stripped them of the mechanism of defining “invention” by the tool of common law evolution.

        This is an area expressly given to Congress and the Court needs to have its Come to Jesus moment.

        See link to urbandictionary.com

    3. As if there truly was ever any doubt:

      The context is present day law. The error is citing non-present day cases and law and merely presuming that they “translate” directly.

      They do not.

    4. “In 1952, Congress did its level best to destroy the word “invention” and replace it with 102/103. ”

      “So, Kalo was deciding the substantive meaning of a word that, after 1952, should have none.”

      You’re not the one that gets to decide if that word “should have none” or if it should (and does) have meaning. And neither is some random congress that meets throughout the years or the 1952 congress either, even if they really really want to. The USSC is, through their interpretation of the statute ivo the constitution itself. Apparently when Graham v Deere was being decided there was considerable concern that the supremes would outright undo congress’s attempt to take away “invention”‘s substantive meaning in 103. Similar happened with 101, except they simply interpreted 101 into compliance with the constitution. This interpretation of 101 by the supremes is nothing less than their attempt to rescue the statute from being outright, on its face, unconstitutional. If you don’t like it, then you can take it up with them. And if they are ever persuaded by you to declare 101 unconstitutional because it extends beyond inventions then I will be here to lol@u.

      If the congress wants the word “invention” to have no meaning then they can dam well skippy amend the constitution.

      1. And neither is some random congress

        Sorry 6 – the Founding Fathers thought otherwise. See Golan

        (of course, if you actually cared about the law you would already have known this)

        Reading the map is just not the same as writing the map.

        (and yes, if the Court did deem that Congress erred, it would mean holding that the entire 35 USC 101 was unconstitutional – but you have failed to provide ANY type of sustainable legal logic to support your rather presumptuous conclusion – you need more if you want to play this game)

        1. I’m not the one playing the power game re re. The ussc is, and they’re doing it legit. Again, if you don’t like it, don’t tell us about it. Tell the ussc about it. Seriously, we cannot help you in this regard, only the ussc can. Of course the congress could help you if you wanted to amend the constitution to fix the problem that underlies the problem you’re having, but that is never going to happen.

          1. Of course the congress could help you if you wanted to amend the constitution

            LOL – you need top check that document, as you got the players all mixed up. (Hint: Article I is powers delegated to Congress)

  2. “Back to the majority opinion, it can be viewed such that when a law of nature is involves, as was here, the law requires a little bit more than the obvious such that the claim not preempt the law. We saw the same line of reasoning in Flook, Mayo, and in Bilski. What is sufficient is never explained, but it does suggest that obviousness is part of the answer.”

    Quite right. Once one is possessed of the law of nature or empirical fact that certain species of Rhizobium are not mutually inhibiting, it is trivial to put them into the same package—an advance in the art of packaging(?). A trivial implementation of a law of nature is patent-ineligible. Flook, Mayo. This is definitely a § 101 case.

    This is a cornerstone of the principle that a conventional and routine computer implementation of an abstract idea for a business method is not patent-eligible, a principle that will be mention in the upcoming Alice v CLS opinion (I predict).
    For a discussion of clues to “What is sufficient is never explained” see:

    Mayo v. Prometheus: No Patents on Conventional Implementations of Natural Principles and Fundamental Truths, [2012] EUR. INTELL. PROP. REV. 502 link to docs.law.gwu.edu

    quoted with permission from,

    Richard H. Stern

    1. Consider the source – an individual with an agenda and a philosophical ends justify any means mantra if there ever was one.

      Patent eligiblity and patentability were separated in 1952 Ned.

      You STILL need to accept the change in law that happened at that time.

      1. Paul: how do you have pharmaceutical patents, then for known or natural products?

        If the products are “known”, then they aren’t patentable for all kinds of non-controversial reasons. Methods for using the known products may be patentable, however.

        If the products are previously unknown products that exist “in nature” then by extrapolation from Myriad the answer is “you don’t have patents on them”. Myriad doesn’t address the general question, unfortunately, in a meaningful direct way. The opinion is very focused on DNA.

        Consider: I claim a composition (useful as a dye) consisting of a highly pure molecule that I’ve synthesized, with the degree of purity bounded on both ends and set forth expressly in the claim, along with the mass of the composition. Is my claim ineligible when it turns out that some individuals in a colony of Lake Michigan smelt have fat sacs that comprise, on average, 3 molecules of the same molecule?

        What’s the policy that would justify finding my claim ineligible? Can anybody articulate it?

        1. Myriad doesn’t address the general question, unfortunately, in a meaningful direct way

          Wrong.

          Just because you refuse to understand does not mean that the question has not been addressed. Your Red Queen / Humpty Dumpty ways are shining through – Malcolm decrees that the reasoning is not meaningful or direct, so it must not be so (the ever slippery meaning of “effectively” comes to mind).

          1. “Myriad doesn’t address the general question, unfortunately, in a meaningful direct way”

            Wrong.

            Then answer the hypothetical I presented, articulate the policy underlying your answer, show me where the Myriad opinion supports your answer, and show me where the Myriad opinion discusses the relevant policy.

            That should be really easy for you. Unless you’re completely full of it.

            1. Myriad has been fully discussed Malcolm.

              The archives are working – I suggest that instead of spewing 30,000 words of mewling QQ, that you spend your time reviewing what I have already shared with you.

              You should have paid attention the first time.

      2. THE WOOD-PAPER PATENT, 90 U.S. 566, 23 L. Ed. 31 (1874)

        “There are many things well known and valuable in medicine or in the arts which may be extracted from divers substances. But the extract is the same, no matter from what it has been taken. A process to obtain it from a subject from which it has never been taken may be the creature of invention, but the thing itself when obtained cannot be called a new manufacture. It may have been in existence and in common use before the new means of obtaining it was invented, and possibly before it was known that it could be extracted from the subject to which the new process is applied. Thus, if one should discover a mode or contrive a process by which prussic acid could be obtained from a subject in which it is not now known to exist, he might have a patent for his process, but not for prussic acid. ” Id. at 593-594.

        1. Ned,

          Take a small step to combine this with the reality that the universe is not static, and you may yet walk the path of enlightenment.

      3. Paul, even from court’s opinion in Funk Bros., one could see a hint of the Wood Paper Patent: “We do not have presented the question whether the methods of selecting and testing the non-inhibitive strains are patentable. We have here only product claims. Bond does not create a state of inhibition or of non-inhibition in the bacteria. Their qualities are the work of nature. Those qualities are of course not patentable. ”

        Douglas could equally had rested his opinion on the product of nature exclusion from Wood Paper, where the product itself was not eligible, but a process involving the product was eligible.

        When claiming the product, more than the product must be claimed. The principle of Funk Bros. is that the product or law of nature itself cannot be the basis of patentability when claiming products.

        Consider the printed matter exception with respect to a manufacture. The way the PTO applies it is by not giving the printed matter any weight when considering patentability. That is what Douglas said about a law of nature in Funk Bros. in connection with product claims. A process of extracting the product of nature, or of using it may be eligible — see, e.g., Diehr. But the product or law itself cannot be claimed and thus can be given no weight in a product claim.

        1. Consider the printed matter exception with respect to a manufacture.

          LOL.

          As I have often asked Ned himself to do (and which it appears that Ned has never fully done so – incorporating as need be the exceptions to the judicial doctrine of printed matter), Ned’s invitation only serves to expose his own duplicity when it comes to Ned’s agenda against software patents.

          The way the PTO applies it is by not giving the printed matter any weight when considering patentability

          Wrong – again, ask why Ned refuses to recognize the exceptions.

          One massive Ned FAIL – because Ned refuses to understand the concept in all of its meaning.

    2. Ned,

      That article is pure schlock. I found three errors within a two minute glance, including a misrepresentation of the Prometheus “dead letter” comment.

      It is nothing but lemming chum.

    3. Ned, did you just quote yourself and then respond to your own quote by saying “quite right”? See: link to patentlyo.com (comment 2.2)

      If so, that’s pretty funny.

      As for this: Once one is possessed of the law of nature or empirical fact that certain species of Rhizobium are not mutually inhibiting, it is trivial to put them into the same package—an advance in the art of packaging(?).

      This “packaging” business seems a bit of a red herring. I understood the claim in Funk to be an inoculent comprising different Rhizobium species. I don’t think the claim covers a box containing different tubes where each tube comprises an isolated species.

