239 thoughts on “Administrative Rules for Implementing a First-to-File System

  1. 239

    Ned,

    I began typing a response and realized that I was just typing in all of the comments already made on this thread.

    I then realized that you are not seeing the real picture because you are overly focused on Pennock (your last two comments indicate this: “has anything to do with Pennock” and “ Since Pennock occurred 20-30 years prior to the first trade secret case ever“).

    You are not grasping the actual issue under discussion which is larger than Pennock.

    The actual issue under discussion is the constitution and all of the laws involved in a calculation of protected time.

    I had thought you understood this when you typed that you did not see the constitution question limited to patents and when you acknowledged that the time of protection involved more than the time afforded under patents.

    I now realize that you have blinders on and are only seeing patents and not the actual constitional question (the very question you provided).

    Until you realize what the issue is, and then go back and read all of the comments on this thread that actually discuss the real (larger) issue, I am afraid that I cannot (nor can anyone else) help you understand the problem with the logic used in Pennock.

    I think you are close to a breakthrough with some of your comments, but I also think that only you can draw back the final curtains and realize the full concepts involved.

    It is not just patents.
    It is not just Pennock.

    I cannot (nor can anyone else) help you if you refuse to release the trunk of the elephant, take a step back, remove the blinders and look at the entire elephant.

    I hope you choose to do so.

  2. 238

    TypePad HTML Email

    Looking, you are going to have to help me here, as I do not see the issue
    of trade secret protection being relevant at all. 

     

    Let’s make sure we are talking about the same thing.  Trade secret protection occurs when a secret is a misappropriated by a
    third-party through violation of trust, thievery, or otherwise. The law gives
    one the right of action against the trade secret misappropriator, and an
    injunction against his or her use of the trade secret. None of this has anything
    to do with the existence of a trade secret, which can be maintained by simply
    not allowing people access to one's factory.

     

    With all sincerity, I simply do not understand how the concept the trade
    secret protection has anything to do with Pennock.

     

  3. 237

    Your conclusions are flawed for the reasons given. You choosing not to pay any attention to the reasons (because Pennock paid no attention) is itself logically flawed, and cannot overcome the flaws that you inherit (it should tip you off to the possibility of a problem as you note that Pennock occurred 20-30 years prior to the first trade secret case ever). Obviously, law developed after Pennock that must be accounted for.

    You need to realize that talking about trade secret protection is critical to understanding exactly why the flaws are there.

    The points raised are good solid legal points. The flaws must be addressed because they exist. All I am asking is that you recognize that the flaws exist and attempt some rationale to deal with the flaws. Saying “Don’t discuss the flaws” just doesn’t work.

  4. 236

    Hey, Looking Glass, the problem with the post was that all it wanted to talk about was trade secret protection and how that was coupled to the patent period to created a combined period.  Since Pennock occurred 20-30 years prior to the first trade secret case ever, it did not depend upon trade secret protection for its theory.

    The PO in that case was able to keep the secret of making fire hoses away from the public for a very long time.  How he made the hoses was not self evident from the hoses sold, so no one could replicate the invention.  (This is why I suggested that Pennock may also be pertinent to the issue of best mode.  If the failure to disclose best mode actually prevents effective commercial competition, and this can be demonstrated, I think the patent still might be invalid.)  

    The Supreme Court was concerned that allowing such secret commercial use without disclosing the details of the invention to the public coupled with a subsequent period of exclusivity provided by a patent would not promote progress in the useful arts, but rather it would retard progress in the useful arts.  It is on this basis that I concluded that Pennock was on point regarding the constitutionality of the AIA which seems to expressly authorize that which Pennock expressly held to be contrary to the purposes of the relevant constitutional provision.  

  5. 235

    looking glass asked me to respond to this post

    compare

    1. Stop talking about trade secret protection.
    2. The SC in Pennock made clear…

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    Ned. This is not what I suggested. You need to read and understand the points being made, not simply repeat the same mantra yet again. Asking you to think about the points does not yield a result of you saying don’t make those points!

    The points are valid. You cannot disassociate the trade secret protection from the patent protection (and hence your constitutional question) because Pennock involves the trade secret protection.

    You don’t wnat to discuss something that you have to discuss. That’s the point being raised. In fact, it is you that elevates the constitutional question beyond mere patents (your post on July 27 at 3:27 PM when you say regarding Article I Section 8: “Anon, I see nothing in there about patents. I see, however the concept of “exclusive Right” to their Discoveries. Congress can protect these it is said by the Constitution for ‘limited Times.’

    You keep on trying to dismiss points that you cannot dismiss because they are integral to the identified faults in the logic. This is like you saying that if you ignore the problems in the logic, there are no problems in the logic.

    The problem is not in that people are trying to point out the logical flaws. The problem is that people are trying to pretend that such flaws don’t exist at all. This is quite beyond the holding of Pennock.

  6. 234

    Purist, looking glass asked me to respond to this post. I will.

    1. Stop talking about trade secret protection.
    2. The SC in Pennock made clear the problem of allowing patent protection after an indefinite period of monopoly exploitation where the monopoly was maintained by secrecy itself was the problem at hand.  Such a regime violated the authorization in Art. I, Sec. 8, that exclusive rights be given to promote the Progress in the useful Arts.  The SC held that such a regime, in the words of the Supreme Court, "…materially retard[s] the progress of science and the useful arts, and give[s] a premium to those who should be least prompt to communicate their discoveries."

    The holding of the court is unmistakable.  The regime authorized by Congress in response to the lobbying of the big European and Japanese companies who shouted down the startups of Silicon Valley, is UNCONSTITUTIONAL.

  7. 231

    You have dismissed the points before fully reading them. You have reacted prematurely and shut down your mind before understanding. It is as if you read until you find a reason to take offense and retaliate.

    The posts make valid points and you need to read themm all the way through. There are ramifications to both Pennock and to the logic you have put forth that a critical mind will readily grasp. You are far too reactionary and you are not understanding what the conversation is actually about.

    It is a good conversation to have. Your absence is unfortunate.

  8. 230

    Mr. Glass, the post began by discussing my alleged assertion that trade secret protection was unconstitutional.  Since I have many times said I had no problem with state trade secret protection, citing among other things, Kawanee, it was clear that Purist was more interested in establishing strawmen than in seriously discussing anything.  i refuse to hold conversations with such folk, except if I know them, like I know anon, who have on occasion made serious substantive arguments.

  9. 229

    I don’t even need a comparison for this: “Mr. Purist, I will no longer read your posts as they are a waste of my time.  They are filled with ridiculous statement after ridiculous statement.

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    PURist’s post was clear, polite and accurate. Your response Ned is not only uncalled for, it is outrageous. Others, including me have informed you of the difficulties you cause by focusing on what is convenient for you.

    As for addressing the points raised, well I think it is becoming evident that you simply refuse to address anyone’s points that you find inconvenient to your paradigms. If this is how you are going to treat well-reasoned and polite requests, I can only imagine that you will have no one willing to discuss any issues with you (at least not any regulars outside of MM and 6).

  10. 228

    Mr. Purist, I will no longer read your posts as they are a waste of my time.  They are filled with ridiculous statement after ridiculous statement.

  11. 227

    Mr. Pur, I stopped reading your post after the first two ridiculous remarks.  Just let me reiterate, I do not challenge the constitutionality of trade secret protection.  See, Kawanee.

  12. 226

    Ned,

    With all due respect, the point of “what you prefer” should be a lesser consideration to what is most effective for all.

    It is not only a matter of being courteous in your responses on their own, but rather, it is a matter of being courteous in your understanding of the discussion. I have seen on this thread alone you miss crucial aspects and appear to be dazed and confused as to the discussion. This only raise the ire and promotes the sniping that is so often seen.

    I think your desire for “convenience” makes everyone suffer. In that respect, I agree with Anon that such is not reasonable nor professional. Your convenience should not be at others’ expense. It really is a matter of common courtesy, and I hope for at least those situations in which a dialogue is ongoing, that you “sacrifice” some of that convenience for yourself to make a better discussion.

  13. 225

    Ned, You would note Anon’s attempt to divert so in error.

    And you need to stop shooting arrows at Anon.

    He is being very reasonable in attempting to make sure the logic involved here is understood by everyone. As Anon points out, your challenging the the constitutionality of trade secret protection IS NOT THE ISSUE! The issue is that in order to emply your logic, the challenge must happen in order to keep the logic from crashing in on itself. You must apply the logic consistently, and when you do that, the errors in Pennock are illuminated and the idea of a constitutional question are destroyed. You cannot only look at a partial picture, because the ramifications of the logic permeate and have repercussions that must be recognized.

    Please visit the blog so that you can see the full string of comments in context. It is important that you do not get a partial picture on the concepts involved.

    You acted first be supplying a “constitutional question” that you yourself indicated was not limited to patents (“I see no patents there”). You evidently did this so that you could take the Pennock case and use both the time of patent protection and the time of trade secret protection together as a basis to say that you have unlimited times of protection (I would remind you that these are very different types of protection covered by different laws and different “constitutional questions” – but we can come back to this point).

    IF you only constrained yourself to patent time, your logic fails, as patent time is clearly limited time. You NEED to include trade secret time in your constitutional question. You have already admiited to such.

    The problem is quite evident.

    You need trade secret time to fall into your constitutional question in order to bridge the gap between the legal regime of patents (limmited time) and trade secrets (non limited time). The problem of course is that trade secrets by themselves, which you need, simply fail, by themselves, the constitutional limited times question.

    The very thing you use to make your case that “patents” fail the limited time constitutional question because of the entrained trade secret time destroys the logic of what you are attempting to do, on their own. You cannot say “But I am only looking at patents, because you are not only looking at patents. You had to bring in the trade secrets and now you have to deal with trade secrets. They are on the table whether you like it or not. And further, the set of logic used and the the consitutional question under examination must be applied. You have no choice.

    This is not a matter of diversion at all.

    This is a matter of making you come face to face with the entire fallout of the logic you have to sign up to in order to make your Pennock case work.

    The obvious problem is that the logic in Pennock is WRONG.

    The logic of Pennock, of using the time of trade secrets in addition to the time of patents in order to broach the unlimited time of patents requires that the time of trade secrets be treated under the same consitutional question. Of course the immmediate problem is that this does not work because trade secrets themselves run for unlimited times (and thus immediately violate the constituional question).

    You either must NOT use the time of trade secrets, in which case, the time under patent protection is for limited times and there is no violation of the constitutional question;

    or you must abbrogate all of the state’s rights and their laws dealing with trade secrets and force trade secrets to be constrained to limited times.

    You cannot have both! Logic simply does not allow an unequal treatment of trade secret time. Logic MUST be consitent. Logic cannot be arbitrary.

  14. 224

    anon, I attempt to be courteous.  However, I find the use of TypePad quite in an e-mail response convenient and more useful than the blog reply feature.  I prefer it.

  15. 223

    anon, I am not challenging the constitutionality of state trade secret protection.  That issue has been decided in Kawanee.

    I will note for the record your consistent attempts to divert the question from the facts of Pennock into some other question entirely.

  16. 222

    I look at the blog only when I have time

    I suggest you make the time. You post often enough to be considerate of others and post with some semblance of knowing what is going on.

    If you want to post a new idea and start a discussion, that is one thing. But if you are iin a discussion you owe some common courtesy to the other person to see the entire context of the discussion.

    After all, that is only reasonable and professional.

  17. 221

    Ned,

    This is another thread that you have shown an inablity to read and maintain focus on the conversation.

    You do need to defend your “constitutional question” against trade secrets for the many reasons listed in this thread.

    I suggest you visit the thread and read it in its entirety. You obviously are seriously missing the complete picture and your responses are gravely lacking (even though you think they are intelligent and complete – they are not).

  18. 219

    Mr. Purist, "I am asking you to defend your constitutional question against trade secrets."

    My constitutional case against trade secrets?

    I am not arguing that state trade secret protection is unconstitutional.  Not at all.  Further  see, Kewanee Oil. link to supreme.justia.com

    On the patent question, however, Pennock is clear.  Practicing an invention for years, maintaining a monopoly by keeping the invention secret (or at least keeping the way of making it secret), and then obtaining a further period of exclusivity, retards progress of the Useful Arts.  Congress's power to grant exclusive rights seems limited under Pennock to promoting progress in the Useful Arts.

    Pennock may also be pertinent on the issue of best mode.  Keeping the way of practicing the invention secret certainly would grant a commercial patent without enriching the public with the necessary know how.  How this bleeds into best mode is of interest from a constitutional perspective as well.

  19. 218

    I ask you to think as well

    compare

    stop interpreting my remarks but simply accept that what I am talking about

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    Ned, try to remember that what you ask is right here and easily seen.

    Will you stop playing games and stop parroting Pennock already? I don’t even want to get into how your continued avoidance of looking at the blog like a normal person is causing all sorts of headaches.

  20. 217

    You really don’t read the posts, do you Ned?

    Pennock was a case on patents. Your quote and the case having nothing to do with what I am asking you!

    I am not asking you to defend your consitutional question against patents. I am asking you to defend your constitutional question against trade secrets.

    If you rest your case before you even address the issue raised you lose by default.

    Let me repeat my earlier posts

    2:23 PM: Further, I too want to see how you handle the unlimited times of trade secret under your consitutional question. It’s your consitutional question so you should defend it.

    2:53 PM: No Ned, I am asking you to defend not against patents, but against the unlimited times of trade secrets

    I cannot understand how you can understand my posts.

  21. 216

    Pennock is not on point?  You seriously have to be kidding.  Let me quote you the language on point,

    "While one great object was, by holding out a reasonable reward to inventors, and giving them an exclusive right to their inventions for a limited period, to stimulate the efforts of genius; the main object was "to promote the progress of science and useful arts;" and this could be done best, by giving the public at large a right to make, construct, use, and vend the thing invented, at as early a period as possible; having a due regard to the rights of the inventor. If an inventor should be permitted to hold back from the knowledge of the public the secrets of his invention; if he should for a long period of years retain the monopoly, and make, and sell his invention publicly, and thus gather the whole profits of it, relying upon his superior skill and knowledge of the structure; and then, and then only, when the danger of competition should force him to secure the exclusive right, he should be allowed to take out a patent, and thus exclude the public from any farther use than what should be derived under it during his fourteen years; it would materially retard the progress of science and the useful arts, and give a premium to those who should be least prompt to communicate their discoveries."

    What did the SC say?  Monopoly exploitation for years, followed by a patent.  The monopoly maintained by keeping the secrets of his invention secret.  

    I rest my case.

  22. 215

    Regarding unlimited times, and the constitutional question

    No Ned, I am asking you to defend not against patents, but against the unlimited times of trade secrets. Pennock is not on point for that defense. You brought up the consitutional question and you said that you do not see patents there, thus you broadened the constitutional question beyond patents and you included the time of protection under trade secrets. But your logic fails at that point because trade secrets are for unlimited times. You need to address this failure.

    you define protection way too narrowly

    No I define by what the law actually is. You are misusing the legal term “Prior User Right” and your answers to 1 and 2 thus remain in error.

  23. 214

    Mr. PURist, you define protection way too narrowly, indeed.  If the muscle man comes into your place of business and offers you protection, what you get is protection from them.  In the same way, a PUR offers protection from a patent.

    Regarding unlimited times, and the constitutional question, I refer you back to the words I quoted from Pennock.  That is the position of the Supreme Court of the United States of America, in a case penned by Story, and in which John Marshall participated.  I do not have to argue the constitutional issues.  They are framed quite nicely by the Supreme Court itself. 

  24. 213

    The association is ancillary. The Protection is technically not for the trade secret. It is for something newly created under the AIA called Prior User Right.

    You ascribe more than what is there.

