Isolating and Measuring a Natural Phenomenon

by Dennis Crouch

Ex Parte Simons, APPEAL 2016-002684 (Patent Tr. & App. Bd. Jan. 31, 2018) (Decision on Rehearing)

In this case pending before the USPTO, Australian company Haplomic Technologies is seeking to patent a method of mapping whether methylated DNA bases are cis or trans.

16. A method for improving methylation mapping, comprising,

substantially isolating a DNA molecule from the biological sample, wherein the DNA molecule is an individual metaphase chromosome or a chromatid, or a fragment obtained therefrom;

analyzing the DNA molecule to determine the presence or absence of one or more methylated bases in the DNA molecule and

determining whether any two methylated bases are present in cis on the DNA molecule.

In its original decision, the PTAB affirmed an examiner rejection – finding the claim ineligible as directed toward a natural phenomenon.  However, the patentee requested a rehearing – arguing that the PTAB had failed to properly identify the natural phenomenon being claimed.  On reharing though, the PTAB reaffirmed the decision of no patentable subject matter.

In its analysis, the Board first noted that the claims are not directed toward any transformation of the isolated DNA, but rather simply detecting its parts.  We know from prior cases that isolated DNA remains a product of nature (Myriad) and that detecting DNA sequence is also a phenomenon of nature (Ariosa).  Similarly here, the PTAB ruled:

because the DNA is methylated in its cis or trans configuration prior to isolation, and because Appellant’s claims are directed merely to determining the configuration that exists prior to such isolation, Appellant’s claims are directed to a naturally-occurring phenomenon, i.e., a “phenomenon of nature,” and, therefore, to a judicially-created exception to Section 101.

Looking to step two of the Alice/Mayo analysis, the court found that the claims were written so broadly as to preempt the entire area — and did not including any saving inventive concept application.  “In short, Appellant’s claims are directed to determining, by any means, including means well known in the art, the naturally-occurring cis or transposition of methylated sites on a sequence of isolated DNA.”

Part of the applicant’s argument here was essentially that it combined two different ineligible concepts (isolating the DNA and cis testing) to somehow leave the invention patent eligible. The PTAB though rejected that argument.

It will be interesting to see whether the patentee pushes this case to a District Court or the Federal Circuit for review. Although those options are fun, the more likely outcome is that the patentee will narrow the claims and try again. Mark Nuell at Roberts Mlotkowski argued the case for the applicant.

Docs:

115 thoughts on “Isolating and Measuring a Natural Phenomenon

  1. 13

    Les, have another:

    I agree with this eligibility finding, because in my view, the computer system is the consumer of the information generated by the method. Note too that human actions are involved in the method, but the important part- in my scheme- is the characterization of the consumer of the method.

    link to b2ipreport.com

    In an ideal world, because the whole thing is made of information, it would be abstract and not in the patent system, but just too many people won’t accept that. My scheme limits the damage and should satisfy people worried about “innovation” in the Information Age and unwilling to strike logic methods from the system.

    1. 13.1

      Martin –

      I understand your position. You have stated it many times. I simply disagree with it. The consumption of the information obtained by an inventive process is post solution activity and can and should have no bearing on the eligibility of a claim.

      A claim to a method of recording photographic information is not ineligible because it involves measuring a natural phenomena (light). Nor is in ineligible because a human might review the recorded information.

      1. 13.1.1

        You don’t understand my position Les.

        How can we conceive of a new means of recording photographic information that does not require a new or improved machine, composition, or manufacture to do so?

        If the invention itself is not an item of information, my eligibility test cannot apply.

        If you have new method of information processing in mind, how can it conceivably be limited to only photographic information?

        Information processing methods that are new or improved where the meaning of the processed information is irrelevant to the invention means that such processed information cannot be directly consumed by human beings (no meaning=no consumption) and would be eligible.

        1. 13.1.1.1

          means that such processed information cannot be directly consumed by human beings

          does NOT flow from: “the meaning of the processed information is irrelevant to the invention

          Your logic is in error.

          whether or not “directly consumed” may – or may not – coincide with the meaning of the processed information being irrelevant to the invention.

          And that error of yours flows in BOTH directions.

          ALL of this stems Marty from your lack of taking the time to understand what utility means in the patent context.

          You have fixated on a desired End result in your thinking Marty, and you are trying to squeeze the rest of the round peg of the world into your square hole.

          1. 13.1.1.1.1

            Actually anon, I’m trying to ethically and Constitutionally squeeze logic and information patents into a place where they don’t belong, but where there is political will to force them. It’s what’s known as a compromise, something that I know you have difficulty with on many levels.

            Utility to persons via meaning is inherently different than utility to persons by mechanical and mechanical means, and nothing you can say will change my philosophy on that point.

            1. 13.1.1.1.1.1

              logic and information patents

              Put the Malcolm rhetoric down.

              It does not work for him.
              It certainly does not work for you.

              they don’t belong,

              LOL – you start in error then. With that mindset, how in the world do you expect any solution that you come up with to be anywhere close to meaningful? Your idea of “compromise” is flawed from the get-go because you refuse to put in the effort to understand the actual legal terrain. Everything you attempt to learn is learned with the intent to “fit” your fixed desired end. That’s NOT compromise.

              ethically and Constitutionally

              Your very statement screams out that you understand NEITHER in view of patent law and innovation.

