Athena Diagnostics v. Mayo

The following are really more notes for myself rather than an article or essay – DC

The pending appeal in ATHENA DIAGNOSTICS, INC. v. MAYO COLLABORATIVE SERVICES, LLC is quite interesting.  As in Mayo v. Prometheus, the district court dismissed Athena’s medical diagnostic methods as directed toward laws of nature.  The case is now on appeal, and Athena’s attorneys have argued that this case is different.  In addition to the party briefs, several amici have also filed.  Oral arguments were held on October 4, 2018 — and involved a thoughtful discussion by Judges Lourie, Newman, and Stoll as well as White & Case Fenwick attorney Adam Gahtan (representing Athena and Oxford) and Fish & Richardson attorney Jonathan E. Singer (representing Mayo). [mp3].   Judge Lourie’s comment about the technology here is that the claims cover “medical research rather than product development.”

Claim 7 is at issue in the case. The claim is directed to a diagnostic method :

1. A method for diagnosing neurotransmission … disorders related to muscle specific tyrosine kinase (MuSK) in a mammal comprising:

the step of detecting in a bodily fluid of said mammal autoantibodies to an epitope of MuSK.

7. A method according to claim 1, comprising:

contacting MuSK . . . having a suitable label thereon, with said bodily fluid,

immunoprecipitating any antibody/MuSK complex . . . from said bodily fluid and

monitoring for said label on any of said antibody/MuSK complex …

wherein the presence of said label is indicative of said mammal is suffering from said neurotransmission or developmental disorder related to MuSK.

Note – Gahtan has jumped from White & Case to Fenwick.

58 thoughts on “Athena Diagnostics v. Mayo

  1. 8

    Readers may be interested to learn that if you type CAFC into the Google search engine you are directed to Charlton Athletic Football Club.

  2. 7

    May I respectfully draw attention to the CIPA brief which seeks to defend claim 9 of the patent reading:

    “A method for diagnosing neurotransmission or developmental disorders related to muscle specific tyrosine kinase (MuSK) in a mammal

    comprising the step of detecting in a bodily fluid of said mammal autoantibodies to an epitope of muscle specific tyrosine kinase (MuSK), comprising

    contacting MuSK or an epitope or antigenic determinant thereof having a suitable label thereon, with said bodily fluid, wherein said label is a radioactive label and is 125I,

    immunoprecipitating any antibody/MuSK complex or antibody/MuSK epitope or antigenic determinant complex from said bodily fluid and

    monitoring for said label on any of said antibody/MuSK complex or antibody/MuSK epitope or antigen determinant complex, wherein
    the presence of said label is indicative of said mammal is suffering from said neurotransmission or developmental disorder related to muscle specific tyrosine kinase (MuSK).”

    This claim clearly deserves to succeed firstly because it is a transformative process and secondly because the immunoprecipitated and radio-labelled complex is clearly and unmistakably a new chemical entity. The amicus brief includes a diagram for claim 9 clearly distinguishing products of nature from novel elements and with a boundary line delimiting products of nature on the one hand and laboratory procedure on the other. This diagram was included in an endeavor to get the point across even to judges illiterate in technology and patent law (I name no names).

    What is regrettable is the pursuit of over-broad claims that are unlikely to be respected by the Court when there is subject matter in the case which is more specific, provides substantially all the protection needed and has a much greater chance of being affirmed. Practitioners should realize that the claims that they prosecute should be strong enough not merely to pass the USPTO but also to stand up to judicial scrutiny. Failure to appreciate this results in judicial consideration focusing on the over-broad main claim, after which the application or patent as a whole loses credibility and the stronger dependent claims are overlooked consequent on an “avalanche effect” resulting from the failure pop the main claim.

    1. 7.1

      Your “failure to appreciate” cuts both ways — and does not stop with untoward feality to the courts.

      The duty of US attorneys goes deeper, and includes the duty to NOT place the judicial branch above the Constitution (through action as you may describe).

