Guest Post by Robert R. Sachs of Fenwick & West LLP; Read Part I and Part II.
Patent attorneys are trained to draft claims using clear and precise language, and in particular to not rely upon relative terminology to define an invention–terms like “about,” “substantially,” “superior,” “better,” “good,” “sufficient” etc. See, Manual of Patent Examination Procedure (MPEP), § 2173. After all, claims are definitions and indefiniteness is fatal.
So when the Court articulates expresses what is ostensibly a rule of analysis—a definition of what is patentable—patent attorneys naturally look for precision and clarity. Alas, we find a jumble of relative terminology and conclusory statements masquerading as legal reasoning. Consider the following samples:
The question before us is whether the claims do significantly more than simply describe these natural relations. To put the matter more precisely, do the patent claims add enough to their statements of the correlations to allow the processes they describe to qualify as patent-eligible processes that apply natural laws? We believe that the answer to this question is no.
[T]hose steps, when viewed as a whole, add nothing significant beyond the sum of their parts taken separately. For these reasons we believe that the steps are not sufficient to transform unpatentable natural correlations into patentable applications of those regularities.
The Court has repeatedly emphasized this last mentioned concern, a concern that patent law not inhibit further discovery by improperly tying up the future use of laws of nature.
What is “significant” or “enough” or “sufficient?” What would be “properly tying” up future uses? It is “not enough” to say that what’s in Prometheus’s claim is “not enough,” especially when, at the same time, the Court makes sweeping statements that the presence of “entirely natural processes” indicate that the patent recites a “natural law.” These various statements or criteria are not functional tests—they are conclusions and nothing else. This leads us to the next problem.
So Long Technology, Hello Business Methods!
The Court pays lip service to the principle that “all inventions at some level embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.” Indeed, any invention in the “hard sciences” of electronics, physics, chemistry, biology, engineering, etc. would perforce comply with the laws—or more properly—descriptive paradigms of the domain. An invention for a new electronic circuit clearly operates according to Maxwell’s equations. An invention for a new way of making a chemical compound necessarily recites steps that in essence are nothing more than chemical reactions—laws of nature in the Court’s book.
Let’s take a look the core of the Court’s analysis of the Prometheus claim and see what happens when we transport it to the domain of electronics, to a simple device such as loudspeaker:
Prometheus
While it takes a human action (the administration of a thiopurine drug) to trigger a manifestation of this relation in a particular person, the relation itself exists in principle apart from any human action. The relation is a consequence of the ways in which thiopurine compounds are metabolized by the body—entirely natural processes. And so a patent that simply describes that relation sets forth a natural law.
A loudspeaker
While it takes a human action (the activation of the amplifier) to trigger the output of the sound from the loudspeaker in response to an electrical signal, the relation itself exists in principle apart from any human action. The relation is a consequence of the ways in which electrical impulses are converted to mechanical movement—entirely natural processes. And so a patent that simply describes that relation sets forth a natural law.
There are—or should I say, were—by my estimate, approximately 10,000 patents on various types of loudspeakers. This is only one example, and a trivial one at that. A similar example could be constructed in any field of technology. And if that is the case, then no patent is immune from this line of attack. Well, no patent except one for a business method.
Business methods, being entirely the province of arbitrary human behavior such as advertising, finance and the like, are the one class of inventions clearly not based upon or using laws of nature and natural phenomenon. Yes, all inventions comply with the law of thermodynamics, etc., and perhaps all human behavior could be explained if we truly could model the regularities that govern the behavior of all fundamental particles, and as result we divorced ourselves from a persistent macro-phenomenon as free will and consciousness. If we get that far, then we will have a more difficult problem on our hands, whether we can patent non-obvious applications of those laws. Whether these methods are “abstract ideas” is another matter—but as should be clear from the above, it is my view that a method used in a business is not an abstract idea. If you can sell it, it’s patent-eligible.
Should this thread be renamed “Punishing Ned Heller”?
Thanks!