    Your further comment is beyond my point but I will address it as you include it in the response to me. It is not only “what” you are (not) contending as to what federal right of action may exist that you must consider. You must consider the benefits of the law that you are taking and assuming falls under the constitutional question that you gave as an answer. You clearly are takiing the benefits of trae secret protective time, and you cannot take that without accounting for the law that actually provides that benefit.

    Your answers to 1 and 2 remain in error. Further, I too want to see how you handle the unlimited times of trade secret under your consitutional question. It’s your consitutional question so you should defend it.

  25. 212

    Mr. Prior User, but a PUR does protect the trade secret user from a patent.  THAT is a form of protection.

    We all know that one does not have a federal right of action for trade secret misappropriation.  I never contended that we did.

  26. 211

    Mr. Wrong, you repeatedly stated, and continue to state that Stanford was the applicant.  Until you figure out why this statement is completely wrong, or someone tells you why, we cannot discuss things further. 

    You obviously are not a patent attorney because every patent attorney knows the reason why.  Every, single, one.

  27. 210

    Actually, anon, I ask you to think as well.  But, we will continue to join on issues to extent you continue to avoid discussing hypotheticals.

  28. 209

    I think there is error in Ned’s answers to 1 and 2.

    PUR is not synonomous with trade secrets.

    Trade secrets remains under the purview of state law, which means differences from state to state. Trade secret unlimited times remain while PUR exists only for the life of the patent against which they may apply. PUR as well does not necessarily mean that something must have been maintained to the same rigor as a trade secret and further, a trade secret may be more than the claimed PUR.

  29. 208

    Anon,

    Ned cannot even get the right thread. And you want him to do some independent thinking?

    Are you high?

  30. 207

    Mr. Wrong, but you start from a premise that is contrary to law.

    Oh really? You want to provide a cite for what you think my wrong starting premise is?

    And let me tell you that you are STILL arguing the WRONG case in the WRONG courtroom with your asinine replies from eamil or whatever you are doing. Even after I tell you that you are doing so and even after I give you the time stamps of my comments on this thread for this discussion.

    If you repeatedly did this in a court of law, would you be sanctioned? It seems that you lack even the minimum of due care.

  31. 206

    The problem Ned is that I am asking you to NOT “simply accept.”

    I am asking you to THINK. I know, it is a radical concept to be sure.

    Are you willing to think and apply your own logic? Are you ready to see the contradictions that are so plainly there if you would only open your eyes?

  32. 205

    Anon, if you would stop interpreting my remarks but simply accept that what I am talking about is Pennock, we can get a lot farther in our discussion.  Pennock says what it says and no matter what you say you cannot change its words.

  33. 204

    Ned,

    I asked you to think for yourself.

    What you think Pennock holds is in error. Quoting Pennock is meaningless unless you can account for the error. You need authority that is not in error, that recognizes that the time under trade secret protection is not the time under patent protection and that patent protection itself is for limited times. You need to stop contradicting yourself by saying that you are not involving trade secret law – as you must if you are counting on time for protection under that legal philosophy (you cannot have the time with out the law).

    If you open your eyes and THINK, instead of blindly parroting the mistakes made in the past, you will see the fallacy of how the logic was applied. If that fails, please kindly answer Wrong is Wrong’s point concerning trade secrets alone. Under your logic, please square the fact that trade secrets can run for unlimited time with your constitutional question.

    Are you ready to challenge the fact that trade secrets can runfor unlimited times in violation of your logic?

    THINK for yourself. What do the answers to my questions tell you. Don’t feed me mindless parroting. THINK man.

  34. 203

    Anon:
     
    "The exclusive period of the trade secret use was to be considered part of the exclusive period of the patent." ?
    Under what authority is this statement made? You MUST remember that the two (patents and trade secrets) do NOT rest under the same legal authority.
     
    From Pennock:
     
        "The single question then is, whether the charge of the court was correct in point of law. It has not been, and indeed cannot be denied, that an inventor may abandon his invention, and surrender or dedicate it to the public. This inchoate right, thus once gone, cannot afterwards be resumed at his pleasure; for, where gifts are once made to the public in this way, they become absolute. Thus, if a man dedicates a way, or other easement to the public, it is supposed to carry with it a permanent right of user. The question which generally arises at trials, is a question of fact, rather than of law; whether the acts or acquiescence of the party furnish in the given case, satisfactory proof of an abandonment or dedication of the invention to the public. But when all the facts are given, there does not seem any reason why the court may not state the legal conclusion deducible from them. In this view of the matter, the only question would be, whether, upon general principles, the facts stated by the court would justify the conclusion."
     
        "In the case at bar; it is unnecessary to consider whether the facts stated in the charge of the court would, upon general principles, warrant the conclusion drawn by the court, independently of any statutory provisions; because, we are of opinion, that the proper answer depends upon the true exposition of the act of congress, under which the present patent was obtained. The constitution of the United States has declared, that congress shall have power "to promote the progress of science and useful arts, by securing for limited times, to authors and inventors, the exclusive right to their respective writings and discoveries." It contemplates, therefore, that this exclusive right shall exist but 17*17 for a limited period, and that the period shall be subject to the discretion of congress. The patent act, of the 21st of February, 1793, ch. 11, prescribes the terms and conditions and manner of obtaining patents for inventions; and proof of a strict compliance with them lies at the foundation of the title acquired by the patentee….
     
       "These are the only material clauses bearing upon the question now before the court; and upon the construction of them, there has been no inconsiderable diversity of 18*18 opinion entertained among the profession, in cases heretofore litigated.
     

     
       "We think, then, the true meaning must be, not known or used by the public, before the application. And, thus construed, there is much reason for the limitation thus imposed by the act. While one great object was, by holding out a reasonable reward to inventors, and giving them an exclusive right to their inventions for a limited period, to stimulate the efforts of genius; the main object was "to promote the progress of science and useful arts;" and this could be done best, by giving the public at large a right to make, construct, use, and vend the thing invented, at as early a period as possible; having a due regard to the rights of the inventor. If an inventor should be permitted to hold back from the knowledge of the public the secrets of his invention; if he should for a long period of years retain the monopoly, and make, and sell his invention publicly, and thus gather the whole profits of it, relying upon his superior skill and knowledge of the structure; and then, and then only, when the danger of competition should force him to secure the exclusive right, he should be allowed to take out a patent, and thus exclude the public from any farther use than what should be derived under it during his fourteen years; it would materially retard the progress of science and the useful arts, and give a premium to those who should be least prompt to communicate their discoveries."

     

  35. 202

    Anon:
     
    Here are answers to your questions.

    Straight up and with no dodging or changing the subject answer these four questions:
     
    1) Under patent law, (and please be specific) what protections are afforded someone that has a trade secret?

    Answer: none on the current law. Prior use against a third-party patent under the AIA.
     
    2) Under patent law, (and please be specific) what protections are afforded someone that is not using the patent system?

    Answer: today, none ; tomorrow, prior use rights.
     
    3) Now, tell me, under patent law, (and please be specific) what protections are afforded someone that has decided to use the patent system?

    Answer: a patent, without any Right of exclusivity per eBay.
     
    4) Is that time of protection limited or unlimited?

    Answer: there is no Right of exclusivity. However, patent term is 20 years from filing

     

  36. 201

    Mr. Wrong, but you start from a premise that is contrary to law.
     
    Discuss:
     
    1) a first inventor invents, a second inventor invents the same invention.

    Who owns the invention?

    If they both file patent applications, who owns the respective patent applications?

    2) a first inventor invents having an employment agreement containing a present-assignment-of-future-inventions clause.

    Who owns the invention?

    If they both file patent applications, who owns respective the patent applications?
    Vary from the above that the employer names himself as the inventor. Who owns the respective patent applications?
    3) same as 1, first and second inventors of the same invention; however, a pirate of the first inventor files first and the second inventor files second. The first inventor does not file at all.
    Who owns the invention?

    Who owns the pirate's patent application?

    Being a second inventor, can the second inventor still claim to be the owner of the first inventor's patent or patent application?

    4) an inventor works for a boss of Big Red, but this time there is no present-assignment-of-future-inventions clause. He has, however, and obligation to assign. Both the inventor and the boss file patent applications on the very same day naming themselves as inventors. The boss assigns the patent application to Big Red. The inventor quits and goes to work for another corporation, call it Big Blue. He records an assignment of his patent application to Big Blue. Both Big Red and Big Blue are BFP's under the recording statute.

    Who owns the invention?

    Who owns the boss's application?
    Who owns the inventors application?

     

  37. 200

    Ned,

    I have further responded to your post on the appropriate thread.

    As to “pressing the issue,” I find your comment insulting. Shall we compare “experience” on who engages and who disengages when the discussion does not suppport a participant’s views? I don’t think that such a comparison would be to your advantage – experience shows that you tend to disappear when the discussion does not support your philosophies.

    On this thread, for this different discussion, I am STILL waiting for your answers to my questions. Even though those questions are plainly here for normal blog readers to see, I repeat them for your convenience:

    Straight up and with no dodging or changing the subject answer these four questions:

    1) Under patent law, (and please be specific) what protections are afforded someone that has a trade secret? 2) Under patent law, (and please be specific) what protections are afforded someone that is not using the patent system?

    3) Now, tell me, under patent law, (and please be specific) what protections are afforded someone that has decided to use the patent system? 4) Is that time of protection limited or unlimited?

    How can you in one paragraph state “know you think that trade secret law is somehow involved of this conversation. Trust me, it is not.” and in the very next contradict yourself by saying “The exclusive period of the trade secret use was to be considered part of the exclusive period of the patent.” ?

    Under what authority is this statement made? You MUST remember that the two (patents and trade secrets) do NOT rest under the same legal authority.

    After you are done directly and without further games answering my questions, I look forward to you answering Wrong is Wrong’s questions and your explanation of how trade secrets by themselves do not violate your stated “constitutional question.”

    Can you engage without your games?

  38. 199

    “Perhaps 101 Integration Expert would be kind enough to demonstrate his integration analysis of this claim?”

    Yes, I will be glad to perform the Integration Analysis to this claim but I will post it to the Is Software Patentable? thread where it belongs.

    Unlike MM, that merely looks at a claim and if it is a process claim, calls it cra p. Or 6 that just dreams up an abstract concept and declares the claim preempts, “Integration Analysis” requires an objective, and rigorous law based analysis in which the claims are read in light of the specification, drawings, and with deference to the actual inventor as subject mater expert that defines the invention.

  39. 198

    The spotlight is all yours. Try not to choke, dodge, weave, prevaricate, or run away.

    MM FAIL

  40. 197

    We cannot discuss things in the absence of dicussion…..

    I am waiting for you to join the discussion and answer the points and questions that are already on the table. You have some explaining to do to support your proffered constitutional question (it has some serious logic flaws that need to be corrected).

    See my posts at 10:39 AM, 11:17 AM, 12:53 PM, 12:56 PM and 2:21 PM on this thread (and any of the posts by Anon). Please pay attention and do not mix the separate conversations.

  41. 196

    Mr. Wrong, why don't yoiu stop this s h i t and simply answer the questions yourself then.  We cannot discuss things in the absence of dicussion…..

  42. 195

    refuses to engage is obvious

    On the contrary Ned Heller, it is you that is refusing to engage.

    Not only that, you are mixing threads and arguments for the umpteenth time.

    Your comment to standing clearly indicates that you are confused. You just posted to the adminsitering thread and the discussion on conflation of trade secret law and patent law with a reference to the discussion on rights innuring to an inventor or applicant. Two very different discussions. There is no standing element to the discussion of the constitutional question and the conflation of patent law and trade secret law. The standing element belongs to the pirate applicant thread.

    You really need to either address one argument at a time or not answer by email. You look incompetent in both discussions. It’s like showing up in the wrong courtroom and arguing the wrong case before the wrong judge. If your organiztion skills cannot handle multiple discussions, then don’t engage in multiple discussions. You just end up WRONG in multiple discussions.

  43. 194

    Mr. Wrong, the reason Anon refuses to engage is obvious. 
     
    But, i won't press the issue.  Just chalk it up to experience. 
     
    The bottom line is that standing is not challenged by trying to show that the named inventor did not invent.

  44. 193

    Then answer my question as to how trade secrets, in and of themselves, can be allowed under your constitutional question.

  45. 192

    You admit to repeating an error. Congrats, now you can appreciate the Dred Scott reference.

    Now try thinking for yourself. Answer Anon’s questions, see the logic, and think about it untarnished by mistakes of the past.

  46. 190

    Ned postulates “Article I Section 8” as his constitutional question and proceeds to conflate trade secret time and patent time.

    But by doing so he sets himself for the following logical conundrum:

    If patents are “not seen” in his constitutional question, then more than just patents are allowed under the constitutional question.

    If more than just patents are allowed under the constitutional question, then something else, completely on their own and in their own right fall under the constitutional question

    If this other thing falls under the constitutional question, then it would be unconstitutional for that thing to run for unlimited times.

    That other thing is trade secrets.

    Applying the famous Ned Logic, trade secrets are unconstitutional becuase they can exist for unlimited times which violates Article I Section 8.

    Explain why this scenario is excused from your logic Ned.

  47. 188

    The answer is still the same indeed. Your answer is still wrong because you do in fact incorporate the time that is under trade secret law into the aspect of time under patent law.

    This is clear legal error, no matter who does it. you need to grasp and understand this. To not understand this and maintain “but I’m not talking about trade secret law” is to contradict yourself and nullify your position.

    Return and provide actual answers to my questions.

  48. 187

    anon,
     
    1) Under patent law, (and please be specific) what protections are afforded someone that has a trade secret? 2) Under patent law, (and please be specific) what protections are afforded someone that is not using the patent system?

    3) Now, tell me, under patent law, (and please be specific) what protections are afforded someone that has decided to use the patent system? 4) Is that time of protection limited or unlimited?

    The point of the matter is that ANY time before the person engages the patent system DOES NOT COUNT as time provided as protection under the patent law.
     
    Anon, I tried to point out to you in a previous post that trade secret protection is not part of my argument and has nothing to do with my argument.  No matter how many times you phrase the question in alternative language, the answer is still the same.  You seem to want to divert this train of thought off the rails and into some irrelevant gully.  You're not going to be able to do that.

    The Supreme Court in Pennock said that it would be a violation of the concept of "limited times" to allow one to exploit his invention in secret for any time and still be able to obtain a patent.  The goal of the patent system is to bring into the public domain a description of the invention and to allow the public to use it after a limited period of exclusivity.  Allowing indefinite trade secret use followed by a period of exclusivity enforced by the patent frustrates both objectives.

  49. 186

    Ned,

    Straight up and with no dodging or changing the subject answer these four questions:

    1) Under patent law, (and please be specific) what protections are afforded someone that has a trade secret? 2) Under patent law, (and please be specific) what protections are afforded someone that is not using the patent system?

    3) Now, tell me, under patent law, (and please be specific) what protections are afforded someone that has decided to use the patent system? 4) Is that time of protection limited or unlimited?

    The point of the matter is that ANY time before the person engages the patent system DOES NOT COUNT as time provided as protection under the patent law. The time period of exclusivity through patent law as governed by the constitution IS limited.

    How can you in one paragraph state “know you think that trade secret law is somehow involved of this conversation. Trust me, it is not.” and in the very next contradict yourself by saying “The exclusive period of the trade secret use was to be considered part of the exclusive period of the patent.

    Under what authority is this statement made? You MUST remember that the two (patents and trade secrets) do NOT rest under the same legal authority. You can even use your holding/dicta schema, but you must trace this treatment of trade secrecy to a primary authority.

    If you actually try to look at this without a pre-conceived “well a smart judge said it so it must be right” view, you can see the error. If you close your eyes, you will not see it.

    The exclusive period of the trade secret use was to be considered part of the exclusive period of the patent.This is legal error. Just because a Judge (or Justice) made that error does not make it any less an error. There simply is no patent protection and no concurrent patent coverage in the time span that something is a trade secret and not under the rule of law for patents.