      Along the same lines, I don’t think anyone disagrees about the eligibility of a claim to a specific non-naturally occuring mixture of Rhizobium species, where those Rhizobium species are expressly identified and are shown by the applicant, in the original filing, to have the unexpected property “discovered” by the applicant. The utility of this “one size fits all” mixture seems substantial enough …

      For a more pertinent example, contrast that situation with a mixture of of, say, two to five separately ineligible DNA molecules, where the utility of the mixture is its use in well-known methods for identifying the presence/amount of similar molecules in a cell or elsewhere (a utility that isn’t even recognized as a substantial utility under 101!).

      1. No, MM, that was something sent me by Richard, and with his permission, I posted here. His views are entitled to some weight given that he was responsible for the government briefs in Benson and Flook, that have, with Douglas’s opinion in Funk Bros., laid the basis for modern 101 jurisprudence. Just awhile back he identified himself as the source of the MOT test that appears in Benson — actually a quote from Deener — that the Federal Circuit wanted to adopt as the exclusive test, and the Supreme Court endorsed, but not as exclusive.

        1. Ned, we know who Stern is. And we know that Lemley has taken over Stern’s role.

          I will simply say that I don’t think that Stern’s opinions are patent law. I think they are politics.

          1. Night, but there is a difference. I rarely agree with Lemley and I rarely disagree with Richard Stern.

            Stern advised me to read and understand the Supreme Court cases. Best advise ever.

            1. Ned, I agree that Stern is less wild than Lemley and that Stern bases his political arguments on his interpretation of the SCOTUS. And, I agree that Stern is the one that put us in the position we are in now.

              But, again, Stern’s rhetoric has nothing to do with science or patent law. It is an attempt to limit eligibility. Stern should be lobbying Congress and not muddling patent law.

              And, yes, Stern also told me to read all the SCOTUS cases, which I did. I am pretty sure I have read every SCOTUS case that has to do with a patent.

            2. Stern is just more devious.

              Look at the article posted in a foreign journal more closely.

              Errors abound. It is no surprise that the article is nothing more than propaganda.

            3. Ned, there are scientific facts that you cannot escape. You can smear them and damage the dialog, but you cannot escape them.

              Information processing methods are inventions and have structure. If one doesn’t want patent protection for them, then go to Congress.

              And in patent law, scope of enablement, a specification should contain only what is new, etc.

            4. Stern advised me to read and understand the Supreme Court cases. Best advise ever.

              You have not followed his advise completely Ned, as your ‘understanding’ is incomplete and heavily tainted by your propensity to see everything through the Ned-IMHO-law-Should-Be-Thus spectacles. The same spectacles that let you see 6 as an Einstein of patent law and examination and only let you see the “swagger” of Malcolm. The same spectacles that (still) prevent you from personally understanding the Nazomi case and personally prevent you from accepting the Black’s Law dictionary holding of Alappat that I have provided to you.

              Reading and understanding are defeated when you refuse to do so completely, colored by your third party interests as they are.

            5. I agree anon. Stern is more devious. He is old school where there is some shame for making outrageous arguments. Stern could not with a straight face make the arguments that Lemley made in his functional claiming paper.

            6. but there is a difference. I rarely agree with Lemley and I rarely disagree with Richard Stern

              This statement exemplifies the bias that Ned brings to the table.

              Whether or not the two are in fact similar is not important to Ned. What is important is only whether or not Ned can fit the writings into his pre-ordained agenda.

              Ned fails when he cannot (or does not) realize the limits of his own lack of objectivity.

  3. Proposed amendment to 35 USC 101:

    Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, including any new and useful application, alteration, or combination of a law of nature, natural phenomena, natural product, or abstract idea, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

    It is and always has been the sense of Congress that the subject matter of patents should be broad, including anything under the sun that is made by man. The patent laws and the subject matter of patents should be construed broadly to provide liberal encouragement to ingenuity. While it is the sense of Congress that the patent laws have always included this broad mandate, the present amendment is made to make explicit this broad reading and to specifically overrule certain court decisions that may be considered to conflict with the text, purpose,and intent of the patent laws. These cases include O’Reilly v. Morse, 15 How. 62, 56 112-121 (1854), American Fruit Growers, Inc. v. Brogdex Co., 283 U.S. 1, 283 U.S. 11 (1931), and Funk Brothers Seed Co. v. Kalo Innoculant Co., 333 U.S. 127, 333 U.S. 130 (1948), Gottshalk v. Benson, 409 U.S. 63, 409 U.S. 67 (1972), Parker v. Flook, 437 U.S. 584 (1978), Bilski v. Kappos, 561 U.S. 177, 130 S.Ct. 3218 (2010), Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. __ (2012), Association for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. __ (2013), and Alice Corporation v. CSL Bank International, 572 U.S. __ (2014), to the extent these cases are considered to limit patentable subject matter under section 101 of Title 35. The phrase added to section 101 refers to “any…application, alteration, or combination of a law of nature, natural phenomenon, natural product, or abstract idea” and is meant to encompass any application, any alteration, and any combination, no matter how small or insignificant and regardless on any consideration of preemption of the law of nature, natural phenomenon, natural product, or abstract idea. If the invention includes anything beyond the literal law of nature, natural phenomenon, natural product, or abstract idea added by man it is patentable subject matter. As examples, unnaturally isolated natural products, unnatural combinations of unaltered natural products, and implemented computer software are patentable subject matter. It is the sense of Congress that the other conditions and requirements of Title 35 adequately protect the public interest against the interest of inventors and that, together with section 101, serve to promote the progress of the useful arts without further limitation.

    1. I think there is a typo:

      “regardless on any consideration of preemption of the law of nature”

      I think you mean –regardless of any–..

      With that: Ahmen and Make it So!

    2. Bob, are you the second coming of Rich who thought he could write fundamental patent laws better than Thomas Jefferson?

      In retrospect, Rich’s handiwork has all come a cropper, from 103, to 112(f) to 271(b) and (c) that were inartfully drafted and have been interpreted to require a change in the law that Rich clearly did not intend.

      Rich was and is the worst example in history of a fox of the patent bar let loose in the chicken house of patent law.

      I will oppose any effort that this become law.

    1. link to cafc.uscourts.gov

      Lots of interesting news these past few days. Thanks, DanH.

      In re: Roslin Institute (Dyke, Moore, Wallach)

      This is the right result, of course, because the compositions created by the patent-eligible (and already patented) methods are indistinguishable from existing animals. Might as well try to patent an unalterered bacterium that you found.

      For better or worse, the Federal Circuit cites the very same Funk Brothers case discussed here, glossing over the fact (just as the majority in the Supreme Court did) that there was no indication in the record that the claimed mixture of bacteria was found in nature.

      Roslin’s argument here was incredibly weak. In a nutshell, their argument was “Man made it, therefore it’s eligible.” That’s a non-starter, when the thing you made is simply a copy of something that you didn’t make.

      Roslin also attempted to argue that their clones were necessarily different from the parent, due to the manner in which they were created and the inevitable effect of the environment and chance on the development of the embryo. But alas — none of those structural differences were recited in the claims. Boo hoo hoo! Sound familiar?

      1. Yeah, I’m no biologist, but that case looked exceptionally easy to me.

        I also thought the Funk Brothers discussion was interesting, for the reasons you mention. That’s one of those cases that stands for a (quite reasonable, in my view) proposition of law that doesn’t quite fit with the facts of the case. Benson is another.

      2. In a nutshell, their argument was “Man made it, therefore it’s eligible.” That’s a non-starter

        LOL _ funny that, that was your argument with me in the Myriad case before the Court rendered its decision.

        1. funny that, that was your argument with me in the Myriad case

          No, that wasn’t my argument. And I’m not going to waste everybody’s time proving again that you’re an ignorant illiterate a—wipe.

          1. LOL – take that up with the guy who kept pressing you on how you were going to enforce a patent on something that was effectively the same thing that could be picked up from the ground (or the stomach of an iguana, or the underside of barnacles in the deep Atlantic, or any other number of inane examples you kept on coming up with.

            You can’t even remember your own spin. Hilarious.

  4. Another interesting petition for cert:

    link to supremecourt.gov

    Rule 52(a) of the Federal Rules of Civil Procedure provides that in matters tried to a district court, the court’s “[f]indings of fact . . . must not be set aside unless clearly erroneous.” The question presented is as follows: Whether a district court’s factual finding in support of its construction of a patent claim term may be reviewed de novo, as the Federal Circuit requires (and as the panel explicitly did in this case), or only for clear error, as Rule 52(a) requires.