I enjoyed reading your comments and your analysis of this case. However, regarding your numerous comments, although I enjoyed reading them and although I think you are essentially correct (the Supreme Court’s line of “reasoning” has much to be desired), I do not think that the Supreme Court is listening in any serious way, and so (other than the emotional release – which feels great) I wonder what these sorts of critiques of the Supreme Court accomplish, at least in the short run, if anything.
Ned,
Multiple comments posted on your beatdown thread that are not addressed in reply to you.
Don’t want you to miss a moment’s worth of fun here.
“There is a clear and logical distinction between the discovery of a new variety of plant and of certain inanimate things, such, for example, as a new and useful natural mineral.” (emphasis added)
I guess that the Supreme Court and Congress was not clear and logical enough for the great Mr. Ned Heller.
I wonder why he refuses to see the distinction. This is not his usual paid position.
Seeing him try so hard to spin the evidence is amusing and quite disturbing at the same time.
Should someone point out to him that the dicta here addresses front and center his “new and useful” position and denies it directly?
Perhaps after someone explains to him the actual holding in In re Bergstrom (still must have change in kind from that which is in nature): “At the outset we would observe that what appellants claim — pure PGE2 and pure PGE3 — is not ‘naturally occurring.’ Those compounds, as far as the record establishes, do not exist in nature in pure form, and appellants have neither merely discovered, nor claimed sufficiently broadly to encompass, what has previously existed in fact in nature’s storehouse, albeit unknown, or what has previously been known to exist.” (emphasis added). Does he not understand what the reference to nature’s storehouse means? That nature’s storehouse is directly related to those things free to all men, patentable to none?
Further, it appears that in light of Prometheus the slender thread that Ned hangs from with such great weight has been snipped by the three sisters:
“Moreover, whether the claimed pure materials have the same usefulness or assortment of properties as the impure materials of the prior art, as the board here found, is a question having no bearing on the factual and legal matter whether pure materials are new vis-a-vis impure materials within the meaning of § 101, although it is but one of the factors to be considered in determining their obviousness under 35 U.S.C. § 103. In re Cofer, 354 F.2d 664, 53 CCPA 830 (1966). ”
Prometheus clearly does away with any distinction from 101 and 102/103.
It has been noted that in Rich’s defeat on this position, so too goes Ned Heller to defeat. To be aligned with his nemisis, and that on the losing side, places Ned in a situation that he cannot win but lose.
And lose he does. Badly. Someone posted: No matter how you slice this, Ned loses.
Quite true. And more than that, his legal tactics exposed as the charlatan house of cards that they be, leaves a distinct “must shower” feeling to me as an advocate.
And I thought I was rough on Ned with my three questions…
OUCH.
Products of nature and inherency to defeat the 102 “newness” principle:
– from Lemley & Burk 47 Wm. & Mary L. Rev. 371, various, (conclusion not carried through).
But inherency is all about hindsight-a recognition today that an invention was present in the prior art, even though it was not understood to be there at the time.
The symmetric nature of inherent anticipation and inherent infringement liability is apparent in the Federal Circuit’s opinion in SmithKline Beecham Corp. v. Apotex Corp., in which the court held that inadvertent production of trace amounts of a pharmaceutical compound may constitute infringement of a claim unambiguously drawn to that compound. Indeed, an accused infringer’s inability to detect such traces of the claimed compound is irrelevant to the infringement inquiry. (The which infringes later is not new before) The opinion underscores the resonance with § 102 by extending this analysis to hold that, by the same token, the inventor’s inability to detect such traces of a structurally claimed compound more than a year prior to the date of filing a patent is no bar to the application of the inherency doctrine.
Almost sixty years ago, in Funk Bros. v. Kalo, the Supreme Court relied upon this exception to invalidate a patent drawn to a mixture of bacteria beneficial to root nodules. 164 Although the bacteria in the mixture [*405] were specifically chosen for their properties of infecting various types of nodules without interfering with one another, the Court reasoned that the bacteria in the mixture acted in precisely the same way that they did in nature, precluding a patent claim on the basis of their natural characteristics.
