Sequenom’s patent claim in question:
1. A method for detecting a paternally inherited nucleic acid of fetal origin performed on a maternal serum or plasma sample from a pregnant female, which method comprises:
amplifying a paternally inherited nucleic acid from the serum or plasma sample and
detecting the presence of a paternally inherited nucleic acid of fetal origin in the sample.
The big idea here was to recognize that fetal DNA might be floating around in the mother’s blood and that the fetal DNA could be selectively amplified by focusing on the paternally inherited portion of its DNA (rather than the maternally inherited).
The claim itself has two simple steps: (1) amplifying paternally inherited DNA from a plasma sample from a pregnant female and then (2) detecting the presence of the DNA. The technology for amplifying and detecting was already well known at the time of the invention here. Further, these two steps are the ones always almost used to detect particular DNA.
The invention here solves a very practical problem accessing fetal DNA without creating a major health risk for the unborn child. Of course, the problems solved in Mayo and Alice were also very practical and that fact did not change the result.
I am hard-pressed to see how this claim overcomes Mayo/Alice. The “big ideas” expressed in the invention are seeming laws of nature and the idea of amplifying paternal DNA just relies upon a natural correlation in the same way that the inventors relied upon the drug metabolite in Mayo. The actual implementation of these ideas appear preemptive of the ideas and rely only upon well known and expected implementation steps.
To me, the push for en banc review is – at its heart – either a showpiece for the Supreme Court or a request to undermine the Supreme Court’s precedent.
Paul Cole: the correct approach at this stage is NOT to define a new test
Well, that’s one “amici” that we needn’t bother paying any attention to.
Anyone else want to step up and shout “I DONT LIKE THIS” without addressing the issues that are going to keep arising if we let people file “detect this natural phenomonen using old technology” claims? Just get in line behind Paul.
It helps quite a lot to consider the stage the proceedings are at and then look up the rules of the court that are relevant to that stage.
The above analysis demonstrates an inability to count to three.
The first of the three steps is to select as starting material maternal serum or plasma. It is that selection which sets the claimed method apart from the prior art, see US v Adams.
In my amicus brief to the court, three precedent-setting questions of exceptional importance were identified:
(1) Should the context in which a claimed method that involves a newly discovered natural phenomenon be disregarded for the second part of the test in Mayo, so that steps that are known but only in different contexts do not count towards eligibility?
(2) How relevant to the natural phenomenon exclusion of § 101 is a new and beneficial result never attained before and evidencing inventive step under § 103?
(3) Is the second part of the Mayo test applied in the breadth of the Panel Opinion incompatible with the obligations of the United States under Article 27 of TRIPS?
The following reasons were provided for rehearing en banc:
I. This decision is likely to be followed by the USPTO for its examination guidance and if wrongly decided may adversely affect many pharmaceutical and biotechnology applicants.
II. The amplification product was misclassified as a natural phenomenon and not as a non-natural composition of matter contributing to eligibility as a manufacture under § 101.
III. Contrary to Mayo the Panel Opinion provides precedent for establishing ineligibility by considering features merely individually and ignoring or giving insufficient weight to their “ordered combination”.
IV. The Panel Opinion disregarded the acknowledged new and beneficial results of the ordered combination as evidence of invention and hence relevant to § 101 eligibility.
V. When broadly interpreted the two-part test raises issues of compliance with TRIPS.
The Panel Opinion treats the product of the amplification step as a natural phenomenon. On the face of the opinion, that is a quantifiable error of fact, being wrong by a factor of between 1000 and 1,000,000. However, the judges in the panel knew nothing about nucleotides and could not tell the difference between the 5′ end and the 3′ end of a sequence.
Paul, you got me as I really don’t know what you are talking about.
From my reading of the panel decision, the process itself is old as the hills. It is simply being used to identify paternal DNA in mother’s blood.
Is this not a fair summary?
No, it is an over-simplification for the reasons indicated.
Nobody was doing anything with the maternal serum or plasma. It was medical waste. Now it has utility.
As a practising patent attorney the words “as old as the hills” and especially “simply” worry me. They are not words that I would normally use because they are symptomatic of a superficial and over-general analysis.