    It’s an irrefutable fact.

  50. 184

    Should I now treat you as Um No would treat me?

    That would be your choice Ned.

    But do you really want to compare untouched topics and questions?

    Do you really?

    Plus there is a substantial difference in that this topic you have shown no understanding and have been all over the map. Show me in any of our discussions that you have chosen to left unanswered a similar state for me. You will not be able to show anything of the sort.

    As I said, Ned, your choice. Choose well (or not).

  51. 182

    Anon, I don't know where you get the idea that I have been discussing trade secret law, or that my views in any way depend upon trade secret law.

    I know you think that trade secret law is somehow involved of this conversation.  Trust me, it is not.

    However, how long in the inventor may exclusively practice an invention before it must be surrendered to the public for their use is the topic at hand.  The Constitution demands that the time period of exclusivity be limited.  The Supreme Court in Pennock was of the view that allowing exclusive secret use was part of the period of time that must be considered in determining whether the time period was limited.  The exclusive period of the trade secret use was to be considered part of the exclusive period of the patent.

  52. 181

    “Punt” implies fourth down and you have stopped me on three previous downs.

    With Chakrabarty you have stopped no one but yourself.

    Pass.

  53. 180

    you pass? “Punt” is the better term.

    No Ned, “pass” as in “not engage” is the better term. You haveshown such an erratic nature on Chakrabarty that I choose not to discuss that case with you.

    I suggest you stick to one discussion at a time. Choose one and focus on that.

  54. 179

    Ned,

    I see nothing in there about patents.

    Now you are being just plain silly. Please grow up and leave the childish games aside. We all know that federal patent law comes from Article I, Section 8. We also know that Trade Secret Law does not come from that section of the constitution and is not even a Federal Law item.

    Are you seriously making a position that it is otherwise? Seriously? Are you saying that like patents, trade secret laws at the State level are barred by the consitution? Seriously?

  55. 178

    "To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries."
     
    Anon, I see nothing in there about patents.  I see, however the concept of "exclusive Right" to their Discoveries.  Congress can protect these it is said by the Constitution for "limited Times."

  56. 177

    Ned,

    As noted on the link to patentlyo.com thread by Oops (as well as on previous thread by me), Article I Section 8 only covers patents and the time period for patents is still “for limited times.”

    You are confusing the time for Trade Secret protection which does not fall under Article I Section 8.

    I repeat Oops’ post in this reply for your convenience:

    One other problem Tacurrier: you (like many) are co-mingling time frames.

    the risk is very real that the monopoly can be made virtually perpetual.

    You must be clear as to “the monopoly” you refer to. This comment is absolutely true for Trade Secrets (even today!). The comment is absolutely false for Patents. Do not get caught in the trap of mixing up these two time periods as they are goverened under different laws.

    There is one set of time governed by patents and implicated in any constitutional discussion.

    There is quite a different set of time that is not governed by patents and NOT implicated in any constitutional discussion.

    Keep firmly in mind: Trade Secret Law is generally a state law concern. Thus any protection afforded by Trade Secret is distinct from (both actually and legally) the protection afforded by Patent Law.

    Don’t feel bad about the mistake either. There are very few people smart enough to recognize this subtle (but very real) point of law.

  57. 176

    The power of the voices of these two justices can still be hear despite the distance of years.

    Hearing voices again, Ned?

  58. 172

    MM: It’s old.

    That’s Novelty, which has no place in 101. See Diehr.

    MM: If it’s properly claimed, I don’t see why it should not be.

    That would be a draftsman art tricks. Also not allowed. See Prometheus.

    MM: Note that I believe that any such claim is likely anticipated, at least inherently. So the issue of eligibility (or rather, the issues raised by your hypothetical) are moot.

    Again, that is for 102 anticipation and does not apply for 101 eligibility questions. So your point is not only moot, it’s irrational, illogical, and illegal.

    MM: Again, we are back to the question of what “found in nature” means.

    It means found in nature. See Diehr stating:

    “Unless otherwise defined, “words will be interpreted as taking their ordinary, contemporary common meaning,” Perrin v. United States, 444 U. S. 37, 444 U. S. 42 (1979), and, in dealing with the patent laws, we have more than once cautioned that “courts should not read into the patent laws limitations and conditions which the legislature has not expressed.'” Diamond v. Chakrabarty, supra, at 447 U. S. 308, quoting United States v. Dubilier Condenser Corp., 289 U. S. 178, 289 U. S. 199 (1933).”

    MM: Recognize that anything and everything that is created by man can not be distinguished from a composition “found in nature” from the moment that the composition is created.

    Wrong.

    1. Television Sets

    2. Cell Phones

    3. Plastic Jugs

    4. Any series of steps that produce an objectively measurable guaranteed result………

    MM: A hot dog with a novel pattern of piranha bites is no less a “product of nature”

    A hot dog is made by man and it’s method of being manufactured can be classified as a process as well for 101 statutory purposes.

    MM: If the Federal Circuit and its hapless clerks are too dense to acknowledge this issue I guarantee you that the Supreme Court’s clerks are not.

    The CAFC and the Supreme Courts and their clerks apparently ignore you and your theories as none have been included in their holdings. On the other hand “Integration Analysis” has been explicitly used and recognized by the Supreme Court and the USPTO.

    See Prometheus holding: .. the basic mathematical equation, like a law of nature, was not patentable. But it found the overall process patent eligible because of the way the additional steps of the process “integrated” the equation into the process as a whole.” (12 MAYO COLLABORATIVE SERVICES v. PROMETHEUS LABORATORIES, INC. describing Diehr. Opinion of the Court) “See From the Syllabus. Emphasis added.

    Also see the Official USPTO Office Guidelines on Integration Analysis:

    The concept of integration, and the word itself, is used in four distinct sub sections of USPTO Guidelines for 101 statutory analysis. Changing everything from M or T to the buttressing Diehr’s Concept and Application Test/Analysis as follows:

    1. To show “integration”, the additional elements or steps must relate to the natural principle in a significant way to impose a meaningful limit on the claim scope. The analysis turns on whether the claim has added enough to show a practical application.

    2. Along with “integration”, the additional steps must be sufficient to ensure that the claim amounts to significantly more than the natural principle itself by including one or more elements or steps that limit the scope of the claim and do more than generally describe the natural principle with generalized instructions to “apply it.”

    3. A machine or transformation that is merely nominally, insignificantly, or tangentially related to the steps or elements, e.g., data gathering or data storage, would not show integration. This claim would pass Inquiries 1-3 in the above analysis as it is a process that includes the Arrhenius equation as a limitation, with additional steps that “integrate” the Arrhenius equation into the process and are sufficient to narrow the scope of the claim so that others are not foreclosed from using the Arrhenius equation in different applications.”

    MM: “Not unlike the b.s. in Diehr about “claim dissection.”

    Not Dicta, the Diehr case turned on the express prohibition against dissection. See Diehr: “A claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula, computer program, or digital computer. Respondents’ claims must be considered as a whole, it being inappropriate to dissect the claims into old and new elements and then to ignore the presence of the old elements in the analysis. The questions of whether a particular invention meets the “novelty” requirements of 35 U.S.C. § 102 or the “nonobviousness” requirements of § 103 do not affect the determination of whether the invention falls into a category of subject matter that is eligible for patent protection under § 101. Pp. 450 U. S. 185-191.”

    That concludes today’s lesson. Next week your assignment is to perform the “Integration Analysis” on Ultramercial’s claims, using the Official USPTO Guidelines on Integration for instructions.

    ::CLASS DISMISSED::

  59. 170

    And if I was as my Birth Cert. says Guerwoods and Marcella’s whoever claims they are because they happen to be my Twin.. Tuff tooties! You ain’t Guerwoods! BUT I AM HAHAHAHAHAHA

  60. 168

    I also shudder to think what clerk is stup id enough to believe that a halftoned image is a “computer data structure”.

    6, the old adage, “Better to remain silent and be thought a fool…” comes to mind.

  61. 166

    ” “I don’t have any hard questions for you, just the usual strawman/wife-beating variety.”

    It is not a straw man to state that you duck, and dodge the “Integration Analysis” . That is a fact. Every time you post in celebration of the Prometheus 9-0 decision you celebrate the very analysis you are afraid to perform and even acknowledge exists. Yet this very analysis is now required of the entire patent examiner corps.

    MM, why are you so afraid?

  62. 165

    Oh, and if you need further instruction on ” Integration Analysis, please see the Official USPTO Guidelines, which incorporates “Integration Analysis in the Courts previous precedents. Changing everything from M or T to the buttressing Diehr’s Concept and Application Test/Analysis. I do find it quite odd that you ignore the Court and the Office on this most telling and crucial point of patent law.

    “1. To show “integration”, the additional elements or steps must relate to the natural principle in a significant way to impose a meaningful limit on the claim scope. The analysis turns on whether the claim has added enough to show a practical application.

    2. Along with “integration”, the additional steps must be sufficient to ensure that the claim amounts to significantly more than the natural principle itself by including one or more elements or steps that limit the scope of the claim and do more than generally describe the natural principle with generalized instructions to “apply it.”

    3. A machine or transformation that is merely nominally, insignificantly, or tangentially related to the steps or elements, e.g., data gathering or data storage, would not show integration.

    This claim would pass Inquiries 1-3 in the above analysis as it is a process that includes the Arrhenius equation as a limitation, with additional steps that “integrate” the Arrhenius equation into the process and are sufficient to narrow the scope of the claim so that others are not foreclosed from using the Arrhenius equation in different applications.” ( USPTO Official Guidelines )

  63. 164

    Breyer stated that Diehr was most on point.

    “LOL. And then what happened? LOL. 9-0.”

    Yes, 9-0 for Integration Analysis. Remember it’s Diehr’s concept and application analysis that is controlling precedent, with Prometheus’s “integration” as the key to as the Court said: :transform the process into an inventive “application” of the formula. ( See Prometheus )

    “The Court pointed out that the basic mathematical equation, like a law of nature, was not patentable. But it found the overall process patent eligible because of the way the additional steps of the process “integrated” the equation into the process as a whole. Those steps included “installing rubber in a press, closing the mold, constantly determining the temperature of the mold, constantly re- calculating the appropriate cure time through the use of the formula and a digital computer, and automatically opening the press at the proper time.” Id., at 187. It nowhere suggested that all these steps, or at least the combination of those steps, were in context obvious, al­ ready in use, or purely conventional. And so the patentees did not “seek to pre-empt the use of [the] equation,” but sought “only to foreclose from others the use of that equa­ tion in conjunction with all of the other steps in their claimed process.” Ibid. These other steps apparently added to the formula something that in terms of patent law’s objectives had significance—they transformed the process into an inventive application of the formula.”

  64. 163

    “I look forward to the CLS decision being ripped to shreds and tossed in the wastebasket.”

    Let us offer the instant decision as an offering to the gods of preemption. Surely they will smile upon us.

  65. 162

    “and examiners as ”

    Well, r tar ded ones that are unfamiliar with the animal called claim construction.

    Simply construing them as products with instruction structures and watching as hilarity ensues with 101, 112 and 102 is priceless.

  66. 161

    Another sacrifice upon the almighty alter of preemption! High priests, bring the wood!

    “To salvage an otherwise patent-ineligible process, a computer must be integral to the claimed invention, facilitating the process in a way that a person making calculations or computations could not. ”

    That right there is going out the window shortly as it is contrary to lawl. There is no way to “salvage” an “otherwise” ineligible claim, at least in so far as you’re still trying to claim ineligible subject matter with your claim. Such is blatantly just another species of the draftsman’s trickery that was just addressed in Prom and had been indirectly addressed in BFDB. The only way to quote “salvage” an ineligible claim is to stop trying to claim the ineligible subject matter causing the problem.

    “In that case, the asserted patents claimed processes for enabling a computer to render a halftone image of a digital image by comparing, pixel by pixel, the digital image against a twodimensional array called a “mask.” ”

    Look at that, the CAFC finally realizes what the facts were in that case. Too bad they can’t now go back on their ruling.

    “We reversed the district court’s grant of summary judgment that the asserted claims were invalid under § 101, concluding that the processes were not “so manifestly” abstract as to override the statutory language of § 101.”

    Contrary to lawl…

    “In so holding, we observed that the claimed
    “invention presents functional and palpable applications in the field of computer technology.””

    Technically only one application… the only application for such a two dimensional array…

    “First, the claimed processes in Research Corp. plainly represented improvements to computer technologies in the marketplace.”

    Well, an improvement to arrays of numbers anyway.

    “For example, as compared to the prior art, the “inventive mask produce[d] higher quality halftone images while using less”

    Actually the mask itself only produced “better” 1’s and 0’s inside a computer.

    “the method in Research Corp., which required the manipulation of computer data structures (the pixels of a digital image and the mask) and the output of a modified computer data structure (the halftoned image), was dependent upon the computer components required to perform it.”

    It not only “required” it, it was solely about manipulating computer data structures. And the mask was not manipulated at all, it was provided at the outset if memory serves. I also shudder to think what clerk is stup id enough to believe that a halftoned image is a “computer data structure”.

    Microsoft should have appealed in Research Corp.

    I really do think that if the CAFC would simply write out what the mask is, in longhand form, every time they try to justify their boo boo they’d correct it faster.

    ““inventive mask produce[d] higher quality halftone images while using less”

    Even trying to say “inventive TWO DIMENSIONAL ARRAY produce[d] higher quality halftone images while using less” just sounds rtar ded.

    “Second, the method in Research Corp., which required the manipulation of computer data structures (the pixels of a digital image and the mask) ”

    Again, writing it out long hand, “Second, the method in Research Corp., which required the manipulation of computer data structures (the pixels of a digital image and the TWO DIMENSIONAL ARRAY), it just sounds r tar ded.

  67. 160

    “if you invent a composition which vastly improves one’s ability to observe an otherwise useless composition found in nature, you should be denied a patent because you’ve “pre-empted” everyone else from “using” the natural composition in the manner enabled by the invention”

    Well I will consider substantive debate on this subject through, for this thread at least, but I will say this: that is amazingly close to my “argument”, aka what the law demands. But not quite. I would go with something a little bit more like this:

    “if you invent AND CLAIM a composition which vastly improves one’s ability to observe an otherwise useless composition (or phenomena etc) found in nature, you should be denied a patent because you’ve “pre-empted” everyone else from “using” the natural composition in the manner enabled by the invention” … because what you have claimed covers the only realistic/substantive things which one would use that natural composition (judicially excepted subject matter) for.

    You will of course remember that a certain Morse invented just such a composition. And of course he could have a patent on his very specific device, because those claims did not stop everyone from using the phenom. But as soon as he claimed just a generic device where the claim did have that effect, it died.

    But on the whole, your education on the preemption doctrine is coming along swimmingly. You have literally made leaps and bounds since last year so far as I can tell. Now that you know it, it will be something when you accept it.

    I was somewhat amused by the deja vu that I was struck with when I heard you channeling NWPA with this gem:

    “Indeed, your argument is essentially that Myriad’s claimed compositions have too much utility. ”

    You practically took it right out of his mouth. He literally said nearly or exactly that not a year or two ago although obviously he was talking about his algorithms that he wanted to save. And I appreciate you guy’s having this view on what the law demands. Perhaps sometime in the future the USSC will change it slightly.

  68. 159

    Ned,

    What precisly is the “constitutional” question at stake?

    Keep in mind that trade secret rights are not a part of the constituional patent power and any time under that benefit cannot be combined with an “unlimied times” argument under the constitution.

    Venerating great names of jurisprudence blindly is not true veneration.

  69. 158

    Their test cannot be consistent with the Supreme Court holding

    Ned, before we can discuss, you need to show you understand what holding is in regards to the Chakrabarty case.

    Frankly, you are all over the map on that case, seemingly making things up to go with what suits your views on different issues of law on any particular day.

