More on Claiming Clones: Products of Nature and Source Limitations

Guest post by Dr. Jeffrey A. Lefstin, Professor of Law, University of California, Hastings College of Law

Jason’s excellent post on Roslin summarized the case and raised the question of whether the Federal Circuit paid insufficient attention to the inherent differences conveyed by the ‘clone’ limitation of the claims. In this post I address two other issues in Roslin:  the Federal Circuit’s interpretation of Ckakrabarty and Funk Brothers, and Roslin’s consistency with Federal Circuit precedent holding that structural or functional differences between natural and synthetic products must be defined in the claims.

Unaltered by the hand of man: Judge Dyk’s opinion in Roslin unfortunately perpetuates the view, now found in the PTO’s Myriad guidelines, that Chakrabarty requires a claimed invention to be “markedly different” from a natural product for patent-eligibility under § 101.  Myriad itself imposed no such requirement: the Court found BRCA cDNAs patent-eligible without determining that they were “markedly different” from natural sequences. And though Myriad reiterated the “markedly different” language from Chakrabarty, Chakrabarty’s discussion of ‘products of nature’ was entirely dictum. Only the question of whether living organisms were patent-eligible was before the Court in Chakrabarty; the ‘product of nature’ rejection in the case had not been sustained by the Patent Office Board of Appeals.

The Chakrabarty Court noted the claimed bacteria differed markedly from natural bacteria by way of distinguishing the case from Funk Brothers.[1] As Paul Cole’s recent post notes, the patentee had discovered that certain strains of bacteria could be mixed together without inhibiting their nitrogen-fixing capability.  Justice Douglas regarded this compatibility as the unpatentable discovery of a natural phenomenon;  the claims were unpatentable because the patentee’s application – a mixed inoculant – was “a simple step” once the underlying discovery was assumed away.

As I discuss in a recent article, Funk  was nonetheless very much a patent eligibility case. It reflects Douglas’s view – shared by Justice Stevens in Flook, and Justice Breyer in Mayo – that obvious applications of scientific discoveries or abstract ideas are not patent-eligible “inventions” within the meaning of the statute.

Whether or not we share that view, understanding it shows us that Funk was an ‘inventive application’ case, not a ‘product of nature’ case. Douglas made no reference to the ‘product of nature’ doctrine, nor to the recent cases embodying it.[2] Instead, Douglas emphasized the lack of change in the bacteria to establish that the mixed inoculant was obvious (once the patentee’s discovery was assumed away). Under the old doctrine of ‘aggregation,’ it was not invention to combine old elements where the elements were unchanged, and no new function arose from their combination. It was therefore not inventive for the patentee in Funk to combine old bacteria without changing their structure or function.

But just as many combinations of old elements become patentable when a new function emerges, the mixed inoculants of Funk would have been patentable — even if the bacteria remained unchanged — had the mixed inoculant acquired new functions not performed by its constituent bacteria. If Funk Brothers instead stood for the proposition that a combination is unpatentable if its constituents are ‘unaltered by the hand of man,’ then a very large number of inventions become patent-ineligible.  An artificial structure like an arch, formed by piling stones atop each other, would be ineligible unless the stones themselves were altered by the hand of man.  Even as ardent a skeptic of the patent system as Justice Douglas would not have gone that far.

Source limitations and expressly claimed distinctions: The second difficulty with Roslin is its demand that the ‘marked differences’ between the natural organism and the invention must be expressly claimed. As Jason discussed, the applicant in Roslin argued that cloned animals differ from their natural counterparts at least in having mitochondrial DNA derived from the egg donor, rather than the animal which donated the somatic nucleus. The Federal Circuit rejected such arguments because neither the difference in mitochondrial DNA, nor any functional consequence of that difference, was recited in the claims.

However, the same argument, albeit in the context of § 102, was before the Federal Circuit in the extensive litigation over Amgen’s recombinant erythropoietin (EPO) patents. Much like Roslin, Amgen had claims to a ‘copy’ of natural product: in that case EPO produced by mammalian cells in culture. While Amgen’s synthetic EPO differed in glycosylation from the natural product, several of the claims in the case recited only the non-natural source of the EPO, not the structural differences. The Federal Circuit recognized that the novelty of the synthetic EPO claims depended on whether synthetic EPO differed from natural EPO.  Yet the court found novelty based on the unclaimed structural and functional differences between natural and  synthetic EPO, which were demonstrated in part by the specification and prosecution history, and in part by testimony at trial. Amgen Inc. v. F. Hoffman-LaRoche Ltd, 580 F.3d 1340, 1370 (Fed. Cir. 2009). In effect, the court held that the structural and functional differences characterizing the synthetic product were inherent in the source limitations. (The court did not inquire whether all synthetic EPO molecules falling within the scope of the claims would display similar differences in glycosylation.)

Thus under Amgen, a source limitation alone (such as ‘non-naturally occurring’ or ‘purified from mammalian cells grown in culture’) may establish novelty of a product. Assuming the ‘clone’ limitation in Roslin to require derivation from nuclear transfer, then it serves as a source limitation as well. Since Roslin cannot overrule Amgen, we seem to be in a regime where differences between natural and synthetic products may be unclaimed yet confer novelty under § 102, but must be explicitly claimed to establish ‘marked difference’ under § 101. Of course, if Roslin is correct, that doctrinal inconsistency is less significant than the consequence that Amgen-type claims – and perhaps a wider category of product-by-process claims involving natural products – are now ineligible under § 101.



[1] In Chakrabarty, the Commissioner never suggested that the claimed bacteria were unpatentable under Funk, nor even raised the case.  Rather, Chakrabarty argued that if living organisms were not patent-eligible, the Court would have said so in Funk.

[2] In particular, the General Electric and Marden cases denying patentability to purified tungsten, uranium, and vanadium. The defendant had urged General Electric upon the Funk court in its brief.

178 thoughts on “More on Claiming Clones: Products of Nature and Source Limitations

  1. Paul Cole,

    Justice Douglas’ comments in Cuno were reiterated in ~A & P where he said:
    “Every patent is the grant of a privilege of exacting tolls from the public. The Framers plainly did not want those monopolies freely granted. The invention, to justify a patent, had to serve the ends of science — to push back the frontiers of chemistry, physics, and the like; to make a distinctive contribution to scientific knowledge. That is why, through the years, the opinions of the Court commonly have taken “inventive genius” as the test. It is not enough that an article is new and useful. The Constitution never sanctioned the patenting of gadgets. Patents serve a higher end — the advancement of science. An invention need not be as startling as an atomic bomb to be patentable. But is has to be of such quality and distinction that masters of the scientific field in which it falls will recognize it as an advance.”

    Implicit in this statement is a construction of the constitutional clause that seems to read out ” useful arts” from promote progress in Science and useful Arts.”

    It also seems to overturn Hotchkiss, which is the standard was not the master of science, but the one of ordinary skill.

    However, regardless that patents are intended to promote the progress of the useful Arts, they do in fact grant a privilege of exacting tolls on the public that many if not most today recognize as a problem to the extent that there is a low standard patentability. Put another way, the low standard of patentability that exists today has materially contributed to the very problem, the troll problem, that Justice Douglas recognized in A&P.

    Prior to 1952, the Supreme Court was developing an objective standard of invention, requiring demonstrable new functions, different in kind, not degree. One will recognize that this is the standard that is employed in Europe, for example, in that it requires some technical advance.

    The patent bar urged Congress to pass §103, arguing that the standard patentability of the Supreme Court was too high. What they passed, §103, has in practice not been workable to reliably exclude patents on subject matter that truly is in the public domain.

    KSR cited with approval these cases that Congress seemingly intended to overrule. Part of the reason has to be that to allow patents on so-called inventions that actually do not provide any technical advance cannot be what the framers had in mind when they authorized patents to promote the progress of science and the useful arts.

    It seems time to revisit §103 particularly in view of the troll problem, and perhaps to enact the standard being developed by the Supreme Court prior to 1952 in that patentable inventions must demonstrate a technical advance, a new functionality different in kind, rather than degree.

    1. And, might I add, the PTO, according to 6, is systematically allowing claims in the software arts that do not meet the KSR requirements of a technical advance — for policy reasons.

      But who is to complain — surely not the applicant. No, it is the public whose ox is eventually gored that complains, and who begins to advocate severely damaging the patent system as a whole in odd ways, when the apparent source of the problem is the PTO.

      1. “KSR requirements of a technical advance ”

        I didn’t even realize that there was such a requirement in KSR. KSR dealt with 103, not 102.

        1. 6, from KSR:

          “Yet the principles laid down in Graham reaffirmed the “functional approach” of Hotchkiss, 11 How. 248, 13 L.Ed. 683. See 383 U.S., at 12, 86 S.Ct. 684.