This rule was established in the famous Learned Hand opinion in Parke- Davis v. Mulford, which held that adrenaline salts were not products of nature, despite having been drawn from human adrenal tissue, because the claims were directed to a purified and isolated form of the substance that was not found in nature and had significant advantages over the naturally occurring product.
these inventions are in some sense inherent in the natural world and that a biomolecule or other substance ubiquitous in living organisms is already in the “possession” of the public.
Why does Ned feel that In re Bergstrom saves his bacon?
Even under 102, “new” must be new in kind over what exists in nature.
Products of nature are still not considered “new” under 102. How can they be? If something is in nature, than man did not invent it.
Discovery alone is not enough. Every decision put up on this thread has turned on the something more to turn what is in nature to something “new” under the patent statutues. Every single one. Ned keeps on asking for a single case. Why? Every case goes against what he wants to believe.
There isn’t a single one that allows a patent on an item that is effectively what it is in nature.
Why does Ned feel that In re Bergstrom saves his bacon?
Even under 102, “new” must be new in kind over what exists in nature.
Products of nature are still not considered “new” under 102. How can they be? If something is in nature, than man did not invent it.
Discovery alone is not enough. Every decision put up on this thread has turned on the something more to turn what is in nature to something “new” under the patent statutues. Every single one. Ned keeps on asking for a single case. Why? Every case goes against what he wants to believe.
There isn’t a single one that allows a patent on an item that is effectively what it is in nature.
Why does Ned feel that In re Bergstrom saves his bacon?
Even under 102, “new” must be new in kind over what exists in nature.
Products of nature are still not considered “new” under 102. How can they be? If something is in nature, than man did not invent it.
Discovery alone is not enough. Every decision put up on this thread has turned on the something more to turn what is in nature to something “new” under the patent statutues. Every single one. Ned keeps on asking for a single case. Why? Every case goes against what he wants to believe.
There isn’t a single one that allows a patent on an item that is effectively what it is in nature.
Why does Ned feel that In re Bergstrom saves his bacon?
Even under 102, “new” must be new in kind over what exists in nature.
Products of nature are still not considered “new” under 102. How can they be? If something is in nature, than man did not invent it.
Discovery alone is not enough. Every decision put up on this thread has turned on the something more to turn what is in nature to something “new” under the patent statutues. Every single one. Ned keeps on asking for a single case. Why? Every case goes against what he wants to believe.
There isn’t a single one that allows a patent on an item that is effectively what it is in nature.
Why does Ned feel that In re Bergstrom saves his bacon?
Even under 102, “new” must be new in kind over what exists in nature.
Products of nature are still not considered “new” under 102. How can they be? If something is in nature, than man did not invent it.
Discovery alone is not enough. Every decision put up on this thread has turned on the something more to turn what is in nature to something “new” under the patent statutues. Every single one. Ned keeps on asking for a single case. Why? Every case goes against what he wants to believe.
There isn’t a single one that allows a patent on an item that is effectively what it is in nature.
Why does Ned feel that In re Bergstrom saves his bacon?
Even under 102, “new” must be new in kind over what exists in nature.
Products of nature are still not considered “new” under 102. How can they be? If something is in nature, than man did not invent it.
Discovery alone is not enough. Every decision put up on this thread has turned on the something more to turn what is in nature to something “new” under the patent statutues. Every single one. Ned keeps on asking for a single case. Why? Every case goes against what he wants to believe.
There isn’t a single one that allows a patent on an item that is effectively what it is in nature.
Why does Ned feel that In re Bergstrom saves his bacon?
Even under 102, “new” must be new in kind over what exists in nature.
Products of nature are still not considered “new” under 102. How can they be? If something is in nature, than man did not invent it.
Discovery alone is not enough. Every decision put up on this thread has turned on the something more to turn what is in nature to something “new” under the patent statutues. Every single one. Ned keeps on asking for a single case. Why? Every case goes against what he wants to believe.
There isn’t a single one that allows a patent on an item that is effectively what it is in nature.
Why does Ned feel that In re Bergstrom saves his bacon?
Even under 102, “new” must be new in kind over what exists in nature.
Products of nature are still not considered “new” under 102. How can they be? If something is in nature, than man did not invent it.