    I see no point in discussing this with you.

    Pass.

  70. 157

    How about you stop being a coward and perform the “Integration Analysis” from the Official USPTO Guidelines to Ultramercials claims?

    MM: :: Silence::

    Man, this blog has the biggest cowards.

  71. 156

    su ckie Diehrs claims are integrated and they do use old steps and new thoughts

    Another su ckie “argument”.

    Man, this blog has the d-mbest trolls.

  72. 155

    anon, re adrenalin.  We really need to discuss the issue as the government frankly admits that their substantial structural identity test would overturn Parke-Davis.  Their test cannot be consistent with the Supreme Court holding in Chakrabarty.
     
    Therefor, I propose that structural identity test is wrong.

  73. 154

    anon, I agree that the legislative history on this issue is unmistakeable.  I think, for this reason as well, the new statute is plainly unconstitutional as it allows long trade secret use followed by a patent.  That issue was settled long ago, in 1829, by the US Supreme Court in a case written by story and in which Marshall joined.  The power of the voices of these two justices can still be hear despite the distance of years.
     
     

  74. 153

    But do let me know if you become aware of a claim in the form [oldstep]+[newthought] that you believe is sufficiently “integrated”.

    Diehrs claims are integrated and they do use old steps and new thoughts. In fact many process claims use old steps and new thoughts all the time but their patent eligibility is not based on such. So what would be the point?

    Now how about you stop being a coward and perform the “Integration Analysis” from the Official USPTO Guidelines to Ultramercials claims?

    :: Silence::

    Are you afraid to accept the challenge?

    :: More silence::

    Or does MM simply stand for Mental Midget?

    Ding Ding Ding we have a winna!

  75. 152

    MM had his hopes dashed and heart broken when Bilski did not overturn Diehr, or crush business methods and software patents.

    Then Prometheus’s use of Integration Analysis 9-0, followed by the new Official USPTO Guidelines incorporating “Integration Analysis”, completely destroyed MM.

    A one two punch and down goes MM, and the rest of the vocal minority with him.

  76. 151

    su ckie (“configured” is one of those speical term of art words

    Increasingly less special by the day, it would seem.

  77. 150

    using purely functional language

    sort of like isolating or purifying, huh?

    machine simply follows a set of

    nope – “configured” to means a change in the machine. The machine is not “following” (“configured” is one of those speical term of art words, you know, like “isolating” and “purifying,”
    only more so, see Alappat.

    does the proper application of the written description doctrine

    you wish (and sorry, your wish is not granted).
    Someone give NAL a call, MM is due for his fifty-millionth beatdown on the written description doctrine. Maybe Mm should explain what he understand that “proper” application to mean, since right now, his understanding only exists in his own head.

  78. 149

    burden was on the patentee to prove the validity of their granted patent

    Nice, Please move the goalposts back.

    Thank you.

  79. 146

    su ckie you would be faced with that very same “proving a negative” in trying to enforce your patent

    I did not know that the burden was on the patentee to prove the validity of their granted patent. Can you provide a cite for that? Or maybe show me a complaint where proof of validity was filed along with a recitation of facts showing infringement (i.e., facts such as the sale of the item described in the claims by the accused infringer). I’d like to see that, su ckie.

    Also: this will be the last comment regarding your inane sideshow until you link me to such a complaint. Thanks.

  80. 145

    The Story I was told is that old man Hayes was drunk.
    But they didn’t punish drunks then. so i guess I knew that it was a little suspect with all the casualties.

  81. 144

    These are not answers MM.

    It’s too bad you don’t think so, su ckie. Maybe next time try a hypothetical that doesn’t involve acts of god that have never occurred and never will.

  82. 142

    su ckie The computer-readable media claims going down actually hurt MM’s position that “Myriad claims are to compositions and thus something other than 101 is enough.”

    Different issues, su ckie. Myriad’s compositions are claimed in structural terms and as such may be readily distinguished from both “naturally occuring” and man-made compositions. Nobody (not even 6) has ever suggested that Myriad’s composition claims be interpreted as method claims.

    B-claims, on the other hand, are claimed using purely functional language and are currently being treated by courts and examiners as method claims. The claims recite the steps which will be carried out by a machine, where that machine simply follows a set of (invariably undisclosed) “instructions” written in a computer-readable language on the claimed composition. It’s certainly true that other provisions besides 112 should be enough to invalidate B-claims (112 comes to mind, as does the proper application of the written description doctrine) but that is neither here nor there.

  83. 140

    Not only that, but you might try reading the case before “celebrating” over 101 Integration Expert’s views as such celebration is far too premature (and simply unwarranted).

    Actually, it was me that suggested that 101 Integration Expert demonstrate his approach to this claim, and I wasn’t celebrating anything other than that I think the court is doing a much better job articulating the law in this case.

    I appreciate your analysis however. A couple questions – is the dependent claim that adds the computer directed to statutory subject matter, or is the computer not integrated enough? If this dependent claim doesn’t meet Section 101’s requirements, then how do we know when a computer is integral enough? Perhaps I’m asking for an elaboration on your comment that “the means exist in material form outside of the ‘computerized'” – I didn’t understand that.

  84. 139

    required of other composition claims

    composition claims…?

    You mean like “isolated” or “purified” as described structurally?

    T O O L

  85. 138

    Here’s a question: would it help if the computer-readable medium was described structurally, as required of other composition claims, to distinguish it from other computer-readable mediums. It would seem to have a substantial and specific utility and could not easily be characterized as an abstraction with a bogus limitation appended to it.

    I’m not a proponent of computer-readable medium claims, so I’m probably not the right person to answer that question. I don’t have any problem with the general notion that (patent-eligible) structure can be defined, at least partly, with language that recites function. I don’t think computer-readable medium claims do that, however, because the recited functions in those claims don’t imply any structure at all, since they don’t identify any particular computer. As IANAE has discussed elsewhere, given a desired functionality and a computer-readable medium having any random set of bits on it, it is possible to build a processor that interprets that pre-existing set of bits to carry out the desired functionality. I think this ability to magically convert an object from non-infringing to infringing, without changing its structure at all, is fatal to Beauregard claims.

    Your question works better if you apply it to the so-called “system” claims. I think the answer is yes – if the claim specified a particular mapping of the functionality to several processors, for instance, it might well pass muster under Section 101, as the claims in CLS did. The claim would be considerably less valuable, of course.

  86. 136

    Did I ever tell you about the woman named Maxine that worked across the street right where I got hit by the Car? She was having an affair with one of the Pharmacists. They began to fill her with Drugs on a daily basis when she saw what happened to me to keep her quiet. She ended up having HER Child tkaen from her after a few years of daily drug overdoses. Another poor soul destroyed because of the Evil.
    Here’s another one. My best friends Mother saw it too. Right after that they received lots of money to put down on a house.

  87. 135

    Did I ever tell you about the time I worked as a waitress and a woman came in there regularly ( practically every single day) with a child named Julie. I had this overwhelming feeling this was my Child. The woman didn’t know how I felt or what I thought because it was just a feeling. I then said something to Marcella the evil Witch of the east about it. you know the woman that got my other Sister to sign my child away from me, and I never saw them again. I have passed through these instances many times in my life. I think she sold her to them!

  88. 134

    MM,

    Keep LOL’ing as your comments are shown to be worthless.

    That laughter you hear is not people laughing with you.

    T O O L

  89. 133

    I can’t believe it’s not Friday. Sure feels like it.

    Try not hitting the bottle before lunch and maybe it won’t “feel like a Friday.”

    T O O L

  90. 132

    This case is of limited value and easily distinguished (elements of tax related and reporting of such).

    Not only that, but you might try reading the case before “celebrating” over 101 Integration Expert’s views as such celebration is far too premature (and simply unwarranted). The case actually reinforces what has been posted be 101 Integration Expert.

    This case easily falls to the “do it on a computer side (computerized means for is non-integrated, as the means exist in material form outside of the “computerized”) side of the CLS decision (it is in dependent claims that the “computerized” limitation appears – “The plain language of the independent method claims does not require a computer). And later “To salvage an otherwise patent-ineligible process, a computer must be integral to the claimed invention” And also “Here, in contrast, the district court evaluated the limitations of the claims as a whole before concluding that they were invalid under § 101.

    The computer-readable media claims going down actually hurt MM’s position that “Myriad claims are to compositions and thus something other than 101 is enough.” “Most recently, in CLS Bank International v. Alice Corp., we held that the format of the various… claims asserted in that case ‘d[id] not change the patent eligibility analysis under § 101.’… As the Supreme Court has explained, the form of the claims should not trump basic issues of pat-entability. See Flook, 437 U.S. at 593 (advising against a rigid reading of § 101 that “would make the determination of patentable subject matter depend simply on the draftsman’s art”); see also Mayo, 132 S. Ct. at 1294.

    Clearly, 101 applies regardless of the enumerated category.

    More self-defeatiing and premature celebration from MM, displaying his “depth” of handling legal analysis in his typically comic manner.

    Here’s a hint:
    First Step: Read the Decision.
    Second Step: Understand the Decision.
    Third Step: Post.

    Follow these steps so that you don’t have to remove your foot from your mouth.

    T O O L

  91. 131

    SARAH said…

    Dear Administrators of This Blog,

    Please continue to block the IP address used by Sarah on a regular basis.

    Thanks.

  92. 129

    LB we already knew that putting an unpatentable process on a computer-readable medium wasn’t going to help.

    Here’s a question: would it help if the computer-readable medium was described structurally, as required of other composition claims, to distinguish it from other computer-readable mediums. It would seem to have a substantial and specific utility and could not easily be characterized as an abstraction with a bogus limitation appended to it.

    No doubt the claim would be very narrow and deemed “worthless” by the proponents of computer-implemented subject matter.

    But just as a thought experiment … wouldn’t such a properly claimed composition of matter be eligible for patenting? Do we want to get into the business of declaring novel non-obvious compositions of matter (e.g., new musical instruments; new typewriters) ineligible for patenting merely because their sole utility is in the creation or effectuation of ineligible subject matter?

  93. 127

    Why would the Supreme Court ask for the decision to be reconsidered if in fact such would be “brushed aside in two seconds.”

    For the same reason that the Federal Circuit sent Therasense back down to Judge Alsup: because they can.

    Breyer stated that Diehr was most on point.

    LOL. And then what happened?

    LOL. 9-0.

  94. 126

    just like Diehr had no relevance to Prometheus’ [oldstep]+[newthought]

    Breyer’s aides must have missed that, as Breyer stated that Diehr was most on point.

    The case was limited to a particular set of facts (it even says so)

    Then the Supreme Court missed that too by granting the GVR.

    Why would the Supreme Court ask for the decision to be reconsidered if in fact such would be “brushed aside in two seconds.”

    Think man before you post.

  95. 125

    Well yes, but we already knew that putting an unpatentable process on a computer-readable medium wasn’t going to help.

  96. 124

    Perhaps 101 Integration Expert would be kind enough to demonstrate his integration analysis of this claim?

  97. 123

    Even better: “computer-readable medium” claims went down with the ship.

    And this was all on Summary Judgment!

    LOLOLOLOLOLOLOOL!!!!!!!!

    I can’t believe it’s not Friday. Sure feels like it.

  98. 122

    Thank gob for the rain to wash this trash off the sidewalk:

    9. A method for managing a life insurance policy on behalf of a policy holder, the method compris-ing the steps of:

    generating a life insurance policy including a stable value protected investment with an initial value based on a value of underlying securities;

    calculating fee units for members of a management group which manage the life insurance policy;

    calculating surrender value protected in-vestment credits for the life insurance policy;

    determining an investment value and a value of the underlying securities for the current day;

    calculating a policy value and a policy unit value for the current day;

    storing the policy unit value for the cur-rent day; and one of the steps of:

    removing the fee units for members of the management group which manage the life insurance policy, and accumulating fee units on behalf of the management group.

    When the insignificant computer-based limitations are set aside from those claims that contain such limitations, the question under § 101 reduces to an analysis of what additional features remain in the claims. See Mayo, 132 S. Ct. at 1297 (questioning, after setting aside the claimed law of nature, “[w]hat else is there in the claims before us?”).

    The asserted claims require determining values—for example, “an initial value based on a value of underlying securities,” “fee units,” “surrender value protected investment credits,” “an investment value and a value of the underlying securities for the current day,” and “a policy value and a policy unit value for the current day” and then “storing,” “removing,” and/or “accumulat-ing” some of those values. ’792 patent col.16 l.55–col.17 l.8. As the formulae in the specification indicate, the determination of those values, and their subsequent manipulation, is a matter of mere mathematical computation.

    The district court correctly held that without the computer limitations nothing remains in the claims but the abstract idea of managing a stable value protected life insurance policy by performing calculations and manipu-lating the results.

    Buh-bye! I look forward to the CLS decision being ripped to shreds and tossed in the wastebasket. Now that the Federal Circuit has it figured out, maybe patent applicants will figure it out.

  99. 120

    6 You could still study Benson’s algorithm, Bilski’s manner of hedging, prom’s correlation, and flook’s algorithm but their claims still went down the tubes.

    You write like a lawyer, 6, and I don’t mean that as a compliment. That said, you are probably hundred times more intelligent and honest than su ckie so you’ve got that going for you.

    None of the cases you refer to raise the issues (allegedly presented by Myriad’s composition claims so whether they “went down” or not is beside the point. The most relevant case would be Chakrabarty where the claims did not “go down” and Brenner, where the claims did go down because they lacked substantial and specific utility. We could also recognize the Federal Circuits decision in Fisher, following Brennan, which found that “expressed sequence tags” (aka ESTs, which are nucleic acid compositions very similar to Myriad’s composition claims) with no known utility other than “use them to study gene expression” were ineligible for patenting.

    In contrast to Fisher’s ESTs, it would be impossible for anyone to argue that Myriad’s claimed compositions lack a substantial and specific utility. Indeed, your argument is essentially that Myriad’s claimed compositions have too much utility. As noted above, your argument makes no sense.

    Your circular reasoning essentially goes like this: if you invent a composition which vastly improves one’s ability to observe an otherwise useless composition found in nature, you should be denied a patent because you’ve “pre-empted” everyone else from “using” the natural composition in the manner enabled by the invention.

    That’s your argument, 6. As noted above, it makes no sense. It’s not Myriad’s fault that synthetic non-nucleic acid probes (e.g., protein-based technology) for specifically detecting genomic mutations is a relatively young field. According to Everyone’s Favorite Theory, granting patents on Myriad’s compositions is exactly what we want to be doing to encourage the development of competing (and possibly improved) technologies.

    Prometheus has no relevance to Myriad’s composition claims, just like Diehr had no relevance to Prometheus’ [oldstep]+[newthought] claims. Any language from Prometheus’ that will the ACLU will attempt to use against Myriad will be brushed aside in two seconds. The case was limited to a particular set of facts (it even says so), which aren’t presented by Myriad’s claims.

  100. 119

    “Copy the answer here. I need a laugh.”

    It’s not too difficult to find

    Then find it and copy it here, su ckie.

  101. 118

    su ckie “Any and every attempt to devise a universal theory for patent ineligiblity which applies to the general classes of statutory subject matter will fail miserably”

    Thank you for agreeing with me as your own pet theory of “[oldstep]+[newthought]” will also fail miserably.

    I’m not agreeing with you, su ckie. Anyone with half a brain will immediately understand the following (in part, because I’ve said so expressly dozens of times before): the indisputable fact that [oldstep]+[newthought] claims are ineligible for patenting is the furthest thing from a “universal test” as it plainly applies to a narrow and specific class of inventions.