    This was a pretty stunning Fed Cir reversal where numerous facts supporting the defendant’s (and the district court’s) construction were all but waved away by a judge (Linn) who appeared completely ignorant of the technology and how a skilled artisan would construe the claim. More details in the prior post here, particularly in the comments (e.g., comment 16):

    link to patentlyo.com

    1. MM, just reading through your post and the opinion, I find that I agree with you that Linn basically decided this fact based claim construction case on himself on appeal, and that he was probably wrong. The only disclosure was of NADPH, and that was part of the definition given in the patent. The patentee walked away from his own definition to cover the later invention of a different co-product developed by the defendant, NADH.

      I wonder, though, whether the Supreme Court is going to get involved here because they too would have to assess the facts to see that the Feds were wrong. Scalia, for one, is uncomfortable with doing that kind of assessment at the Supreme Court level.

  5. In other news, I notice that Advanced Biological Labs — perhaps the most masochistic entity in the history of patent law — has invited the Supreme Court to take a deep whiff of their ineligible claim to a database of therapies.

    link to supremecourt.gov

    Whether claims to a computerized expert system and method for evaluating treatment options for complex medical conditions which necessarily requires the use of computer, are patent eligible since they do not preempt all practical applications of an abstract idea of “guiding the selection of a therapeutic treatment regimen for a patient with a known disease or medical condition

    It requires a computer, folks! Totally different from other old technology for storage and retrieval of organized information like an encyclopedia of therapies which everybody knows is, like, so totally eligible for patenting.

    1. Already jumping to “in other news” when you have not yet provided any (substantive) comments on the merits of the several items in this thread?

      Why the rush to get away?

      1. you have not yet provided any (substantive) comments on the merits of the several items in this thread

        Get your medication adjusted, TB.

    2. It requires a a crank and a comb, folks! Totally different from other old technology for cleaning and picking seeds our of cotton like using your fingers and manually combing through the cotton which everybody knows is, like, so totally eligible for patenting.

    3. MM, the real test is set forth in Bilski: method absent the computer eligible: is it seeking to claim a notoriously old, and fundamental principle or a law of nature? If so, the recitation of the computer is not enough.

      Can you tell us whether the subject matter being claimed is notoriously old and fundamental?

      1. Ned: the real test is set forth in Bilski

        Because claims come in fundamentally different flavors, I am 100% certain that there are more tests than whatever test was “set forth” in Bilski. Here’s what I wrote in a previous thread and there isn’t much more to say about this incredible piece of junk. You’ll also recall that the attorney who filed the petition in this case (Robert Sachs) is a member of that small but extremely vocal crew attorneys who simply refuse to admit or discuss the facts about Prometheus’ claims and what Prometheus was atttempting to do with their claims. And we don’t really need to speculate about the reason for their failure in this regard. Everybody knows what these people are fighting for and why. It has nothing to do with “principle”. If they were “principled” they wouldn’t have such trouble admitting the basic facts.

        My thoughts on these particular claims have already been expressed elsewhere, e.g., link to patentlyo.com

        As a friendly reminder, it’s now the year 2014. For patent law purposes, the generic “computing device” is as ancient as the generic wheel. Tacking the phrase “computer” (or any similarly non-inventive combination of old, conventional junk) to an information processing method described in generic terms (e.g., “determining”, “comparing” “sorting” “ranking” etc) should not be considered sufficient to turn ineligible subject matter into eligible subject matter. And it shouldn’t have been sufficient 40 years ago. Receiving, storing, processing and transmitting information is what programmable computers do. That’s why humans invented computers. Computers are proxies for information processing that humans would otherwise need to do themselves or with pencil and paper. Saying that “a computer can receive/store/process/transmit this information too if you program it to do so” is not “inventing.” At best, it’s stating the obvious.

        The issues are very similar to the situation where an “inventor” is appending a “new” “non-obvious” mental step (or disembodied idea) to an old conventional step (the issue in Prometheus v. Mayo). All that’s happening there is that the claim to the ineligible subject matter is being limited to a field (i.e., the field represented by the prior art step). That sort of limitation isn’t sufficient to confer eligibility because people practicing the prior art are impermissably constrained — they become infringers when they think about the “new” fact/idea/natural law. Likewise, when a description of some “new” “non-obvious” determination method is appended to “a computer” without any description of the actual structural improvements to the computing device, people who use programmable computers (again — ancient devices) for their intended purpose (information processing) become infringers when they apply the computer to a particular field, even if they are first people to ever successfully reduce to practice the application in question.

        The particular claim at issue in this case is so incredibly junky on so many levels that terms like “appalling” are far more appropriate than “ineligible.” It’s like someone getting a claim to a “new car” wherein the car contains a previously undescribed collection of books in the back seat. This is your broken patent system crying out in agony right here. You don’t need to be a patent attorney (or a “computer expert” — LOL!) to look at claims like this and understand that something has gone terribly wrong. Unfortunately for everyone, this nonsense has been going on for years.

        1. Ah, yes. This is that non precedential case that I first brought up in a different thread.

          BTW, I don’t think the issue is purely mental steps. I think the issue is what the algorithm is doing. If it does nothing more than produce a number or information, then there is a problem.

          BTW, I was once deposed by a very aggressive Robert Sachs. I wonder if this Sachs is that Sachs.

          1. If it does nothing more than produce a number or information, then there is a problem

            Sort of like cryptography Ned?

            You may want to have a little chat with Mr. Perry before his oral argument to the Supreme Court.

            Oops, too late. D@m, what would Stern say?

            1. Anon,

              1. Perry’s admission is not controlling.

              2. Just because council got the facts wrong does not stop the facts from being facts.

              Cheers. :)

            2. LOL – nice, if I had said that such was a “fact” and you attempted that comeback, well, you might have a chance of being funny or be considered ‘clever.’

              Here, not so much.

              And yes, Mr. Perry putting this on the record in that case is by no means controlling, but you rather miss the entire point of the jest (especially in light of how badly Ned hewed to the amicus briefs as if those were controlling law and how the “on the record” thread unfolded.

              You are just a day late and a dollar short Dobu.

  6. Patent cases by Justice William O. Douglas should be a bit suspect anyway. In at least one case he confused the Constitutional clause for copyrights versus patents, and allegedly the only decision of his ever upholding, rather than rejecting, a patent was on a leak-proof flashlight battery, which some assume was due his personal luck with them on his famously-accompanied camping trips.

        1. LOL – have them and the Supreme Court follow the law as written and stop trying to write new law (either implicitly or explicitly) in order to pursue their own philosophical agendas….

            1. What I see, anon, is the PTO unwilling to touch a “third rail.” They are “avoiding” like crazy, for some reason, any analysis of 101 “newness.”

              Consider DNA. To have argued that a CRM is not “new,” would have implicated DNA which they were patenting. Even today, the proposed guideless are clueless precisely because they are not following the Supreme Court holding in Myriad. They are not focusing on “newness.” To do so here would undermine all claims to CRM and programmed computers without more.

              The PTO has seemingly painted itself into a corner and has now way out.

            2. Your view of “new” and CRM is quite odd, vague, and untethered to any points that we have discussed or that I have previously presented to you for your consideration.

          1. “have them and the Supreme Court follow the law as written and stop trying to write new law (either implicitly or explicitly) in order to pursue their own philosophical agendas….”

            If you actually got the PTO to do this then no more software patents would issue :(

            1. Wrong 6.

              In fact.

              in law.

              In any way that you want to (with intellectual honesty) look at it.

              Software is a manufacture and a machine component, most often built for a utility within the Useful Arts.

              Software is equivalent to firmware and is equivalent to hardware.

              Once you accept these basic starting points, you will be set.

            2. “In any way that you want to (with intellectual honesty) look at it.”

              Look anon you can think about “intellectual honesty” until you’re blue in the face. The fact is, and the ptoers implementing the “policy” that makes us give you a break on 102 will tell you straight up, that it is extra-statutory policy on which the patentability of your everyday software patent issues. If they were to set that extra statutory policy aside, pretty much all software patents cease to issue the next day.

              Whether or not you like this, or think it is correct in fact or in law or whether it is intellectually honest or whatever is besides the point that there are people in existence who are aware of this and have it in their power to issue or not issue.