    2. 7.2

      PC This claim clearly deserves to succeed firstly because it is a transformative process

      Uh …. no, that’s not how it works. The physical “transformation” that is recited in the claim needs to be inventive for your statement to be true. The fact that a claimed method results in some “transformation” is rarely determinative by itself (although the lack of any transformation is highly determinative). Consider: drinking a glass of milk is “a transformative process.” Breathing air is “a transformative process.” The mere recitation of such “transformative” processes does pretty much nothing to change the eligibility of a claim that recites only ineligible subject matter in addition.

      the immunoprecipitated and radio-labelled complex is clearly and unmistakably a new chemical entity

      Again: no. Not how it works. If I isolate a new DNA sequence (SEQ ID NO:1) and claim “A radio-labeled DNA sequence of SEQ ID NO:1”, I’m not getting into eligible claim territory in spite of the fact that it’s “unmistakably a new chemical entity.” That’s true regardless of how unexpectedly awesome and useful that labeled DNA sequence is.

      What is regrettable is the pursuit of over-broad claims that are unlikely to be respected by the Court when there is subject matter in the case which is more specific, provides substantially all the protection needed and has a much greater chance of being affirmed. Practitioners should realize that the claims that they prosecute should be strong enough not merely to pass the USPTO but also to stand up to judicial scrutiny. Failure to appreciate this results in judicial consideration focusing on the over-broad main claim, after which the application or patent as a whole loses credibility and the stronger dependent claims are overlooked consequent on an “avalanche effect” resulting from the failure pop the main claim.

      This is absolutely correct.

      1. 7.2.1

        You are respectfully referred to the CIPA brief in this case, of which I was lead author. Please do not comment again until you have read it, and in particular studied the diagram.

        1. 7.2.1.1

          …please…?

          Paul,

          He
          Just
          Does
          Not
          Care

  3. 6

    GdL: The Mayo claims deserved to fail, but they should have failed under §102, not §101.

    They certainly could have failed under 102 but they should have failed under both prongs. 101 was the issue that was appealed.

    That said, Greg, please tell everyone how you deal with determine and infer claims generally when the determination step is admittedly in the prior art and the inference is non-obvious.

    Do you think people who infer non-obvious things based on prior art determinations should be found guilty of patent infringement? Yes or no. Pretty easy question to answer for most people. But I’m sure you have some deep and serious thoughts on the subject. Share them with everyone! You might be famous someday.

  4. 5

    Claim 1 is an invalid single means claim under In re Hyatt (708 F.2d 712). Bad job, office. A single element defined by a novel result is never a valid claim.

    I didn’t hear the MP3, but seems like all the commentors here agree that Mayo controls. That sounds like it disposes of the issue.

    1. 5.1

      Claim 1 is not being asserted or litigated in this case.

      1. 5.1.1

        Do the limitations in claim 7 describe a combination of steps that weren’t in the prior art?

      2. 5.1.2

        That’s why I said “Bad job office” and not “this 101 question is pointless”

    2. 5.2

      Claim 1 is an invalid single means claim under In re Hyatt (708 F.2d 712).

      This strikes me as really a stretch. The claim in Hyatt actually recited “means,” and was therefore honestly attempting to achieve dominance over all means of “incrementally generating the Fourier transformed incremental output signals.”

      Claim 1 above, however, does not recite “means,” or any other recognized nonce word. Nor would it dominate all means of detection. If you owned a mess of ELISA plates, or a mass spectrometer, or any other such “means” before the claim issued, you could right on owning these devices/tools without infringing the claim above. You are merely prohibited from using them in one particular diagnostic technique. You would be just as much prohibited from using these tools for that diagnostic technique if the claim had been broken into two steps instead of one (e.g., providing a serum sample and detecting the autoantibodies).

      I would be very interested to see you cite a case that reads Hyatt as broadly as you are suggesting that it should be read.