    And it’s not my “pet theory”, su ckie. It’s the law. But do let me know if you become aware of a claim in the form [oldstep]+[newthought] that you believe is sufficiently “integrated” (LOLOLOLOL) to be patent ineligible. And don’t forget to explain exactly why you believe that such a claim is sufficiently integrated, in contrast to the Prometheus claims which clearly were not. And finally, don’t forget that Diehr was surely not a claim in the form [oldstep]+[newthought]. At least, it was never construed as such by any court.

    You’ve got your work cut out for you! Now STFU and join the other trolls in your daily circular thumb-sucking session.

  102. 117

    Ned,

    Rather than discussing adrenalin, you might be more interested in discussing the re-released USPTO notice, and in part their take on Metallizing Engineering (over-ruled).

    Hal Wegner points this out in his email broadcast.

    The USPTO’s position:

    AIA 35 U.S.C. 102(a)(1) uses the same term (‘‘on sale’’) as pre-AIA 35 U.S.C. 102(b). The pre-AIA 35 U.S.C. 102(b) ‘‘on sale’’ provision has been interpreted as including commercial activity even if the activity is secret or private. See, e.g., Metallizing Engineering Co. v. Kenyon Bearing & Auto Parts Co., 153 F.2d 516 (2d Cir. 1946). However, 35 U.S.C. 102(a)(1), unlike pre-AIA 35 U.S.C. 102(b), contains the residual clause ‘‘or otherwise available to the public.’’ See 35 U.S.C. 102(a)(1). The legislative history of the AIA indicates that the inclusion of this clause in AIA 35 U.S.C. 102(a)(1) should be viewed as indicating that AIA 35 U.S.C. 102(a)(1) does not cover non-public uses or non-public offers for sale. See 157 Cong. Rec. S.1370 (Mar. 8, 2011) (The Committee’s understanding of the effect of adding the words ‘or otherwise available to the public’ is confirmed by judicial construction of this phraseology. Courts have consistently found that when the words ‘or otherwise’ or ‘or other’ when used as a modifier at the end of a string of clauses restricts the meaning of the preceding clauses.).

  103. 115

    Let's talk adrenalin. 
     
    The same exact chemical is in nature as in purified. 
     
    Under the government test, purified adrenalin is ineligible.  That is their read of Chakrabarty  — structural identity.
     
    Discuss.

  104. 114

    Ned,

    I think you are looking for an unrealistic level of specificity that will not be found.

    None of the judicial exceptions are meant to have such an absolute brightline effect. For example, could you deliniate “what is forbidden” from the Abtract Test as given in the Supreme Court Bilski decision? Or can you tell me how much is “enough” given the Supreme Court Prometheus decision?

  105. 113

    But, you cannot even tell me what is forbidden.  That is the problem we are having. 
     
    Stop talking in nonsensical abstractions, please!  Give us examples so that we can understand what you are talking about.

  106. 112

    6, It the law is contrary to reason, to justice and only benefits big, international corporations…..
     
    Well I answered my own question.

  107. 111

    “May or may not.”

    What is your test?

    Is that a serious question? The test is whether or not the claim effectively covers the judicial exception. It is the same test for seeing if any judicial exception applies regardless of the enumerated category. The Courts have made abundantly clear that clever draftsmanship of setting a claim in one enumerated category or another will not defeat the application of the judicial exceptions.

    Please stop trying to kick up dust on a nonissue.

  108. 110

    Any and every attempt to devise a universal theory for patent ineligiblity which applies to the general classes of statutory subject matter will fail miserably

    Thank you for agreeing with me as your own pet theory of “[oldstep]+[newthought]” will also fail miserably.

    It appears that you have read my reply (as I said as much, needng only a single counter example to disprove your theory). I suspect that you are feigning the “I can’t find it” because you don’t know what to do with yourself seeing as I have answered your questions and emasculated your gamesmanship.

    You might actually try addressing the issues on the merits and see where that leads.

  109. 109

    Copy the answer here. I need a laugh.

    It’s not too difficult to find. It’s the third post down on the very first page of comments.

    Logic Su ckie Boy

    Enough with you playing the clown. Act like you have an ounce of respect for anyone besides yourself.

    You act like a knowitall bully, but all you are is a first class jerk who is not able to handle any direct questions and hides behind labels and insults. Time to put away the labels and insults and get down to business. As you admonish 6, “Try growing a pair.”

  110. 108

    As for the rest of your hypothetical, it depends

    These are not answers MM.

    I’m very curious to see you provide answers instead of questions. What do you think is the current applicable law (and not what you think the law should be)?

    As to proving a negative, if you acquiesce to the current law forbidding the patenting of phenomena of nature as including the forbidding of articles of nature (such as crystals or plants, even newly discovered, for example), it is up to the patent holder to prove infringement and you would be faced with that very same “proving a negative” in trying to enforce your patent. Why? Because that’s how the law works. The plaintiff must always prove infringement by a prepondernace of the evidence.

    The spotlight is all yours. Try not to choke, dodge, weave, prevaricate, or run away.

  111. 107

    Right. Because the Supreme Court never realizes that it needs to clarify or reverse itself.

    Right, because all of a sudden you think the Supreme Court needs to “clarify” or reverse itself…

    …In other words, the Supreme Court holds something that scares you enough to slip up and make this admission.

    Svcks to be you.

  112. 106

    “Actually the court in Bilski was concered about patenting an abstraction. ”

    I’m not going to argue with you about Bilski. We have discussed it to death over years. And we have enough on our hands in the instant case.

    “Any and every attempt to devise a universal theory for patent ineligiblity which applies to the general classes of statutory subject matter will fail miserably. ”

    Nah, preemption does just fine thanks. It involves using the old noggin’ from time to time, and sometimes tar ds in authority will boink it up, but it isn’t that bad.

    But in any case, here, you may have the final word. I doubt if there is much left to say. I have said that preemption will likely end the claim without Myriad providing some substantive sht that isn’t preempt, you say pish posh, you don’t even have to worry about the preemption doctrine, it doesn’t even apply to these kinds of claims. I will add finally that at the least, you will see at the USSC, regardless of outcome, that it will be decided on preemption. You may finish off whatever it is you’d like to add.

  113. 105

    “Nice moving of the goalpost, 6!!!!!”

    Actually the goalpost was already moved over at patent docs, but if you weren’t privy to that convo, sorry bro. Kev likewise presented the “oh but you can still study it!” stuff, as I told you in this thread I thought already. I don’t have time to copy/paste the whole of my conversations on this matter in every last thread, the issues are too large and numerous, and there are too many people with their own tar dation to work through. I’m only one man, I can only help the unwashed masses so much.

    However, I will grant you, if the court will buy your “oh well they can still study it!” line then so be it, I have no problem with it. I can promise you that they will not though. You could still study Benson’s algorithm, Bilski’s manner of hedging, prom’s correlation, and flook’s algorithm but their claims still went down the tubes. Wonder why that is? It could be because of what I’ve said for the last 4 years. Because they were all just trying to get “the good stuff” from the judicially exempt subject matter while leaving some shty subject matter behind so they didn’t get busted by 101. Benson wanted all digial computer uses. Flook wanted all digital computer uses in a certain field. Bilski wanted all uses in energy hedging. Prom just wanted pretty much everything.

    “So now in addition to the caveat we discussed earlier, you’d like to introduce into your analysis a caveat that says only some “uses” of the “natural composition” count for the purpose of determining whether pre-emption occurs.”

    Anything not lolable should probably do you in a marginal case where the uses that are preempt by the claim are few. But as I’ve noted to you many hundreds of times, if there are naught but a few uses here or there that are not preempt then your claim is probably going down. 30 non-lolable uses should probably win a slightly less than marginal case np. But I cannot say in the instant case, you have to weight the not preempt uses against what the claim preempts. If the claim gets 1 millon nonlolable uses then compared to the 30 that were left out, you’re still effectively patenting the underlying judicial exception.

    “And according to you the only “uses” that matter are “substantial” uses ”

    That is my way of framing it, but don’t be surprised if you start seeing other people pile on using the same or similar terminology, since I’m apparently the only person in the world that can lead in this subject. And make no mistake, this is me leading the discussion on this legal matter right now, in real time.

    To me, the inquiry is simpler, vastly simpler, than you guys are trying to make it. But if you want to get all complicated, then I can get all complicated with you.

    “And according to you the only “uses” that matter are “substantial” uses and (this is almost too funny to believe) the only uses that are “substantial” in your view are the uses which lead to the prodcution of the claimed composition!”

    No, they happen to be in this case. It will vary in other cases, and by the art in which the discovery is made. Algorithm in Benson, digital comps, hedging in Bilski, hedging energy costs etc. etc. Were we talking about the Benson cases you’d be scoffing “but the only substantial uses in your view are the uses which are related to a digital purpose computer!”. And I’d be like, um, yeah, w t f else do you really want me to believe you’re going to do with BCD to binary? The same way the court did.

    Put it simply, if you’re only leaving out of the scope of your claimed applications of the judicially exempt subject matter ones that nobody gives two shts about, then you’re just trying to preempt the exempt subject matter without getting in trouble for it. Precisely what the USSC does not want and which it has ruled time and again it will stop.

    I know you don’t like this MM, but it literally is no more complicated than that.

    “You think Breyer isn’t going to see through your hogwash? ”

    You think he isn’t going to see through yours? Breyer literally just joined 8 other people supporting my “hogwash”. Sorry if you missed that one.

    “So what?”

    So preemption is a concern.

    In any case, your understanding of the preemption doctrine is at least a bit more expanded now. Good talking to you bro, now let’s be patient and see if the case doesn’t turn out precisely how I have said, or perhaps, precisely how you have.

  114. 104

    “Anyone and everyone can digest those chromosomes with restriction enzymes and perform RFLP analysis or some other chromosomal analysis on those chromosomes.”

    So they can study them correct? All good and well, not exactly the subject which I’m concerned with. I’m looking for useful applications here bro. Substantial “uses”.

    Nice moving of the goalpost, 6!!!!!

    Amazingly fast and amazingly far.

    So now in addition to the caveat we discussed earlier, you’d like to introduce into your analysis a caveat that says only some “uses” of the “natural composition” count for the purpose of determining whether pre-emption occurs. And according to you the only “uses” that matter are “substantial” uses and (this is almost too funny to believe) the only uses that are “substantial” in your view are the uses which lead to the prodcution of the claimed composition! LOL. A magical circular joke of an argument. Well done, 6. You think Breyer isn’t going to see through your hogwash?

    I’ll say it again so there’s no misunderstanding, 6: the composition claims do not prevent ANYONE from using the “unisolated form of the gene”, for any purpose. They *do* prevent people from using the claimed composition, whether that claimed composition was obtained entirely synthetically or obtained from treatment of the “unisolated form of the gene.” So what? This is news to no one.

    You could also use Bilski’s hedging method to hedge against risk in childhood games between baby brothers. Funny thing though, the USSC was concerned about the substantial uses.

    Actually the court in Bilski was concered about patenting an abstraction. Are structurally defined chemical compositions “abstractions” on your planet? Please tell us more.

    Any and every attempt to devise a universal theory for patent ineligiblity which applies to the general classes of statutory subject matter will fail miserably. Your “pre-emption” is vacuous, circular, incomprehensible and not generally applicable (it’s not even specifically applicable to this case, which is why you just ate your own foot). And please try to learn something about molecular biology before you spout off easily rebutted bs.

  115. 103

    Obviously

    The one who has coniptions about someone “thinking a new thought” has no coniptions about someone picking up something from nature and using it or selling it.

    T O O L

  116. 102

    it depends on the applicable law. Can you tell me what that law is, or what it should be? And why?

    Nice non-answer from MM, way to take a stand and clearly define your views.

    T O O L

  117. 101

    Is he infringing?

    Obviously.

    As for the rest of your hypothetical, it depends on the applicable law. Can you tell me what that law is, or what it should be? And why? Thanks. In particular, I’m interested in the policy goal you wish to effectuate by destroying patents on novel, non-obvious and useful composition whenever it is shown that “nature” can make the composition. Do you believe that your policy goal is the same as that which was envisioned by the lawyers who created the “phenomenon of nature” exclusion? I’m very curious.

    As for proving a negative, it’s unclear why you are placing that burden on the patentee. Why are you placing that burden on the patentee?

  118. 100

    suckie LOLS – look who wants to stay away from WHATEVER now

    Not at all. I don’t care if Myriad’s composition claims fail under 101 or 103. If they fail under 101, however, I want them to fail for a coherent reason (as they did in Prometheus). I’m sure you understand (not!).

    LOL.

  119. 99

    “And, just because something in known on the moon or in China, why should the US patent be voided on preemption grounds?”

    Because your courts said so. The same reason any US patent is voided on preemption grounds.

  120. 98

    “I have no idea why the USPTO is taking the approach they are taking”

    I’m asking about the gov bro. The solicitor general. Not the USPTO. Perhaps you feel differently about them? Or no?

    “I have no idea who Mr. Hansen is or why you think he’s so great”

    He was arguing for appelee in Myriad. He’s “so great” because he alone, save perhaps for the gov attorney, displays at least a basic understanding of the law he is attempting to discuss. The rest of them just wave their hands around apparently completely ignorant of the topic which is at hand.

    “Perhaps because they don’t believe such a question is relevant to the analysis of novel composition claims with indisputed utility”

    Then they’re begging to be educated here very shortly.

    But, we can be patient and see how well the USSC educates them.

    “Please read that sentence carefully, 6. It is important that you understand the question you are asking and the answer.”

    I understand it quite well. I’m talking legit uses, not made up out of left field tar ded off the wall ridiculous nonsense. You could have used Benson’s algorithm, hypothetically, and ridiculously, to calculate the weight of apples in a grocery store in binary after having done it in BCD. Such nonsense is not relevant to the inquiry.

    “Again: Myriad’s composition claims do not read on the “the whole unisolated gene” and therefore impose no restrictions on anyone as to how that “whole unisolated gene” may be used.”

    You say that, but I’m pretty sure that the main useful use, by far, for that unisolated gene is in making the many synthetic compositions which are claimed. Correct? Mhmmmm I believe so.

    “More specifically, anyone and everyone can freely think about the “whole unisolated gene” without literally infringing the claim.”

    That’s great, but nobody cares. Although I know you’ve talked yourself into believing that they totally do.

    “Anyone and everyone can extract cells from animals which comprise “the whole unisolated gene”.”

    Okay… and?

    “Anyone and everyone can digest those chromosomes with restriction enzymes and perform RFLP analysis or some other chromosomal analysis on those chromosomes.”

    So they can study them correct? All good and well, not exactly the subject which I’m concerned with. I’m looking for useful applications here bro. Substantial “uses”.

    “Anyone and everyone can grow human cells comprising the “whole unisolated gene”.”

    To what end? Or is that more study?

    “Anyone and everyone can dry those cells comprising the “whole unisolated gene”, make a pigment, and paint a picture of Kevin Noonan with them.”

    Thanks for the “uselol”s. I’ll chalk that one up beside using the Benson algorithm to calculate the weight of tomatoes in a grocery store. Something nobody is every going to want to do, but but but you could totally do it! Lol.

    In any event, thanks for the suggestions, although they rather support a finding of preemption rather than not supporting it. Perhaps that is why Myriad isn’t too quick to start pointing out all these “useslol” that you could totally use the unisolated genes for without infringing. If I had to guess anyway.

    “Here’s a question: do you think that when the Supreme Court noted that Prometheus’ claims are effectively claims to ineligible subject matter, the Supreme Court meant that “the claims prevent third parties from using the invention for commercial gain”?”

    Amongst other things. The context differs from case to case. In one case someone might be preempting all research. In another they might be preempting all use in the petrochemical field. What they are concerned with is what the primary uses one would expect to use the judicially excepted subject matter for. Obviously BCD to binary is going into digital computers, but it technically could be used to calculate the volume of your pee in your bladder, how stu pid AI is on a certain scale, or any other wacky thing. You could also use Bilski’s hedging method to hedge against risk in childhood games between baby brothers. Funny thing though, the USSC was concerned about the substantial uses. Just like they will be in this case. As they are in all other cases as well.