              Utility to persons via meaning is inherently different than utility to persons by mechanical and mechanical means, and nothing you can say will change my philosophy on that point.

              Try again. Read what I wrote. I am asking that you understand what utility means in the patent law sense – NOT squeezed through your preconceptions as to “mechanical,” “meaning,” or any other NON-patent law concept.

              As noted – your errors abound. You are not going to “think” yourself out of the errors that you have “thought” yourself into – especially as you so clearly hold onto some serious misperceptions, no doubt instilled on your feelings through your personal travails.

              You need to liberate your thinking and step out of your preconceived notions. You are like a 2 dimensional man trapped in a circle when all you need to do is STEP OVER the circle. As it stands, you cannot even get out of your own way.

        2. 13.1.1.2

          I didn’t say means. I said method. A method of capturing an image could be claimed as a METHOD. For example:

          Focus light reflected or transmitted from a subject to form an image;
          measure a change in temperature at a plurality of locations within the image;
          record the measured temperature changes.

        3. 13.1.1.3

          “How can we conceive of a new means of recording photographic information that does not require a new or improved machine, composition, or manufacture to do so? ”

          I don’t understand the point of this question. Methods don’t have to recite hardware. Hardware is separate from the method. I can say stirring without specifying a spoon. I can say heating with out specifying fire, resistance heating or microwaves.

          What if new hardware would be helpful. What difference does that make? I invented the method. In this case perhaps, once the method is known, the hardware is obvious.

        4. 13.1.1.4

          “If the invention itself is not an item of information, my eligibility test cannot apply. ”

          Huh? You want to apply your test here. The invention is not an item of information. The invention is a system for determining and storing a particular item of information.

        5. 13.1.1.5

          “If you have new method of information processing in mind, how can it conceivably be limited to only photographic information? ”

          Huh? Why would it have to be? Why can’t I limit my claim to photographic information even if my invention could be adapted to other information? On the other hand, why would I have to limit my claim to photographic information? What does that have to do with whether my claim is to a method or not?

    2. 13.2

      perhaps salvaged:

      Your comment is awaiting moderation.
      February 21, 2018 at 8:45 pm

      logic methods

      Understand FIRST what you are talking about Marty.

      THEN (and only then) come up with your “suggestions.”

      As it is, all that YOU are doing is trying to placate your own feelings.

    3. 13.3

      Martin: Which of those claim elements meets the: not previously known requirement?

      Interestingly, I note that the Public PAIR access portal now uses the claimed method as a test that one is not a computer.

  2. 12

    I had the strangest dream last night. Prof. Crouch was working on a new blog post about the correlation between patent allowance rates and the USPTO’s cafeteria selection. Meanwhile, a police officer snuck into Prof. Crouch’s basement and found a dead tiger. The professor was arrested under the Endangered Species Act.

    Naturally, Prof. Crouch hired a patent attorney as his defense counsel. The patent attorney tried her best to defend the professor, arguing that under article 1, section 8 of the US Constitution, Prof. Crouch was entitled to protection against government intrusion without a warrant.

    Here’s where the dream gets weird. The government appointed a patent examiner to prosecute the case. The patent attorney argued a warrant was not necessary because basements are abstract ideas. The patent attorney was like, what does that even mean? The basement has a wet bar and a bathroom. How could it be “abstract”?

    Unfortunately for the professor, the judge sided with the patent examiner. The judge said he didn’t need to define what abstract basements were. However, the judge pointed out that a wet bar is simply post-solution activity and a bathroom was directed to a law of nature.

    The case was heavily publicized. Many people commented the professor did not deserve privacy protection because keeping a dead tiger in your basement is a terrible idea. One person commented that in Europe basements are referred to as cellars.

    Luckily for the processor, the case was ultimately dismissed. It turned out the tiger wasn’t real but actually the Mizzou mascot, Truman the Tiger, with a dead prostitute inside. To this day we never know why Prof. Crouch’s basement is abstract. Weird dream, huh?

    1. 12.1

      Here’s where the dream gets weird

      Here…?

      (granted the rest is indeed a step up the ladder of quantum level weirdness [did you see what I did there?], but the start is still weird all on its own)

    2. 12.2

      Wait. What if it was demonstrated that prostitutes were endangered, the one in the Tiger suit being exhibit A? Besides, in some mythologies, death itself is an abstraction.

    3. 12.3

      This response is caught in moderation. I’ll try it again here:

      “Weird dream, huh?”

      I’ll say. Wasn’t the professor charged with transforming the tiger from living to dead. If there was a transformation in the basement, clearly the Judge was wrong. The basement passes the machine or transformation test.

  3. 11

    We have not as of yet seen any comments on the Euro patent.

    That patent has – as claim 1:

    1. A method for obtaining epigenetic information for a biological sample obtained from a human, animal or plant subject,

    the method including the step of:

    analyzing the biological sample, the sample containing a substantially isolated DNA molecule, by:

    determining the presence or absence of two or more methylated bases in the DNA molecule,

    wherein the presence or absence of the methylated bases is capable of modulating expression of the DNA molecule in vivo; and

    determining whether any two methylated bases are present in cis on the DNA molecule;

    characterised in that the substantially isolated DNA molecule is isolated using a physical method; and

    wherein the substantially isolated DNA molecule consists of a single chromosome or a chromatid, or a fragment thereof.