      1. 5.2.1

        This is a good logic to disabuse people of, because I agree your position is the position that a lot of people in the office (and perhaps even a majority of lawyers) would take.

        Generally, I would suggest reading the decision and then analyzing it backwards (i.e. taking/analyzing the latter paragraphs first, and moving to the earlier paragraphs), because the issues for most claims would be reversed.

        The claim in Hyatt actually recited “means,”

        But it was not a means-plus claim. You can only invoke the claim construction of 112f by using the word “means” in a *combination* claim. Using the word “means” in a non-combination claim DOES NOT INVOKE MEANS PLUS, because the different claim construction of means-plus claiming is only authorized for combination claims.

        The relevant paragraph of the holding is the second-last one: The final paragraph of Sec. 112 saves combination claims drafted using means-plus-function format from this problem [the problem of overbreadth under 112a -R] by providing a construction of that format narrow enough to avoid the problem of undue breadth as forbidden by the first paragraph. But no provision saves a claim drafted in means-plus-function format which is not drawn to a combination, i.e., a single means claim.

        So to make clear to everyone – It is not that “112f does not authorize a single means claim” (which people at the office sometimes think) it is that “A single means claim, given normal claim construction, is inherently invalid under 112a, but 112f allows, IN SOME CIRCUMSTANCES, for a claim construction narrowing (by importing limitations from the spec) to save the claim.” The problem is not whether the words “means” is used, the problem is that a single element limited only by functional result is always overbroad.

        In other words – This claim is even more invalid than the In re Hyatt claim, because the Hyatt claim at least attempted to solve its overbreadth by trying to invoke means-plus, even though it ultimately failed because it was not allowed to. This claim does not even try to solve it’s overbreadth. SINGLE ELEMENT CLAIMS LIMITED ONLY BY FUNCTION ARE INVALID.

        To continue:

        and was therefore honestly attempting to achieve dominance over all means of “incrementally generating the Fourier transformed incremental output signals.”

        No, Hyatt was TRYING to invoke means-plus to limit his claim to the means in his specification, but the means-plus invocation was invalid. Consequently, he wasn’t “attempting”, but in fact “did”, claim “all means of [performing the function].” Similarly, the instant claim, because it is non-limited as to particular means (indeed, one of those means appears in Claim 7 as further limitations) is doing exactly what you accuse Hyatt’s claim of “attempting” to do, and what Hyatt’s claims actually did – assert dominance over all means.

        Claim 1 above, however, does not recite “means,” or any other recognized nonce word. Nor would it dominate all means of detection. If you owned a mess of ELISA plates, or a mass spectrometer, or any other such “means” before the claim issued, you could right on owning these devices/tools without infringing the claim above. You are merely prohibited from using them in one particular diagnostic technique.

        It would dominate all methods of detection. It’s a method claim, and I don’t understand why you’re talking about ELISA plates or mass spectrometers. It claims all (to use 112f terminology) “steps for” achieving the result, because it is not limited to a particular means (a particular “set of steps” from the spec). In other words, it encompasses (and I don’t know this technology so forgive me if I am imprecise) any manner of using an ELISA plate, or any manner of using a spectrometer, or the manner of Claim 7, or any other manner, so long as the functional result is achieved. There is no limitation to “one particular diagnostic technique” – there is a limitation to “a detection”, regardless of how that detection occurs.

        Here the relevant paragraph of the Hyatt decision is: The long-recognized problem with a single means claim is that it covers every conceivable means for achieving the stated result, while the specification discloses at most only those means known to the inventor. See O’Reilly v. Morse, 56 U.S. (15 How.) 62, 112, 14 L. Ed. 601 (1853).5 Thus, the claim is properly rejected for what used to be known as “undue breadth,” but has since been appreciated as being, more accurately, based on the first paragraph of Sec. 112.

        You next state that You would be just as much prohibited from using these tools for that diagnostic technique if the claim had been broken into two steps instead of one (e.g., providing a serum sample and detecting the autoantibodies).