          “Neither the enactment of § 103 nor the analysis in Graham disturbed this Court’s earlier instructions concerning the need for caution in granting a patent based on the combination of elements found in the prior art. For over a half century, the Court has held that a “patent for a combination which only unites old elements with no change in their respective functions . . . obviously withdraws what is already known into the field of its monopoly and diminishes the resources available to skillful men.” Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147, 152, 71 S.Ct. 127, 95 L.Ed. 162 (1950). This is a principal reason for declining to allow patents for what is obvious. ”

          What was THAT? The functional approach of Hotchkiss was reaffirmed”

          A patent that “unites old elements with no change in their respective functions . . . obviously withdraws what is already known into the field of its monopoly and diminishes the resources available to skillful men.”

          “This is a PRINCIPLE reason for declining to allow patents for what are obvious.” (Emphasis supplied.)

          What are we to think, 6, that a claimed invention can be patentable despite no technical advance, no new function, where all the elements are old and are doing the same thing? Why do we have to get into whether it would be obvious to one of ordinary skill in the art when the Supreme Courts says that the lack of new function alone is sufficient?

          I have not seen KSR applied in any rejection that I have received that remotely resembles this reaffirmed functional approach. Not one.

          Why is that, 6?

          Other aspects of KSR have been applied, but not the most fundamental aspect — the point that the Supreme Court emphasized was a PRINCIPLE reason for declining patents for what is obvious.

          6, please explain.

            1. anon, no, that is your easy explanation because it is what you typically say even when I spoon feed you the facts, the issue and the holding and the very words of a court.

              You might try at least occasionally making a substantive response.

      2. Since there is no technical arts requirement in US patent law, I really doubt that your “technical advance” requirement can be found.

        Are you importing (or trying to import) EP law again Ned?

        1. anon, I was just reviewing the PTO’s edit of KSR. They refused to discuss the pre-’52 cases the Supreme Court cited. Then they removed all mention of “function” from the post-’52 cases when they laid out the tests for obviousness. Instead of functions, they substituted “known” and “predicable.” As a result, the A&P, Anderson’s Black Rock and Sakaida tests are gutted.

          This edit was intentional.

          It removed any technological consideration from 103 that the Supreme Court had once again in KSR held to be core to the patentability requirement.

          1. …and how did this “technological” core tied to the words of the statute, Ned?

            I keep on looking for this “technological in the statute, and cannot find it anywhere. Perhaps you can help me with a proper statutory cite, thanks.

      3. 6, the effective deletion of function from the obviousness analysis by the PTO in its guidance is remarkable given that the major point of the Government argument was that the Federal Circuit was ignoring Sakraida:

        This from Hungar’s argument:

        “And in addition I would point out that this court in Sakraida provided a framework for assessing patents like this one, for each of the elements as set forth in the prior art and each of the elements in the claimed invention is merely performing its already known, previously known function as set forth in the prior art.”

        Later the solicitor argues that the court can decide the issue of obviousness “as a matter of law if the court concludes that the difference between the claimed invention and the prior art is so trivial that it cannot be given the protection of a patent.”

        I see nothing in the case are guidelines talking about triviality and what the test of triviality is. But let me just point out the prior remarks about Sakraida.

        But the KSR guidelines mentioned none of this, either triviality or the well-known aggregation test from A&P and Sakraida.

    2. It seems time to revisit §103 particularly in view of the troll problem,

      Stop drinking the kool-aid of the mythological “Troll” problem Ned.

    3. Who is to say that Justice Douglas was wrong here?

      But perhaps the better view is that the patent system as a whole should give rise to progress in science and the useful arts, but that criterion need not apply to each individual application or patent.

      The constitutional clause has figured very little in recent case law, and few people I speak to when I travel to the US can tell me much about it. For example, what does “discoveries” mean in the context of the clause as a whole?

      1. Well, Paul, Max and I think you have long advocated that the US adopt the European system’s approach that “invention” requires a technical advance. Significant technical advances should be patentable regardless of people later saying they were obvious. That later consideration is subject to hindsight and abuse.

        Small advances in a crowded field should be patentable if it can reliably shown that the small change was the reason for commercial success. The Barb Wire Patent was the most notorious example of this doctrine.

        But to allow patents with no showing at all of a technical advance, just that one feature or another is not shown in the prior art, which it seems is where the state of US law currently is at, cannot be right. Just how does something that provides no advance in science or technology be entitled to a patent?

        Ask the man on the street this question and I will bet he will give the “obvious” answer.

        1. Ned,

          You lack an appreciation of how innovation works in the real world. I suggest that you brush up on your Christensen.

  2. GrzeszDeL :Decisions on section 101-grounds are almost always hard, and I think that it would be better policy to avoid them when possible.

    I strongly disagree that “decisions on section 101 ground are almost always hard.” This is a myth that ignores the vast number of claims that are not even filed but otherwise would be because they would be so easily tanked under 101. In many (most?) instances where there a 101 issue rears it’s head, the decision is relatively easy — particularly when compared to a 103 analysis.

    Consider: 1. A method comprising [old step] + [step of thinking about lengthy, complicated non-obvious thought].

    That’s an easy 101 analysis. What’s the 103 analysis (and don’t forget the secondary factors)?

    Likewise, 1. A computer system, wherein said computer system is configured to provide information to a user upon request, wherein said user is [insert non-obvious user] and said information is [insert lengthy complicated non-obvious information].

    That’s a real easy 101 analysis. What’s tthe 103 analysis (and don’t forget the secondary factors)?

    I do agree that in the case where you’ve already performed the claim construction and the claim is anticipated or obvious per se (with no chance of resurrection by secondary factors) then, sure, go ahead and tank it under 102 and 103.

    You might as well. Nobody will be offended, except for the usual characters who are offended whenever a patent is tanked.

    [shrugs]

    1. ignores the vast number of claims that are not even filed but otherwise would be

      lol, because Malcolm, the Red Queen / Humpty Dumpty can tell the future…

      just [shrug] and stand by…

    2. Fair enough. I agree that the universe of possible claims includes an awful lot of section 101 softballs. Allow me to rephrase my earlier post: “Decisions by an article III court about actually-filed claims on section 101-grounds are almost always hard.”

      1. Allow me to rephrase my earlier post: “Decisions by an article III court about actually-filed claims on section 101-grounds are almost always hard.”

        That’s also quite an exaggeration.

        Seriously, don’t underestimate how low the bottom-feeders will go in their attempts to claim data and facts themselves. This has been going on for years.

        1. All those D@M people who are out to make money with their patents and property and innovations…

          …what would Jane say?

          /eye roll

  3. Benson cited this case, Rubber-Tip Pencil Co. v. Howard, 87 U.S. 498, 22 L. Ed. 410 (1874), link to scholar.google.com
    for its “idea” exception.

    The claim: Blair’s patent was for “a new manufacture,” being a new and useful rubber head for lead-pencils. It was not for the combination of the head with the pencil, but for a head to be attached to a pencil or something else of like character.

    As construed, the claim reduced to a piece of rubber having a cavity small enough that it could be attached to a pencil. The patent was not for a combination, for any means for attaching a rubber eraser to the head of a pencil.

    “What, therefore, is left for this patentee but the idea that if a pencil is inserted into a cavity in a piece of rubber smaller than itself the rubber will attach itself to the pencil, and when so attached become convenient for use as an eraser?”

    But, the idea of attaching rubber to other things with small cavities was old.

    The court held:

    “An idea of itself is not patentable, but a new device by which it may be made practically useful is. The idea of this patentee was a good one, but his device to give it effect, though useful, was not new.”

    There is that word again. New.

    It also seems to appear, and appear prominently in Bilski, in Myriad and in Flook.

    Rader, in CLS Bank, premised his opinion on New being nothing other than not novel under 102/103. But, certainly the premise of both Myriad and Flook was that “new” is absolute regardless of whether “known.”

    But, certainly, the problem of the idea in Rubber-Tip was that it was notoriously old — just like the hedging algorithm in Bilski. Rubber-Tip sounds in 103, not 101. So does Bilski.

    1. It would be nice for someone to write up the rather surprising wealth of recent case law on the requirement for “newness” in 101. Bilski’s reliance on the notoriously old nature of the hedging method there being claimed seems odd until one reads Rubber-Tip, the source of the holding of Benson.

  4. Key part of the article which I like:

    “Whether or not we share that view, understanding it shows us that Funk was an ‘INVENTIVE APPLICATION’ case, not a ‘PRODUCT OF NATURE’ case. DOUGLAS MAKES NO REFERENCE TO THE ‘PRODUCT OF NATURE DOCTRINE, NOR TO RECENT CASES EMBODYING IT. Instead, Douglas emphasized the lack of change in the bacteria to establish that the mixed inoculant was obvious (once the patentee’s discovery was assumed away). Under the old doctrine of ‘aggregation,’ it was not invention to combine old elements where the elements were unchanged, and no new function arose from their combination. It was therefore not inventive for the patentee in Funk to combine old bacteria without changing their structure or function.