Discovery alone is not enough. Every decision put up on this thread has turned on the something more to turn what is in nature to something “new” under the patent statutues. Every single one. Ned keeps on asking for a single case. Why? Every case goes against what he wants to believe.
There isn’t a single one that allows a patent on an item that is effectively what it is in nature.
Why does Ned feel that In re Bergstrom saves his bacon?
Even under 102, “new” must be new in kind over what exists in nature.
Products of nature are still not considered “new” under 102. How can they be? If something is in nature, than man did not invent it.
Discovery alone is not enough. Every decision put up on this thread has turned on the something more to turn what is in nature to something “new” under the patent statutues. Every single one. Ned keeps on asking for a single case. Why? Every case goes against what he wants to believe.
There isn’t a single one that allows a patent on an item that is effectively what it is in nature.
“It stands overruled”
Like your earlier statement in Diehr that was based on pure conjecture? Is everyone to guess at which parts are overruled when the Court is actually silent on this? When does the guessing stop? How many angels have you counted so far?
Re-read Prometheus. Nowhere in Prometheus is it indicated that ANY precedent was overruled. In fact, Bonehead Breyer made it a point that no precedent was, nor need be, changed. Not only that, he said Diehr was case most on point.
The bottom line is that Prometheus cannot be made logical sense in light of itself. It’s a study in an unworkable self-contradiction that cannot be followed.
For a better summation, see the posts by Anon at link to ipwatchdog.com
In its entirety, my first recourse:
I wonder how Ned feels about In re Bergy (and its link to the Chakrabarty decision).
His antipathy towards Rich may explain why Ned “overlooked” Chakrabarty in his research on the topic.
Wherein lies the ad hominem? Is not your antipathy towards Rich well known? Do you deny such? How is this a personal attack?
Once more, thou protest too much.
“a final physical step that was modified by the constant monitoring and updating steps”
not true.
Opening a door as a step in and of itself was completely unchanged. The old method opened a door just like the “new” method opened a door. The “open the door” step inand of itself is identical.
Re-read Prometheus. Parsing of the steps of the claim to look at each step on its own was done (administering step completely separated). “The combination produced a new result.” was not reached. A post solution step, opening the door, was conventional and old in the art, and under Prometheus, would be considered irrelevant.
You are straying from the Prometheus protocol in trying to understand Diehr through the new lens.
“Assuredly, changing the dosage according to the information from the correlations would produce a new and better result hitherto unknown.”
This is not supportable on its face. It is the equivalent of saying that a doctor never modified a dosage level based on feedback of metabolites.
Are you really saying that?
“Nevertheless,” you continue to count angels on the heads of pins.
Indulging unprovable fantasies: “Not even wrong.” So said Wolfgang Pauli.
“because the point of the prior post was that the Supreme Court created a whole new novelty test with Prometheus.”
?? What are you smoking
No one said anything about a new novelty test. Quite the opposite in fact, 101 is in bold.
You do understand what the issue is with conflation, do you not?
sub nom, I don't know who the frack you are, but since you clearly deal in the ad hominem form of argument as a first recourse, we have nothing further to discuss.
“What you clearly imply and frankly state ‘
Nothing of the sort.
What I clearly imply and frankly state is that you did not bring up the matter of Chakrabarty (and the related discussion in In re Bergy) for a reason known to yourself.
The fact that I merely note your known reputation helps others understand why this was (and continues to be) so.
The fact that you OVERSTATE an implication (that Chakrabarty must have a particular HOLDING) is clearly an unsubstantiated reach. Your own over reach, coupled with the declarative that I must then be engaged in perfidy, (which by the way is not a well chosen word, as the connotation of deceitfulness lies in treason, betrayal, or disloyalty, none of which pertain) only signifies your own guilt, for surely an innocent would not so protest (doth protest too much).
The additional well known fact that you follow the traits of MM in accusing others of that which you do only cements the reputation that you have earned.
"Immaterial point. It doesn't matter where the definition of "new" is made."