              It’s “the situation on the ground” if you like to think of it in simplistic terms.

            3. 6,

              You are still wrong.

              Repeating yourself when you are so wrong will not change you to being right.

              I do not depend – at all – on any of your so-called “extra-statutory” provisions.

              I depend strictly on established facts and build from the basic law. NONE of what I depend upon is “besides the point.”

              I recognize that you seem to have an extremely hard time understanding how this entire law thing works out. I also recognize that your belief system makes you think that others do not understand what you think that you do understand. You really might want to discuss this combination of errors and your propensity to project with your doctor, so that you can begin to realize how deep into the weeds you are.

            4. “I do not depend – at all – on any of your so-called “extra-statutory” provisions.”

              I never said that you did re re. You certainly do not depend on my “extra-statutory provisions”. Software patents being issued do. In the real world. Note that I said that people, other than yourself, who have actual power in the world to issue or not issue patents, know exactly what I told you up above, and they’re issuing patents based on the same. Nothing but policy.

              Note also here that the subject of the conversation is people other than yourself and the patents they go on to issue. Not your beliefs, not what you do, and not anything about you. My subject is other people, what they’re doing and why they’re doing it. And what they’re doing is based on policy.

              Pure unadulterated policy.

              This is one reason why Newman is calling for the congress to get involved. The PTO’s policy, and the federal circuit’s decisions or “law”, will only go so far in the face of USSC decisions and the recent cat of “no structure” getting out of the federal circuit bag (no doubt soon to cause litigation to sort through that make-believe nonsense).

              Look if you’re still having trouble understanding that I’m talking about things that do not involve you, at all, then I’m sorry I can’t help you any further and I’m done talking about the topic.

              ________
              “I do not depend – at all – on any of your so-called “extra-statutory” provisions.

              I depend strictly on established facts and build from the basic law. NONE of what I depend upon is “besides the point.”

              I recognize that you seem to have an extremely hard time understanding how this entire law thing works out. I also recognize that your belief system makes you think that others do not understand what you think that you do understand. You really might want to discuss this combination of errors and your propensity to project with your doctor, so that you can begin to realize how deep into the weeds you are.”

              I …
              I …
              I …

              Note that you, or anything about you, were not even under discussion. You self-centered narcissist.

            5. Software patents being issued do. In the real world.

              Again 6 – you are point blank wrong.

              They issue based on the facts and law as I have presented. Your fantasy – all subjective in your head anything goes law views are just untethered to this reality.

              You may want to get that checked.

              (the lack of understanding is simply not on my end 6 – you are doing that projecting thing again)

            6. 6, anon, regarding policy: it is clear that B-claims are being issue according to an unnamed policy.

              I am not sure about “software” claims. We have see examples of such claims being issued. I can only guess that they are issued because of some “policy.

            7. Ned,

              B-claims are only “policy” as long as following the statutory category of manufactures is “policy.”

              Still waiting on you on many fronts, Ned…

        2. Paul, Douglas was right and is followed.

          Did you know that (the worst of all presidents from the republican view) FDR almost picked him as his running mate in ’44 and that (the greatest of all presidents from the establishment republican view) Gerald Ford tried to have the man impeached!!

          That says it all, really. With Douglas, it always was about politics, and still is. The movers and shakers of the patent bar back in the early ’50s were republican. Ike appointed Rich to the CCPA — the first patent attorney ever to be appointed to the court of appeals. Now what did Rich do? He carried on his vendetta against Douglas, to the cheering of the patent bar.

          Tell the story the way it is. This is politics at its core. Republican will never agree that Douglas was anything else than a left wing radical, when in truth, it was Rich who was the radical.

          1. I am not concerned with the politics of William O. Douglas, though as an Englishman I suspect I would find them less disconcerting than many US readers. What concerns me is his approach to the facts, attention to detail and ability to analyze precedent. My job was to try and climb into his brain and try to figure out why he decided Funk the way he did.

            Believe me, it is very difficult. What I found very helpful was to collect all the positive facts he stated in one group, all the negative facts in another and then put them in a logical order. That way some element of clarity emerged.

            Another breakthrough was to realize that he wrote the opinion in Cuno and appreciate that he was after that flash of genius. Funk, in his view, was not it. In my opinion there is no way of deconstructing Funk without taking Cuno into account. And when he said, as he did, that the advantages of the inocculants themselves were not enough you are inescapably into obviousness, not eligibility. Since the USPTO tomorrow is into section 101 not section 103 that is enough for the discussion tomorrow.

  7. Malcolm, you’re over-reading the text and losing sight of the point by pedantically focusing on the irrelevant details.

    Oh, wait . . . OMG! What have I become?! Just shoot me now.

  8. Paul, you should know that “flash of genius” thought to eliminate slow, grinding work that many inventors engage in to get something to work. Thus, the new 103 added a second clause regarding the manner of invention directed to “flash of genius.”

    1. Introducing Section 103 would have made the post over-long and our concern is patent eligibility under Section 101.

      I looked for a back-story to Funk. Both Kalo and Funk are still in business but neither of them seems to be selling the mixed inocculants that were the subject of the dispute. There is little mention of the product online. Possibly it has been superseded by the sale of seed spray-coated with inocculant, in which case obviously only a single bacterial species is needed. There is nothing to suggest that Bond made one of the great inventions of human history, and indications are that this was a product that had a limited commercial life but is now obsolete.

      Was there politics at the time? Without online access to the publications of the late 1940’s it is impossible to say. But there is little indication that there was.

      In contrast, the later decision in Great A & P was undoubtedly in an political context. The rise of supermarkets and the demise of the mom and pop local store was a social upheaval not universally welcomed. In the same timeframe as the patent litigation there was also an anti-trust case, and interestingly Judge Lindley who wrote the appeal decision in Kalo was involved in that case.

      Judge Lindley was well-respected, but there is little information about him online. I have not been able to find whether his undergraduate degree was in an arts or a science subject. In either case his decision in Kalo was notably careful and thoughtful.

      1. Was there politics at the time? Without online access to the publications of the late 1940′s it is impossible to say. But there is little indication that there was.

        That’s a pretty asinine statement. You are talking the era of “the only valid patent is one that has not yet appeared before us

        Way to throw your credibility into the dirt.

        1. The relevant question was whether the Kalo invention created controversy or discontent at the time within the farming community, and whether members of the Court were aware of that discontent (if it existed) in reaching their decision. Unfortunately there is nothing I can find online which throws any light on that question.

          On the other hand, in A & P, mom and pop stores were disappearing and the members of the Supreme Court will have been as aware of that as everyone else. I don’t think that this coloured the decision in the patent case but it is nevertheless intersting background.

          The broader political issues are outside the scope of this post.

          1. Thank you for that clarification of scope.

            But regardless of the attempted narrowing of scope, the discussion necessarily involves an appreciation of what the law is, what the law was, and what the Act of 1952 included.

            Far too many are unwilling to recognize the extent of the 1952 Act and that very much concerns the here and now – far more than whether or not farmers were upset back when Kalo and Funk did their battle.

      2. Introducing Section 103 would have made the post over-long and our concern is patent eligibility under Section 101.

        So sad. The confines of a post are a poor guideline for understanding a complex issue such as this. Trying too hard to be too simple.

        As my pal Einstein was quoted as saying, “Everything should be made as simple as possible, but not simpler

        By attempting a too simple approach, the meaning is lost.

        The 1952 Act was in direct reaction to a run-away Court and a slap down of that Court’s prior granted right from Congress to define invention (then in 101) with the tool of common law evolution.

        Congress explicitly removed that tool and sought a explicitly different chosen word when they created 103.

        The historical record (see the notes tab on the Cornell Law page link to law.cornell.edu ): “but the refusal of patents by the Patent Office, and the holding of patents invalid by the courts… this paragraph is added with the view that an explicit statement in the statute may have some stabilizing effect, and also to serve as a basis for the addition at a later time of some criteria which may be worked out.

        It simply would not make any sense whatsoever for Congress in their umbrage of the day to so strip the courts of this common law evolution tool and then turn around and give the power back to them (at some later date) – this historical note then can only mean that at some later date, Congress could, with its constitutionally appointed power, add to the law the additional criteria that Congress may deem worthwhile.