Cases are won or lost on tedious legal and factual detail. If you go through the opinion carefully, it does not stand up even taking the facts as found by the court.
OK, a fetus is old even though a particular fetus is new. Using a fetus for stem cells puts the fetus to good use.
Now assume the process of “using stem cells” is known. It is being applied here to fetuses, otherwise the process is unchanged. Is this a “new” process?
I see the problem here. In the US, “new” is part of 101. In Europe, it is not. When the process itself is unchanged, it is not a new process. Adding a law of nature does not add anything legally new even if it was previously unknown.
Thus, everything in the claim is legally old.
“The rule that the discovery of a law of nature cannot be patented rests, not on the notion that natural phenomena are not processes, but rather on the more fundamental understanding that they are not the kind of “discoveries” that the statute was enacted to protect.15
15. The underlying notion is that a scientific principle, such as that expressed in respondent’s algorithm, reveals a relationship that has always existed.
“An example of such a discovery [of a scientific principle] was Newton’s formulation of the law of universal gravitation, relating the force of attraction between two bodies, F, to their masses, m and m′, and the square of the distance, d, between their centers, according to the equation F=mm′/d[2]. But this relationship always existed—even before Newton announced his celebrated law. Such `mere’ recognition of a theretofore existing phenomenon or relationship carries with it no rights to exclude others from its enjoyment. . . . Patentable subject matter must be new (novel); not merely heretofore unknown. There is a very compelling reason for this rule. The reason is founded upon the proposition that in granting patent rights, the public must not be deprived of any rights that it theretofore freely enjoyed.” P. Rosenberg, Patent Law Fundamentals, § 4, p. 13 (1975).
Parker v. Flook at note 15.
Not even the Panel Opinion held that the claimed process was old.
Glad to see you have the Rosenberg book. I revere his memory.
The “problem” Ned has is that he is still dissecting and using the sword of “Gist/Abstract.”
In a nutshell:
There is a clear difference from the looking at each element AND looking at the claim as a whole compared to what you (and Malcolm) are attempting with a “take the claim as a whole AND dissect it, then if one element is not to your liking, Gist away the rest of the elements, point to that one element, call it the “Point of Novelty” and attempt to apply 101 to that less than whole claim element.
Or to be a bit more colorful,…
Paul: you are not counting to 3 correctly.
Ned: But I am. Let me show you:
1, 3. done. See? I arrived at the ends of “3” and started with “1.” See, I can do it again: 1, 3.
Paul: you missed something.
Ned: I don’t see it.
Paul, if the claimed process itself was new, then there is no basis for a 101.
Surprisingly (or not), Ned has forgotten the power of the “Gist” sword (to move the goalposts)
Mr. Cole,
You do know that TRIPS is NOT a self-enacting treaty here in the US, eh?
Of course I do. But US courts follow the Charming Betsy canon of interpretation and try to interpret US domestic law in a manner that does not conflict with the law of nations or with the treaty obligations of the US.
My argument is that the principles in Mayo and Myriad CAN be interpreted in a manner that does not conflict with article 27 of TRIPS, and therefore SHOULD be interpreted in that way.
In particular, if you look at the opinion of Justice Thomas in Myriad it was carefully written not to create such conflict, the point having arisen during oral argument, and problems have arisen not from the terms of the Supreme Court opinions but from over-broad interpretation by the USPTO and the Federal Circuit. I am not a lone voice: similar views were expressed last year by the ABA in submissions to the USPTO.
“try to” without actual congressional enactment is a sure fail (and a rather weak amicus argument).
Much better off would be to show where (if possible) such an enactment was contemplated and actually delivered by Congress. Short of that, some post TRIPS movement by Congress to those same “ends”…
…in a finer detail, one cannot apply the Charming Betsy canon and remove the plain fact that such treaties are not self-enacting.
If you apply that canon as liberally as is your want, then no treaty would ever need to be enacted separately in the US, and would eviscerate the larger rule.
You need more than just a “it would be nice to comply.” You need additional support somewhere to say that the Charming Betsy should be invoked. That somewhere needs to reflect a post-treaty, consideration-of-the-treaty action of Congress.