It certainly does make a difference because the point of the prior post was that the Supreme Court created a whole new novelty test with Prometheus. I don't they did so at all. What it did do was allow novelty to be part of the analysis of section 101, essentially making section 101 not an independent test that must be taken first, out of context of the other sections regarding patentable conditions set forth in Chapter II of 35 USC. Rather, Prometheus stands for a flat-out rejection of In re Bergey (a case essentially followed by Diehr), which stated that patentable subject matter had nothing to do with and was independent of novelty, and was a gateway issue that had to be decided before the other conditions of patentability set forth in Chapter II.
As I said before in a conversation with Malcolm, the certainly surprised me as I had thought that Diehr was prevailing law on this point. It stands overruled to the extent that
Diehr opined that novelty considerations are not part and parcel of a section 101 analysis.
Nevertheless, for reasons stated and explained, I think that had the Prometheus claims ended with an application of the new dosage level rather than just a report, the Supreme Court would've held the claims patent eligible.
Inapposite:
"
Further, the "use" itself in Diehr was not new (the equation was used prior). Opening the door was not new (the door was opened prior). What was new was the rapid multiple "use" in the recalculation afforded by the computer. In essence, A GREAT COMPUTER BRAIN was all that was new. "
Question, I think the Arrhenius equation was used before, but not as active part of the process whereby temperature was continuously measured and the Arrhenius equation recalculated. Furthermore, opening a mold at a time indicated by the recalculation certainly produced a new result even though the act of opening a mold itself was old.
Despite your contention to the contrary, the broader claims did not require a computer. Furthermore, as the court seemed to make clear, the constant monitoring of the temperature and recalculation was new.
Therefore I would suggest that Diehr would be the same as Prometheus if, instead of opening the mold, it had simply presented a number or a report that advised the operator to open the mold without actually requiring it.
But
Diehr did require a final physical step that was modified by the constant monitoring and updating steps that were new. The combination produced a new result.
In contrast, Prometheus did not produce a new result. That is why I think that if Prometheus had simply finished the job and required the updating of the administration step with an actual change in dosage depending on the measurements, I think the Supreme Court would have had no problem with Prometheus. Assuredly, changing the dosage according to the information from the correlations would produce a new and better result hitherto unknown.
sub nom, "I failed to discuss Chakrabarty…."
What you clearly imply and frankly state by your ad hominem is that Chakarabary held, HELD, mind you, that a discovered "from nature" composition of matter is unpatenable because of an exception.
Since that clearly is NOT THE CASE, sub nom, with all due respect, it you who have joined the ranks of the mendacious even while accusing me of your own perfidity.
“ the novelty requirements were different from those defined in section 102.‘
Immaterial point. It doesn’t matter where the definition of “new” is made.
“Therefore I would suggest that had the claim in Prometheus simply ended‘
Angels, dancing on the heads of pins.
Of course, entirely equally possible that the Court could have just added a statement of “insignificant post solution activity” and would have ruled out the very thing that you say would have made a difference.
In other words, your “guess” is just a guess worth nothing.
So says the punchline.
The jokes just keep on writing themselves.
“given that we still have Diehr as good authority, we know just how much more one has to add to a claim in order the render it patentable.”
This statement is not intelligible, given that Diehr and Prometheus are in direct conflict.
Further, the “use” itself in Diehr was not new (the equation was used prior). Opening the door was not new (the door was opened prior). What was new was the rapid multiple “use” in the recalculation afforded by the computer. In essence, A GREAT COMPUTER BRAIN was all that was new.
You guys are truly some of the most unintelligent people on the face of the planet.
Conflation, while I will agree that Prometheus did say that novelty of the elements was relevant, I don’t believe that they additionally said that the novelty requirements were different from those defined in section 102.
Furthermore, given that we still have Diehr as good authority, we know just how much more one has to add to a claim in order the render it patentable. One must use the law of nature as the mathematical algorithm was used in Diehr to do something new and useful and physical. Opening a mold in Diehr was enough, and that was the essential difference between Diehr and Flook. Therefore I would suggest that had the claim in Prometheus simply ended in a modified administration step, the claims would have been upheld by the Supreme Court.
“You’re not suggesting, are you”
I’m suggesting that you failed to discuss Chakrabarty (and In re Bergy) for reasons well known to you.