        I certainly hope that there are NO academics willing to turn a blind eye to violations of the doctrine of separation of powers for so critical an item that our Founding Fathers explicitly delegated authority to a particular branch of the government in the very body of the Constitution.

        1. Thanks for the reference to the very useful and concise Cornell quote. But the discussion at USPTO tomorrow is about 101 not 103 and you have to simplify the message as much as possible. My main submission to the USPTO already runs to some 15 pages which is long enough, and if 103 was introduced it would simply not be read.

      3. “Was there politics at the time? Without online access to the publications of the late 1940′s it is impossible to say. But there is little indication that there was.”

        ROFL. Yeah, no one ever looked up information of past events before the internet.

      4. Paul, you are right the bar was also upset with A&P, not really understanding it. Thus the codification of Hotchkiss.

        As others here have explained, the Supreme Court did the exact same analysis in KSR, basically restoring A&P. In combination patents reciting old elements, there has to be synergism — something new in terms of function. Sakraida v. Ag Pro was ignored by the Federal Circuit – Wikipedia says the Federal Circuit overruled it. But it, A&P and Anderson’s Black Rock, all came back with a vengeance in KSR.

        Post KSR Federal Circuit cases are continuing to ignore KSR while seeming to apply it. Do they ever look at a combination claim, consisting of old elements, for synergy as indicia of non obviousness? Not that I can tell.

  9. While the majority in Funk does a poor job of explaining itself, one of the dissents (Frankfurter’s) hits the nail on the head in terms of why the claims are problematic.

    [as an aside: it's always extremely useful to reproduce the claims at issue when discussing these cases]

    According to the majority in Funk Brothers, here’s a representative claim (claim 4; see footnote 1):

    An inoculant for leguminous plants comprising a plurality of selected mutually noninhibitive strains of different species of bacteria of the genus Rhizobium, said strains being unaffected by each other in respect to their ability to fix nitrogen in the leguminous plant for which they are specific.

    I assume everybody can see the real problem with this claim: functional claiming at the point of novelty. It’s a 112 issue, really, and claims like this are routinely dealt with by 112, at all levels of examination and at trial…

    The patentee in Funk Brothers “discovered” that certain species of Rhizobium could be identitied as non-mutually inhibiting and thus capable of being mixed. He provided some specific examples of compositions comprising such species in a mixture, but unfortunately did not recite those species specifically. Rather the patentee chose to claim the universe of all species, known and unknown (and completely unpredictable), that possessed the desirable function set forth in the claim.

    As one can learn from Justice Frankfurter’s relatively reasonable concurrence in Funk Brothers, the Court of Appeals appeared to have construed the patentee’s claim to be limited to the specific species and for that reason [the Court of Appeals] found the patentee’s claims to be eligible. The Supreme Court, on the other hand, recognized Funk’s claims as encompassing the broad concept. Here’s Frankfurter:

    [Allowing claims such as those at issue to be patentable] would require, for instance, in the field of alloys, that if one discovered a particular mixture of metals which, when alloyed, had some particular desirable properties, he could patent not merely this particular mixture, but the idea of alloying metals for this purpose, and thus exclude everyone else from contriving some other combination of metals which, when alloyed, had the same desirable properties. In patenting an alloy, I assume that both the qualities of the product and its specific composition would need to be specified. The strains that Bond put together in the product which he patented can be specified only by the properties of the mixture. The District Court, while praising Bond’s achievement, found want of patentability. The Circuit Court of Appeals reversed the judgment of the District Court by use of an undistributed middle — that the claims cover a “composite culture” — in the syllogism whereby they found patentability.

    It only confuses the issue, however, to introduce such terms as “the work of nature” and the “laws of nature.” ….In finding Bond’s patent invalid, I have tried to avoid a formulation which, while it would in fact justify bond’s patent, would lay the basis for denying patentability to a large area within existing patent legislation.

    Functional claiming at the point of novelty. Justice Frankfurter recognized that it’s a bad thing for composition claims because it effectively allows one to patent the underlying concept (the “desired” composition), rather than the specific compositions which actually have patentable utility. Frankfurter also recognized that it’s better to deal with this issue using 112 rather than creating an unworkable, incomprehensible “natural law” rule for ineligibility of compositions of matter.

    *most of this cribbed directly from comments 26-27 here: link to patentlyo.com

    1. I assume everybody can see the real problem with this claim: functional claiming at the point of novelty

      Try again.

      1. Yeah, anon, try reading. I suggest: Perkins Glue:

        Holland Furniture Co. v. Perkins Glue Co., 277 U.S. 245, 48 S. Ct. 474, 72 L. Ed. 868 (1928). link to scholar.google.com

        “Perkins’ second way of describing the starch ingredient of his product was in terms of the use or function of the product itself. … But an inventor may not describe a particular starch glue which will perform the function of animal glue and then claim all starch glues which have those functions…”

        “One attempting to use or avoid the use of Perkins’ discovery as so claimed and described functionally could do so only after elaborate experimentation. Respondents say that laboratory tests would be insufficient and that “the best and probably the only satisfactory test is to try it out on a large scale in a furniture or veneering gluing factory.” A claim so broad, if allowed, would operate to enable the inventor who has discovered that a defined type of starch answers the required purpose to exclude others from all other types of starch and so foreclose efforts to discover other and better types. The patent monopoly would thus be extended beyond the discovery and would discourage rather than promote invention.”

          1. anon, you clearly are in denial. Perkins Glue is considered by all to be good law and was cited in the briefs in the Nautilus case.

            If you disagree that Perkins Glue is good law, whose opinion controls, yours, or the Supreme Court’s?

          2. I’m confused. Isn’t this post talking about a pre-1952 patent? So citing to pre-1952 cases would be appropriate, right?

            1. The context is present day law. The error is citing non-present day cases and law and merely presuming that they “translate” directly.

              They do not.

    2. MM, everyone should be advised to read Frankfurter’s opinion first, the dissents next, then finally the majority’s opinion.

      Frankfurter could have cited to Perkins Glue that one cannot claim a composition by its properties. This is regardless of whether a law of nature is involved.

      But, we should take seriously the dissent that said the claim was nevertheless definite because of tests disclosed whereby “Bacteriologists, skilled in the applicable art, will not have difficulty in selecting the non-inhibitive strains by employing such standard and recognized laboratory tests as are described in the application for this patent.” It appears that the claim scope was, in fact, enabled for its full scope. The claim like a claim to a genus where some species were disclosed and others enabled.

      Back to the majority opinion, it can be viewed such that when a law of nature is involves, as was here, the law requires a little bit more than the obvious such that the claim not preempt the law. We saw the same line of reasoning in Flook, Mayo, and in Bilski. What is sufficient is never explained, but it does suggest that obviousness is part of the answer.

      1. It is also important to note what the majority thought was patent eligible:

        “We do not have presented the question whether the methods of selecting and testing the non-inhibitive strains are patentable. We have here only product claims.”

        1. Ned – you are doing that over-reading thing again.

          Not having the question presented is just not the same thing as “what the majority thought was patent eligible

          1. anon, true. But the fact of mention is important as the court was clearly indicating what it thought was eligible.

            Frankfurther clearly thought the claims limited that way would have been eligible.

      2. but it does suggest that obviousness is part of the answer.

        And again with the over-reading…

        Read Prometheus again and note the warning against being confused because the words themselves may have some overlap. Note that the government brief was rejected.

        Pay attention.

        1. Well, anon, the Supreme Court has never defined what is “enough” and what is “insignificant.” While we can live in a fog, it is better to live in the sunlight. I think the Supreme Court is driving at some non obvious addition, but I am not sure.

          Do you have a definition of when something is “enough?” “Markedly different” come to mind, but that really doesn’t apply to laws of nature too well.

          But something more than the known or conventional is another way to put it.

          1. Let me know when you think that the Supreme Court actually writing patent law does not violate the separation of powers doctrine Ned.

        2. anon- The Supreme Court rejected the government brief and reinterpreted Funk, as it is entitled to do. But that doesn’t mean that its interpretation of what Douglas meant is right, only that we’re stuck with it.

          “Invention” had a very clear meaning in pre-1952 parlance – obviousness. Indeed, you can read the Court’s current view of Funk consistently with that – in essence that the combination of naturally occurring items doesn’t take it out of naturalness – it is de facto obvious, just the same way that a single naturally occurring thing is de facto non-novel.