…and we have been over your Pollyanna “if only the courts would take the time and apply the words of the Supreme Court with greater care position” several times now.
As they say, the proof is in the pudding, and what you want just is not happening.
A different answer then is what is required. A different and more permanent answer…
TRIPS in in my brief, as well as a link to the ABA’s views. So the CAFC judges will at least see the point. What they make of it is, of course, up to them.
As a European all I can do is to try to influence opinion, and in this case also the Court. But I have no link to Congress.
If there is anything else I can do to get your “different answer” you have only to let me know.
asked and answered: include in your points the alternative (even if you cannot approach Congress) that Congress should be approached.
Paul Cole: How relevant to the natural phenomenon exclusion of § 101 is a new and beneficial result never attained before and evidencing inventive step under § 103?
That was addressed in Diehr, wasn’t it? i.e., The “novelty” of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the §101 categories of possibly patentable subject matter
The issue as always, Paul, is: what does the claim protect? If the claim is protecting ineligible subject matter, you’ve got a 101 problem. More specifically, if the claim prevents someone from using conventional (in this case, public domain) technology from studying a natural phenomenon, you’ve got a 101 problem. The awesomeness of your discovery is utterly beside the point.
The amplification product was misclassified as a natural phenomenon and not as a non-natural composition of matter contributing to eligibility as a manufacture under § 101
After Myriad, it’s debatable whether a naturally occurring DNA sequence with no utility other than “detect me” is eligible for patenting merely because there’s a conventionl probe attached to the end of it.
As we discussed earlier, MM, the process of isolating or detecting paternal DNA is irrelevant if the claim is patentable because of the discovered law of nature.
Thus, if any or all methods of detecting paternal DNA are patentable, a claim of this scope is warranted:
1. A process, comprising:
taking a blood sample from a pregnant woman; and
detecting the paternal DNA in said sample.
The courts should approach the case with a claim as broad as could be claimed if the patentability depends upon the discovered law of nature.
Your new “version” of the “Gist/Abstract” sword still has the logic of my big box of electrons, protons, and neutrons.
cf. Sep-3-15 @ 4.20 am (Paul Cole)
What utter nonsense! You sir, need to enrol in a course of basic molecular biology because it is clear that you don’t understand PCR – that last paragraph gives it away.
If Sequenom does succeed, it’ll make US Patent law the laughing stock of the world. And, you will have assisted in this process.
Question for anyone who has slogged through the briefs: were any of the “amici” brave enough to state a proposed eligibility test that hasn’t already been cast aside as useless (or worse)?
Or is this just a repeat of the run-up to Prometheus where the patentee’s “amici” are concerned only about what they can’t own (and therefore “nobody” will ever provide), with all the other issues ignored or hand-waved away?
The failure to acknowledge the glaring and inevitable problems that the granting of [oldstep]+[newthought] claims would create not just for the patent system but for everyone went a long way towards undercutting the credibility of Prometheus’ supporters. Did they learn from their mistake or are they just going to charge ahead again with the same vastly overblown sense of entitlement?
The usual question for supporters of Sequenom’s patent: if someone discovers that a “new” naturally occurring (and ineligible) phenomenon falling within known class X is “detectable”, is it your position that the discoverer is entitled to claim “All processes for detecting X”? If that is your position, how do you distinguish such a claim from effective ownership of the ineligible phenomenon? If you don’t believe such a distinction can be made, exactly what sort of limitations do you believe must be put in place to prevent a discoverer from monopolizing the ineligible phenomenon? For instance, how do you distinguish a claim to “use old PCR technology to detect newly discovered naturally occurring DNA” from a claim to “using old telescope to detect newly discovered asteroid” or “using old dissection technique to separate organs from new species of frog”?
If you refuse to answer the questions, you really have no business complaining when the door is shut on you again (but of course you’ll complain anyway — you certainly did after the Supremes mopped the floor with your briefs after Prometheus and Mayo!). And I’m not suggesting that the distinctions can’t be made. On the contrary.
Consider this to be friendly advice from a long-time close observer of the system and its players.
Back to [oldstep] +[newthought]…?
What a bunch of hooey.