        But of course, the same problem exists – inserting a nominal conventional step does not change the fact that the claim’s patentability is directed to all means of achieving the functional result. Here, Hyatt also has your logic pre-butted: The board acknowledged that the language of the final paragraph of Sec. 112 is only permissive, and contains no express prohibition against single means claims, as argued by appellant. The board, however, reading the last paragraph of Sec. 112 as a whole, found an implied prohibition against single means claims. It quoted a portion of Federico, Commentary on the New Patent Act, printed as a prologue to 35 U.S.C.A. Sec. 1, wherein Mr. Federico, one of the drafters of the 1952 Patent Act, stated at p. 26:

        The language [of the final paragraph of Sec. 112] does not go so far as to permit a so-called single means claim, that is a claim which recites merely one means plus a statement of function and nothing else. Attempts to evade this by adding purely nominal elements to such a claim will undoubtedly be condemned.

        I would be very interested to see you cite a case that reads Hyatt as broadly as you are suggesting that it should be read.

        The relevant logic in Hyatt isn’t new ground broken by Hyatt, but you won’t be happy what the citation is:

        The long-recognized problem with a single means claim is that it covers every conceivable means for achieving the stated result, while the specification discloses at most only those means known to the inventor. See O’Reilly v. Morse, 56 U.S. (15 How.) 62, 112, 14 L. Ed. 601 (1853)

        Regardless, it ought to be clear what the logic is, take Sequenom: The conventional act was to poke the fetus to determine fetal DNA. Imagine if someone had claimed that conventional act using similar claims to this case:

        1. A method comprising: the step of detecting fetal DNA.

        7. The method of claim 1, wherein the fetal DNA is detected by [steps involving poking the fetus].

        Claim 1 would clearly be overbroad in light of Sequenom’s disclosure – Even though the spec supports the scope of Claim 7, it does not support the scope of Claim 1, because Claim 1 covers Sequenom’s discovery, which the conventional art had no knowledge of. Claim 1 is drawn to all ways of achieving the result, while the specification would only include the manners known to the inventor (i.e. the scope of Claim 7).

        The same is true for every example one could think of, it’s a tautology – The scope of a functional claim not limited to particular means by definition covers every means of achieving the function, and the scope of a disclosure can only disclose every possible means known to an inventor for achieving the function. Therefore, when a claim’s novelty is defined by a functional scope and there is no proof that the field cannot be any bigger than the specification, the claim is overbroad under 112a, since it is claiming means of achieving the function that are not possessed by the inventor.

        When the claim is a single means claim (i.e. it includes only one element) then by definition the novelty of the claim is dependent upon the element, and (I will say “almost” here, although in practical terms it is simply always) is almost always overbroad, because in almost every situation it will be impossible to disprove the negative – that no other means exist other than those conceived of and disclosed by the inventor.

        tl;dr – When a claim has only a single element, that element must be novel, and it must also be fully enabled and described over its entire scope, which requires the conclusion that this inventor is both the first and last word in achieving a functional result. That is, as a practical matter, never the case.

        1. 5.2.1.1

          The most important thing I’m trying to get across by the above, office people, is that “single means claims” does not refer to means-plus claiming, even though you might be confused of that fact because the word “means” is in both of them.

          “Single means” refers to a claim who premises its patentability on all manners of achieving a functional result, without limitation as to a particular way of achieving the result. Single means should be read as “a single element being used as a means for a result”

          The following are all single means claims:

          1. A device comprising: means for incrementally generating Fourier transformed incremental output signals (Why? Because it does not invoke means plus, and the patentee has not proven that his specification discloses every possible manner of performing the act)

          2. A device comprising: a flying car (Why? Because it does not invoke means plus, and the patentee has not proven that his specification discloses every possible manner of performing the act)

          3. A method comprising: landing a person on Mars. (Why? Because it does not invoke means plus, and the patentee has not proven that his specification discloses every possible manner of performing the act)

          4. A system comprising: a pencil; and a flying car. (Why? Because, as above, the patentee has not proven that they possess all manners of making a car fly, which is the only plausible novelty of the claim. There is no plausible novelty in the “combination” of the flying car and the pencil.)