    But just as many combinations of old elements become patentable when a new function emerges, the mixed inoculants of Funk would have been patentable — even if the bacteria remained unchanged — had the mixed inoculant acquired new functions not performed by its constituent bacteria. If Funk Brothers instead stood for the proposition that a combination is unpatentable if its constituents are ‘unaltered by the hand of man,’ then a very large number of inventions become patent-ineligible. An artificial structure like an arch, formed by piling stones atop each other, would be ineligible unless the stones themselves were altered by the hand of man. Even as ardent a skeptic of the patent system as Justice Douglas would not have gone that far..”

    Justice Douglas’ comments in Cuno were reiterated in ~A & P where he said:

    “Every patent is the grant of a privilege of exacting tolls from the public. The Framers plainly did not want those monopolies freely granted. The invention, to justify a patent, had to serve the ends of science — to push back the frontiers of chemistry, physics, and the like; to make a distinctive contribution to scientific knowledge. That is why, through the years, the opinions of the Court commonly have taken “inventive genius” as the test. It is not enough that an article is new and useful. The Constitution never sanctioned the patenting of gadgets. Patents serve a higher end — the advancement of science. An invention need not be as startling as an atomic bomb to be patentable. But is has to be of such quality and distinction that masters of the scientific field in which it falls will recognize it as an advance.”

    Climbing into the mind of Justice Douglas in Cuno is a daunting task given the inconsistencies that appear on the face of his opinion. But his underlying reasoniing appears to have been that this was a mere advance in the packaging of inocculants, which fell into his “gadgets” category, especially if the discovery of non-inhibition was treated as a natural law and disregarded.

      1. Paul,

        “Inventive Genius” was clearly tossed out by Congress.

        Where then does that leave us, in your opinion?

        In your mind, can you see the Court clinging to something that Congress stripped from it?

        1. @Anon: I completely agree with you that this is a good reason for disregarding Funk. But it is necessary to remind the USPTO about the differences in the law because such things in the now quite distant past are easily forgotten.

          By the way, the USPTO indicated on the Friday forum that comments on the proposed guidance remain open until the end of June. EVERYONE WHO HAS CLIENTS WHO COULD BE ADVERSELY AFFECTED BY THIS GUIDANCE SHOULD SUBMIT COMMENTS. If we don’t do this and say what the guidance should be, we have only ourselves to balme if things come out wrong.

          1. Paul,

            Above, you state “Climbing into the mind of Justice Douglas in [Funk] is a daunting task given the inconsistencies that appear on the face of his opinion.

            While you expend some not inconsiderable energy exploring other avenues, one that you (still) leave out was the fact that Douglas represents an era of Supreme Court jurisprudence that was decidedly anti-patent of its own accord (witness the “only valid patent is one that has not yet appeared before us” quote).

            You cannot ignore this historical reference on your trip into the mind of the Justice that most exemplifies the instigator of the umbrage of Congress – especially if you want to fully understand the drivers of the 1952 Act, and the critical reformation of patent law 101 jurisprudence, the creation of 103 (and the deliberate choice NOT to use the word “invention” there), and the removal of authority of the courts to use the tool of common law evolution to define – in the 101 sense – what “invention” means as to patent eligibility

            The 1952 Act of Congress separating the concepts of patent eligibility and patentability is a critical distinction that those who would choose the tools of obfuscation and abject judicial activism would love to muck up. Abject judicial activism that flies in the face of the separation of powers doctrine is evident in Justice Douglas, just as it is evident in Justice Breyer and Justice Ginsburg (who apparently needs to be reminded again – and again – that 4 is not 5).

            1. …and just let me throw in one more Alice tie-in: we are on the cusp of a Supreme moment of judicial reckoning.

              The real question in the air is whether the Supreme Court will take responsibility for its decades long hijacking of authority from Congress (a Churchill moment) or will that Body of Nine abdicate the opportunity for some more Bilski-like patent “peace” for our time (a Chamberlain moment).

              Here is the paper…

              (follow the audio link containing a filtered out word at link to en.wikipedia.org )

    1. Paul, the “discarded” doctrine:

      Aggregation: All elements old. Each element familiar and doing its same function.

      If you want to attack the doctrine, put it down properly.

      The doctrine is still followed by the Supreme Court: see Sakraida v. Ag Pro, Andersons Black Rock, and KSR. It is not followed by the Federal Circuit who know better and who have overruled the Supreme Court according to Wikipedia and, now, of course, you.

      Advising the PTO to not follow the Supreme Court is interesting in itself, but if you are going to do it, at least describe the doctrine accurately.

      1. at least describe the doctrine accurately

        Coming from one of the persons who refuses to accord accuracy to the exceptions to the judicial doctrine of printed matter, the hypocrisy rings so loudly as to be deafening.

        How about it, Ned, are you ready to correctly, accurately, and with intellectual honesty give full credit to the legal reasoning that makes a critical difference in understanding that software is a manufacture in its own right, a machine component, and is equivalent to firmware and equivalent to hardware?

        If you want to attack the doctrine, put it down properly.” – same goes with exceptions to doctrines, my friend.

      2. Aggregation: All elements old. Each element familiar and doing its same function.

        Hmm, electrons, protons and neutrons, all elements old and each element familiar and doing its same function…

        Get the picture?

        1. electrons, protons and neutrons, all elements old and each element familiar and doing its same function…

          This is the dumbest thing to ever come out of your mouth. And that’s saying quite a bit.

      3. I was quoting another on the doctrine. But I have known of it for over 30 years and probably know more about it than you do.

        However, that is NOT the reason why Justice Douglas threw Funk out. The real reason was that in his opinion there was insufficient scientific advance and it was a mere improvement in packaging.

        1. Paul, let me beg to differ.

          Douglas rested his opinion on the doctrine of aggregation exactly as I stated it, not on some other test of invention.

          May I quote?

          “But we think that that aggregation of species fell short of invention within the meaning of the patent statutes.

          Discovery of the fact that certain strains of each species of these bacteria can be mixed without harmful effect to the properties of either is a discovery of their qualities of non-inhibition. It is no more than the discovery of some of the handiwork of nature and hence is not patentable. The aggregation of select strains of the several species into one product is an application of that newly-discovered natural principle. But however ingenious the discovery of that natural principle may have been, the application of it is hardly more than an advance in the packaging of the inoculants. Each of the species of root-nodule bacteria contained in the package infects the same group of leguminous plants which it always infected. No species acquires a different use. The combination of species produces no new bacteria, no change in the six species of bacteria, and no enlargement of the range of their utility. Each species has the same effect it always had. The bacteria perform in their natural way. Their use in combination does not improve in any way their natural functioning. They serve the ends nature originally provided and act quite independently of any effort of the patentee.” Funk Bros., 333 US at 131.

          1. If he rested his decision on aggregation why did he cite Cuno. As I have said, the decision is NOT straightforward to understand and opinions as to what was the true rule of law differ.

            1. Cuno 1941, Kalo 1948, A & P 1950.

              As well, Cuno has the same language as A & P and Kalo about combinations.

              From Cuno: “The principle of the Hotchkiss case applies to the adaptation or combination of old or well known devices for new uses. … citing cases.”

              “A new application of an old device may not be patented if the “result claimed as new is the same in character as the original result”

              Hotchkiss itself deemed the use of clay in the doorknob the work of ordinary skill because there was no new mechanical function performed by the combination.

              Cuno was a straightforward application of Hotchkiss. The hysteria was entirely political regarding Douglas. Flash of genius was not new, but in the cases. It implicated not the claimed invention but how an invention was made, and seemed to exclude long work on an invention. Thus the second sentence was added to 103 to clarify this.

            2. Paul, I believe Kalo stands for the proposition that in considering invention pursuant to 103 under today’s standard, that one must ignore laws of nature, etc.

              But, UNFORTUNATELY, 103 does not have such an exclusion in its bare language. The Supreme Court seems unwilling to impute one. Therefore, the analysis has to be strictly under 101.

              This, of course, is unfortunate, in my view. Had the crafters of 103 (Rich) been a tad bit more careful, they would have recognized that not all differences are material for consideration. But they were arrogant, yes they were. They were on a warpath, literally, against Douglas and crew — the enemy of the patent system from their view. That acrimony still echoes, because Rich kept it up after becoming a circuit court judge.

            3. Ned,

              It is infinitely more likely that the law as written simply does not match up with your agenda.

              The sooner you realize this, the sooner you can understand exactly who has been messing up the law.