Mere aggregation of -[anything1] +[anything2] is what your beloved “pet” theory resolves to.
That and nothing more.
It is simply dissembling by you to make something more of it in an attempt to somehow infuse the mental steps doctrine back into patent law.
Your so-called “close observer” is not so close when you continuously clench tight your eyes to what the law as written by Congress actually is.
@ MM
If you look at the rules of the court, the criterion for an en banc hearing is NOT that the Panel Opinion is wrong (even by my estimated factor of 1000 to 1,000,000) BUT INSTEAD is that there is a precedent-setting question of exceptional importance that needs to be considered. As in my posting above, I identified three such questions.
Therefore the correct approach at this stage is NOT to define a new test but to define a set of questions that are relevant, that the court needs to consider en banc and which will (hopefully) interest the judges.
What was claimed here was not a new discovery but a new test method of great practical importance, giving the new result of earlier detection of genetic abnormalities in a foetus and of a less invasive character. Selecting a new and inventive starting point is as much a feature of a test method as any other feature, especially when that selection leads to new results. Finding an asteroid is not a result of industrial and practical significance, nor is the new dissection technique.
“Selecting a new and inventive starting point is as much a feature of a test method as any other feature”
Not if you have a desired ends.
Such is all too easily Gisted away, because our Supreme Court re-wrote patent law in its own image, and provided a weapon without limits.
Look at some of the comments here and the wide dismissal (by some) of ANYTHING not coming from the Supreme Court.
There can be NO inte11igent conversation on the matter without realizing the source of the error, and correcting that source of error.
Otherwise, no matter what is done below, the Royal Nine can (and likely will) just hand waive it away as “scrivining.”
The aim here then needs to be on a more permanent solution involving the constitutionally sanctioned power to Congress of jurisdiction stripping. Patent law appeals simply are not within the original jurisdiction of the Supreme Court, and thus are fully amenable to such a Congressional move.
If the “invention” is the discovery of the fact that paternal DNA could be found in the serum of a mother, why should the discoverer of this fact be limited to any particular method for the detecting the presence of paternal DNA in the blood serum?
Have you figured out 35 USC 100(a) yet, Ned?
Asked and answered Ned:
It probably shouldn’t. But 101 limits us to processes, compositions of matter, apparatuses and manufactures, so the inventors settled for a process based on their discovery. Half a right is better than none I guess.
Les, I agree with this. But consider:
1. Process, comprising:
drawing blood from a pregnant woman;
isolating paternal DNA from the drawn blood.
What’s wrong with this claim?
So far I do not see a substantial utility.
I think isolated paternal DNA is a useful substance. If I invent a new steel alloy I can just claim the alloy without having to claim a car made out of the alloy, right?
Fair enough. Substantial utility need only be disclosed, not claimed. I suppose that the hypothetical spec behind this claim could include a mention of the substantial utility for paternal DNA.
I think it should being with the word “A” and the comma after “process” seems inappropriate. Also, I would suggest the absence of “and” after the first “;”.
But those are more a matter of custom than substance.
So, I’m good….
What do YOU think is wrong with it?
What’s wrong with this claim?
I believe it’s anticipated or obvious. That’s why the limitation re “maternal serum or plasma sample” was put into Sequenom’s claim. The fact that fetal cells could be isolated and detected from maternal blood (by isolating the fetal cells, then isolating and detecting the DNA from the fetal cells) was in the prior art.
I’m not saying that’s the only problem with your claim. But I’m pretty sure that it is a problem.
MM, I think looking for paternal DNA in a pregnant woman’s blood is novel and non obvious.
The point I am making here is that adding detail, all old and conventional, to the method of isolation adds nothing to the claim at all. The level of detail in the prior art isolation or detection methods is a red herring.
I think looking for paternal DNA in a pregnant woman’s blood is novel and non obvious.
Even after the art teaches you that fetal cells are in the pregnant woman’s blood?
What if the art teaches you that snickers bars are found in a pregnant woman’s blood? Is it non-obvious to look for a peanut?
The point I am making here is that adding detail, all old and conventional, to the method of isolation adds nothing to the claim at all. The level of detail in the prior art isolation or detection methods is a red herring.,
I agree with you there.
wrong metaphor gents….
what you are looking for is that any such things (or “inconvenient” elements of a claim) can be “Gisted” away with the unlimited power of the “Gist/Abstract” sword.
