Dennis is on vacation and said I could post so I’m running with it!
The analysis everyone suggests is right under 101 (recall I don’t think it’s an invalidity defense; not sure what impact, if any, it has on patentability) goes something like this:
Is the claim “directed to” some natural law/natural thing/abstract idea?
If so, there must be more than ‘conventional’ application of it.
Applying that to a lot of medical method claims (Ariosa v. Sequenom is discussed by others below), the problem is that, before the discovery of the natural thing/idea/law, no one knew that you could apply anything to do whatever the claim says. Nothing was “conventional” with respect to the newly discovered thing/law/idea.
By asking what’s conventional, we are importing hindsight.
Thoughts, or am I not yet awake and Dennis should come back and get this ship righted?
One last thought for those of you who think “invention” has meaning beyond 103. I think the legislative history is beyond clear, as is the statute, but here’s a committee report:
“The major changes or innovations in the title consist of incorporating a requirement for invention in § 103 and the judicial doctrine of contributory infringement in § 271.”