            4. All of this discussion is very well, but WHY did Douglas throw the case out???

              If we know what his motives were, we can figure out the rule(s) of law that truly flow from his opinion.

              To figure that out you need to read the Kalo patent, the opinion below and the Supreme Court opinions. There is not much else to find as the first instance, as far as I can tell, was not reported.

              I have read the Douglas opinion many times trying to put my finger on it, but confess it is very difficult. Certainly it was not just collocation/combination. To the best of my understanding what was important to Douglas was that this was a packaging invention, not really of scientific importance. If you want to know what was the tipping point, it was not much more than that.

              If anyone else has a better tipping point, I would be glad to learn it.

            5. Paul, I think he might also have been influenced by the fact that the claim was functional, that any bacteria discovered and having the natural properties would be covered by the claim. The claim was too abstract.

            6. Ladders of abstraction, Ned…

              This concept applies to both functional language and non-functional language.

              Functional descriptions are allowed – what you (almost) seem to grasp here is why Congress (yes Ned, Congress) acted as they did with the 1952 Act to change the law and slap the Court down on the anti-patent views. Even Frederico noted that Congress acted against what the Court was doing with the Court’s writing of patent law in the area of claiming using functional language.

              All that you are doing is inserting your agenda against a form of claiming that has been determined by the branch of the government – the branch designated in the Constitution – to be legitimate.

            7. You seek to declare “Too abstract” and the irony is that you appear to be exactly like those that you would denigrate.

              Did you not blame Rader and the CAFC for the pre-cursor opinion of the Court’s Bilski opinion that mouthed “Too abstract” exactly as you have done here?

              What – to you personally – is the difference between “too abstract” and an acceptable level of abstraction? The entire concept behind the ladders of abstraction – which permeates ALL worthwhile patent claiming – is to be able to claim an invention broadly and not be overly limited by the only tool we can use to write claims. The art of every scrivener is measured by how well we can climb the ladders of abstraction to maximize the protection for our clients. That is our job. That is our ethical responsibility to our clients.

              Combine that with the legal edict that claims are to be read according to a person having ordinary skill in the art to which the invention pertains, and being informed by the specification, and keeping in mind the concepts of anthropomorphication and the exceptions to the judicial doctrine of printed matter, and you would (at elast should) realize that in particular art units, functional language blurs with structural language (screwdriver, anyone), and that such claims – being read per the law – are legitimate.

            8. But, UNFORTUNATELY, 103 does not have such an exclusion in its bare language. The Supreme Court seems unwilling to impute one. Therefore, the analysis has to be strictly under 101.

              This says far far far more than Ned realizes.

              Ned, do you realize the nose of wax addiction that permeates your statement?

            9. If we turn a blind eye to the highest Court in the land violating the constitution and the separation of powers doctrine by writing law (either explicitly or implicitly) when such means serves a desired philosophical end, where do we draw the line?

              How deep the rabbit hole of implicit?

              Bilski should have been a wake-up call. Stevens, in Bilski would have crossed that line from implicit to explicit.

              4 is not 5.

              The scary thing (and what should be scary to everyone that understands US law and our separation of powers doctrine) is that there are active members of the Royal Nine that would still violate the constitution and re-write the explicit words of Congress.

              The sad thing is that there are those charged with teaching law that see no problem with violating the doctrine of separation of powers, that actively implore a level of judicial activism in place of the accepted method of passing a law through the branch of the government charged with having the authority to write patent law – a charge strong enough that our Constitution, the US Supreme Law (as distinguished and as should be distinguished from the monitor of that Law), explicitly designated that power to write the law.

              WAKE UP PEOPLE.

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

          2. anon, do you or do you not believe that congress can constitutionally authorize one to claim a newly discovered product of nature or law of nature?

            Your answer to this question is critical.

            1. Critical for what, Ned?

              Certainly not critical to our discussion of the doctrine of separation of powers, right?

              Tell me Ned, do you believe that it is the Constitution that is the highest law in the land, or do you believe that it is whatever the Court feels like is the highest law in the land?

              (and yes, there is a very real difference between the two, notwithstanding Marbury – do you understand the critical nature of this difference?)

            2. (and I would add that this critical difference is evident in the fact that Congress can override a decision of the Supreme Court without enacting an amendment to the Constitution)

  5. I do not think that Roslin and Amgen are really as inconsistent as Dr. Lefstin argues. Roslin argued that their sheep could be different from natural sheep in that their sheep had different mitochondrial DNA then their forebears, but in the case of a female clone, there is nothing to stop one from using an egg and a nucleus from the same donor mammal, such that the resulting clone would have the same mitochondrial DNA as the parent sheep. In other words, although Roslin was arguing mitochondrial DNA as the difference, their claims read on clones who had the same mDNA as their mothers. The “difference” on which they were hanging their hat was only a sometimes difference.

    By contrast, even though Amgen’s claims did not mention the glycosylation, the glycosylation was inherently different from natural EPO by virtue of the cell line origin. I take MM’s point that maybe this fact should not impart any significance, because the claim still reads on the EPO even if you treat the EPO with a glycosylase. Still and all, I think that Roslin was not in an exactly analogous Amgen position.

    I really wish the Fed Cir would have decided this on 102 grounds instead of 101, so that we would have the absurd result that a clone of a pre-existing mammal is held to be a “product of nature.”

        1. AOOTWMD, Grumpy Cat.

          Your post is meaningless as you offer nothing but undirected opinion.

          Reminds me of the guy that used to post funny gifs, but would be way beyond his ken when he tried to comment on substantive law….

    1. G, if the case were decided on prior art grounds, the cloned animal would be at least novel. But how would one deal with 103? If cloning were known, implying a well know process, I assume a cloned animal is obvious because the only difference between the claimed animal and the prior art animal is the application of a well known process.

      1. Ned,

        If the language of cloning that comes with the language used in the claim doesn’t NOT include the subtle differences, then novelty MUST be gone.

        Your reasoning on this issue is just not well thought through.

      2. I think that Roslin’s claim is cleanly anticipated. MPEP 2131 notes that that the process limitations in a product-by-process claim do not impart novelty. When you are claiming a composition of matter (sheep) based on the method of manufacture (cloned), the resulting article–not just the method of making–needs to be novel.

        Here the resulting article is just a sheep. Sheep have been on sale in this country for more than one year, so Roslin’s claims are unpatentable under 102(b).

    2. Grz I really wish the Fed Cir would have decided this on 102 grounds instead of 101, so that we would [not] have the absurd result that a clone of a pre-existing mammal is held to be a “product of nature.”

      I put the word [not] in your quote because I’m pretty sure that’s what you meant to say ..

      But I think you understand that the court is not saying that Dolly the Sheep is a “product of nature”. Rather, the court is saying that the claim which the applicant drafted to protect Dolly reads on “products of nature”. Therefore, it’s ineligible. It’s seems a lot less absurd when you look at it that way…

      1. Dear MM

        I did omit a rather critical “not.” Thank you for correcting that.

        Justice Holmes rightly observed that “hard cases make bad law.” Decisions on section 101-grounds are almost always hard, and I think that it would be better policy to avoid them when possible. Indeed, this used to be the Fed Circuit’s preferred approach. MySpace v. GraphOn Corp., 672 F.3d 1250, 1261 (Fed. Cir. 2012). Unfortunately, Mayo declared that “[t]his approach… would make the ‘law of nature’ exception to § 101 patentability a dead letter” (132 S. Ct. at 1303).

        1. Decisions on section 101-grounds are almost always hard, and I think that it would be better policy to avoid them when possible.

          You sound exactly like Chief Judge Rader.

          (and nice to see someone else get the “dead letter” reference in Prometheus correct)

  6. The proper protection for a new method of copying something is a method claim.

    There is a deep problem with the “product of nature” exception to subject matter eligibility generally which is that human beings and everything they create are no more or less “natural” than anything else in the universe. The same physical laws apply to all non-abstract, non-virtual and non-imaginary objects.

    Put another way, it’s not clear to me why there should be a different analysis for examining a claim in view of an old “man-made” composition and an old “natural” composition. Both the old compositions are in the public domain. Why should it make any difference if one of the old prior art compositions was, at some point, altered in some minute way by the “hand of man”?

    1. human beings and everything they create are no more or less “natural” than anything else in the universe.

      You so do not understand the place of man as assumed in the basics of law.

      The hand of man is deemed special. Everything else – everything in the warehouse of nature is deemed differently. Whether or not “the same physical laws apply” is a non sequitur.

      Why should it make any difference if one of the old prior art compositions was, at some point, altered in some minute way by the “hand of man”?

      Not the right question. Hint: you seem to have misplaced your understanding of that critical word “effectively,” or your understanding of the phrase “different in kind” – just as you did in the Myriad discussions.