    1. 11.1

      I see more words but I don’t see anything remotely close to a meaningful limitation that distinguishes the claim from the g@ rbage US claim.

      Interesting that this is an Australian company. I wonder if the “investors” who control it are related in any way to the gross people behind that Genetic Technologies travesty.

    2. 11.2

      What’s to say? If the EU wants to issue garbage patents, we should be pleased about it, because it makes competing with them that much easier.

      The opening clause says it all: A method for obtaining epigenetic information using any physical method, that teaches nothing. Pure rubbish.

      1. 11.2.1

        Claims don’t teach things. Specifications do.

        Moreover, whether or not something is “taugh” would more likely be a factor under 35 USC 102. It has no bearing on eligibility under 101.

    3. 11.3

      Your comment is awaiting moderation. – not sure why….

      February 22, 2018 at 5:59 am
      I guess that we have no Europhiles willing to weigh in….

  4. 10

    Apparently this “technology” is just outting DNA as being cis or trans (positioned). Sounds bigoted to me. We all know outting as being cis or trans without consent is transphobic, or cisphobic.

  5. 9

    Part of the applicant’s argument here was essentially that it combined two different ineligible concepts (isolating the DNA and cis testing) to somehow leave the invention patent eligible. The PTAB though rejected that argument.

    They should have, the entire logic of Electric Power Group is “we found A and B and C to all be abstract, and this is just doing ABC.”

    “In short, Appellant’s claims are directed to determining, by any means, including means well known in the art, the naturally-occurring cis or transposition of methylated sites on a sequence of isolated DNA.”

    Bolding to indicate what makes it ineligible, lacking enablement and written description, and underlining to indicate what makes it anticipated/obvious, for the people who have a problem separating 101, 112, 103. The problem is people who think the underlined part either negates the need for – or even worse, excuses – the bold part.

    The fact that fact-finders (and expecially the office) lack imagination on enablement and WD (and that fact that WD is in-fact foreign to Supreme Court jurisprudence) is what makes Alice necessary.

    1. 9.1

      Oh man you don’t have underlining. The underlined part should be “including means well known in the art.”

    2. 9.2

      This is Boulton & Watt v. Bull and Neilson v. Hartford all over again. It is amazing what one can say if he knows nothing of the law and history, and assumes his audience is similarly uneducated and as dum… as an ox.

      1. 9.2.1

        . It is amazing what one can say if he knows nothing of the law and history, and assumes his audience is similarly uneducated and as dum… as an ox.

        The irony of Ned saying this given his “know nothing of the law and history” concerning what Congress did in the Act of 1952.

        1. 9.2.2.1

          Random, I did not intend the post to be a reply to anyone. The claim was claiming the invention at such a high level of abstraction that any means or method for accomplishing the result would be covered. This is what the English called claiming “principles in the abstract.” In particular, the claim itself includes no means or method for achieving the result. Each step itself is no more than a claim to a result.

          It is this style of claiming that pervades modern patent law. It must be taught because everyone is doing it.

          1. 9.2.2.1.1

            It is this style of claiming that pervades modern patent law. It must be taught because everyone is doing it.

            Ladders of Abstraction is the phrase that you might be looking for Ned.

            I say might – and do not put it as definite – because you appear to not recognize that most all claims of any worth are written with the use of Ladders of Abstraction.

            If one is not using the Ladders of Abstraction, then one is left with a painstaking picture claim that is far too limiting to cover the invention, and results in a nigh worthless patent as being far too easy to design around.

            This Ladders of Abstraction (the true one – not the one that you see only as a denigration) IS prevalent, and IS taught**, and IS something that most everyone is doing.

            It really is not that surprising to see YOU not getting this, given your past views and desires to make the Jepson claim format something that is not an option.

            **not only is this taught regularly to those that draft patents, this technique is taught regularly to those who innovate and for whom the drafting of patents is completed.

            1. 9.2.2.1.1.1

              Looking for an older case cite and paging through some of the archives of this site, I came across a mirror post of this explaining the exact same concept to Ned from four years ago.

              Willful ignorance is not pretty.

  6. 8

    Remember back to 5-10 years ago when Kevin Noonan and Co. were whining and crying and doing their chicken little routine asserting that Prometheus and Myriad were going to destroy the biotech industry? And evidently the only way to save biotech innovation was to allow people to own correlations and give lawyers the ability to sue the public for using prior art detection methods for the purpose of (wait for it) detecting natural phenomena?

    I remember it well. Kev and others still run a blog that habitually refuses to discuss the facts in Prometheus v. Mayo, no matter what. Basically it’s a bunch of hacks. And they know this.

    1. 8.1

      Remember 13 years ago when you began blogging with MM? Well, he whined and whined about patents. And it hasn’t stopped. Despite the fact that patents are now worth about 10-20 percent of what they were 13 years ago and the USA has gone from #1 in patent protection to #12.

      In fact, the patent system is on its knees and another big blow like the AIA or Alice could end patent protection in any meaningful sense. Yet, MM whines away as if it was 13 years ago.

  7. 7

    Some kid in the peanut gallery: nothing in nature will spill out a series like AGTC for us.

    What?

    it will continue to create disincentives to invest in the life sciences, leaving everyone poorer for the lack of investment.

    News flash: junky patents on “detecting stuff using prior art detection methods” don’t promote anything except shoveling money into the hands of people who are already incredibly wealthy.