The real problem with the claim is devided infringement, assuming a doctor draws the blood and a reference lab isolates the DNA.
Not after Akamai en banc. The blood test is attributed to the doctor.
Posted below and worth noting here on top, Malcolm once again runs smack into a wall with his eyes clenched tight and “not seeing” that the Supreme Court jurisprudence is a supreme mess.
[Malcolm’s] “Total reconciliation” translates to the opposite of “Total ignorance.”
“All Diehr ever stood for was the proposition that you can’t look at a claim and identify some ineligible or eligible element and conclude from that the entire claim is therefore ineligible or eligible.”
Except for the fact that the “Point of Novelty” curse-aders (you included) are attempting to do exactly that and in so doing are attempting NOT to have Diehr apply.
The Act of 1952 removed the judicial authority to set the definition of “invention” by common law rule – and concomitant with that action, removed “Point of Novelty” in the 101 sense as is the mantra of you and Ned.
This was done by an act of Congress (not the singular and denigrated man named Rich).
Breaking up what was the single paragraph into 101, 102, 112 and including 103 is the cornerstone – even today after the AIA – of understanding both 101 and the mess being made of that statutory law by the branch of the government NOT allocated authority to write patent law.
Legislating from the bench MAY be all fine and good for those traditional areas outside of statutory law (and even with some overlap of those areas with statutory law – as that statutory law may invite).
Clearly though, such is NOT all fine and good for patent law in areas that Congress has NOT allocated a sharing of their authority with explicit and delineated lines.
But a BASIC understanding of the Rule of Law, and of the US constitution and of our protection of that constitution with the separation of powers MANDATES that the warning by Judge O’Malley against what you, Ned, and several others of a particular anti-patent mindset wish to achieve in CHANGING the law by edict from the bench instead of the rightful place of the halls of Congress.
I wrote: All Diehr ever stood for was the proposition that you can’t look at a claim and identify some ineligible or eligible element and conclude from that the entire claim is therefore ineligible or eligible.
That is the holding of Diehr. If there was any doubt about that, that doubt was dispelled by Prometheus v. Mayo and Alice, two 9-0 decisions that are never going to be overturned.
“anon” responds: Except … you… are attempting to do exactly that
No, I’m not attempting to do any such thing. And I’ve expressly said so probably a hundred times over the years. Moreover, everything that I have said and written here about 101 is perfectly consistent with my express statements regarding this issue. I’ve even provided you with endless examples illustrating how the rule works and why.
Once again: the legal rule in Diehr is a good one (even if the result in Diehr was a mistake because the actual facts werent in front of the Supremes). The rule not only makes sense but its an essential rule for any sane patent system.
Let me put it another way in case it still isn’t sinking in.
Jimmy: “A rule that says you can’t ban marijuana smoking everywhere is a good rule.”
Johnny: “Except you and your crusaders are doing exactly that when you ban marijuana sales in elementary schools.”
I assume everyone can see the problem with Johnny’s “argument.”
Your spin is transparent.
And absolutely wrong.
Shall we pull from the archives what you really feel about Diehr?
What a chump.
Isn’t this the (a?) holding in Diehr:
“Our earlier opinions lend support to our present conclusion that a claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula, computer program, or digital computer.”
I mean, they’re saying it’s their conclusion.
PB: Isn’t this the (a?) holding in Diehr:
“Our earlier opinions lend support to our present conclusion that a claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula, computer program, or digital computer.”
Right. That’s still perfectly good law. But wait! Diehr says more:
A mathematical formula, as such, is not accorded the protection of our patent laws, Gottschalk v. Benson, 409 U. S. 63 (1972), and this principle cannot be circumvented by attempting to limit the use of the formula to a particular technological environment. Parker v. Flook, 437 U. S. 584 (1978). Similarly, insignificant post-solution activity will not transform an unpatentable principle into a patentable process. Ibid.