    “Please recognize that what was deemed “effectively” to cover ineligible subject matter in Prometheus was a claim that prevented otherwise non-infringing actors practicing the prior art from even thinking about a patent ineligible fact.”

    It is so recognized.

    “That problem dois not presented by Myriad’s composition claims. Not even close.”

    Also recognized. In Myriad the context is different. Just as it was in BFDB.

    “Here’s a very troubling fact for you to ponder.”

    Your prediction about Breyer’s caring or not is not a “fact” bro it is your prediction. But, if Breyer buys into your “useslol” or other “useslol” Myriad eventually spews forth under the Supreme’s scrutiny, then so be it.

    But, we shall have patience and see if, somehow, an analysis besides the one that the USSC has been using for 60+ years now is what they’ll use.

  121. 97

    Modified hypothetical:

    You are granted your patent on separated Q.

    It is wildly successful and you can charge a huge sum for the Q.

    Five years later, a boy in Wisconson witnesses a meteor crash and investigates. He finds that the crash has turned his entire 15 acre topsoil into pure Q. No “isolating” needed. No “purifying” needed.

    He starts selling Q at a price you could not even begin to approach, and yet high enough (still) for the boy to higher the best IP lawyers in the world.

    What do you do? Is he infringing? Are you construing your claims to now cover a phenomena of nature, effectively covering nature itself?

    His Q hits the market and a third party is using the Q. What do you do? How do you prove that the Q the third party is using is not a product of nature?

  122. 96

    That’s another reason the Supreme’s will never adopt the government’s position.

    LOLS – look who wants to stay away from WHATEVER now.

  123. 95

    “If you have a hard question for me that arises from my opinion on that subject, by all means ask it.”

    So what will that do? How does asking people to ask questions when you refuse to answer them help anyone?

    Shorter su ckie: “I don’t have any hard questions for you, just the usual strawman/wife-beating variety.”

  124. 94

    “There is a difference ”

    Which I just got through telling Ned is wholly irrelevant.

    That’s nice. I wasn’t addressing the “relevance” of the difference in the comment from which you quoted me.

    I was instead directly responding to your strange question: “How did you get [the claimed composition] if it doesn’t exist in the world?”

    You asked. I answered.

  125. 93

    Chakrabarty can be read both ways, the four-plasmid bacterium being structurally different than the prior art single-plasmid bacterium. What new functionality was obtained was not make clear. Efficiency was, however, improved.

    What is your thinking on this issue?

    I can tell you what my thinking is: 103 was drafted precisely to address this issue and works perfectly for that purpose.

    That’s another reason the Supreme’s will never adopt the government’s position.

  126. 92

    Malcolm, excellent post there, especially about the shallow abilities of the patent office legal staff, at least on occasion. They, after all, began allowing B-claims.

    I think we might want to ask his position on a hypothetical composition of matter patent, let’s say aspirin. Prior to the patent, the product was unknown on earth.

    Within the life of the patent, however, a Chinese astronaut lands on the moon and discovers native aspirin there, a product of the peculiar chemistry found on that hostile world.

    How does the US patent on aspirin preempt the Chinese from using aspirin discovered on the moon? And, just because something in known on the moon or in China, why should the US patent be voided on preemption grounds?

    When we talk of public rights, what public? The public preempted by the patent or Chinese on the moon? The Chinese are not preempted in any way, except if they want to sell aspirin into the US.

    But how is the above different from the situation we have today where a composition known in China is not prior art in the US? The US patent does not preempt the Chinese.

    We can see 6’s brand of thinking went into making prior use and knowledge universal in the AIA. Universal prior art acts to undermine US inventions of new products and processes just because they might be found in odd locations in the universe by others. The only beneficiary of such a doctrine are the foreign entities who now wants to sell into the US but who are prevented from doing so by the patent given to independent US inventor.

    This KIND of shallow, useless thinking is enough to make one’s skill crawl.

  127. 91

    Ned, I agree.

    the public will not have effective access to a product of nature, a claim to the isolated or purified composition essentially being a claim to the active chemical structure without contaminants

    This argument makes no sense, Ned, so yes: I agree with you that the government is wrong and Chakrabarty is misconstrued (to the extent Charkrabarty’s dicta is even comprehensible).

    Consider the following hypothetical: an old composition exists in the natural world (who cares how it came into being? doesn’t matter at all). The structure is B-X-W-Q-K-X-B, where the letters are somewhat large molecules (comprising 20-30 atoms) and dashes are covalent bonds. I am the first to devise a method of separating Q from the rest of the molecule and purifying it. I show that the compound cures liver cancer. I claim the purified compound.

    Ten years after the patent grant it is discovered that B-X-W-Q-K-X-B functions as a hormone to control liver growth in an Antarctic monkfish. It is also demonstrated that the critical part of the molecule for accomplishing that purpose in the body of the fish is Q. Pure Q is never found in the fish.

    Is my patent destroyed because “the active chemical composition” in B-X-W-Q-K-X-B (a “natural compound”) is Q which, although not identical to my claimed composition because it is “impure”, neverthless “serves the same purpose” in the Antarctic fish?

    That is f—ing insanity, is what it is. It also precisely encapsulates the USPTO’s position.

  128. 90

    Something:

    I think we need to debate what the issue is: the government contends that the difference must be structural, and cannot simply be the structure found in nature shorn of contaminants.  The government would overrule both Parke-Davis and Merck because in both cases the difference was one of utility in that removing the impurities made the compound useful, albeit, structurally identical to the product in nature when the issue of impurities is put to one side.

    Chakrabarty can be read both ways, the four-plasmid bacterium being structurally different than the prior art single-plasmid bacterium.  What new functionality was obtained was not make clear.  Efficiency was, however, improved.

    What is your thinking on this issue?

     

  129. 89

    6, yes.  O'malley told Hanson that preemption was poo-pooed by Prometheus.  But then the government went right back to it.  It is the essence of their argument: the isolated composition is structurally identical to the natural form.  To allow a patent on it "preempts" the public from using the natural form for any purpose.

  130. 87

    Malcolm, consistent with your previous reply, the dicta of Chakrabarty should not be considered binding as the case of minerals was not before the court and they cited no authority where minerals or other such compositions were held to be ineligible.

    The bacterium with four prior art plasmids was clearly both man made and structurally different from the prior single-plasmid bacteria.  The government position also focuses on structure, not function.

    Let's turn our attention to structure vs. function.

    Hand allowed the claims to purified adrenalin because it was useful in the purified form, not that the active chemical composition was structurally different.

    Similarly, the Merck court was convince that purified B12 was useful in that form, not that the active chemical composition was structurally different.

    The government frankly acknowledges that their position would overrule Parke-Davis and Merck.  But they insist that their position is correct because otherwise the public will not have effective access to a product of nature, a claim to the isolated or purified composition essentially being a claim to the active chemical structure without contaminants.

    I think the government position is wrong.  I think Chakrabarty has to have been misconstrued to the extent that structural identity has become the issue.

    Agree?

  131. 86

    6 Ok, I have a difficult question for you, tell me, non-glibbly, why you suppose the united states government argues against you on that issue.

    Generally speaking, I’m not very impressed with the quality of the USPTO’s attorneys. Or perhaps more accurately, I’m not impressed by the quality of their arguments. They are not very thoughtful. They blew Prometheus, which was an easy slam dunk. And they seem to have difficulty persuading the Federal Circuit in cases that appear close but really aren’t … once you find the most compelling argument and learn how to make that argument forcefully and plainly, so a judge can understand it. I guess the answer to your question is : I have no idea why the USPTO is taking the approach they are taking. I do know that ultimatley they will lose, however.

    Mr. Hansen, the only lawltar d who understands wt f is up in this case also argues against you

    I’d love to “argue” with Mr. Hansen. I have no idea who Mr. Hansen is or why you think he’s so great. Does he have nice hair?

    why you suppose it is that Myriad doesn’t simply point out all the uses for the whole unisolated gene that do not infringe

    Perhaps because they don’t believe such a question is relevant to the analysis of novel composition claims with indisputed utility. I’m just guessing.

    Alternatively, it could be because there are literally an infinite number of uses for the “the whole unisolated gene that do not infringe” the composition claim. Please read that sentence carefully, 6. It is important that you understand the question you are asking and the answer. Again: Myriad’s composition claims do not read on the “the whole unisolated gene” and therefore impose no restrictions on anyone as to how that “whole unisolated gene” may be used.

    More specifically, anyone and everyone can freely think about the “whole unisolated gene” without literally infringing the claim. Anyone and everyone can extract cells from animals which comprise “the whole unisolated gene”. Anyone and everyone can digest those chromosomes with restriction enzymes and perform RFLP analysis or some other chromosomal analysis on those chromosomes. Anyone and everyone can grow human cells comprising the “whole unisolated gene”. Anyone and everyone can dry those cells comprising the “whole unisolated gene”, make a pigment, and paint a picture of Kevin Noonan with them. Anyone and everyone can use the composition for the purposes of obtaining FDA approval for a drug.

    The list is endless, 6.

    Here’s a question: do you think that when the Supreme Court noted that Prometheus’ claims are effectively claims to ineligible subject matter, the Supreme Court meant that “the claims prevent third parties from using the invention for commercial gain”? Serious question.

    Please recognize that what was deemed “effectively” to cover ineligible subject matter in Prometheus was a claim that prevented otherwise non-infringing actors practicing the prior art from even thinking about a patent ineligible fact.

    That problem dois not presented by Myriad’s composition claims. Not even close.

    Myriad presents no uses that are not covered,

    Here’s a very troubling fact for you to ponder. The Supreme Court will not care because Justice Breyer and his clerks understand the issues I’m raising, even if Kevin Noonan, Myriad’s attorneys, the Federal Circuit judges and all their clerks are too dense to appreciate and articulate them. Please go back in time a couple years and recall how the Prometheus decision was argued and how it was ultimately decided.

  132. 85

    If you have a hard question for me that arises from my opinion on that subject, by all means ask it.

    So what will that do? How does asking people to ask questions when you refuse to answer them help anyone?

    Are you ready yet to answer the questions on the subject that arise from your opinion that I have asked repeatedly and tha tyou have attempted to co-opt into your own questions?

    Or are these “hard questions” for you?

  133. 84

    require just a bit more than purification. I require substantial utility in that form that is not found

    Then you require something different in kind and you will be ok.

  134. 83

    Actually nm, that is correct. But you should have been hearing about preemption quite a bit. Check out patent docs detailing it.

  135. 81

    “So how does your “pre-emption analysis” deal with a composition claim that is otherwise valid but which is shown years after grant to read on a composition that was not previously known, did not in fact exist, but which was formed without the willful hand of man?”

    I think we’ve discussed this before. Isn’t this the old “belly of an icelandic fish” conundrum? The short answer to that was just that the lawl hasn’t gotten around to that situation, but it would seem that the claim goes down.

    “In other words, 6, what *exactly* is being “pre-empted” by a composition claim which triggers the firing of the bullet of ineligibility?”

    In the instant case it is the natural WHOLE form of the specific “gene” as defined by the people that discovered it. But it could be many different things, a whole world of natural phenom/laws exist bro. Just like there are a whole universe (and then some) of abstractions just waiting to be claimed and invalidated.

    “Okay, so an otherwise claim-destroying composition found “in nature” is not “natural” if it can be shown that before “nature” acted on the composition, the composition was “man-made.” ”

    I think you have misunderstood, or I misunderstood your original question, by just a hair, and thus my answer was off by a hair. But I need to accomplish some things tonight so you’ll just have to content yourself with what you have for now. It may be that neither of us misunderstood initially and I’m just not understanding the way you put down the quote above.

    “And this is true regardless of the age of the “composition-that-was-man-made-then-acted-upon-by-nature”? What qualifies as a “man-made” composition for this purpose? Anything that would not have existed “but for” the “hand of man”, or only compositions willfully created in their entirety?”

    Ok, sounds like you do indeed understand correctly.

  136. 80

    It is obvious the government position is not well thought out. Which implies, I think, that the SC’s position in Chakrabarty is not well thought out.

    That’s because the composition at issue in Chakrabarty was a genetically engineered mouse that, like Myriad’s claimed compositions, was indisputably “man-made” and not found in “nature.”

    The Supreme Court was not carefully briefed on the issue we are discussing here.

    What’s really funny/sad is that even in Prometheus the Supreme Court was not properly briefed on the issues by the parties to the action. But the Supremes managed to get it right in that case with a bare minimum of superfluous b.s.

  137. 79

    “If that’s the case, then the answer is plainly “No””

    Ok, I have a difficult question for you, tell me, non-glibbly, why you suppose the united states government argues against you on that issue.

    We’ll leave to the side for a moment the fact that Mr. Hansen, the only lawltar d who understands wt f is up in this case also argues against you.

    After you’ve answered that simple question, perhaps you’ll gift me with with a bonus of why you suppose it is that Myriad doesn’t simply point out all the uses for the whole unisolated gene that do not infringe and thus defeat this argument before it is born?

    “Unless you believe, 6, that “novel chemical compositions described in plain structural terms which distinguish them from compositions found embedded in animals and covently bound to other chemicals” are ineligible for patenting.”

    If claiming such also preempts on substantially all uses of the whole compositions embedded in animals and “covently” bound to other chemicals then yes, they are ineligible. Sorry bro. I’m no expert on this, but I can tell you this much, Myriad presents no uses that are not covered, and that is the simplest way to counter the preemption doctrine being applied to your claims. By far.

    “If not, please state the test your applying which distinguishes those novel compositions from other chemicals which are also not found embedded in animals and which are eligible for patenting.”

    It is called the preemption doctrine.

    Be clear, once again, MM, that I personally do not know if the whole unisolated gene as it exists in animals could be used for thousands of non-infringing things. I’m not the expert on that. But Myriad isn’t helping me out with that, and neither is Kev, indeed, he lately finally admitted that there did not seem to be any once he understood what I was asking for. He loses if so. You lose. Myriad loses. Sorry. And one other thing, the USSC is the fra king master of dragging this info out of people. They will figure it out regardless of if I got it right in my non-expert status in this art. And I will happily abid by their factual finding on that matter. I will also lol at Moore either way.

  138. 78

    6 The objective test, and indeed the only test, for distinguishing an eligible “man-made” composition from one that is ineligible is the preemption analysis

    So how does your “pre-emption analysis” deal with a composition claim that is otherwise valid but which is shown years after grant to read on a composition that was not previously known, did not in fact exist, but which was formed without the willful hand of man? In other words, 6, what *exactly* is being “pre-empted” by a composition claim which triggers the firing of the bullet of ineligibility?

    if the composition is man-made in the beginning it does not revert/convert to being a product of nature simply because nature acted upon it after its construction.

    Okay, so an otherwise claim-destroying composition found “in nature” is not “natural” if it can be shown that before “nature” acted on the composition, the composition was “man-made.” And this is true regardless of the age of the “composition-that-was-man-made-then-acted-upon-by-nature”? What qualifies as a “man-made” composition for this purpose? Anything that would not have existed “but for” the “hand of man”, or only compositions willfully created in their entirety?

    Just trying to answer the obvious questions here. I mean, it’s your test …

  139. 77

    What is your position on Lithium?

    It’s old.

    If I am the first to discover a way of isolating the Lithium into a stable metallic form, is that form patent eligible?

    If it’s properly claimed, I don’t see why it should not be. Note that I believe that any such claim is likely anticipated, at least inherently. So the issue of eligibility (or rather, the issues raised by your hypothetical) are moot.

    is Chakrabarty “wrong” or just not understood as that case actually said that minerals found in nature are not patent eligible

    Again, we are back to the question of what “found in nature” means. Recognize that anything and everything that is created by man can not be distinguished from a composition “found in nature” from the moment that the composition is created. A hot dog with a novel pattern of piranha bites is no less a “product of nature” than novel signals emitted by smoke plumes underneat the ocean floor. If the Federal Circuit and its hapless clerks are too dense to acknowledge this issue I guarantee you that the Supreme Court’s clerks are not.