    This is so obvious it doesn’t really need to be pointed out to most people. But it does need to be regularly pointed out to the entitled patent crackheads who somehow seem to always be struggling to find work. Gee, I wonder why that is.

    1. 7.1

      it will continue to create disincentives to invest in the life sciences, leaving everyone poorer for the lack of investment.

      If I have to obtain a license to use a prior art detection method for its intended purpose (e.g., to detect a natural phenomenon), it seems like I’m the one who is going to be poorer.

      Why is this so complicated for some people?

  8. 6

    Part of the applicant’s argument here was essentially that it combined two different ineligible concepts (isolating the DNA and cis testing) to somehow leave the invention patent eligible. The PTAB though rejected that argument.

    Good. Because it’s an incredibly silly argument.

    Isolating “part” of a chromosome and determinining whether the methylation is cis or trans?

    LOL

    It’s like “cut your hair” and “determine if some of the cut hair is grey.”

    My goodness.

    Best part: maximalists trying to defend this cr @p.

    The right thing to do is to take everyone involved in peddling this j unk the woodshed and throw their reg numbers in the trash.

  9. 5

    The incredible expanding law of nature exception. Now a method of measuring a phenomenon of nature is not patentable. Apparently, the PTAB has discovered a naturally occurring tape measure. Soon methods that can be used in a naturally occurring universe will be deemed unpatentable.

    1. 5.1

      Apparently you were asleep during the years leading up to the correctly decided Sequenom decision. This is a very sensible decision but perhaps requires more than two seconds of reactionary knee jerk thinking if you’ve never thought about the issue before.

    2. 5.2

      The incredible expanding law of nature exception. Now a method of measuring a phenomenon of nature is not patentable.

      Not “a method” – all methods of measuring. The proper way to say this is not that it’s ineligible because its nature, it’s ineligible because it’s simply obtaining and comparing intangible data, thats not limited to a particular means of doing so.

      Apparently, the PTAB has discovered a naturally occurring tape measure.

      A tape measure is eligible. “Any device which measures distance” is not.

      1. 5.2.1

        A tape measure is eligible. “Any device which measures distance” is not.

        And note that simply reciting “wherein you use a tape measure” will not cause an eligibility issue in a claim to disappear. That’s because the tape measure is just an old measuring device. So if you’ve discovered an ineligible product of nature (e.g., an Amazonian frog) you can’t use the patent system to keep people from using a tape measure — or any other prior art device — to measure the “new” frog (or any sub-part of it). A lot of people are confused by this because so much dust about “pre-emption” has kicked into the air by know-nothings. The bottom line: Limiting an ineligible method to a particular context does not rescue the method from ineligibility.

        And yes this is true of all logic patents. Take it to the bank.

        1. 5.2.1.1

          yet again, your “logic patents” mantra exposes itself.

          Software is not logic.

          And you know that, eh?

        2. 5.2.1.2

          you can’t use the patent system to keep people from using a tape measure — or any other prior art device — to measure the “new” frog (or any sub-part of it).

          Maybe you need a reminder on the exceptions to the judicial doctrine of printed matter. You appear to intimate that “new” frog or any sub-part of it is something that would be like software, while you forget that software passes through the printed matter screen because of the exception and the “functionally related” aspect of software…..

      2. 5.2.2

        “it’s ineligible because it’s simply obtaining and comparing intangible data”

        You can argue other reasons why you think the claim is ineligible, but that’s not the reasoning the PTAB adopted. They said, “Appellant’s claims are directed to a naturally-occurring phenomenon.” The PTAB justified unpatentability based on the law of nature exception.

        You can’t reasonably argue using a tape measure is a natural phenomenon. Similarly, and you can’t reasonably argue isolating a DNA molecule, analyzing the DNA molecule, and determining the presence of methylated bases is a natural phenomenon. The PTAB’s decision sets a bad precedent as to what falls under the law of nature exception.

        1. 5.2.2.1

          , but that’s not the reasoning the PTAB adopted

          Malcolm
          Does
          Not
          Care

          never has – never will

        2. 5.2.2.2

          you can’t reasonably argue isolating a DNA molecule, analyzing the DNA molecule, and determining the presence of methylated bases is a natural phenomenon

          That’s not the argument.

          The argument is that a claim to a “a method of detecting a natural phenomenon using any detection method” crosses the same uncrossable line that a patent claim simply reciting “this phenomenon” crosses. Presumably if you have the intelligence to read a patent blog and type a comment, then you have the intelligence to follow this argument. Just take a deep breath and think about it for a moment. Maybe try first to understand that the prohibition on claiming natural phenomena as natural phenomena per se didn’t fall randomly from the sky. And then try to understand that one may attempt to scriven one’s way around the prohibition (e.g., by using excess verbiage or reciting prior art/public domain detection methods) but those attempts will only be successful when the Examiner or your litigation target is asleep at the wheel.

          Scientists want to be able to use prior art detection tech (which they’ve bought or licensed) and public domain tools for their intended purpose which is to study the natural world. You can’t use the patent system to stop them. At the end of the day, you’ll get the horns every time (or at least every time the scientist hires a competent attorney).

        3. 5.2.2.3

          They said, “Appellant’s claims are directed to a naturally-occurring phenomenon.” The PTAB justified unpatentability based on the law of nature exception.