      1. Hint

        Learn to articulate your points in English. Nobody has time to play your silly games.

        The hand of man is deemed special. Everything else – everything in the warehouse of nature is deemed differently.

        Golly, that makes so much sense. Really informative.

        1. For someone who screeches for English, Malcolm, your post at 9.1.1 says absolutely nothing.

          As for time, you spend just a little and put aside your AOOTWMD and put forth a cognitive reply. That is, if you understand the basics of law to begin with.

        2. “Golly, that makes so much sense.”

          It’s an arbitrary distinction we’re making here MM, it isn’t supposed to make sense.

          1. ^ stumbles (yet again) with:

            It’s an arbitrary distinction… , it isn’t supposed to make sense.

            Just like Malcolm has his albatross of “intellectual honesty is not required,” 6 has his albatross of “law is subjective, entirely in the mind, and making up whatever is perfectly fine.”

            It is not.

            6 just does not understand how badly he does not understand the basic concepts of law.

            1. Anon, serious question, have you ever been a legislator, or otherwise in a position of writing laws? Even a mock position like in an model general assembly club in school or something like that? Ever been to a small time town council meeting? Or done a mock one where you’re in charge of making local ordinances?

              I’m going to go out on a limb here and say that you never have. Because half of what goes into making half the laws that are on the books are arbitrary distinctions between things that legislators have seen fit to make a law to force people into making. That’s one big reason why laws vary so much from country to country. Different legislative bodies draw those more or less arbitrary lines differently.

              Just a few examples, there are regulations governing wheel chair ramps for many types of businesses. They set forth many specific dimensions that must be met etc. etc. Many of those regulations are arbitrarily over the top to provide better safety (helping us get through our day to day). Many of those regulations are different one tiny county away. The people of both counties are more or less still very protected from bad wheelchair ramps even though the regs set by local statute are different.

              This is the same thing on a larger scale. The legislative branch (and to an extent the judiciary) is simply drawing an arbitrary line that they could draw elsewhere. They could put the hand of man or ape in the law if they felt like it. Or the hand of man or the flipper of dolphin. Or the hand of man or the product of trees. Again, it is an arbitrary distinction that suits our purposes to help us through our day.

              You seem to think you’re at the top of your game legally, (perhaps because of your OCPD) but you’re at the bottom of your game politically brosef.

            2. Your going out on a limb is wrong. But thanks for guessing ( I won several awards for legislative simulations back in my school days, leading my school to a perfect first place record).

              Your desire for injecting arbitrariness is (still) simply in the weeds.

              You are showing a fundamental lack of understanding of what law is by attempting to denigrate the hand of man/nature dichotomy. There is nothing at all arbitrary about this distinction – and you would not try to say otherwise if you were not so badly misunderstanding law.

              This is not a “policital game brosef” as you would have it. Your belief system is getting in your way again.

            3. “Your going out on a limb is wrong. But thanks for guessing ( I won several awards for legislative simulations back in my school days, leading my school to a perfect first place record).”

              You won awards? Who gives awards for that?

              “This is not a “policital game brosef” as you would have it. ”

              Keep on beliebin’ re re.

            4. The people that organize such events give those awards 6.

              I would have thought you were aware of that, as you reference the activities – don’t tell me that you were just pulling that out of your arse and were not involved in those things yourself. Do you even take a basic civics course in school?

              And you are doing that projecting thing again with the “belief” notion…

              You really don’t get how little you understand all of this, do you?

            5. “The people that organize such events give those awards 6.”

              But where? They don’t in my state of VA. The only “award” you get is being elected to the mock chamber.

    2. it’s not clear to me why there should be a different analysis for examining a claim in view of an old “man-made” composition and an old “natural” composition.

      Ah, I see what you did there.

      You tried to re-import a prior art aspect into 101. You retreated to conflation and obfuscation.

      You have not yet learned (or not yet accepted) that the exceptions in 101 are not time-dependent, as you would have in 102/103.

      You make the same mistake that Ned makes: the universe is not static. The irony being that it is you that follows a flat-earth, “conservative-Bible-thumping” type of closed-eye view of reality.

      Try to think of this in the following manner. Patent law is not meant to cover what man has not created, but can create (you appear to not want to see this most basic difference). Just because man can create something and even describe that something in perfect structure-only claim language, does not mean that that something escapes 101 nullification.

      If something happens in nature, then that something is removed from patent protection.

      Or flipping the time sequence, even if man does create something first, and only later is it discovered that the very same thing is provided by nature, then what was created by man falls out of what can be protected under the patent laws.

      The delicious irony here is that your view very much ends up with the same exact “ends” view as held by Gene Quinn: if man can make something, no matter if that something is made by nature, then a patent should issue for the thing made by man – just by different “means.”. The only difference of course, is that you want to kick up all kinds of dust and conflate 101 with the prior art aspects of 102/103, where Gene would draw some odd distinction that the identical item is somehow not identical based solely on who made it.

      As I have attempted to make the thought experiment easier for several posters, it is perhaps easier to follow the legal logic if, (like in Chakrabarty), the emphasis is not made on something living but rather, the emphasis is focused on something non-living.

      I was the first to provide a link to the story of the mineral putinsite. It is not surprising at all that the hypothetical I crafted about that mineral and its discovery went un-commented upon by you, Ned or any other poser who dabbles in 101 discussions. Only 6 – in his usual blundering ways – even made mention of the hypo (and 6 would not touch the merits of the hypo).

      If you want to post a comment in a meaningful way, say something remotely intelligent about that hypo.

      If you can.

      I will not hold my breadth waiting for you, as just like the Grand Hall experiment presaged the Nazomi case (in fact, exactly like that), the discussion that I have been a part of of these threads – in the pre-Myriad discussions asking you to discuss how you would enforce a patent on something, some item that is later found to exist in nature – only results in your refusal to actually give any answers on point to the items I present.

      We would ALL be better off if you all did not run away from what I say.

      But please, why not just throw up some inane trivial banter as you usually do? Why disappoint those in your small circle of echo chamber buddies who find your nothingness so enlightening, your banter so “swaggering”…

      After all, it is not as if you have any actual point to make do you? It is not as if you can say anything remotely attached to law or fact, that is not just pure “policy” driven, is there? All that you do, all that you can do, is pound the table.

      The empty wagon that is you clatters on.

      1. Just because man can create something and even describe that something in perfect structure-only claim language, does not mean that that something escapes 101 nullification.

        So we’ve been told.

        Who are you arguing with anyway? And why do you suddenly choose to genuflect before the Supreme Court on this subject but in every other 101 context you choose to whine about “judicial activism”?

        like the Grand Hall experiment presaged the Nazomi case

        LOL. Kookoo McPatentpants still choking on his own regurg.

        1. lol- there is no ‘sudden change’ in my views Malcolm.

          Come man, you just recently spent a full 4 hours and twenty minutes reviewing every one of my posts over the last couple of years, you must know this. Thus, the only reason that you would be so misrepresenting things is that you are LYING again.

          Or is that still (it’s so hard to tell the difference)

        2. “And why do you suddenly choose to genuflect before the Supreme Court on this subject but in every other 101 context you choose to whine about “judicial activism”?”

          That’s what I was wondering.

          1. As already mentioned 6, there was no “sudden” involved.

            I suggest that you actually read my posts for understanding rather than your usual tactic of looking for something to snipe about.

            1. When I wrote “suddenly”, I didn’t mean “for the first time ever”. I meant “without explanation”. I’ve definitely seen you chuck your exhaulted “principles” aside in the past when it suits you. There’s nothing new or interesting about that behavior.

              I’m just wondering what is the reason that, when discussing the ineligibility under 101 of so-called “man-made” products that are non-identical to so-called “natural products”, your focus shifts away away from your otherwise relentless haranguing over the 1952 patent act, nose of wax, founders this/founders that, courts can’t write patent law, it’s a map not a Monte Hall, etc.

              I’m not the only who’s noticed this.

            2. The warehouse of nature concept is more deeply embedded in what the patent laws were written NOT to protect.

              The distinction is easy to see.

              What is more interesting is that you would have the reverse – for an issue yousupposedly don’t care, about, you shed 30,000 plus mewling tears of QQ, and yet you would push for the wholesale denial of something else that so evidently exhibits the hand of man and is the pinnacle of modern innovation.

              That you want me to explain when it is you that should be explaining is just so typical of you and your AOOTWMD.

            3. The warehouse of nature concept is more deeply embedded in what the patent laws were written NOT to protect.

              It’s deeply embedded somewhere, that’s for sure.

            4. “The warehouse of nature concept is more deeply embedded in what the patent laws were written NOT to protect.”