          5. A system comprising: a pencil; and means for making a car fly. (Why? Because this, like 1-3 above, is a single means claim, it is just a disguised single means claim. It does not invoke means-plus either, because the additional element has no bearing on the functionality being claimed within the context of the system. Claim 5 and Claim 4 are of the same scope, and Claim 5 is overbroad for the same reasons as claim 4.)

          The following are not single means claims:

          6. A device comprising: Means for firing a projectile, wherein the projectile is fired by string tension generated by a taut finely-woven pig-gut affixed to a curved piece of wood. (The claim is valid, ironically, because it is limited to a single, posited means of achieving a function, which is the scope of the disclosure. The fact that the claim failed to utilize 112f does not make the claim inherently improper, because it is a valid scope under normal claim construction.)

          7. (In a world where the specification discloses a structure that performs fastening) A system comprising: [any two elements, even conventional ones] and means for fastening them (Here the means-plus invocation interacts with other elements, so it properly invokes means-plus, and the single means question is solved by reference to the specification for additional limitations)

          8. (In a world where multiple types of fasteners are known to exist) A system comprising: [any two elements, even conventional ones] wherein the two elements are fastened together. (Here the patentability of the invention does not lie with the functional act – the art knew of ways to fasten, so the functional language is simply reference to what the art already knows. If this claim is patentable, it is patentable in the combination and not because this person claimed to invent the function of fastening, there’s no single means concern here.)

        2. 5.2.1.2

          The claim in Hyatt actually recited “means,”

          But it was not a means-plus claim.

          Right. This is why I was careful not to say that Hyatt wrote a means-plus-function claim.

          You can only invoke the claim construction of 112f by using the word “means” in a *combination* claim. Using the word “means” in a non-combination claim DOES NOT INVOKE MEANS PLUS…

          100% agree.

          No, Hyatt was TRYING to invoke means-plus to limit his claim to the means in his specification, but the means-plus invocation was invalid. Consequently, he wasn’t “attempting”, but in fact “did”, claim “all means of [performing the function].”

          You are, of course, correct. My apologies for the unclarity engendered by my use of the word “attempting.” I do not see, however, how this affects my more substantive point. The problem with Hyatt’s claim is that—if allowed—it would have dominated technologies that Hyatt did not, in fact, invent. By contrast, Claim 1 above does not dominate any technology that the inventor did not invent.

          Claim 1 would clearly be overbroad in light of Sequenom’s disclosure…

          So here we agree, at least about the legal consequence of Sequenom. I think that Sequenom was a legal travesty, but so long as it stands as a precedential decision on the books, Claim 1 above is a goner (although not on the particular single-means grounds that you are advancing). Suffice it to say, in the hypothetical world in which I am imagining the CAFC distinguishing Mayo into infinitessimal insignificance, I would be delighted to see them apply the same distinguish-ad-nihil trick to Sequenom

          1. 5.2.1.2.1

            By contrast, Claim 1 above does not dominate any technology that the inventor did not invent.

            Are you using the word dominate to mean something other than “encompasses”? Regardless, I assume that nobody has ever detected an epitome of MuSK before, as that’s the only step in a claim that passed 102. So what the specification discloses is a series of steps for detecting an epitome of MuSK. But the claim is not limited to THOSE STEPS, the claim encompasses those steps and any other steps which also detect an epitome of MuSK. You would agree that there is no way of knowing if there are other method steps which also detect an epitome of MuSK?

            To use the Sequenom analogy, which I don’t think you took as I intended, this inventor may have come up with the method of sticking a fetus in order to get fetal DNA. Then, some time later, Sequenom came by and said “You don’t have to stick the fetus, you can do this other method and it will still get you fetal DNA”. That is an entirely different method that also achieves the function of determining fetal DNA. It is entirely possible that there is Sequenom-for-detecting-an-epitome-of MuSK out there in the future, yes?