Your honesty has been impugned on many occasions. It appears rightly so.
I am afraid that you will have to live with the reputation that you have created.
Sub nom, "overlooked" Chakrabarty.
"Overlooked" Chakrabarty? You're not suggesting, are you, that Chakrabarty held that a composition of matter discovered in nature, that was new and otherwise patentable under the statutes, was nevertheless unpatentable under section 101 is a product of nature?
That is the question on the table. It was a question I first asked Malcolm earlier in the week and he said he was aware of no such case. I too could find no such case. Are you aware of any cases?
“It’s a joke you ta rd.”
It’s a joke alright. The punchline is: 6.
I wonder how Ned feels about In re Bergy (and its link to the Chakrabarty decision).
His antipathy towards Rich may explain why Ned “overlooked” Chakrabarty in his research on the topic.
Ned Heller states “Malcolm, all need to do is clarify what you mean just a bit more. Perhaps”
This was the line of dialogue that I was pursuing on the h_itler video thread when MM abruptly became rude and refused to advance the discussion.
I had brought up different case law, but to the same point.
This confirms to me that MM’s views are facile at best. He appears to not want to disturb the soundbyte quality of his position with any examination of his position (or whatever terminology he wants to use) using meaningful rigor of substantive law.
Also note his comment at Mar 29, 2012 at 04:32 PM
“But I am doing my best to see to it that the claims are upheld.”
And we all know that if you are not lying, you are not trying.
Indeed.
The question of how new is new is now fully a 101 question given Prometheus.
There, the medical method claim was given as not being a law of nature but under 101 was questioned as how much more than the law of nature was present in order to meet the 101 requirement.
Beware conflation.
/facepalm
It’s a joke you ta rd.
It was. It was the analogy on the thread where the blog comments were talking about analogies, not this thread and the loudspeakers.
I told you to pay attention.
“plants and minerals respectfully are not compositions of matter.
Like h311 they aren’t. What are they? Manufactures?
Does anyone else see the humor in Ned Heller celebrating a teaching of patent law that is not only espoused by his arch enemy Rich, but was also just mangled in the conflating whatever Prometheus opinion?
Um, no,
1) OK, if you would, please tell us one case, just one, where a claimed CoM was held invalid under any of 101/102/103 on the product of nature theory.
2) Do you agree or disagree that if a claimed extracted, isolated, purefied or whatever CoMs that are is obvious as a matter of law, i.e., known, from a natural CoM once discovered (because the process of extraction, purification and/or isolation is well known), that allowing patents to such obvious versions essentially throws the product of nature exception into the trash?
Please explain your answer.
I see that perhaps you woke up and went through the final stages of dealing with these decisions and are approaching “acceptance”.
“Test for abstract idea should be what other inventions is this precluding? ”
In other words you would allow for patents on “narrow” abstract ideas, natural phenom, and natural laws like in the Prom case. And you would do so simply because they’re narrow and don’t have a lot of uses. Plainly the USSC doesn’t approve of this plan because Prom was just that kind of narrow judicially excepted subject matter. And if you ever bother to read BFD you’ll see they never did approve of that plan as they called out that specific concern in one of those cases iirc, but I’ve forgotten which off hand.
“After invalidating it can we name some 10 years later that are not just the invention?”
“the invention” as defined by NWPA I suppose as opposed to what is actually claimed, right?
It’s a sad thing to see you approach acceptance of the overall premise, and still be so far off in understanding. But I suppose acceptance of the premise is the first step. Perhaps in 3 years or so you’ll understand why each of your small concerns, like those raised in this post, were addressed previously in the line of decisions.
Shhhhhhh.
Ned stills think that you haven’t given any cases or support for your position. Give him a little hope.
It’s the least you can do after smashing him with In re Bergstrom.
“Conjecture, now we are making ultra-fine points that a product extracted from nature, as a leaf from a tree, are not products of nature.”
Ultra-fine?
Hardly. A point that you don’t understand? OK
as a leaf from a tree?
Not even close. Showing even more that you don’t understand the case that you think supports your view, the one you would “take to the bank.” FXXL.