    More importantly, Chakrabarty was not addressing the question you raise or anything remotely resembling that question so it’s really nothing more than poorly reasoned dicta. Not unlike the b.s. in Diehr about “claim dissection.”

  140. 76

    6 just keep on asking questions that are hard for you

    They’re not hard for me, 6. I’m not the one asserting that Prometheus’ composition claims are ineligible under 101. I believe they are eligible. If you have a hard question for me that arises from my opinion on that subject, by all means ask it.

    The only question that matters is: is the claim preempting judicially excepted subject matter?

    If that’s the case, then the answer is plainly “No”. Unless you believe, 6, that “novel chemical compositions described in plain structural terms which distinguish them from compositions found embedded in animals and covently bound to other chemicals” are ineligible for patenting. Is that your view? If not, please state the test your applying which distinguishes those novel compositions from other chemicals which are also not found embedded in animals and which are eligible for patenting. Or is that a “hard question” for you?

  141. 75

    “I’m asking difficult questions”

    Actually incredibly easy bro. But you just keep on asking questions that are hard for you until the case comes back from the USSC and shows how you are wasting all our time. The caselaw is abundantly clear what we’re looking for, especially in Prom. The only question that matters is: is the claim preempting judicially excepted subject matter? Period. And it applies to overt situations like where it is admitted (as in Benson) as well as covert situations like Prom, Myriad, Cyber, Ultra etc. etc. Overt cases are easier to invalidate, covert ones are harder to invalidate. Overt cases are easier for tar ds to understand, and covert cases are harder for tar ds to understand.

  142. 74

    I don’t see why you’re so eager to have these answered because they’re relatively simple, and are mostly, if not entirely irrelevant to the preemption analysis.

    Here.

    1. Nobody with a brain says that it necessarily does as this is not required for the preemption analysis. It is simply a way that some tar ds have attempted to explain the situation to you or argue in court. They are tar ds, pay them no mind.

    2. We are concerned with commercial activities as well as research. Indeed, primarily the commercial activities are at issue in the BFDB line. The “oh but you can still research it” line is a red herring. The term “effectively” means the exact same thing as it does in the dictionary.

    link to google.com.,cf.osb&fp=d354fffe89207a1f&biw=1024&bih=705

    3. No I do not concede such. I do not “disagree” I simply do not concede such. But, to the extent I disagree with your nonsensical reasoning that I’m guessing you hypothetically implicitly used to get to that statement you wish for me to concede I will say the following: if the composition is man-made in the beginning it does not revert/convert to being a product of nature simply because nature acted upon it after its construction.

    The objective test, and indeed the only test, for distinguishing an eligible “man-made” composition from one that is ineligible is the preemption analysis.

    You’re not hardly welcome, but there you go. I’m sure you’ll just glibly toss it aside because you don’t like it. But, who knows, perhaps since you really wanted an answer, perhaps you’re ready to listen on this evening.

    Btw, there is a good article describing the test which I’ve been calling the preemption test over at watchdog, even though the tar d that wrote it has a few minutia wrong that leads him down the wrong path in a few places leading him to believe that the whole thing is unworkable. However it is simply his tar dation that is preventing him from understanding it properly.

  143. 73

    6, I hope I got it right.  I think I am listening to the right version, but if you could link the right one unambiguously, I would appreciate it.  The one I have is this one — 2010-1406_7202012.mp3. 

  144. 71

    “There is a difference ”

    Which I just got through telling Ned is wholly irrelevant. And I even noted that you didn’t understand this yet prior to your posting this post demonstrating that you didn’t understand this yet.

  145. 69

    We will see MM. As one of the parties noted at the oral args, Myriad has yet to offer even one thing that you could do with the unisolated version of the entirety of the claimed genes as a whole that wouldn’t be covered by the patent. If there are none, you have a problem.

  146. 67

    Mr. Nature, I think I require just a bit more than purification.  I require substantial utility in that form that is not found in the prior art or natural product form.  Parke-Davis and Merck.

  147. 66

    Malcolm, I assume you meant Myriad when speaking of DNA.

    What is your position on Lithium? It is found only in salts in nature. If I am the first to discover a way of isolating the Lithium into a stable metallic form, is that form patent eligible?

    If you say yes, then is Chakrabarty “wrong” or just not understood as that case actually said that minerals found in nature are not patent eligible. What did they mean by that?

  148. 65

    Purification alone is not sufficient it seems.

    Never has been. Just like isolation.

    You must look at the end result and see if there is a difference in kind.

    You overlook this because, well, I don’t know.

  149. 64

    Malcolm, I have just finished listening to the arguments and must report that the government position is going to cause a lot of havoc if it is adopted.

    1. They insist that if the claimed composition is structurally identical with the product of nature, it is not eligible.

    2. They acknowledge that their test will overturn Parke-Davis and and potentially overturn Merck, but not however the Aspirin case because of chemical differences in the latter case. This question was specifically asked and answered. Purification alone is not sufficient it seems.

    3. In other words, they would overturn established case law of nearly 100years vintage. However, they insist their test will not cause substantial damage.

    Instead, the government appeared to have a “what me worry” attitude. O’Malley’s gave a long list of subject matter that today is patent eligible but tomorrow may not be. She asked whether stare decisis should have any weight? The government dismissed her concerns, saying the inventors could always rely on their process patents.

    If the claim is to a diamond, and a diamond is found in nature, it is unpatentable. But they say the same thing about Lithium, which is found only in salt form in nature. A claim to Lithium as a metal, the government said, is not patent eligible. Why? That was never explained. It was assumed.

    It is obvious the government position is not well thought out. Which implies, I think, that the SC’s position in Chakrabarty is not well thought out.

    IMHO, Parke-Davis and Merck are right. If the claimed product is made by man (isolated, purified, or structurally dissimilar) and is substantially useful in that form but not otherwise, it is patent eligible.

  150. 63

    In case you missed them, su ckie, here are the facts again:

    It is not disputed that the claimed compositions at issue in Prometheus were made willfully by human beings and did not exit prior to their manufacture, nor have any such compositions subsequently come into existence without human intervention. It is also not disputed that the claimed compositions have properties which render them useful to human beings in important ways. Those properties are absent from the similar compositions found embedded in the chromosomes of animals. The composition claims do not read on the compositions found in the chromosomes of animals.

    Also these facts:

    Prometheus concerned a method claim that recited a step of thinking about a “natural law”. The claims at issue in Prometheus were found to effectively preclude the “natural law” because people who were practicing the old conventional steps became infringers merely by thinking about the natural law. In that sense, and in that sense alone, were the claims at issue in Prometheus “effectively” claims to the natural law itself. Put another way, if the recited steps for determining the level of metabolites were novel and non-obvious instead of “old and conventional”, then no judicial exceptions are implicated.

    Go ahead and try to refut those facts. Before hitting the “post” button, reflect for a moment and consider the obvious questions that I will ask you should you attempt to dissemble yet again.

  151. 62

    su ckie did you not notice that the shape of violin question was answered for you on that thread

    No I didn’t notice because I don’t have time to slog through five pages of troll poop to read this alleged “answer”, su ckie.

    Did Logic Su ckie Boy really provide his conclusion and analysis of the claim? Copy the answer here. I need a laugh.

  152. 61

    “You guys are wa nking really hard, pretty much in unison.”

    Thank you kind sir, but I will have to disagree,

    You can disagree all you want, 6, but it doesn’t change the fact that both you and AI are just waving your hands around with respect to the ineligibity of Myriad’s nucleic acid claims without explaining apparently understanding (1) what the legal principle is that justifies declaring those particular claims ineligible and (2) how that legal principle is applied to ordinary chemical composition claims that do not involve nucleic acids but are just as plainly “products of nature” according to your super-wanky “analysis.”

    Try growing a pair, 6.

  153. 60

    Don’t you mean “I’m repackaging difficult questions that were asked of me, and that I have not yet given an answer” ?

    How long are you going to keep me waiting?

    Also, did you not notice that the shape of violin question was answered for you on that thread ( link to patentlyo.com ) ?

  154. 59

    6 How did you get it if it doesn’t exist in the world?

    There is a difference between an extracted, purified or derived composition and one that is not extracted, purified or derived. I’ll leave it as a mental exercise for you to figure out how one “gets” the former composition from the latter composition which “exists in the world.”

    Step up your game, please.

  155. 58

    su ckie Malcolm never does that.

    Correct, I don’t. But 6 certainly does routinely when he discusses Myriad’s composition claims and so do you, su ckie.

  156. 57

    su ckie answering questions asked of you

    You don’t have any genuine questions about anything, su ckie.

    Do something substantive

    I am. I’m asking difficult questions which illustrate the vacuousness of your position and the position of all those who allege that Myriad’s composition claims read on “products of nature” and should therefore be ineligible for patenting.

    If your position was not vacuousness, you’d be able to answer the question, su ckie. I’m not sure which part of that equation is so difficult for your to undersand.

    Likewise, you should be able to analyze the following claim easily and answer the question below:

    1. A method comprising: cutting a piece of wood into the shape of a violin scroll and [thinking new thought].

    Is that claim eligible for patenting? If not, why not? Explain your answer and state any factual assumptions that are necessary to answer the question definitively. Do not assume the ultimate conclusion, however. Thanks, su ckie.

  157. 56

    I’d really like

    What you’d really like is immaterial. You have hit the limit of asking questions without answering questions asked of you. Do you know waht “intellectual integrity” is? Show it by actually engaging in more than drive-by questions and insults. Do something substantive!

    T O O L

  158. 55

    assumed the conclusion you are attempting to reach

    Like Malcolm never does that.

    [major eyeroll]

  159. 54

    they can be extremely effective

    MM, yours are not. You hold way too much of a over-inflated view of your own worth. You are a legend in your own mind (and really nowhere else).

    You are nothing but a nuisance as the majority of your posts could be expunged without loss of any substance to the topics at hand.

    T O O L

  160. 53

    I’d really like to 6 or any of the suckpuppets attempt to respond:

    (3) do you concede that immediately after a man-made composition is acted upon in a non-willful manner by a force, property or substance in its immediate environment that the resulting composition is a “product of nature”? if you disagree, please explain why and provide us with an objective test for distinguishing an eligible “man-made” composition from one that is ineligible.

    C’mon su ckies. Show us that you have an ounce of intellectual integrity. Maybe a microgram?

  161. 52

    The last questions you asked, about examples of compositions failing the preemption analysis, I responded to with more than enough examples

    I must have missed that, 6. Or your examples were not meaningful/informative because they assumed the conclusion you are attempting to reach. Surely you didn’t offer up Myriad’s composition claims as such examples … or did you?

  162. 51

    su ckie Don’t you know that glib insults are not very effective answers

    In fact, they can be extremely effective, su ckie, particularly when responding to the inane g—bag you habitual sling here.

  163. 50

    Six, up until this point in time in the oral argument, I have not heard one word about preemption.  In fact, it seems that the government position at least flatly rejects this kind of thinking because they rejected Judge Sweet's analysis entirely.

     

  164. 49

    The bacteria did not preempt any judicial exceptions, thus they passed.

    Then Myriad’s composition claims are also eligible under 101.

    Easy. Thanks, 6.

  165. 48

    I am listening to the oral argument now.  Lourie seems to want to continue to focus on the structural identity of the isolated compound.  He seems to want to suggest that anything that breaks covalent bonds cannot be structurally identical.  Both the public interest lawyers and the government also seem to focus on structural identity, while not going so far as to agree to breaking of covalent bonds is a necessary component.

    But the government's position is slightly confused in that they do not agree that lithium is patentable even when they agree that lithium does not exist as a metal in nature.  Their position is very confused.  What are they trying to say?  The claim is not to lithium as an element in the periodic table, but to lithium as a metal which does not exist in nature.

    I found that there was very little discussion, at least so far, of the cases such as Merck and the vitamin B12 case.  It seemed at that case required only that the product of nature be rendered into a useful form by some man-made process, and claimed in that form.  I think that is right.

    I also find it interesting that all parties seem to not agree to Judge Sweet's concept of functional identity.  They would have to it seems to me because otherwise the claims in Chakrabarty would not have been patentable because the engineered bacterium perform the same function of the prior art bacteria.  They just packaged the plasmids of the prior art into one bacterium.  It was the engineering by man which was important.

     

  166. 46

    Does MM realize that he celebrates the “Integration Analysis” of 101 Integration Expert and self defeats his anti-Diehr and (fading fast from memory) something about mental steps theory when he does his 9-0 “LOLing”?

    That’s right, “Integration Analysis” is the antithesis of dissection. Diehrs claims as a whole doctrine controls, and there is nothing MM can do about it but cry and call people names.

  167. 45

    “Furthermore, I have explained the preemption analysis some hundred times on these boards and it is no different today than it was 30 years ago.”

    Except your use of pre-emption has been a misuse and an impermissible overreach. Thankfully “Integration Analysis” has effectively cabined your abuse of the law. See Prometheus and the Official USPTO Guidelines for instructions.

  168. 44

    “”warehouse of nature” or “product of nature””

    No thank you MM. Nor would I like to address the other questions on this eve. Although I may in the future if you would like to sit at the master’s feet for a moment AND LISTEN. I am quite through discussing things with you where you seemingly pay it no heed. I recognize you are a high ranking/power attorney irl, but if you’re here to ask me for what knowledge I can provide then you will need to humble yourself for a moment. The last questions you asked, about examples of compositions failing the preemption analysis, I responded to with more than enough examples of and you responded with naught but a glib line. Furthermore, I have explained the preemption analysis some hundred times on these boards and it is no different today than it was 30 years ago and the questions you’ve asked are not particularly relevant, although I’m sure you think they are.

  169. 43

    “You guys are wa nking really hard, pretty much in unison.”

    Thank you kind sir, but I will have to disagree, because even as I drag AI into understanding he is not there yet. He is, perhaps, half there, which may well be further than yourself have come.

  170. 42

    ” isn’t that enough?”

    For the 10000000000th time Ned, there is nothing that is “enough” save for failure to preempt on a judicial exception. The bacteria did not preempt any judicial exceptions, thus they passed. That is literally all you need to know about that case.

  171. 41

    “The extracted form does not exist in nature, that is a given and quite essential.”

    Lulz. K, whatevz. What you’re not understanding is that whether or not it existed in extracted form or not is quite irrelevant. Which is also what MM is missing.

    “But, cannot the same thing be said of the engineered bacterium in Chakrabarty?”

    Not as far as I know. The utility of that bacterium was said to be a wholly new thing. Although that is irrelevant either way.

  172. 40

    vague generalities completely devoid of facts

    Just like, well, anything that MM ever posts.

  173. 39

    you’re a m-r-n completely lacking in intellectual rigor and integrity.

    Spoken from the absolute master of the topic. And it took MM years to perfect his craft of near perfect absence of intellectual rigor and integrity.

  174. 37

    IMHO

    Coal in the ground should fail a 101 test.

    Whatever is done to the coal should have to pass a 103 test where “coal in the ground” is the prior art.

  175. 36

    I think the Court in Chak. found the four-plasmid bacterium to be different from the uni-plasmid bacteria of the prior art.  Further, the difference was man made.  Ergo, it passed 101.
     
    It then pronounced the magic words that hand devised in Parke-Davis, and wah la, the frog magically became a prince.
     
    What else did you have in mind?

  176. 35

    Do you realize that no one cares about your insults?

    Do you know how flacid and impotent they are? How devoid of humor, wit, or bite?

  177. 34

    I’m asking good questions, clearly articulated and in need of answers.