              Oh, I guess that explains it. So the USSC is free to write patent law (instead of the congress) when the “concept” is “more deeply embedded in what patent laws were written NOT to protect”. The USSC has that power, under the constitution? That is your position?

              Of course when it comes to a “concept” that anon subjectively feels is “less deeply embedded in what patent laws were written NOT to protect” then that constitutional power the USSC has goes away.

              Riiiiight.

            5. “They are not free to write anything.

              What made you think that? Some more misunderstanding on your part, 6?

              I didn’t say they’re free to write anything. And there wasn’t anything that made me think that. And no, I didn’t misunderstand you to mean that or think that to begin with.

              What we’re discussing currently is what they actually did write and that you take issue with every week of your life. You might remember it is called the abstract idea judicial exception to eligibility.

              And me and MM don’t quite see why your opinion, as in anon’s (aka victor or whoever irl) opinion, as to whether or not a “concept” is “less deeply embedded in what patent laws were written NOT to protect”, should somehow affect the supreme court’s constitutionally granted authority to do what they have done. Or for that matter, setting you aside for a minute, we don’t see how anyone’s opinion on those matters, save for people in congress or in the USSC, should matter at all.

            6. “Maybe if you dropped the ad hominem and tried to discuss actual points of law, you might make just a little sense Malcolm.”

              He isn’t ad homining you anon. He’s simply commenting that your line of comments leads around in a big circle from our point of view. We observe them going around in a circle because you never address what specifically it is that magically gives them authority when you, anon, subjectively feel like a concept is “more deeply embedded in what patent laws were written NOT to protect” and what magically takes that authority away when you, anon, subjectively feel like the “concept” is “less deeply embedded in what patent laws were written NOT to protect”.

              Obviously, in the USSC’s subjective opinion all of the judicial exclusions are concepts that are “more” deeply embedded so to speak. So then what distinguishes them having the power to take action in the two situations other than your subjective opinion on how deeply embedded a concept is in what patent laws were written NOT to protect? You never help us out at that juncture. To us, as mere observers, it appears they do have the authority because the only reason you say they don’t is your subjective opinion on whether or not they do due to your subjective opinion of how deeply embedded concepts are so to speak. And to be clear, your subjective opinion isn’t what grants of authority from the constitution hinge on.

            7. You are doing that projecting thing again – this time with the “subjective law” angle.

              Have you discussed this obsession of yours with your doctor yet?

            8. “You are doing that projecting thing again – this time with the “subjective law” angle.”

              We’re telling you how it appears to us, as outside observers of your statements anon. If you are not taking a “subjective law” angle in your position then by all means, set us straight and tell us what specifically is objective about your position and how it is objective rather than objective.

            9. Sorry typo:

              “You are doing that projecting thing again – this time with the “subjective law” angle.”

              We’re telling you how it appears to us, as outside observers of your statements anon. If you are not taking a “subjective law” angle in your position then by all means, set us straight and tell us what specifically is objective about your position and how it is objective rather than subjective.

            10. I understand full well what you are trying to do 6.

              You really do not f00l anyone.

              (it is NOT I with the view that all law is merely subjective views – that would be you and would be your primary mistake)

            11. “I understand full well what you are trying to do 6.

              You really do not f00l anyone.

              (it is NOT I with the view that all law is merely subjective views – that would be you and would be your primary mistake)”

              I’m not trying to fool you or anyone else anon. And I know that what you just stated is not your view. We’re simply wondering what your objective basis is. If you don’t want to tell us, or cannot tell us then fine.

            12. 6,

              Your posts are most odd, as my objective basis has always been present: the law and the facts I share.

              Rather, it is you and the likes of Malcolm that post without regard to what the law is (note Malcolm’s dissembling with the exceptions to the judicial doctrine of printed matter) and facts (such as software is a manufacture and machine component, equivalent to firmware and equivalent to hardware).

              It is you that depends upon your version of law being a subjective, totally in the mind, make up whatever thing in order for you to defend your actions on this blog, twisting and spinning without care as to veracity or reality.

              As far as telling anyone anything, you need to pay attention to just who runs away from the conversations, just who does not answer the points and counterpoints raised.

              (you are doing that delusional thing again)

            13. “Your posts are most odd, as my objective basis has always been present: the law and the facts I share.”

              Well perhaps you can reiterate those for us here. Because from what I recall, and I take it what mm recalls, that “law” and “facts” would, if your position regarding merely law and facts (not counting your subjective opinion about how more or less deeply embedded certain concepts are) were to be adopted, ultimately result in the USSC not having authority to put in place the judicial exceptions to laws of nature and natural phenoms. Maybe you can help us further understand how your take on the law and facts that you might reiterate for us leads us to the position you ultimately arrive at. Maybe you could even accomplish this without resorting to utilizing your subjective opinion about how more or less deeply embedded certain concepts are. It’s a possibility that this could occur.

              This whole conversation is today about your writings way up appearing upon perusal to be stating that you ultimately appeal to your subjective opinion on how more or less deeply embedded certain concepts are rather than solely the facts and law you’ve previously blustered on and on about endlessly. That’s why MM thought you were saying something new today you haven’t said in the past. You seem to have shown us that, ultimately, whether or not you think the supremes would have authority over the matter depends on how more or less deeply embedded certain concepts are. You then judge, for yourself and for everyone else, that certain concepts are less deeply embedded than others and thus would say that the supremes do not have authority over those matters (like implementing judicial exceptions) that result from those concepts (like natural phenom/natural laws not being eligible).

              That’s fine if that is your position. It’s an admirable position to take, that certain concepts are more deeply embedded than others. But that is ultimately a subjective call for judges to make, and they made it. You see the results.

              ___________

              “Rather, it is you and the likes of Malcolm that post without regard to what the law is (note Malcolm’s dissembling with the exceptions to the judicial doctrine of printed matter) and facts (such as software is a manufacture and machine component, equivalent to firmware and equivalent to hardware).

              It is you that depends upon your version of law being a subjective, totally in the mind, make up whatever thing in order for you to defend your actions on this blog, twisting and spinning without care as to veracity or reality.

              As far as telling anyone anything, you need to pay attention to just who runs away from the conversations, just who does not answer the points and counterpoints raised.

              (you are doing that delusional thing again)”

              Yeah yeah we know we know, we’re the worst evar. I’m going to disregard your going off topic to try to derail the conversation about just what your position is if that’s ok with you. Because that is the only thing of interest here to me.

            14. 6,

              Read the third paragraph of 9.2.1.2.1.15.

              Read it slowly.

              Try to understand it.

              Your post at 9.2.1.2.1.16 just proved my point for me.

              Thanks.

            15. “6,

              Read the third paragraph of 9.2.1.2.1.15.

              Read it slowly.

              Try to understand it.

              Your post at 9.2.1.2.1.16 just proved my point for me.”

              Anon you can talk about me and my supposed subjective viewpoint or whatever you want about me. And that’s fine. But that’s just deflecting from what your actual position is. We’re just trying to learn what your actual position is. If you don’t want to further expound upon that then fine.

              From our point of view you’ve stated something new about your position today. It involves certain concepts being either more deeply or less deeply embedded. Now, that’s 100% fine. But to us, that appears to just be a subjective call that was made by the courts eons ago.

              Now, if in your next reply you try to deflect, yet again, from talking about what your position is, onto something about me, no matter what it is, then fine, but this conversation is over. I’m discussing you, and your position tonight and that’s it.

            16. “Lovely AOOTWMD 6 – the one who is perpetually projecting accuses others of reflecting.”

              Ok so you only want to discuss me rather than your position. Cool. Discussion is over then.

            17. You do not seem to understand (nor care) that discussion was never on, given your obsession with projections, 6.

              Your gamesmanship is rather transparent.

      2. The delicious irony here is that your view very much ends up with the same exact “ends” view as held by Gene Quinn: if man can make something, no matter if that something is made by nature, then a patent should issue for the thing made by man – just by different “means.”

        That’s not my view at all so your “delicious irony” is probably just the taste of your foot.

        1. you have the taste of my foot in your mouth…?

          I am going to have to be more careful of what I do with my discarded socks then….

        2. That’s not my view at all

          Yes Malcolm, we are all aware that you are clenching tight your eyes and making up “your view” in your head, a view that is simply disassociated from this reality.

          You really do picture yourself at the edge of that rye field, don’t you?

    3. I mostly agree with this. I would rather lack of novelty or obviousness rejections be used in most cases than 101.

      1. That’s pretty d@mm funny Ned.

        Seeing as Malcolm speaks only in ad hominem (what you call swagger) and avoids actually presenting any law or facts.

        He does, however, largely align with your agenda (there’s that “6-is-an-Einstein-because-he-agrees-with-me” thing again).