          1. Absolutely wrong – invention was explicitly NOT chosen due to the mess involved with that word.

            It’s a bit ironic that you want to have the Court ‘re-interpreting’ at the same time you are.

            1. That’s what we all do when we read opinions. But theirs governs. I can live with that.

              That said, if you can point me to some pre-1952 supreme court cases that used invention in a non-obviousness way, I’d be glad to learn of them. I’m not wedded to my view of Funk.

            2. I would rather point you to the commentaries dealing with the 1952 Act, the ones that discuss why “obviousness” was chosen instead of invention.

            3. So true. Too bad the court gets it wrong so often. :)

              I’ve read the commentaries, but I don’t think that this answers the point. That the word invention is creates ambiguity for folks (like that in Funk) doesn’t mean that that’s not how it was used. Consider the Funk case – the 7th Cir. wrote a very clear patentable subject matter opinion – using those words. And yet the Supreme Court did not say those words.

              By the way, I’m not arguing that it was wrongly decided – in my own work, I argue that the takeaway from Funk is that combinations of naturally occurring products are not patentable, and use that to explain why books and music are not patentable – they are simply combinations of words and notes – what I call “ordered information.”

            4. and use that to explain why books and music are not patentable

              (sigh) – I suggest that you use the more on point reasoning of non-useful arts versus useful arts. Entertaining a canard as you do can only lead to faulty applications of logic later.

            5. Ordered information for a recognized utilitarian purpose is patent eligible.

              Think encryption and cryptography.

              (and also think that this was one thing made of record by Perry in the recent oral arguments in Alice – fully admitted to be patent eligible)

            6. Michael,

              A thought for you to dwell on:

              The Court purposefully choose after 1952 to tie their “judicial exceptions” (as implicitly written) explicitly to 101 – knowing full well that the law had changed in reaction to their decisions concerning “invention.”

              Even as late as Prometheus, we have the Court arguing that they will keep their own implicit writings ‘come h311 or high water’ – the not let become dead letters comment is not addressed to the explicit words of the law, but rather is addressed to the implicit words of the Court.

              If – as you theorize (and as many here seem to want to do), these judicial exceptions are not moored to current day 101, but instead find their legal moorings in other sections of law (such as 103 and 112), is “the law” as passed by (read that as written by) edict from the Royal Nine binding when it is clearly wrong?

              Does not this pass for more than merely ‘interpretation?”

              How deep the rabbit hole of implicit, if a court – The Court – can so completely interpret the law to be WHATEVER it wants it to be?

              (this should exemplify the machinations afoot with all of the posturing – by those charged with political and philosophical agendas – aiming to have the Royal Nine change the law as written to achieve a desired end. Even as Stevens himself warned of the nose of wax nature and power in 101, even as he himself tried to mash that nose; do we – can we sit idly by and watch the Court abide its addiction to power and stick its fingers where they do not belong?

            7. Or to use another analogy,

              Do we join the ‘crowd’ and admire the “fine raiment” of the King, or do we, as the innocent child, point to the king and ask, “Mommy, why is that man naked?”

            8. I suggest that you use the more on point reasoning of non-useful arts versus useful arts.

              Nobody cares what you “suggest” because you can barely type out an argument in English without shooting yourself in the face.

            9. without shooting yourself in the face.

              LOL – Lovely AOOTWMD – your volunteered admissions against interest are the stuff of legend. That is, when you can be torn away from your vapid short script of ad hominem, spin, and the limited rhetorical tools that you cling so desperately to.

      3. Ned: we should take seriously the dissent that said the claim was nevertheless definite because of tests disclosed whereby “Bacteriologists, skilled in the applicable art, will not have difficulty in selecting the non-inhibitive strains by employing such standard and recognized laboratory tests as are described in the application for this patent.” It appears that the claim scope was, in fact, enabled for its full scope.

        You start out talking about “definiteness” and you end up talking about “enablement.” It’s likely that one or both are problems given the vagueness and breadth of the claim in Funk Brothers.

        The dissent (Burton and Jackson) is way out there in the wilderness and their reasoning has already been trampled upon in one of the best Federal Circuit decisions out there: Abbott v. Sandoz (en banc; 2009). In a nutshell, the dissent would simply greenlight functional claiming whereby chem/bio applicants could claim “new” compositions merely by reciting the desired “new” functions of these compositions and, elsewhere, providing a “test” for identifying which compositions are, in fact, covered by the claim.

        The patentable invention here are the specific combination or combinations of bacterial strains that (1) aren’t in any prior art compositions (including naturally occuring compositions) and (2) which actually work. The claim is functional and open-ended (“comprising”) so we’re talking about a vast number of different compositions that could potentially fall within the scope of the claim (there are a lot of Rhizobium species out there). Why should the public be require to identify all the compositions that were allegedly “invented” by the patentee? Other than the restriction to “Rhizobiums”, there are no identifying objective physical/structural characteristics of the strains which work. Seems like the patentee here is getting far more protection than it deserves.

      4. What is sufficient is never explained, but it does suggest that obviousness is part of the answer.

        In the case of Prometheus’ claims, a non-obvious and otherwise eligible data-gathering step would certainly have saved the claim. Of course, if you’ve got a non-obvious and otherwise eligible data-gathering step then it would be pointless (and probably malpractice) to include a mental step of thinking about the results of the gathered data. But such a claim would be eligible. Why is that the case? Because nobody gets dragged into court for infringing such a claim when they merely practice the prior art and think about stuff.

    3. I completely agree that Frankfurter’s approach is the more reasonable, but his is not the opinion that gets cited by the Supremes nowadays. Discussion his opinion would have made the article longer than suitable for a post.

      Finding the non-inhibitive strains is inherently an empirical research task. If the task was long and difficult then the patent was clearly invalid for insufficient disclosure. Arguably not if finding the non-inhibitive strains was very straightforward once a skilled person had been told to look for them. At present I have no information as to which the true position was, but am inclined to believe that it was a straightforward task.

      The idea of mixed inocculants was known, there had been some activity along those lines but they were not recommended because of interference. Bond’s contribution was overcoming a prejudice in the art against mixed inocculants and appreciating that compositions with mixed inocculants that did not interfere with one another were feasible.

      Did this entitle him to the broad and somewhat indefinite claims that were granted? It is a difficult decision on which views legitimately differ but possibly yes. I think if the same fact pattern had arisen under current law before the EPO the claim might have been upheld.

      1. lol, as if US jurisprudence was not muddled enough, let’s throw in some foreign law for the discussion…

      2. Did this entitle him to the broad and somewhat indefinite claims that were granted? It is a difficult decision on which views legitimately differ but possibly yes. I think if the same fact pattern had arisen under current law before the EPO the claim might have been upheld.

        Possibly. But more likely the EPO would limit the claim to the disclosed composition(s) that actually work. That happens a lot to chem/bio claims in the EPO…

  10. I agree with you, Paul, that the Supreme Court’s Funk Brothers opinion is poorly written and provides little useful guidance for determining eligibility, at least when the question is whether a claimed composition is an ineligible “product of nature”.

    As I wrote last March in this thread: link to patentlyo.com : I am “anti-Funk,” at least insofar as the case sets forth an unworkable and incomprehensible test for eligibility of composition claims. That’s why the case has been mostly ignored for the past 60 years, except [as one source of] some banal statements regarding the ineligibility of laws of nature. Prosecutors in chem/bio have been obtaining claims to mixtures of all kinds of chemicals based on “new discoveries” during that time and I bet you can count the number of composition claims challenged under Funk Brothers on two hands, at all levels. It’s a g-rbage Supreme Court case, even worse than Diehr in its clumsiness and lack of foresight.

      1. it is very much like Mayo

        Huh? Mayo was a process claim that recited a new data gathering step and a step of thinking about what the data meant.

        Those claims were about as different from the composition claims at issue in Funk Bros. v. Kalo as a claim could possibly be.

        1. MM, but the analysis is the same. Both involved a law of nature and both required something “inventive” be added, meaning, something non obvious, not trivial.

          1. MM, but the analysis is the same. Both involved a law of nature

            As Breyer and others have noted: just about everything that isn’t completely abstract garbage involves a “law of nature” at some level. It’s not a noteworthy similarity. It’s like a witness observing that the purse snatcher ran away on two legs.