    Do you know that they are good questions in need of answers because they basically are the questions I asked of you that you “never even tried to answer.”

    Do you know it’s OK to say that you don’t know how your would enforce a patent I something that is effectivley from nature (your “provide us with an objective test for distinguishing an eligible “man-made” composition from one that is ineligible” is but a shadow of the same question I put to you) ? Don’t you realize that by attempting to co-opt my question that you are self-defeating (and that it is OK for you to self-defeat as you don’t even realize that you are doing so)?

  178. 33

    Don’t you know that glib insults are not very effective answers and only showcase your lack of maturity and ability to generate any type of reasonable response?

  179. 32

    The extracted form does not exist in nature, that is a given and quite essential.

    So you realize Ned that you don’t have all of the essentialness in your statement? Do you understand what elements you are missing? Do you know that the court in Chakrabarty was explicit about what it viewed as the critical difference? Do you recognize this as the same thing you have mislabeled as dicta in many conversations?

  180. 31

    Does su ckie realize that every time he eats an entire bag of cheetohs in one sitting his underwear get completely stained with orange grease?

  181. 30

    su ckie Can you name even one thing that I am wrong about?

    Yes, this: “Solving the problem of diffferentiating in order to be able to enforce is the thing you haven’t been able to handle”

    Although I admit that the statement is barely comprehensible, like most of your drivel. Maybe you should find a softer target so you can stop su cking. You know, prove that you don’t su ck. I’m asking good questions, clearly articulated and in need of answers. They’ll be answered by the Federal Circuit or the Supreme Court. And they’ll eventually get it right.

    But you never will su ckie. Because you don’t even try. Sheeyit, you don’t even pretend to try. That’s how hard you su ck.

  182. 29

    Does MM realize that he celebrates the “Integration Analysis” of 101 Integration Expert and self defeats his anti-Diehr and (fading fast from memory) something about mental steps theory when he does his 9-0 “LOLing”?

  183. 28

    No, but I do think you are a vapid troll su ckie, who is wrong about pretty much everything.

    Can you name even one thing that I am wrong about? Do you really think wearing a lovely tinfoil hat in order to lump together anyone who has a different viewpoint from you with your “suckie” mentality means anything as far as real answers to even simple questions go?

  184. 27

    su ckie If you cannot effectively differentiate then your patent must be invalid

    Thanks, su ckie. Nobody is disputing the novelty of the composition claims. When you are ready to answer my questions, please do your best to answer coherently. Perhaps ask your nurse for a cup of coffee or some sort of stimulant to counteract the oxycontin.

  185. 26

    su ckie Do you think that you are asking these questions so that someone can help you answer the questions I asked of you?

    No, but I do think you are a vapid troll su ckie, who is wrong about pretty much everything.

  186. 25

    “I do.

    9-0.”

    I do too! 9-0 Integration!

    See From the Syllabus is Prometheus: “The Court pointed out that the basic mathematical equation, like a law of nature, was not patentable. But it found the overall process patent eligible because of the way the additional steps of the process “integrated” the equation into the process as a whole.” (12 MAYO COLLABORATIVE SERVICES v. PROMETHEUS LABORATORIES, INC. describing Diehr. Opinion of the Court) Emphasis added.

  187. 24

    Do you think that you are asking these questions so that someone can help you answer the questions I asked of you?

    Solving the problem of diffferentiating in order to be able to enforce is the thing you haven’t been able to handle, isn’t that so? If you cannot effectively differentiate then your patent must be invalid, isn’t that only logical?

  188. 23

    So everyone can read it:

    su ckie Remember the dancing from Prometheus; it must be enough of a change so as to not effectively be a claim to the judicial excpetion.

    Prometheus concerned a method claim that recited a step of thinking about a “natural law”. The claims at issue in Prometheus were found to effectively preclude the “natural law” because people who were practicing the old conventional steps became infringers merely by thinking about the natural law. In that sense, and in that sense alone, were the claims at issue in Prometheus “effectively” claims to the natural law itself. Put another way, if the recited steps for determining the level of metabolites were novel and non-obvious instead of “old and conventional”, then no judicial exceptions are implicated.

    It is not disputed that the claimed compositions at issue in Prometheus were made willfully by human beings and did not exit prior to their manufacture, nor have any such compositions subsequently come into existence without human intervention. It is also not disputed that the claimed compositions have properties which render them useful to human beings in important ways. Those properties are absent from the similar compositions found embedded in the chromosomes of animals. The composition claims do not read on the compositions found in the chromosomes of animals. The definition of “effectively” used by su ckie must then be drastically different from that used by the Supreme Court in Prometheus as literally none of the issues arising from the method claims in Prometheus are presented by the composition or method claims in Myriad.

    Now watch su ckie and 6 respond with vague generalities completely devoid of facts. It is to laugh.

    LOL.

  189. 22

    su ckie Asked and answered Zero times.

    Fixed.

    Just because you don’t like the answers doesn’t mean that you are going to get different ones

    You give me different answers all the time, su ckie, whether I ask for them or not. That’s because you’re a m-r-n completely lacking in intellectual rigor and integrity.

  190. 21

    The court’s gobbledygook, and that makes all the difference in the world.

    Right. Because the Supreme Court never realizes that it needs to clarify or reverse itself.

    Remember when su ckie thought that Prometheus claims were eligible because transformative, eligible steps could not be ignored when evaluating eligibility, even if those steps were ancient in the art?

    I do.

    9-0.

    LOLOLOLOLOLOL.

  191. 20

    The extracted form does not exist in nature, that is a given and quite essential.

    Circle back to Chakrabarty, the bacteria having certain oil eating plasmids were known. The patentee combined four different plasmid types from four known bacteria into one bacterium. The new organism did the work of four different known bacteria.

    The modified bacterium did not exist in nature, but its components did. The Court found the modified bacterium to be patent eligible, principally, I believe, because the claimed form was engineered by man and did not exist in nature.

    Now I say the extracted form does not exist in nature, and in the extracted form it is useful, shouldn’t that be enough?

    Sweet opined that extracted or isolated DNA, not found in nature, nevertheless was unpatentable because its utility was related to the same sequence of molecules found in nature. But, cannot the same thing be said of the engineered bacterium in Chakrabarty? It was useful because it incorporated the known plasmids from the naturally occurring plasmids. The engineered plasmids were useful because the copied exactly the plasmid composition from the prior art plasmids.

    If Chakrabarty’s claims were eligible on the basis that the form claimed was the critical difference, and because the form in which the composition claimed was made made and not found in nature, isn’t that enough?

  192. 19

    su ckie Remember the dancing from Prometheus; it must be enough of a change so as to not effectively be a claim to the judicial excpetion.

    Prometheus concerned a method claim that recited a step of thinking about a “natural law”. The claims at issue in Prometheus were found to effectively preclude the “natural law” because people who were practicing the old conventional steps became infringers merely by thinking about the natural law. In that sense, and in that sense alone, were the claims at issue in Prometheus “effectively” claims to the natural law itself. Put another way, if the recited steps for determining the level of metabolites were novel and non-obvious instead of “old and conventional”, then no judicial exceptions are implicated.

    It is not disputed that the claimed compositions at issue in Prometheus were made willfully by human beings and did not exit prior to their manufacture, nor have any such compositions subsequently come into existence without human intervention. It is also not disputed that the claimed compositions have properties which render them useful to human beings in important ways. Those properties are absent from the similar compositions found embedded in the chromosomes of animals. The composition claims do not read on the compositions found in the chromosomes of animals. The definition of “effectively” used by su ckie must then be drastically different from that used by the Supreme Court in Prometheus as literally none of the issues arising from the method claims in Prometheus are presented by the composition or method claims in Myriad.

    Now watch su ckie and 6 respond with vague generalities completely devoid of facts. It is to laugh.

    LOL.

  193. 18

    Asked and answered. Many times.

    Just because you don’t like the answers doesn’t mean that you are going to get different ones, or the ones that save your precious little neighborhood from that Prometheun fire you celebrated.

  194. 17

    The court’s gobbledygook, and that makes all the difference in the world.

  195. 16

    6: Yep. It is “morally defensible” because such “discoveries” are not “inventions” and are not the purview of of patent lawl

    su ckie: It is morally defensible because it aligns with the policy that underscores ALL of the judicial exceptions: there are some things that do not belong to those things that are patent eligible. The warehouse of nature belongs to all men.

    You guys are wa nking really hard, pretty much in unison.

    Would either of you like to define term “warehouse of nature” or “product of nature” for me? I’m specifically interested in a definition that addresses some obvious issues that arise from your use of the above terms:

    (1) exactly why does a novel and non-obvious composition that did not exist before it was made by a patent applicant qualify as a “product of nature”? please answer without waving your hands around and spewing meaningless vapid g-rb-age like “different in kind”

    (2) how is it possible that a claim that does not prevent anyone from researching or thinking about a specific part of an animal is nevertheless characterized as “effectively” preventing someone from studying that part of the animal? What does the term “effectively” mean to you?

    (3) do you concede that immediately after a man-made composition is acted upon in a non-willful manner by a force, property or substance in its immediate environment that the resulting composition is a “product of nature”? if you disagree, please explain why and provide us with an objective test for distinguishing an eligible “man-made” composition from one that is ineligible.

    Thanks.

  196. 15

    "May or may not."

    What is your test?

    The courts hitherto have decided that if the extracted form is useful where the wild form is not, that is enough.  Do you agree?

  197. 13

    for a newly discovered use

    You have a new use? Great, the patent laws still allow that.

    You want to lay claim to nature itself?

    No. Sorry the Supreme Court has already spoken to that.

    You must be effectively different in kind from what is in nature. The extraction of coal is not different in kind.

    How is the position of claiming what is effectively nature morally defensible?

  198. 12

    “even though it doesn’t exist in the world”

    I just noticed you stuck that in. How did you get it if it doesn’t exist in the world?

  199. 11

    “Now, you put on your ACLU hat and say, you may have expended a lot of money, but that doesn’t count, you may have cured leukemia, very commendable, but you cannot claim extracted fungus because that is the property of the world, even though it doesn’t exist in the world and no one knew of the species and its utility until I disclosed it.

    How is you position even morally defensible?”

    Yep. It is “morally defensible” because such “discoveries” are not “inventions” and are not the purview of of patent lawl. If congress wishes to enact a statute to “protect” such, or overrule the judicial exceptions then they have the authority, arguably, to do so.

    In your example, you could however simply claim what you invented, a mixture of your fungus and milk. Just as you always have been able to do. Funny how it all boils down to you simply wanting to claim more than that which you actually invented.

  200. 10

    “I think you assume”

    I presume, rather, only that coal exists in nature.

    “If coal is unknown, why is claiming its extracted form for a newly discovered use preemptive of nature? The extracted form does not exist in nature. It is man made.”

    It existed there. You just had to remove that which was around it. Think the David, or the baseball bat, or the tree trunk.

    I forgot to mention in my other thread, but the funniest part about the oral args was when a room full of patent law’s “elite” couldn’t construe claim 20 well enough to understand that it was the brac gene in the claim that was supposedly cancer causing. Until, of course, the one lawlyer in the room that knew what he was talking about got up and told them.

    What is perhaps even funnier is that the judge that asked the question about the cancer limitation in claim 20 already rendered an opinion on it. I wonder why this question didn’t pop up last time?

  201. 9

    The extracted form does not exist in nature. It is man made.

    Not necessarily.

    Remember the dancing from Prometheus; it must be enough of a change so as to not effectively be a claim to the judicial excpetion.

    Extraction alone may (or may not) be enough to be a difference in kind.

    Isolation alone may (or may not) be enough to be a difference in kind.

    The whole “known before” is a smokescreen.

    Funk brothers was different, but not different enough.

    It is morally defensible because it aligns with the policy that underscores ALL of the judicial exceptions: there are some things that do not belong to those things that are patent eligible. The warehouse of nature belongs to all men. And that includes FOR EXAMPLE, material things of nature (crystals, plants, ETC), whether OLD or JUST DISCOVERED.

    The Supreme Court has chosen these words carefully. Are you saying the Supreme Court is wrong?

  202. 8

    I think you assume that coal is known, or is that even material?

    If coal is unknown, why is claiming its extracted form for a newly discovered use preemptive of nature? The extracted form does not exist in nature. It is man made.

    Even under Chakrabarty, the man made aspects were enough to distinguish over “known” naturally occurring bacteria that were known to be useful for the very same purpose. Under my hypo, the coal is unknown and its utility is unknown.

    The problem with the government’s analogy is takes a well known product of nature as an example. It should take an unknown product of nature, a hypothetical product that is completely unknown.

    Assume for the sake of argument that I discover in my back yard a species of fungus hereto unknown. I extract some of it into a beaker, mix it with milk, and fed it to my very sick cat, who is suffering from leukemia. The cat is cured. I then spend 1 billion of my own dollars proving that the extracted fungus from this one species cures leukemia in humans.

    I claim: extracted fungus of type X (my species in the backyard) for curing leukemia in humans.

    Now, you put on your ACLU hat and say, you may have expended a lot of money, but that doesn’t count, you may have cured leukemia, very commendable, but you cannot claim extracted fungus because that is the property of the world, even though it doesn’t exist in the world and no one knew of the species and its utility until I disclosed it.

    How is you position even morally defensible?

  203. 7

    link to oralarguments.cafc.uscourts.gov

    For some reason that link appears to be broken. Just search “Association for Molecular Pathology” under oral args tab and you’ll find it. “Association for Mol” works for me.

    Just got done listening. Sounds to me like the Gov has it right, as does AMP, though the court and the opposing attorney try to give them grief for getting it correct. Hopefully Moore will be swayed on the stare decisis and on preemption (even though she regarded it as “wasted space”). Or else we’ll get to go to the USSC and have them tell Moore about how it is not wasted space. And I will lol.

  204. 4

    yet it stands there not legally ridiculous because of Chakrabarty

    You forgot one critical aspect: a change in kind.

    Without that, your strawman position is “beyond the pale ridiculous.”

  205. 3

    The government won’t give up: “Extracted coal cannot be patented.”

    Why?

    Coal is well known? The extraction process is known? It utility is known?

    What if coal was unknown? One day, a farmer finds a lump of coal, and by experiment, determines it is useful for cooking. He then figures out how to find coal and extract it into a useful form. All of this being new.

    He files for a patent and it is denied because all men have a right to use coal?

    Just to state the case proves the point that the government position is beyond the pale ridiculous. And, yet it stands there not legally ridiculous because of Chakrabarty.

    The Feds really need to challenge Chakrabarty because that case was wrong to the extent it announced a product of nature exclusion.

  206. 1

    From the AIPLA summary of the oral arguments in Myriad:

    Judge Lourie noted that Mayo requires that a method claim applying a law of nature must do so with steps that are “significantly more” than routine and conventional, and asked if the Claim 20 steps don’t qualify. Hansen said the steps of Claim 20 does not “use” the law of nature, but instead simply call for one to “see what happens” when the steps are carried out. Restating Hansen’s position, Judge Bryson said that a claim using a host cell (whether man-made or not) has no “application” if it calls for nothing more than an observation of the results of the steps.

    Those sound like arguments for lack of substantial utility under 101. They are not bad arguments, either. By analogy, let’s say someone created a novel, non-obvious chemical X with no known utility. Obviously, you should not be able to do an end-around the utility requirement of 101 by claiming “A method of determing a utility for chemical X by [conventional testing method][observing results].”

    The more interesting question lurking here is whether broadly recited [test]+[observe] claims lack substantial utility even where a recited composition X to be tested has been shown by the applicant/patentee to possess a substantial utility. It seems the result should be different in that case. Of course, if one already has a valid claim to the novel, non-obvious composition, the method of use claim is superfluous. And it does seem that if that composition claim should fall, then a nebulous claim to a method of studying the composition should certainly fall with it.

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