Any more prevarications?
By the way, I admit to the guilty pleasure of watching you roast in your own iniquity and thoroughly enjoying it. It’s fully due.
Ned,
You have not read my post carefully enough and I feel that you are being reckless in your responses.
I added the quotes for the perspective they brought.
The holding I provided is accurate and regardless of the 101/102 defining of “new” – which is a bit of a red herring – the category of patentable subject matter requires some action by man more than mere discovery. In the case (which you now claim to be controlling – I note that you stated it was overturned) you think supports your position.
It does not.
In re Bergstrom held that products of nature are not patent eligible, but purification of such are since such purification creates a new thing, not found in nature.
I don’t know which is more troubling, your naked assertion that a case was overthrown, or your switch in allegience to the case when you mistakenly think it supports your view.
Reckless.
Oh, this is going to be good.
Jonas, give us an example of both.
Jonas said,
"compositions of matter are not patentable on the grounds that they are a products of nature."and "compositions of matter that are products of nature are not patentable."There is a whale of a difference.
and "compositions of matter that are products of nature are not patentable."
There is a whale of a difference.
Please, "Your opponents have only said that compositions of matter – found in nature – by a discoverer, without more are categorically (shudder to use that word) ineligible under 101."
I have asked them, repeatedly, to cite just one case that has actually held this.
To date, nada.
Ooops, are you too barking?
If you want to have a battle of quotes, why don't you start by providing a quote of any case, just one, that has held that CoM that are new as provided 102 are nevertheless unpatentable as products of nature.
Just one.
I am waiting.
The criteria for new in 101 are defined by 102, not by some product of nature exclusion. A CoM is old if it is not new as defined by 102.
In re Bergstrom.
Conjecture, you say I am wrong but wave you hands in general directions only.
Cite the case that has held that claims to unknown CoM are invalid on the product of nature basis. Just one.
Bergstrom is controlling law in the Federal Circuit on this issue as far as I can tell and it holds that 102, not 101, controls on this issue.
You see a problem of your own making and one existing only in your mind.
Your case law cites have been inartfully applied (to be kind).
You have ignored the plain meaninf of Supreme Court cases, labeling it as mere dicta. You have ignored other cases and ignored what the Office has stated.
Set a spell. Catch your breadth.
good question!
Another move of the goalpost.
The argument has never been that “compositions of matter are not patentable on the grounds that they are a products of nature.”
The argument was “compositions of matter that are products of nature are not patentable.”
There is a whale of a difference.
“You guys assert that compositions of matter, discovered by a discoverer who also finds a use for the composition, are categorically ineligible under 101.”
Wow Ned, tht’s one massive misrepresentation of what has been going on today.
Your opponents have only said that compositions of matter – found in nature – by a discoverer, without more are categorically (shudder to use that word) ineligible under 101.
Any stuff made by the hands of man (including purification which changes the subject matter in kind) is OK.
I know it’s been a beating for you , but let’s take a deep breadth and set a spell.
Too late Ned, CA played the lunacy card first.
But it’s not all bad, you are missing a few cards from the deck anyway.
Repeatedly giving quotes in error is not very persuasive Ned.
Ned,
I thought it was your position that 101 defined new.
Aren’t you having a patent eligibility (101) discussion?
“I provide support for mine.”
Actually Ned, you are the one standing defiantly naked and alone, your “support” stripped from you.
A multitude of cases, Congressional views and Office directions have been provided. Even your own cases (the ones you errantly think suppport you) show that you are wrong.
Who exactly is this “all of us” that you think are rallying to your cause? I see not a single person agreeing with you. No one.
Conjecture, hah.
The court held that 102 defined "new," not some judicial law of nature exception.
Put that in your pipe and smoke it.
Conjecture, your constant posts saying this kind of cr*p are verging on hysterical lun*cy.
Go bark at the moon or cite your authority.
Yum Yum, I agree that the SC case law dicta in Funk Bros., Chakrabarty and Prometheus is a problem. I also suggest that Dennis is right in his analysis that if the wild DNA is treated as prior art, the isolated DNA claims are in serious risk under 103.