            More importantly, the subject matter of the mental step in Prometheus (a “correlation”, really, and not a “law of nature” as that term is normally used by laypersons) is ultimately irrelevant to the Prometheus analysis. The mental step could have been about anything, including thinking about some incredibly non-obvious and enormously useful fact, but the result would not have changed (and won’t change). It’s still an ineligible claim.

            both required something “inventive” be added, meaning, something non obvious, not trivial

            Merely folding in a non-obvious element isn’t going to win the day (see the paragraph above re with Prometheus-style claims). In many (all?) cases there needs to be new structure or some new transformation of matter or there’s a good chance that you’re driving on bald tires. In the case of the mixture claim in Funk, what was needed was the recitation of some additional structural limitations rather than just the desired result.

            1. As Breyer and others have noted: just about everything that isn’t completely abstract garbage involves a “law of nature” at some level. It’s not a noteworthy similarity.

              Not sure that you have a spinless cite for that.

              As it is, your anti-patent leanings make it appear that you have your ultimate anti-patent mantra: Either you have something that is abstract, or you have something that is a law of nature.

              No patent for you

              (said in the best Seinfeld “liquid dish, typically made by boiling meat, fish, or vegetables, etc., in stock or water” serving character tones).

              The mental step could have been about anything

              BZZZZT – wrong – one of your pet theory fallacies (you forgot about integration, try to think that even a claim with perfectly recited structures, but simply not integrated would also fail)

              In many (all?) cases there needs to be new structure or some new transformation of matter

              BZZZZT – wrong – there you go again wanting structure and ignoring what the law actually is, compounding that with the insertion of MoT when the Court has clearly held that MoT is not required (hint: See Bilski).

              As to “transformation,’ I believe that Paul Cole’s point in his article is that there was transformation: the claim ‘transforms’ individual species into a single amalgamation and eliminates the adverse affect that a person having ordinary skill in the art to which the invention pertains would have expected. You confuse breadth with indefiniteness.

              The over-arching point (and the elephant in the room) was that the decision seems to be one of those Royal Nine make-things-up and no one mentions that the king really is naked kinds of things. This forces everyone to scramble to try to create some “interpretation” or “implicit writing” to cover up an anti-patent decision from an era of anti-patent judicial activism.

              The decision by Douglas is very much just like Breyer’s.

              Those that refuse to learn from history are bound to repeat it.

            2. “The mental step could have been about anything”

              BZZZZT – wrong

              Identify a mental step that would have changed the outcome in Prometheus.

              You’ve been asked this really straightforward question in response to your crybaby foot-stamping for years. You can’t answer the question. Nobody can. You can’t answer it. Gene can’t answer it. Kevin can’t answer it. Hal can’t answer it. Courtenay can’t answer it. Nobody can answer it.

              It’s not your fault that you can’t answer the question. It is your fault that you can’t simply admit the truth.

            3. Actually, Malcolm, Funk is also like Nielson where the English court held that something inventive had to be added to the principle that hot air make the furnace more efficient. Every case requires the same, some non obvious invention in addition to the LON.

              Funk Bros. and Mayo are consistent in this. Ditto Flook and Bilski. All are consistent.

            4. believe that Paul Cole’s point in his article is that there was transformation: the claim ‘transforms’ individual species into a single amalgamation

              Patent claims are abstractions, friend. They don’t “transform” anything.

              I’ll let Paul speak for himself. He’s pretty good at that.

            5. the Court has clearly held that MoT is not required

              The Court clearly held that claims can be found ineligible even if there is a “machine” or a “transformation” in the claim.

              The Court also held that the absence of either a machine or a transformation can be a big clue that the claim has eligibility issues.

              Here, again, is what I wrote: In many (all?) cases there needs to be new structure or some new transformation of matter”

              Go right ahead and advise your clients otherwise, Mr. “Ethical Standards.” The rest of us know better.

            6. The Court clearly held that claims can be found ineligible even if there is a “machine” or a “transformation” in the claim.

              Different case than the one we are discussing, Malcolm.

              Try to stay focused.

            7. Maybe you want to clarify your own statement.

              Tell me what is involved in determining this “many” thing that you speak of?

              Oh wait – I have already informed you: “in the art to which the invention pertains

              Pay attention.

            8. Bilski is the case in the discussion for the point that MoT is not required.

              Prometheus is the case for the view that MoT may not be sufficient.

              Check the archives, I have tried teaching this to Ned nigh over 100 times.

              You are welcome.

            9. Patent claims are abstractions, friend. They don’t “transform” anything.

              LOL – these jokes just write themselves sometimes.

            10. I have tried teaching this to Ned

              You’re one of the worst teachers in the world, for a number of reasons to glaringly obvious to recite here.

            11. You’ve been asked this really straightforward question

              LOL – let’s try the really straightforward questions that have been asked of you – the ones that go to the heart of the software patentability issue.

              You know, the ones that you always run away from.

              Ready?

      2. lol – I do not think “adore” is strong enough of a word.

        (even if he did FAIL massively with a posted link to the Office takeaway from the case, featuring “integration” as opposed to his odd little pet theory)

    1. There is a biography of Justice Douglas on Wikipedia and he appears to have been a distinguished public servant in his judicial role and in much else. It does his memory no service by resurrecting and bringing into the spotlight of today this questionable opinion.

      1. You might want a less sanitized version to bring this decision into perspective, Paul.

        Especially in regards to patent law, your lack of understanding of the reaction of Congress to an anti-patent judicially active Court is a gaping hole in your exposition.

        1. I can argue as a matter of fact and law and that is what I chose to do. Politics and policy are outside my scope. Furthermore I have a met a lot of US judges and in my experience they are very straightforward people who are conscientious in their work and do their best to decide the cases before them on the facts and the arguments of counsel. I suspect even Judge Douglas was in that category, though the law that he had before him differed from that now in force and gave less guidance to the judiciary.

          1. I can argue as a matter of fact and law and that is what I chose to do.

            Your facts are incomplete. You just do not have the whole picture. You want to assume a completely objective Justice is involved when the facts show otherwise. Pull your head out of the sand. Whether or not you choose to include politics and policy simply does not (and cannot) mean that such are not involved in the reality of it all. As I said, your sanitized version is simply inaccurate. Do not attempt to tell me that you know it is inaccurate, but it is ‘good enough.’ It is not.

          2. Let me provide a simple hypothetical to stress this point.

            You are sitting in a public theater, watching a picture show. munching on your box of popcorn.

            A man comes up, screams in your face and forcibly picks you up and carries you out of the theater, dislocating your arm in the process.

            You want to bring suit for tort.

            Do you win?

            That is the equivalent of your “I only want to talk about this” vantage point.

            Now, let me fill in the other facts and context that you are missing.

            The theater is on fire.
            The man is a fireman.
            His actions save your life.

            Now, same question:

            Do you win?

            (and for those following the analogy, you can think of the theater watcher as inventors, the arsonist guilty for setting fire to the theater as the anti-patent judicially active Court, and the fireman as Congress)

            1. I respect your viewpoint.

              But for present purposes I have to assume that the USPTO will seek to interpret the court opinions correctly and objectively and stick to that position. It may not be correct, but if the later interpretation is wrong it is my duty to point it out on the same basis. If you are seeking to influence the USPTO, as is important tomorrow, I am unable to identify any other approach that will do.

              Here is what the Supremes said in Chakrabarty:

              “Our task, rather, is the narrow one of determining what Congress meant by the words it used in the statute; once that is done, our powers are exhausted. Congress is free to amend § 101 so as to exclude from patent protection organisms produced by genetic engineering. Cf. 42 U.S.C. § 2181(a), exempting from patent protection inventions “useful solely in the utilization of special nuclear material or atomic energy in an atomic weapon.” Or it may choose to craft a statute specifically designed for such living things. But, until Congress takes such action, this Court must construe the language of § 101 as it is.”

              The task of the USPTO is similar. It must interpret the words of the statute and of the relevant decisions to extract so far as humanly possible an accurate statement of the law. That is why I am sticking to the legal issues under 101.

            2. Anon,

              Taking a closer look at that analogy . . .

              Congress built a rickety, death-trap theatre that the CAFC has been packing full of oily rags and kerosene barrels, such that when an anti-expansionist court shines light upon it with a torch, it ignites, prompting Congress to cripple inventors while dragging them away from the deathtrap they built?

            3. One (well, one glaring) problem you have Dobu is that the US Constitution is pretty clear as to which branch has the authority to build any theaters.