      2. Ned, like you, I am keen to read what MM contributes. He is provocative and funny, can see the core issues for discussion and will keep us focussed on them.

        I am not chem/bio but he is. If he and I disagree, it will likely be on the patentability of engineering subject matter, the arts where knowledge of the invention gives hindsight that allows the argument that it was predictable and therefore was obvious.

        Incidentally, over on the Watchdog blog I just had a nice discussion with American Cowboy about the obviousness of the Slide to Unlock invention. I suppose MM would think it plainly obvious. I not.

        1. I am keen to read what MM contributes.

          It is no surprise that the man with 6 month’s experience repeated 80 times is keen to read the same vapid material repeated so often from Malcolm’s short script – and yet, refuses to truly engage in in-depth discussions that may cast a shadow over his own propaganda postings.

          Is anyone surprised?

        2. I just had a nice discussion with American Cowboy about the obviousness of the Slide to Unlock invention. I suppose MM would think it plainly obvious.

          Plainly obvious or plainly ineligible.

          There are no “call old signal something new” “inventions” that merit patent protection. Call it “swipe to unlock” or “push up to arouse” or “empty the catbox to clear” or anything else. Promote the awesomeness of it to your heart’s content, in any way that you can you imagine. That kind of garbage doesn’t belong in the patent system. It’s the road to ruin. It’s the road we’re on. Of course, if you’ve got money to spend then by all means capitalize on the broken system before it’s fixed. Who doesn’t want to be an Internet millionaire after all? Some law firm partner’s wife is thinking up some stuff right now as she drinks her gin and tonic by the pool. Surely she deserves a shot at the bigtime, right?

            1. Maybe today you could. But it used to be people would invent stuff that was structurally distinct from the prior art, rather than simply the re-naming of a signal or the content of stored data.

            2. well Lionel, that’s pretty slow and fat softball right down the middle of the plate….

              Some cDNAs have extensive structural changes with many introns removed from the sequence, and importantly as noted in the Myriad case, some shorted cDNAs may still effectively be as what is present in nature (and thus not qualify as patent eligible material).

  7. JL a source limitation alone (such as ‘non-naturally occurring’ or ‘purified from mammalian cells grown in culture’)

    A couple points. First, “purified from mammalian cells” is more than just a “source limitation”, or can easily be construed to mean more. That’s because (when expressed properly) the purity of a composition is a physical description of that composition. “Magnesium composition purified from a magnesium-arsenic mixture” is likely going to be construed more narrowly than “magnesium composition obtained from a magnesium-arsenic mixture.” (note: I’m not suggesting either phrase is legally definite).

    1. As the end of the day, “source limitations” like “non-natural” or “recombinant” or “synthetic” are just verbal shoe polish. It’s no different than if you put the word “novel, non-obvious, enabled, and eligible” in all of your claims. Are courts supposed to give those terms weight, too, when determining what is or is not within the scope of the claim?

      1. just verbal shoe polish.

        Maybe – but critically, maybe not.

        The point of the matter is that you cannot turn a blind eye and pretend that words are not in the claim.

        1. The point of the matter is that you cannot turn a blind eye and pretend that words are not in the claim.

          Turning a blind eye? Is that a legal term?

          Tell everyone what happens when a composition claim recites the words “novel, non-obvious and enabled.” What is an Examiner supposed to do with that “limitation”?

          1. Tell everyone….

            Can we move the goalposts back to those terms of art under discussion that actually may mean something in the pertinent arts?

            Thanks (and please leave your strawman at the door)

            1. The goalpost is right where you left it: “The point of the matter is that you cannot turn a blind eye and pretend that words are not in the claim.”

              Do you wish to revise your statement? Or does it only apply to some words and not others, according to a rule that you’ll never share with us?

            2. The goalpost, as I left it, includes some rather important other words that go along with that statement.

              You know, words like in the arts to which the invention pertains and in light of the specification.

              Words that Prof Rantanen and Prof. Lefstin have had no difficulty at all following.,

              It only seems to be you that is having this difficulty with he English language and with patent basics.

              Go figure.

            3. Lovely AOOTWMD – you say keep digging, but it is you that holds the shovel.

              So once again move the goalposts back to what I actually said.

              Thanks.

    2. the purity of a composition is a physical description of that composition

      Is “physical description” more like structural description? is it dependent on the person having ordinary skill in the art to which the invention pertains?

      1. Is “physical description” more like structural description?

        Relative to what?

        is it dependent on the person having ordinary skill in the art to which the invention pertains?

        What is the “it” you are referring to?

        1. Hey, I am just trying to figure out what you are saying and how what you are saying fits in with your “structure” mantra.

    3. Last attempt to get this through the filter:

      Second, source limitations should generally be given little weight in composition claims because they do not describe the structure of the composition. Unless the claim is a closed product-by-process claim (something I’ve yet to encounter), any structure that might have “inherently” flowed from the source into the claimed composition can be removed by some unrecited process elsewhere in the claimed composition’s “history”.

      1. Source limitations should generally be given the appropriate weight in composition claims (or any claims) that the person having ordinary skill in the art to which the invention pertains takes from the term, as informed by the specification.

        No more.
        No less.

        You seem to want to act like this is some great calamity or mystery. This has nothing to do with any such notion of “closed product-by-process claim” and everything with how to just apply normal understanding to claim construction.

        The sky is not falling Malcolm.

        1. Using bold text does not change self-serving meaningless gobbledygook into a “point” worth trying to understand.

          Nice try, though.

          1. What part of that was “gobbledygook” to you, Malcolm.

            After all, that is basic patent law, so please, do let everyone know what exactly it is about basic patent law that you just cannot seem to get a handle on.

            1. What part of that was “gobbledygook” to you, Malcolm.

              Easy: “appropriate”

              You might as well say that the law is “construe the claim the legal way.”

              Pick some straightforward examples close to the fence and tell everyone what you believe is “appropriate” based on this “basic law” of yours.

            2. “Appropriate” is an appropriate word, as different words mean different things for different art fields – all of which is reflected in patent basics of PHOSITA.

              Again – the sky is not falling Malcolm, although this does appear to unnerve you just as the word “effectively” unnerved you in the Myriad case…

  8. JL under Amgen, a source limitation alone (such as ‘non-naturally occurring’ or ‘purified from mammalian cells grown in culture’) may establish novelty of a product.

    This is a claim construction issue. Either the limitations are in the claim or they aren’t. You don’t “establish novelty” merely be argument that “it must be different.” The specific differences need to appear in the claim (either expressly, or as construed).

    Roslin tried this tactic and the argument was correctly shot down. Technically speaking, nothing except the simplest of copied compositions/articles is going to be “identical” to the original composition. That’s not what “novelty” is about. It’s about the claimed invention and the relationship of that claim to the prior art.

    1. You don’t “establish novelty” merely be argument that “it must be different.”

      Funny enough standing on its own.

      1. Funny enough standing on its own.

        I’m sure that Roslin isn’t laughing. As already noted, they tried this tactic and the CAFC rightfully shot them down.

  9. Does US patent law on obviousness recognise the distinction between a mere “collocation” (that is to say, a juxtaposition) and a synergistic “combination” that delivers something more than the mere arithmetical sum of its parts.

    The classic English patent case is Williams v Nye from 1890, usually adverted to as the “sausage machine” case. What is the classic US case?

    1. Max, the whole topic is extensively discussed in Jackson’s 1950 opinion in A. & P. TEA CO. v. Supermarket Corp., 340 U.S. 147, 71 S. Ct. 127, 95 L. Ed. 162 (1950). link to scholar.google.com.,+340+US+147&hl=en&as_sdt=2006

      1. Great Ned – another pre-1952 case…

        If you are going to talk about a section of law created in 1952, you really do have to support that with a case cite after 1952.

      2. Ah yes Ned, the case of the supermarket check-out 3-sided frame used like a croupier’s rake. I still remember seeing those in operation when I was younger. Pretty good invention, I would have thought. What it achieved was “predictable”, fair enough. But is that enough to prove that it was “obvious”? Surely not!

        The 1890 Williams v Nye English case was a claim to a sausage machine that featured a specific (but old) mincer upstream of a specific (but old) sausage skin-stuffer. Each of the two stations was simply doing what it conventionally did. The collocation of the two could not be shown to be old but, sorry, it was not inventive.

    2. MD: Does US patent law on obviousness recognise the distinction between a mere “collocation” (that is to say, a juxtaposition) and a synergistic “combination” that delivers something more than the mere arithmetical sum of its parts.

      Of course. A combination “invention” where each of the combined old elements does does nothing more than what it was known to do in the prior art is prima facie obvious. See, e.g., the many examples where obviousness was found here (Section A): link to uspto.gov

  10. An example may help illustrate the problem with “source limitations”.

    Consider: 1. A hypogloculously cloned sheep embryo.