            If so, then Claim 1 is “dominating” or “encompassing” methods that this inventor did not invent – It’s encompassing the future method, but the only support is the method in this specification.

            In other words, what was “invented” was the series of steps. We don’t know if the functional result was fully “invented” because we don’t know if this specification has enabled the full scope – all manners of – performing the detection.

        3. 5.2.1.3

          Imagine that I invent a vehicle capable of flying through the middle of the sun and returning safely back to Earth. Suppose I also discover that if—while passing through the middle of the sun—one detects autoantibodies in a serum sample, the results can be used to diagnose pre-symptomatic Alzheimer’s.

          I file my application disclosing how to make and use my trans-solar vehicle. Two days later, I file a CIP diclosing and claiming my pre-symptomatic Alzheimer’s diagnosis technique. In particular, I claim:

          A for diagnosing pre-symptomatic Alzheimer’s disease in a mammal, the method comprising:

          passing through the exact middle of a star, and

          detecting in a bodily fluid of the mammal autoantibodies to an epitope of MuSK, wherein the detecting is performed withing 80 m of the exact middle the star.

          Do you seriously mean to contend that this claim should properly be construed as a mean-plus-function claim, and thus limited to the particular structures that I have disclosed for detection and art-recognized equivalents? In other words, if I do not disclose any particular structures for this detection (I merely write in the disclosure “suitable means for detecting the autoantibodies are known in the art”), then the claim should fail as an unsupported means-plus-function claim?

          1. 5.2.1.3.1

            No. You need to separate the following acts

            1) Is there an attempt to invoke means-plus?
            2) Does the invocation succeed?
            3) Is the scope of the claim valid?

            The fact that choosing to not invoke means-plus (1) would result in an invalid scope (3) doesn’t mean anything more than the drafter is stupid.

            Hyatt was a case where he attempted to invoke means plus (1) but failed (2) so consequently his scope was overbroad (3).

            The instant claims clearly do not attempt to invoke means plus. So whether the scope of the claim is valid depends upon whether a novelty is claimed by functional result, and it’s confusing as to what you think is the novelty. Since you say the detecting is conventional, it appears the location is irrelevant – why are the passing and wherein clauses included? Are you missing a necessary enabling limitation that translates the detecting step to a conclusion about alzheimer’s step?

            Let me put it like this “passing through the exact middle of a star” if claimed by itself in the parent, would be overbroad and invalid. Adding a conventional detection step doesn’t do anything for anything. If a further step beyond those two is needed, then it’s not claimed, and if no further step is needed (i.e. if MuSK = alzheimers) it is unclear why it’s not obviousness double patenting over the parent and a 112a for the same reasons as the parent.

          2. 5.2.1.3.2

            One is not required to claim in means-plus for non-novel functions. (one is not required to claim in means-plus for novel functions either, but the claim will fail 112a absent other structural limitations in that case) Reference to known functions that are achieved by known structures is proper.

            Your claim is problematic in that its missing the step that converts the result of the detecting step into the conclusion of the alzheimer’s step (i.e. there probably should be a determining Y based on X limitation, unless you’re saying that due to the properties of being in the exact middle of the star, a conventional detection step performed in its ordinary manner yields unexpected results). That step, if it were claimed, would have to be both described in the spec and claimed with particularity.

            So for example, an invalid claim would be the passing step, the detecting step and then “determining, based on the results of the detecting, the mammal has alzheimers.” That is the novelty of the invention, it is being claimed functionally, and it is outside of means-plus and thus directed to all determinings that use the results, without a particular structure of transformation. You can’t just dump a bunch of LEGOs on the floor and claim all the structures that could be built with it, even if you’ve taught one way to build a nice LEGO house. You’re limited to what you posited – the particular manner in which the results of the test are turned into the alzheimer’s conclusion.