              (hint: it is not the judiciary)

            4. Anon,

              When your movie theatre is out of control, violating zoning laws, selling tickets for movies it’s not allowed to show, to anyone with the cash, well, then it’s time for the courts to exercise their proper role of judicial oversight to reign the theatres back in under their mandate.

              (I think if we stretch this analogy any further, it might snap. If it hasn’t already. [I think I just invented a meta-analogy . . . an analogy for an analogy?])

            5. exercise their proper role of judicial oversight to reign the theatres back in under their mandate.

              Arson is not in anyone’s mandate.

            6. You are sitting in a public theater, watching a picture show. munching on your box of popcorn.

              Real butter? Or just that weird flavored salt?

            7. Malcolm, you’re over-reading the text and losing sight of the point by pedantically focusing on the irrelevant details.

              Oh, wait . . . OMG! What have I become?! Just shoot me now.

              [re-posted after I figured out which "Reply" link I actually wanted to click on.]

            8. I do not understand the frame of reference for your question Malcolm.

              But please, if you have any point you wish to make on the merits, try again.

            9. Dobu, I like your movie theater analogy. I have another, compare the English approach to advances in liberty to the French. Once is conservative, making slow advances and small changes. The other is radical, divorcing itself from history (pre-’52), an attempts to create utopia based on theory.

              Which is more prone to make errors?

            10. Ned,
              Thanks for the feedback, but the credit for the movie theatre analogy belongs to Anon. I just embellished it a tad.

              I think I’m going to abstain from contributing to the history analogy. I’m getting a little bit of a feeling of some anti-France bias in the way it’s presented. Maybe it’s just me, though.

            11. I’m getting a little bit of a feeling of some anti-France bias in the way it’s presented.

              Ned is still enjoying his “freedom fries” apparently.

            12. Maybe it’s just me, though.

              No, it’s not just you. Your abstinence is to be applauded (but perhaps only after the burning theatre is evacuated).

            13. Dobu, not anti-France at all. Anti-radical. There is a difference and it applies in force to the CCPA and Federal Circuit that refuses to follow cases decided prior to ’52, attempting “statutory construction” instead so that they can reinvent patent law from the ground up in their own utopian view of the world.

              Mistakes are made, big ones.

            14. no one from the peanut gallery has bothered to answer the “Do you win?” question…

              Personally, I don’t bother trying to wade through 99% of your incoherent gibberish. What would be the point of that?

            15. What would be the point of that?

              Learning the law in a way that does not see 25%+ of your posts removed for being offensive.

              Learning to post with intellectual honesty so that it does not matter who the person making the post is, but rather, it it the content of the post that wins the day.

              You might want to try to emulate me. Your methods are well, leaving a lot to be desired. That “posts on blogs do not have to be intellectually honest” plank of yours does a doozy on your ‘credibility.’

      2. Paul, I wouldn’t be so quick to criticize Douglas. His basic approach is still followed in all subsequent 101 cases — there is something inventive in the claim, something non obvious, that is not the law of nature or principle itself.

        Even Diehr added the thermocouples and constantly monitoring beyond the new math.

        Problems arose when the lower courts refused to follow the roadmap laid down by the Supreme Court. Part of the problem is that the analysis was so different from what they normally used.

        Had Douglas said this, “In comparing the claim subject matter with the prior art, the law of nature itself cannot be relied upon to distinguish the claimed subject matter,” the CCPA and Federal Circuit would have gotten it and would have agreed. This, to them, would have seem just like the familiar printed matter doctrine.

        1. Even Diehr added the thermocouples and constantly monitoring beyond the new math.

          Both old in the art, Ned.

          But you already know this – Come man, you know exactly what was the “Point of Novelty” in Diehr (hint: think computer program)

            1. Maybe it would help if you took a fresh look at the decision, Anon.

              From the Diehr opinion penned by Justice Rehnquist:

              … according to the respondents, the continuous measuring of the temperature inside the mold cavity, the feeding of this information to a digital computer which constantly recalculates the cure time, and the signaling by the computer to open the press, are all new in the art.” [emphasis added].

            2. A fact is still a fact, even if a judge gets it wrong, Dobu.

              (note too that those words are not the words of the Justice, but the Justice merely repeating the argument of one of the proponents)

            3. Anon,

              The court held that the Diehr rubber-curing process, as a whole (including continuous monitoring via thermocouples) was 101-eligible. It did not pick and choose which claims, if any, made for novelty.

              The respondents claimed novelty in the continuous monitoring via thermocouples (et al), and the assertion was uncontested. Would that not, legally speaking, make it a “fact“?

            4. It’s nice to see that anon is starting to appreciate that the eligibility finding in Diehr is built on top of a pack of easily disproved lies that the Supreme Court swallowed whole.

              Correct those lies and you can wave buh-bye to whatever is left of Diehr other than its most banal of propositions (i.e., the mere presence of ineligibile subject matter in a claim does not render the entire claim ineligible as a per se matter).

              Eventually this will be acknowledged by just about everybody. Oh wait: that’s already the case.

            5. “of easily disproved lies”

              I’m not so sure MM. The eligibility was fine, for the reasons the court stated on the record before them. Specifically the record before them is relevant. If there was other prior art out there that just didn’t show the computer program (all in one ref) then sure, ineligibility would likely follow. But idk if you’re going to find that.

            6. process, as a whole (including continuous monitoring via thermocouples) was 101-eligible. It did not pick and choose which claims, if any, made for novelty.

              Dobu – you miss the point of my rubbing Ned’s nose in this. It is Ned and his canard “Point of Novelty” that is the fail as exemplified in Diehr.

              What is absolutely delicious about this, is that IF you apply Ned’s canard of PON to Diehr, your answer is a computer program – something that he refuses to acknowledge – note that he still refuses to overcome his own personal lack of understanding in the Nazomi case. The reason there is likewise clear: the critical “Point of Novelty” is software.

              He would rather portray himself as a complete dunce than make an admission like that.

            7. Eventually this will be acknowledged by just about everybody. Oh wait: that’s already the case.

              LOL – more self FAIL from Malcolm – Gee, look at what Prometheus had to say about Diehr….

              /face palm

          1. “Maybe it would help if you took a fresh look at the decision, Anon.”

            It would, except he’s OCPD and has to be right, and has to be the only one that is right.

            Also he has a somewhat “out there” definition for “point of novelty” that makes discussing the matter with him like talking a 5th grader that refuses to use words the way other people do and insists that other people use words the way they want to instead.

            1. 6,

              Nobody cares about your obsessive need to project your symptoms.

              Hey I tried to help you, but you refuse to recognize what you are doing. You need to admit your problem first before you can get better.

            2. “Nobody cares about your obsessive need to project your symptoms”

              Mmmmm, perhaps not, since no such “obsessive need” exists. On the other hand, they do care about your OCPD when talking to you. Or at least they will as they see it rear up time after time.

            3. Your obsessive need is more than evident given your extraordinary focus on me to the exclusion of all else going on about you (and while you continue to be in denial about all that projecting stuff you are addicted to)

        2. the roadmap laid down by the Supreme Court

          LOL – you are still about it, ignoring the real cause of the problems.

          4 is not 5.

          Reading a map is not writing a map.

          1. anon, “4 is not 5.”

            I am sorry anon, I just point out that the analysis laid down in Funk Bros. is still followed in every 101 cases since — except perhaps, Myriad, that was a very simple and clear test, is the composition claimed a product of nature?

            1. I just point out

              BZZZZT – wrong. Clearly Ned, my comment is aimed at something else – the part of your comment that was NOT just pointing out a method of analysis – the part in which you lay blame at other than where the blame needs to be laid.

            2. anon, there is no doubt that there was and still is a mini-war being waged between the Supreme Court and the patent bar, whose views are represented in patent attorneys named to the CCPA and the Federal Circuit. We all see it. Even you denounce Douglas and the Supreme Court — at least the liberals on that court represented by Douglas and Stevens.

            3. was and still is a mini-war being waged between the Supreme Court and the patent bar

              Correction: between the Supreme Court and Congress.

              Why do you think that I ask you (even as you always run away) which branch of the government has been allocated authority to write patent law?

              It is the Supreme Court that has a nose of wax addiction. This is incontrovertible.

        3. his, to them, would have seem just like the familiar printed matter doctrine.

          Pray tell Ned, are you even aware of what the exceptions to the judicial doctrine of printed matter are?

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