          The claim does a) a non-limited analysis on b) naturally occurring matter. A is ineligible and B is not a significant limitation on it. B is ineligible and A is not a significant limitation on it.

          The PTAB sees this a “directed to B with A not being significantly more” situation. You (in your 5.0 post) described it as a “directed to A with B not being significantly more” situation (by calling it a method of measuring a phenomenon).

          I simply pointed out that if you wanted to look at it that way, the claim would still be ineligible, just under a different theory of abstractness. I’m not trying to justify what the PTAB did (though the PTAB was within their right to resolve the directed to inquiry as they did), I’m pointing out that even if you look at the claim as being directed to “measurement” (as opposed to a particular kind of measuring device) the claim would be abstract, regardless of whether the measurement is of a natural thing or anything else.

          1. 5.2.2.3.1

            The “directed to” question rests on an illusory foundation.

            Congress itself has “directed” who has the authority to determine what an invention is considered.

            That entity is not the Court.

            Indications of a broken score board deserve more – not less – critical thinking.

            It does matter how the End is reached – it does matter the Means to that End (no matter what that End may be).

    3. 5.3

      ” Now a method of measuring a phenomenon of nature is not patentable.”

      It might be more accurate to say, “As always, an inventive method of measuring a phenomenon of nature is patent eligible, but the mere notion of being able to measure a phenomenon of nature is not patent eligible”.

  10. 4

    Re: “the more likely outcome is that the patentee will narrow the claims and try again.”
    Yes, but first note that such narrower claims should be in a patent application as dependent claims to begin with, and separately argued on appeal. Secondly, does this spec have any disclosure to support any claim specificity to the allegedly novel and fully generic claim step of “analyzing the DNA molecule to determine the presence or absence of one or more methylated bases in the DNA molecule?”

    1. 4.1

      does this spec have any disclosure to support any claim specificity to the allegedly novel and fully generic claim step…

      If only I could get my coworkers to think this thought.

  11. 3

    ““In short, Appellant’s claims are directed to determining, by any means, including means well known in the art, the naturally-occurring cis or transposition of methylated sites on a sequence of isolated DNA.”

    Ah, I see, its abstract because it is old…

    Then cite a document or two and reject under 102.

    ““In short, Appellant’s claims are directed to determining, by any means, including means well known in the art, the naturally-occurring cis or transposition of methylated sites on a sequence of isolated DNA.”

    If the claim recited heating something, would the court say the claims are directed to determining by heating by any means including means well known in the art?

    What if the claim recited heating by gas flame? Would the court say the claims are directed to determining by heating by any kind of gas flame, including well known gas flames?

    What if the claim recited heating by methane flame? Would the court say the claims are directed to determining by heating by methane flame, without indicating the size of the flame or without specifying the isotopes of carbon in the methane?

    1. 3.1

      This claim has not even a limitation as generic as “heating,” much less a specific gas flame limitation. Setting up and shooting down “straw men” is not going to make unpopular Sup. Ct. decisions go away.

      1. 3.1.1

        His allusions to different elements not in the present claims is not a “strawman.”

        Maybe reply on point?

    2. 3.2

      Les: its abstract because it is old…

      It’s not an “abstraction” issue. It’s a product/phenom of nature issue like the fetal DNA case (Sequenom).

      You can’t put a fence around a product/phenom of nature by drafting a claim that prevents people from using prior art detection methods to detect the product/phenom.

      There’s great reasons for that restriction, all of which you’ll need to grapple with if you want to be taken seriously.

        1. 3.2.1.1

          Les: If its prior art then reject under 102.

          I’m sorry but just because I mentioned “prior art” in a comment does not justify reposting your silly mantra here.

          Pay attention to the actual issue, mkay?

      1. 3.2.2

        “It’s a product/phenom of nature issue”

        No. No it isn’t. This claim is directed to a method of detecting something. It is not directed to a naturally occurring method and it is not directed to a product of nature.

        Would a claim to a new method of measuring the height of a mountain be directed to a product/phenom of nature?

        Would a claim to a new method of measuring the temperature of the core of a planet be directed to a product/phenom of nature?

        Don’t be absurd.

        1. 3.2.2.1

          It’s a product/phenom of nature issue”

          No. No it isn’t. This claim is directed to a method of detecting something.

          Dude, the “something” is the product/phenom of nature.

          This claim is indistinguishable from “use bifocals to look at a frog” …. and these guys didn’t even discover the frog!

          Please just stop.

          1. 3.2.2.1.1

            Here Malcolm, you step into the weeds.

            Had the claim been more like whatever claim Les thinks that he is protecting, he would have the better point here because your reach into the “what the item is that is being measured” does not detract from a claim of a new form of measurement.

            Sadly, Les is off in the first instance, because this claim is not the claim that he thinks that he is defending.

          2. 3.2.2.1.2

            “Dude, the “something” is the product/phenom of nature.”

            So what?

            The “product/phenom of nature” is not being claimed. A method of detecting it is.

            Is a method of recording an image also ineligible in your view, because the subject of the photograph can be a product of nature?

            That is just bizarre.

            1. 3.2.2.1.2.1

              Is a method of recording an image also ineligible in your view, because the subject of the photograph can be a product of nature?

              It’s either ineligible (if the claim’s novelty hinges on the identify of the photographed subject) or it’s anticipated.

              Either way it’s d.o.a.