Also perfectly good law. Take it all together, throw in some common sense, and those words really do mean something. Here’s what they mean: an ineligible invention isn’t automatically rendered eligible by reciting non-inventive but otherwise eligible hoohaw like “computer:”
There is a great story to be told here about two jurists who tackled the big issues. One of those jurists was a thoughtful forward thinking Supreme Court Justice who wrote a dissent in Diehr, joined by three other Justices (Stevens, preferring “an unequivocal holding that no program-related invention is a patentable process under §101 unless it makes a contribution to the art that is not dependent entirely on the utilization of a computer, and (2) an unequivocal explanation that the term “algorithm” as used in this case, as in Benson and Flook, is synonymous with the term “computer program.”).
The other jurist is a guy whose reputation is presently swirling down the tubes because everyone can see he was drunk on patent kool-aid and couldn’t see past the nose on his face. That jurist’s name was Judge Rich. He’s the guy who worked hardest to promote the ridiculous and now completely debunked “argument” that comparing claims to the prior art is only proper consideration under 102 and 103. Well, he worked the hardest until “anon” and his cohorts showed up (how’s that work paying off, guys? LOL).
Of course Malcolm you have that arse backwards as to which judge/Justice really did know the law (because he helped write it) and which Justice only too eagerly would mash a wax nose (even after warning about such).
Not only that, you forget the update for that “Bilski 4” – let me spit it out for you: that dropped to 3.
Not incoincidentally, the very same three that the presidential memoirs of none other than Bill Clinton labeled as “most dangerous” to legislate from the bench.
As to your (2), you forgot the actual words used by Stevens in Benson:
We do not so hold
Oops.
Don’t you get tired of your constant dissembling?
Oops myself – I meant Steven’s role model and idol (Douglas).
It’s hard to tell them apart…
anon’s post reminds me to ask a question: What is the origin of the phrase ‘point of novelty’ in precedent or statute? I think Ned uses it once in a while, but where does it come from?
Some background for you, Slashdot:
link to en.wikipedia.org
The point of the patent-eligibility doctrine concerning insignificant post-solution activity … is that adding such limitations to a claim does not involv[e] adding an “inventive concept” to the otherwise ineligible underlying idea. In the calculus of patent eligibility, it is adding a zero to a zero
Likewise, in the typical “ineligibility at the point of novelty” claim that the system is so often presented with today, there is no synergy or unexpected results flowing from the additional recitation of “novel” ineligible elements to otherwise conventional technology. Once again: it is adding a zero to zero.
Classic example 1: I claim a manufacture, wherein said manufacture is a piece of paper, wherein said piece of paper comprises instructions, wherein said instructions are [insert description of new, non-obvious instructions].
Everybody can see that the only novel element in the claim is the ineligible information (i.e., the instructions). You can’t protect information with patents. Allowing claims such as this would plainly lead to information being protected with patents because people would swarm the patent offices with “paper + information” claims. The system melts down. Therefore, the claim is ineligible.
Classic example 2: I claim a diagnostic method, wherein said diagnostic comprises gathering data using old technology and thinking about it the data, wherein said thinking comprises thinking about [insert new, non-obvious correlation].
This the Prometheus claim. Everybody can see that the only novel element in the claim is the ineligible information (i.e., the correlation). You can’t protect information with patents. Allowing claims such as this would plainly lead to information being protected with patents because people would swarm the patent offices with “paper + information” claims. The system melts down. Therefore, the claim is ineligible.
Most people will immediately recognize that this isn’t a high-falootin’ legal analysis. It’s the application of common sense and reason to a simple logic problem.
There are three possible explanations why certain people have trouble “getting it”. The first explanation is that some people were “brought up” in an era where they were taught that such claims could be obtained and enforced. The second reason is that by pretending it’s all so confusing and kicking up clouds of dust around the principle they can keep the game going for a little while longer and stuff some more cash in their pockets. The third reason is the usual one: plain old ignorance. Not everyone has the brains to keep up (including some attorneys, agents and judges). Sad but true.
You are w@rped into your mere aggregation mode again…
Maybe a magic hat band or a measuring cup can help you out there…
(Or we can just go to your own volunteered admission against interests as to your knowing and understanding the law – even as you attempt to dissemble to the opposite.