That is why I think we need to confront and challenge the underlying assumption that unknown compositions of matter discovered from nature are ineligible for patenting. There is not SC case that hold this. In re Bergstrom declares that "new" in 101 is defined by 102, meaning that there is no law of nature exclusion for patenting newly discovered compositions of matter.
Compositions of matter are not abstract phenomena of nature. The exclusions announced in Le Roy v. Tatham had to do with principles in the abstract. One had to provide a concrete, useful result. Compositions of matter are concrete. They can have utility. There is nothing in the statutory or legal history that says they cannot be patented if they are not publicly known.
Your understanding of In re Bergstrom is opposite of what the case holds.
Have you even read In re Bergstrom?
“the CCPA which state flatly that the criteria for novelty in 101 are specified in 102”
This is completely inapposite to the conversation.
It means nothing and supports you not at all.
Z,
Somehow Ned thinks that others need to prove what he conjectures about Le Roy.
When his tower of cards crashed, I think he lost quite a few of them.
“I have cited mine”
And your lies have been made plainly evident.
Your cites have been shown to be in error and quite the contrary to your view, support the opposite of what you believe. You have stated case to have been overthrown by the Federal Circuit when they have not been. You have been shown to be making things up whole cloth.
Look at the other case law displayed before you today. Look at what Congress has said. Look at what the Office states.
You are alone in your views. When you do not believe the authorities aligned against you, when what you have been given is more than enough, your asking for more borders on lunacy.
Malcolm, all need to do is clarify what you mean just a bit more. Perhaps
[old data gathering method] -> [new information or new mental step(s)]
I believe the government brief said this was the problem.
Actually this statement is wrong as well.
Ned wishes to indicate that the Chakrabarty case was about manufactures rather than about compositions of matter.
The issue was not resolved.
Either way, the great “What-Ev” of Prometheus swallows up that difference just as it swalloes up the difference between the “new” in 101 and 102.
Anyway you slice it, Ned is wrong.
Conjecture, now we are making ultra-fine points that a product extracted from nature, as a leaf from a tree, are not products of nature. The PTO would treat these as prior art and would hold the extracted products obvious as a matter of law, otherwise a prohibition on patenting products of nature would be meaningless.
In re Bergstrom, however, flatly rejected law of nature as a legal basis for holding something to be not new.
Can we not see the now that the emperor indeed has no clothes. He stands there, naked, and still thinks he is well dressed.
Um no, you don't just need to brush up, you need a bath and a makeover.
If you want to support the proposition that compositions of matter are not patentable on the grounds that they are a products of nature, even if they are entirely novel under 102, please cite the case.
Ned,
The base was not a naturally occurring substance.
Your tower of cards has crashed upon you.
Conjection, you are advancing the proposition without any authority that newly discovered compositions of matter are unpatentable if they are found in nature. Parke Davis and In re Bergstrom are to the contrary. I invite you to cite authority for your position. I have cited mine.
Ned,
You might brush up on the difference between the truth and lies.
His is a misquote. I quoted the relevant rebuttal by the CCPA which state flatly that the criteria for novelty in 101 are specified in 102, and not in some judicial exception based on product of nature.
If ever there was a case that flatly rejected your the proposition that a product of nature, unknown under 102, is not new, it is Bergstrom.
I am not the one quoting Le Roy for support.
Conjecture, you stand without clothes and ask us to applaud your tailor.
Stop it with your unsupported arguments. I provide support for mine. I invite you to support yours with authority.
Show me one case, just one, where the court held the claims to a novel composition of matter invalid because they were a product of nature. It cannot be that hard as you say your clothes are real.
Give me and all of us that one case.
I gave you the quote that is the basis for my statement, and it is the second time I have given the quote in these threads.
Now, if you wish to rebut Hand with his own opinion, please do.
And, just what is it that I have to prove.
You guys assert that compositions of matter, discovered by a discoverer who also finds a use for the composition, are categorically ineligible under 101.
I invite you to cite one case that held this way. Just one.
To date, none.
Conjecture, no, nothing in Le Roy supports yours.