              The “product/phenom of nature” is not being claimed. A method of detecting it is.

              And this is where I question the intelligence of commenters like Les. If, by virtue of my patent, I own the “right to detect” a product of nature by all known means (or even most of the commonly known means), then I’ve got a pretty good lock on that product of nature. My patent will make it more difficult and more expensive and more risky to do anything with this natural product. That’s not allowed. That’s why we have the exception.

              This is basic stuff.

              1. 3.2.2.1.2.1.2

                “My patent will make it more difficult and more expensive and more risky to do anything with this natural product. That’s not allowed. That’s why we have the exception.”

                That’s what all patents do for a period of timeon that side of the equation. On the flip side, we get, you know, medicine and stuff.

                “This is basic stuff.”

    3. 3.3

      If the claim recited heating something, would the court say the claims are directed to determining by heating by any means including means well known in the art? What if the claim recited heating by gas flame? What if the claim recited heating by methane flame?

      See Les now you’re getting it. There’s a point at which something is obviously abstract (heat transferrence, which is clearly a preexisting phoenomena of the universe) and a point at which something is concrete, and there are varying degrees of vaguery between.

      So you ask “What’s good enough?” which is what the significantly more analysis is directed to. Lets start with the boundaries you know:

      The claim can’t be so non-limited that it includes means that you haven’t enabled, or you’re going to get an enablement rejection. So if the claim is directed to a novel method of heat transference, and the claim only includes that functional statement (“heating by any means”) you obviously haven’t enabled your full scope unless you’re the absolute last word in heating. Same thing with WD – if you posit one means of doing it and the scope encompasses other means, you’re going to fail WD.

      So let me suggest to you that the point at which something becomes ineligible is the point at which your scope fails to exclude means you haven’t considered, because you can’t do the enablement or WD analysis properly without knowing that. In other words, if you invent a heater, or a printer, or even a toaster, but your claim encompasses all things which achieve a result, your claim becomes ineligible the moment it allows for devices which are non-equivalent to the device in your specification.

      If you are the first to use methane flame to heat something, you can’t claim “heating by methane flame” you can only claim your device which generates the flame. To use a similar example by someone above – if your goal is to measure distance, you can only claim your tape measure, you can’t notice that your tape measure, when you use it, measures distance, and thus claim all devices which measure distance regardless of whether you enabled or posited them or not.

      1. 3.3.1

        So let me suggest to you that the point at which something becomes ineligible is the point at which your scope fails to exclude means you haven’t considered, because you can’t do the enablement or WD analysis properly without knowing that

        Conflating 101 and 112 only shows that you truly understand neither.

        1. 3.3.1.1

          Conflating 101 and 112 only shows that you truly understand neither.

          For anon: Scoreboard.

          For people who might be able to learn something: The Supreme Court used to police non-enablement overbreadth by what is today called 112b and Alice. If a Spec disclosed only one means of doing something but the claim was drawn to all means of doing something, the claim either failed to particularly claim the invention (because the functional abstraction is not a particular description of the invented structure which performs the function) or it was abstract (because Morse actually suggested he invented every means of printing at a distance).

          Following the 52 act, the CCPA gutted 112b as a substantive scope rule and ignored abstraction. When they realized that was leading to ridiculous results where people would invent 1 means and claim all means of performing a function, they had to invent written description to prevent the overbroad scopes. The Supreme Court has never taken and never endorsed Written Description’s “posited possession” standard for declaring claims overbroad, and instead has taken cases like Alice and Nautilus.

          Written Description is a test which notably requires counter-invention (prove overbreadth by showing a different means of achieving the vague result than what the patent’s spec contemplates) and places a clear and convincing standard on the defendant. Alice, on the other hand, allows for a quick back-and-forth argument over whether other limitations surrounding vague or functional language are “significant” and there is heightened standard.

          They aren’t the same test but they are definitely related, for at least the reason that one can’t really prove they possess the entire range of an abstract act.

          1. 3.3.1.1.1

            that one can’t really prove they possess the entire range of an any act.

            Fixed.

            but that just the underlying fallacy of the conflation.

          2. 3.3.1.1.2

            Random, excellent insights and summary here. Someone needs to write the definitive law review article.

          3. 3.3.1.1.3

            Your comment is awaiting moderation. still – let’s see if this breaks them out…

            February 21, 2018 at 6:48 am

            That scoreboard is broken.

            THAT is the issue – you need to open your eyes and understand why.

            The Ends do not justify the Means.

  12. 2

    I see it from a different angle. It’s a process invention (unless I missed it being claimed as a composition, manufacture, or machine) and the result of the process is an item of information (whether methylated DNA bases are cis or trans). That information is consumed by human beings (presumably to make medical or scientific decisions) and so should be ineligible.

    The fact that all steps are well known and the combination is obvious to PHOSITA would cause it to be rejected anyway, but there is no reason (again in my view) to involve this very loose idea about what are and are not natural phenomena.

    1. 2.1

      To take the time then and properly translate the supposition into something that is properly within the legal realm:

      “Only knowing” does not contain the necessary utility that is required for the Useful Arts prong of 35 USC 101 (regardless of which statutory category may be indicated).

    2. 2.2

      You don’t know how the information is consumed. Perhaps it is used in a machine accomplished sorting procedure.

      It is absurd to suggest that post solution activity has a bearing on the eligibility of a method claim.