Or should I yet again post the link to the easy to understand set theory explanation over on the Hricik side of the blog that I invited you to be involved in a meaningful dialogue?
In Parker v. Flook, 437 U.S. 584, 587 (1978) the Supreme Court affirmed the Patent Office’s determination that the “point of novelty” in a claim (the aspect that makes it new and inventive) must itself be subject-matter eligible in order for the claim to comply with §101. This represented a reversal of In re Musgrave, 431 F.2d 882, 889 (1970) (Rich, J.).
Just a few years later, the Court in Diamond v. Diehr, 450 U.S. 175, 192 (1981) repented of this ill-considered standard and announced that instead of the “point of novelty” needing to be §101-eligible, it is enough if the “claim as a whole” is §101 eligible.
In other words, the “point of novelty” test (at least with regards to §101) refers to the test that applied during the bad-old days of Flook, before Diehr restored us to Judge Rich’s right-thinking Musgrave standard.
Wow thanks for the history. Srs.
Happy to see I was wrong about my reading of Diehr. This reading makes more sense
Just for the record, the Supreme Court in Flook never used the term “point of novelty” except for once when it quoted the Board while summarizing the case background. What the Supreme Court did say was the following:
Our approach to respondent’s application is … not at all inconsistent with the view that a patent claim must be considered as a whole… [T]he discovery of [a phenomenon of nature or mathematical formula] cannot support a patent unless there is some other inventive concept in its application.
Nothing in the Diehr decision suggested that the Supreme Court was “repenting” an “ill-considered” decision in Flook. On the contrary, the Diehr court cited Flook approvingly not once but twice:
Our earlier opinions lend support to our present conclusion that a claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula, computer program, or digital computer…. [I]n Parker v. Flook, we stated that “a process is not unpatentable simply because it contains a law of nature or a mathematical algorithm.” 437 U.S. at 437 U. S. 590. …
A mathematical formula, as such, is not accorded the protection of our patent laws, Gottschalk v. Benson, 409 U. S. 63 (1972), and this principle cannot be circumvented by attempting to limit the use of the formula to a particular technological environment. Parker v. Flook, 437 U. S. 584 (1978). Similarly, insignificant post-solution activity will not transform an unpatentable principle into a patentable process. Ibid.
So we can now ask the question of Greg: are you merely ignorant, dishonest, or both?
As for this statement of Greg’s: Diehr restored us to Judge Rich’s right-thinking Musgrave standard.
… that is simply bizarre. Rich’s Musgrave decision is about as rotten as any corpse that a legal grave digger could possibly excavate and that was true even before Diehr was decided. Are you telling your clients that Musgrave is good law? Gosh, I hope not. Maybe you should have a call with your insurance provider.
Here’s the “right thinking” Judge Rich at the height of his nutsanity: We cannot agree with the board that these claims … are directed to non-statutory processes merely because … all the steps therein can also be carried out in … the human mind
Try to believe it. Judge Baldwin’s forward looking dissent in Musgrave is well worth a read (just a taste here: Justifying the decision finding claims drawn entirely to purely mental processes to be statutory, the majority states that “[a] step requiring the exercise of subjective judgment without restriction might be objectionable as rendering a claim indefinite.” It should not require much imagination to see the many problems sure to be involved in trying to decide whether a step requiring certain human judgment evaluations is definite or not.)
Well, you got me there.
There is a fourth possibility. Perhaps it will strike you if you re-read the cited post.
There is a fourth possibility. Perhaps it will strike you if you re-read
Just spit it out, Greg. You’re a big boy or at least you play one on the patent blogs. Use your fingers and start typing.
You seem to get very particular when you want, but STILL miss by mile.
For an immediate example, the Court directly discussed the relation of Diehr and Flook in Bilski (you know the case, the one you predicted that Diehr would be expressly overturned).
Let me “spit it out for you”:
Diehr cabined Flook.
Greg was absolutely correct in the merit of what he was saying – just off a case.
Bilski (you know the case
ROTFLMAO
Yes I’m very familiar with it. That was a totally awesome case for you and the rest of the Patent Everything crowd because it only cut your legs off at the knees instead of crushing your head like an apple in a cider press. Oh what a happy day it must have been for you.
