By Dennis Crouch
In re Ditto (Fed. Cir. 2012)
In a non-precedential opinion, the Federal Circuit has done it again (ditto) and affirmed the PTO Patent Board decision rejecting patentability. Here, the court affirmed that Mr. Ditto’s claimed cross between a bobcat and a domestic cat is anticipated by the prior art. In particular, the Pixie-Bob has been around for some time.
In the appeal, the USPTO solicitor also argued that the cat claims were all “patent-ineligible because they encompass a product of nature.” Here, the “product of nature” argument is based upon the fact that a domestic cat and bobcat can and will “naturally” mate without further human intervention. However, the Solicitor did distinguish this case from the patenting of animals with particular traits developed through a selective breeding process. An example of this is U.S. Patent No. 5,602,302 (Mikami) that claims a bronchial hypersensitive guinea pig created by brother-sister mating of guinea pigs identified as hypersensitive. In distinguishing the ‘302 patent, the Solicitor wrote that:
the claims of the Ditto application do not demonstrate how the claimed cat breed is a product of human intervention. The claims include no detail regarding how the cats are bred, what traits are desired for breeding, or what results are expected. All that is required is that a “purebred cat” is produced by mating a bobcat, lynx, or bobcat lynx with a domestic cat. Id. Moreover, … the specification fails to provide detail regarding what kind of characteristics or traits are required in the claimed “purebred” cat. While Ditto argues that there is no difference between the [patented] guinea pig … and Ditto’s cat, the Mikami patent is different from Ditto’s application in significant ways: Mikami discloses a specific breeding process used to prepare guinea pigs with a particular trait, while the Ditto application requires “[n]o specific amount or type of breeding” and “the breeding program may terminate upon identification of any desired effect.” In short, unlike Ditto’s application, Mikami’s claims recite a specific desired trait and Mikami’s patent discloses a specific method of breeding used to obtain that trait, distinguishing Mikami’s claimed guinea pigs from those in nature.
In its decision, the Federal Circuit refused to decide the subject matter eligibility question and instead affirmed on grounds of anticipation. The court simply wrote that ” we do not reach its section 101 rejection.” In this case, the court followed the course that Professor Merges and I suggested in or 2010 article on the avoidance doctrine. Some on the court have argued instead that Section 101 questions should be treated as antecedent questions that cannot be avoided.
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