      1. 2.2.1

        It is absurd to suggest that post solution activity has a bearing on the eligibility of a method claim.

        Actually, it is not so absurd.

        The utility prong of 101 is a real prong.
        The statutory category prong simply is not the only prong of 101.

        1. 2.2.1.1

          If there were no use to knowing which individual metaphase chromosome or a chromatid, or a fragment have at least two methylated bases that present as cis, then no one is going to what to perform the claimed method and there is no harm in issuing the patent.

          Moreover, that someone is going through the expense of trying to patent it is clear evidence that the claimed method is useful.

          1. 2.2.1.1.1

            Les,

            I suggest that you recalibrate and look again at THIS claim.

            It is not the claim that you appear to be wanting to champion.

          2. 2.2.1.1.2

            Les no one is going to want to perform the claimed method and there is no harm in issuing the patent.

            Not how the system works. Nice try, though.

          3. 2.2.1.1.3

            Someone “going through the expense” is probitive if nothing except willingness to spend money.

            There is no tie between the willingness to spend and the propriety of satisfying both prongs of 101.

      2. 2.2.2

        It’s not “post solution” activity because there is no eligible “solution” in the claims.

        If these steps were part of a larger set of claims that included machine consumption (and those other elements were new, useful, and non-obvious) then they should not tank the eligibility of the whole method. Those additional steps would not be “post solution” they would be part of the “solution”. Human use of the information could also be characterized as non-infringing if the claims required non-human use to gain eligibility.

        1. 2.2.2.2

          “It’s not “post solution” activity because there is no eligible “solution” in the claims. ”

          Of course there is. You identified it in your original post: “the result of the process is an item of information (whether methylated DNA bases are cis or trans).”

          Would I prefer that the claim ended with a whereby clause so stating? Sure. But one of ordinary skill, as you have demonstrated, would have understood what was being claimed.

          What comes after might provide additional solutions to additional problems. But as recited, there is a solution to the problem of how to identify individual metaphase chromosomes, chromatids, or fragments with at least two cisies.

          1. 2.2.2.2.1

            Les,

            This is not a battle that you are going to win.

            Your comment of “Of course there is. You identified it in your original post: “the result of the process is an item of information (whether methylated DNA bases are cis or trans).” does not really DO what you think that it does, given as the information exists PRIOR to the method of obtaining the information.

            The proper prong here – and what critical thinking should lead to – is that regardless of statutory category, the utility prong of 101 is not met.

            Your last paragraph (“But as recited, there is a solution to the problem of how to identify individual metaphase chromosomes“) is NOT what the claim is. This is not an “how to identify” method claim. To get that claim, you would need to have the details of the “determining” step present. The claim is not what you think it to be, and your support here is misplaced.

            1. 2.2.2.2.1.2

              “anon” The proper prong here – and what critical thinking should lead to – is that regardless of statutory category, the utility prong of 101 is not met.

              Whoa. Do my eyes deceive me???

              1. 2.2.2.2.1.2.1

                Not sure why you and Marty are acting all surprised, the two prongs of 101 has been my position consistently as long as (and prior to) I have been posting here.

                It’s the Court that is making a mess of things by not properly addressing the two different prongs and attempting to (still) use the common law evolution tool that Congress removed in the Act of 1952 instead of properly looking at the utility prong.

                1. It’s not the existence of the two prongs that’s surprising. It’s that one of the prongs appears to have actual teeth, according to you. Be careful you don’t get bitten. ;)

            2. 2.2.2.2.1.4

              And yes the utility prong is met. I understand you have another opinion on that matter. But you are wrong.

              1. 2.2.2.2.1.4.1

                With the claim here (and not the one that you merely think is here), how is the utility prong met?

                Please take the time to understand my prior comment before providing an answer that may serve well for a different claim than the one actually at issue.

                1. Why don’t you take a crack at explaining why the utility prong is not met.

                  I have explained how it is met several times already.

                  Anyone of ordinary skill in the art would plainly see the utility.

                2. Knowledge – in and of itself – is not the utility required.

                  Further, the claim is not the claim that elsewhere on this thread you have been attempting to defend (your rejoinder of “I have explained how it is met several times alreadydoes not reach). As I indicate above in a reply to Malcolm, your argument at that point with Malcolm is the better one – but you err (and continue to err) because you have not been defending the actual claim at issue.

                  I put this to you in the first instance in order to make sure you understood that point. It does little to help move the conversation along if you are still stuck thinking that the claim at issues is some other different claim.

                3. I am not interested in moving this conversation with you along. All you do is insist things. I understand that the majority will say there are utility issues with the claim. I am saying they are wrong.

                  If the courts can find exceptions for products of nature and abstract ideas in 101, I can find utility in the claim.

                  I’m sure detecting activated or deactivated genes is useful.

                  Keep insisting that it isn’t if you like. I don’t care about your opinion. Its silly. The King has no clothes.

                4. I am not interested in moving this conversation with you along.

                  As always – that is your choice.

                  That choice though carries with it items that you do not get to choose. One of which is the objective view of “who wins.”

                  You are also free to say whatever you want to say – including that the majority is wrong concerning utility. But by not partaking in the dialogue as to how the majority is so – in fact – wrong – you also do not get to choose the lower credibility of your assertion.

                  Again – you get to make a choice – you do not get to choose the outcome of that choice.