    Let’s say that this imaginary cloning method produces sheep embryos which differ from those made by “natural sheep” by having a single molecule of dextran on its surface. Also, it’s possible to remove dextran from embryos, generally, and also possible to add dextran to embryos, generally.

    Let’s say you give me two sheep embryos and one has dextran on its surface and the other doesn’t. How do I know whether one or both or neither of these embryos infringes the above composition claim (emphasis on the term “composition”)?

      1. I don’t see any “strawman.”

        I’m illustrating the problem with defining “new” compositions by their “source.”

        Perhaps you can explain to everyone how you would answer the questions. I think they are difficult to questions to answer. That’s the point of the illustration.

        1. explain to everyone how you would answer the questions.

          Asked and answered many times now Malcolm.

          Pay attention.

          Claims are read (every word) with the understanding of a person having ordinary skill in the art to which the invention pertains as informed by the specification.

          This is basic stuff. Why are you having such a difficult time with it?

  11. ” obvious applications of scientific discoveries or abstract ideas are not patent-eligible “inventions” within the meaning of the statute.”

    sounds more like 103 than 101?

    1. Funk was interpreting the word “invention” in (what was then) 101. In 1952 Congress amended the statute and clearly wanted to get rid of “invention” as a patentability standard, and enacted 103. If you don’t pay attention to what word was being interpreted, you’ll fail to recognize that Funk Brothers is bad law — overruled by Congress in 1952.

      Chief Judge Rader’s CLS Opinion makes a lot of these points. Funk Brothers was pre 103.

      1. Yeah, and the Federal Circuit also overruled Sakraida v. Ag Pro, Anderson’s Black Rock, Graham v. John Deere’s holding on “claim as a whole” and now KSR based on its own interpretation of 103.

        And when Rader relied on the Supreme Court’s dicta in Diehr to say in CLS Bank “To understand these provisions in context, the Supreme Court has advised that the “new” requirement in Section 101 is now governed by Section 102. Diehr, 450 U.S. at 189, 101 S.Ct. 1048; see S.Rep. No. 82-1979, at 6 (1952) (“Section 102 … includes, in effect, an amplification and definition of `new’ in section 101.”), to essentially read “new” out of 101 despite the fact that Flook relied on “new” as did Myriad for its holdings, what are we to think?

        David, without “new” there is no statutory prohibition on claiming newly discovered products of nature. They are not in the prior art. Thus, neither an examiner nor a court could hold such a claim unpatentable under the statutes regardless of 103.

        On the whole, Rader’s opening premise is illogical, wholly unsound and contrary to controlling precedent. It is based on his personal read of the statutory framework. But if one adopts his approach, there remain no impediment whatsoever to claiming products of nature, laws of nature, printed matter, music, business methods, math, or any subject matter of such ilk that are demonstratively not the stuff of patents per the constitution and case law up until ’52. The proposition that Congress intended more than a tweak to novelty over the prior art, the very words of 103, but instead that it intended to allow the patenting of completely bizarre subject matter, is a proposition that does not deserver serious consideration.

        1. The proposition that Congress intended more than a tweak to novelty over the prior art, the very words of 103, but instead that it intended to allow the patenting of completely bizarre subject matter, is a proposition that does not deserver serious consideration.

          It’s certainly the case that the folks who screech most about the glories of the 1952 act are incapable of having a serious discussion about what sort of claims should or should not eligible for patenting. It’s like the third rail for them.

          Gee, I wonder why.

          1. incapable of having a serious discussion

            LOL _ says the person to whom “serious discussion” – since this is a blog – includes intellectual dishonesty.

            Malcolm FAIL.

        2. Ned you are so thoroughly wrong that I do not now where to begin.

          So I won’t. It is simply easier to remind you that 101 is NOT a prior art driven item, and that business methods have been granted by the Patent Office throughout the lifetime of the Office.

    2. ” obvious applications of scientific discoveries or abstract ideas are not patent-eligible “inventions” within the meaning of the statute.”

      sounds more like 103 than 101?

      103 is incapable of dealing with claims that rely on non-obvious but ineligible subject matter (e.g., new “discoveries” or non-obvious mental steps) for their patentability.

      It was the repeated attempts to protect ineligible subject matter (e.g., non-obvious thoughts) by tacking such ineligible subject matter onto old, obvious (but eligible) subject matter that led to the Supreme Court’s decision in Mayo (and prior to that, it was Breyer’s realization of this gaping hole in the law as expressed in his LabCorp dissent).

      103, of course, has another serious flaw (the result of “judicial activism”) whereby applicants can “rescue” their obvious junk by submitting post-filing data of which they were unaware at the time of filing, and/or by carefully collecting licenses to “prove” that their obvious junk isn’t really obvious junk because, “hey, licenses.”

      1. 103 is incapable of dealing with claims that rely on non-obvious but ineligible subject matter (e.g., new “discoveries” or non-obvious mental steps) for their patentability.

        One big WAH for you.

        The plain fact of the matter is that the law was changed in 1952. Patent eligibility and patentability are separate concepts. Get over it.

        1. Patent eligibility and patentability are separate concepts.

          In fact, they are closely related concepts and it’s impossible to keep them “separate” for all the reasons we’ve discussed here for years.

          But go ahead and keep pretending otherwise. Judge Rich tried that. He failed miserably.

          1. LOL -so decrees the RQ/HD that conflation is the order of the day (despite what the Court warned against 9-0 dance a jig baby in Prometheus)

            D’Oh ! (said in the best Homer Simpson tones)

            1. despite what the Court warned against 9-0 dance a jig baby in Prometheus

              Kookoo McPatentbutter once again shouting his gibberish at the sky. How many years has this been going on?

              Sad.

            2. What is sad is how you cannot seem to gather enough wits and command of your vaunted “English as a First Language skills” to do anything not on your short script of vapid comments.

    3. and the claims should have been rejected under 112 (disclosure does not support claims of that breadth ) instead of 101?

  12. JL: But just as many combinations of old elements become patentable when a new function emerges, the mixed inoculants of Funk would have been patentable — even if the bacteria remained unchanged — had the mixed inoculant acquired new functions not performed by its constituent bacteria. If Funk Brothers instead stood for the proposition that a combination is unpatentable if its constituents are ‘unaltered by the hand of man,’ then a very large number of inventions become patent-ineligible. An artificial structure like an arch, formed by piling stones atop each other, would be ineligible unless the stones themselves were altered by the hand of man. Even as ardent a skeptic of the patent system as Justice Douglas would not have gone that far.

    Very well put and worth remembering.

    1. MM, on new functions of combinations of old elements: that was the basis for denying patents in A&P, Sakraida and Anderson’s Black rock.

      But, as we learned from Wikipedia, the Federal Circuit overruled those cases in favor of TSM.

      KSR put this Federal Circuit nonsense to behind us. Combinations must demonstrate new functions, so called synergism, in order to be patentable. Otherwise, the combination is a mere aggregation and obvious.

  13. Indeed, Michael, the guidelines and Roslin are inconsistent with Myriad to the extent that if the claimed composition is structurally distinct that there still must be, in addition, a demonstration of markedly different characteristics.

    1. The converse might also be true — that if the claimed compound is structurally identical, that it cannot be rendered eligible by demonstrating some markedly different prosperities that are unclaimed.

      1. Ugh! Anon, inherency is a prior art issue. Unclaimed properties, structure, processes, sources, ect. cannot server to distinguish the invention.

        Where do you get these ideas?

        1. …and no one is saying anything about “unclaimed.” Words in a claim are to be given their understanding as read by persons having ordinary skill in the art to which the invention pertains. If – according to PHOSITA – a word carries with it the inherent properties, then the word – as claimed – has those attributes.

          Move the goalposts back.

          Thanks.

          1. I’m sorry, anon, but if the well known meaning of a term includes certain structure, such as in a screw has threads, then the subject matter is claimed.

            What I took you to mean is a that a coined term can be construed for patentability purposed to include unclaimed structure, composition, property, processes and the like. I am sure you did not intend you remarks to go so far.

            1. I’m sorry, anon, but if the well known meaning of a term includes certain structure, such as in a screw has threads, then the subject matter is claimed.

              Why are you sorry? You are now saying what I said in the first place.

            2. you do know what the word “inherency” means in patent law, right?

              Seems that you are the one having the most difficulty articulating what the word “inherency” means.

            3. Ned,

              As Dr. Lefstin characterizes Prof. Rantanen’s prior post: “ raised the question of whether the Federal Circuit paid insufficient attention to the inherent differences conveyed by the ‘clone’ limitation of the claims.

              And yet, Ned and Malcolm only see the red cape of ‘anon says.’

              Guys – pay attention.

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