Greg was absolutely correct in the merit of what he was saying
Except that Musgrave was not “restored” by Diehr, nor was there any “repenting” of the “ill considered” Flook decision by the majority in Diehr.
Now, as for what the CAFC and the PTO chose to do with Diehr that’s another story. We pretty much know how that story ended, don’t we? I seem to recall you and your fellow “No Claim Dissection Ever!” crew going completely crazee here for years when your bizarre views about Diehr were getting ready for the coffin. Remember that, “anon”? Remember the 10,000 s0ckpuppets you and your cohorts used here over the course of a couple years to derail any discussion of the issues?
I certainly remember that.
How is your battle of transperancies going with Dr. Noonan?
It appears that there is only one ec(h)osystem that permits your (nine years and running) C R P when it comes to patents.
Gee, I wonder why that is?
How is your battle of transperancies going with Dr. Noonan?
Noonan is obviously a transparent shill for his clients. That battle was won even before it started.
Thanks for asking though.
Because my response exactly mirroring the words by Malcolm is somehow, what, offensive?
That’s wack Prof.
“Nothing in the Diehr decision suggested that the Supreme Court was ‘repenting; an “ill-considered” decision in Flook.”
Except maybe, just maybe, Justice Steven’s dissent pointing out that the ruling was entirely incompatible with Flook. But what would Justice Stevens know about Flook?
JL: “Nothing in the Diehr decision suggested that the Supreme Court was ‘repenting; an “ill-considered” decision in Flook.”
Except maybe, just maybe, Justice Steven’s dissent
Usually when people discuss what the Supreme Court said they aren’t referring to the dissent. I know I wasn’t.
More importantly, Stevens believed that Flook was “misapplied” in Diehr, not that Flook was overturned.
Not only did Stevens recognize that the majority’s decision was poorly written, and he also astutely recognized that it would be exploited to the detriment of the patent system and the promotion of progress (“[critics have identified] two concerns to which federal judges have a duty to respond. First, the cases considering the patentability of program-related inventions do not establish rules that enable a conscientious patent lawyer to determine with a fair degree of accuracy which, if any, program-related inventions will be patentable. Second, the inclusion of the ambiguous concept of an “algorithm” within the “law of nature” category of unpatentable subject matter has given rise to the concern that almost any process might be so described, and therefore held unpatentable. In my judgment, today’s decision will aggravate the first concern and will not adequately allay the second. “)
Stevens also understood the facts (“since devices for constantly measuring actual temperatures — on a back porch, for example — have been familiar articles for quite some time, I find it difficult to believe that a patent application filed in 1975 was premised on the notion that a “process of constantly measuring the actual temperature” had just been discovered.”).
Justice Stevens knew what was up. And it’s easy to see that. That’s why guys like “anon” and his cohorts are always trashing him and doing backflips to resurrect Judge Rich’s rotting corpse instead. Of course that’s not ever going to happen. Fun to watch, though. 😉
“More importantly, Stevens believed that Flook was “misapplied” in Diehr, not that Flook was overturned.
”
Ha ha haha haha.
Good one – you funny.
Maybe you want to ask him how he felt losing his majority position in Bilski?
How did your “guaranteed result” of that case come out again?
A couple of thoughts about Musgrave:
1) I definitely do not think it is good law now. I stand by my earlier assertion that Justice Stevens gave us the point-of-novelty test in Flook, but that Justice Rehnquist helped the Diehr court to see how misguided was this way of reading section 101.
2) However, while Diehr restored as-a-whole sanity for ~3 decades, the bad old itch for point-of-novelty took hold of Justice Breyer, who restored this test in Mayo. Therefore, whether or not Diehr gave us back Musgrave is beside the point. Those days are gone now. Back to claim dissection…
3) Incidentally, Judge Baldwin did not dissent in Musgrave. He concurred. For whatever little it is worth, I think Judge Baldwin’s concurrence is better than Judge Rich’s Musgrave opinion, although I definitely think that Judge Rich reached the statutorily correct holding (pity that the otherwise sensible Justice Breyer did not follow Judge Rich’s wise guidance).