                  And yet again – revisit the claim that you think that you are defending. The utility must be in that claim, and knowledge – in and of itself – does not have the right utility. If – as you appear to want to defend some other claim there IS some utility with doing something (even almost anything, as the utility bar is NOT a high one), then that different claim may generate a different response from me.

                  As is – your choice provides a clear winner here – and that winner is not you.

                  Whether or not the Emperor has clothes is quite immaterial to our exchange.

              2. 2.2.2.2.1.4.2

                For example Les: take this interchange. Any objective view of you not coming back and focusing on the point I present – and having you recognize that you are championing some other claim than the one that is actually here can only be viewed as a win for me.

                Otherwise, you would continue the conversation with the appropriate actions taken.

                1. Classic example right here Les.

                  At above at 9:09 am you asked me to “take a shot,” and when I did, you whimpered off.

                  I celebrate your choice.

          2. 2.2.2.2.2

            But as recited, there is a solution to the problem of how to identify individual metaphase chromosomes, chromatids, or fragments with at least two cisies

            Sorry, there is no eligible solution there, let alone a “how to”. The isolation step is known, the observing step is known. All that is recited is “look here”, which is not an invention, it’s an item of information.

            1. 2.2.2.2.2.1

              All that is recited is “look here”, which is not an invention, it’s an item of information.

              Yup. This is Sequenom redux, but even worse.

            2. 2.2.2.2.2.2

              Please identify an eligible claim (in your view) where the individual components of the claim were not known.

              1. 2.2.2.2.2.2.1

                Les,

                Your retort of “where the individual components of the claim were not known. won’t prove the point.

                Whether or not the individual components of the claim are known or are not known have no proper bearing on the eligibility question.

                If he does (and that would be a surprise) present an answer to your post at 2.2.2.2.2.2, that answer does not decide the eligibility issue.

                Likewise, if he does not (and that would not be a surprise) present an answer to your post at 2.2.2.2.2.2, that non-answer does not decide the eligibility issue.

                1. I’m not talking to you. I am talking to Martin. HIS argument is related to allegations of what is known. Butt out.

                2. Happy to oblige Les,

                  In Stanacard v. Rubard, LLC, S.D.N.Y., 2015 U.S. Dist. LEXIS 157345 (Nov. 18, 2015), the process involved a clever algorithm for routing a long distance call.

                  The District Court noted that “Neither caller ID nor the process by which the call actually gets forwarded to its intended recipient (over what telephone network, using what switching facilities) is claimed.” Id. at 6 (emphasis added).

                  The District Court found, under the Alice doctrine, that the process combined two activities that have long been performed by both humans and machines — caller ID and call forwarding — such that the recipient of a local call (area code plus seven digit number) uses caller ID to recognize the incoming caller, then forwards the incoming call to the intended recipient by associating the assigned incoming telephone number with a particular recipient’s telephone number.

                  Expert testimony established that [t]he idea behind the ‘156 patent — combining the customer’s telephone number and the dialed local access number into a unique 20-digit combination is elegant, simple, beautiful but by no means obvious; none of us working in this field came up with the process set forth in the ‘156 patent, and not for the lack of trying. Id. at 8.

                  The expert also testified that, “[t]he method disclosed by the ‘156 patent made an immediate and loud splash in the market place of prepaid telecommunications and garnered a market share away from others.” Id. at 9.

                  Because the activity was well known and there was no further inventive concept needed to implement the process, it was found abstract and ineligible under §101.

                  To me, that result seems inconsistent with the policy purposes of the patent system to encourage technical improvements. Under my proposed test, the consumer of the information is telephone switching equipment, so the process should have been patent eligible.

                3. Possibly salvaged:
                  Your comment is awaiting moderation.

                  February 21, 2018 at 12:34 pm

                  Les,

                  You are misconstruing the notion of “known.”

                  My “butting out” will not make your arguments better.

                  Quite in fact, if you listen t0 my “butting in,” your arguments can only get better.

                  Your choice as to what you will do.
                  NOT your choice as to the outcomes of your choice.

                  (even your correction of what Marty may give you will STILL not resolve the issue – as I note)

              2. 2.2.2.2.2.2.2

                Martin –

                It seems you misunderstood my request. I asked for an eligible claim in your view where the individual elements (not the combination of the elements) were NOT known.

                If I understood your summary, the individual elements, caller ID and call forwarding, WERE known.

  13. 1

    “We know from prior cases that isolated DNA remains a product of nature (Myriad) and that detecting DNA sequence is also a phenomenon of nature (Ariosa).”

    No, what we know from those cases is that SCOTUS is full of @#$% because none of its members know any science (as J. Scalia had the temerity to admit in Myriad).

    SCOTUS can continue to pretend that isolated DNA is found in nature, even though it’s not; and that detecting a DNA sequence is a natural phenomenon, even though nothing in nature will spill out a series like AGTC for us. That won’t change the fact that SCOTUS is wrong. But it will continue to create disincentives to invest in the life sciences, leaving everyone poorer for the lack of investment.

      1. 1.1.1

        That depends entirely as to how deep you cut with the leading edge of the “Gist/Abstract” sword.

        The moment you start leaving out elements of a claim you start sliding down the slippery slope of the what someone other than the applicant states as their invention and you are in the “equity land” of “directed to” (also known as “I know it when I see it and I FEEL that the damm scrivener is wanting more than what is actually claimed).

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