            Regardless, it shouldn’t be construed in means plus unless “means for” or “step for” is used (barring that one terrible CAFC decision). HOWEVER, the use of means for is necessary, but not sufficient for invoking means plus. As a wholly separate issue, all means plus does is change the rules controlling the scope of the claim based upon the words in the claim, it doesn’t make any scope valid that would be invalid and vice versa.

            The above being said, it’s not clear to me what the logic of your questions are. No, they shouldn’t be construed in means plus. If your statement is true that known structures can achieve a known result then there is no problem in stating that.

            1. 5.2.1.3.2.1

              As ever, RG, I am obliged to you for an unusually interesting exchange.

              Your claim is problematic… unless you’re saying that due to the properties of being in the exact middle of the star, a conventional detection step performed in its ordinary manner yields unexpected results.

              My apologies if that was not clear. Yes, the premise of my hypo is that the act of passing through the middle of the star achieves an unexpected result vis-a-vis the effect achieved from detecting the autoantibodies.

              [F]or non-novel functions… [r]eference to known functions that are achieved by known structures is proper.

              O.k., so we are agreed on that much. Why, then, does a different rule apply to Mayo’s claim 1 above? The “detecting” is the conventional part of the claim. The novel part is the thing detected.

              1. 5.2.1.3.2.1.1

                Sorry about that. Evidently I neglected to close my italics. The below was my own remark, and not a quote:

                My apologies if that was not clear. Yes, the premise of my hypo is that the act of passing through the middle of the star achieves an unexpected result vis-a-vis the effect achieved from detecting the autoantibodies.

              2. 5.2.1.3.2.1.2

                The “detecting” is the conventional part of the claim.

                Are you saying that the art conventionally performed the exact same act, and the claim is simply commanding you to draw your attention to something that was previously detected anyway?

                In other words, I show you the Mona lisa and remark on her smile, you show it back to me and remark on her eyes, despite the fact both the eyes and the smile were there the first time?

                If so, sounds like a missed 102.

                To give another more lay analogy, are you suggesting this is similar to a camera that captures light, and this claim is ordering the subject of the camera to be moved to something else? The art conventionally produced a picture of the ground, and the claim is turning the camera up to produce a picture of the sky, even though the camera works the same in both ways?

                In the latter case, the detecting step is not conventional. There may be a conventional machine involved, but there is a non-conventional step in its usage – reconfiguring the machine to target the new subject. That would have to be disclosed with particularity.

                To return to the camera example, because all cameras work similarly, a claim to changing the subject of the camera can be applied on that genus level. But a claim to reconfiguring all light-capturing means to direct them toward a new subject is not supported by a disclosure as to how to rotate a camera. Either way the standard is the same – is the disclosure for the new element (reconfiguring the subject of the capture) sufficient to meet the entirety of the scope claimed. If the claim reads “detecting, with a camera, the sky” then a disclosure as to how to rotate a camera to face the sky is sufficient. If the claim reads “detecting, with a machine, the sky” that claim is a single means claim that is overbroad (it cannot invoke means-plus whether you want it to or not, and it is drawn to all manner of achieving the reconfiguration).

                The instant claim sounds like the latter situation – you earlier said (in what I am not sure is actual fact or a hypothetical) that there are distinct means such as ELISA plates or mass spectrometers. Presumably, there are other, as yet undiscovered means, which means there are as yet undiscovered reconfigurations.

                There’s a difference between “I can reconfigure a host of known genuses of devices to achieve a result” and “I can reconfigure anything to achieve a result”, agreed?

        4. 5.2.1.4

          [Y]ou won’t be happy what the citation is:… O’Reilly v. Morse, 56 U.S. (15 How.) 62, 112, 14 L. Ed. 601 (1853)

          This does not seem like an answer to my challenge. I asked for a case that reads Hyatt in the strong sense in which you read Hyatt. Not to put too fine a point on it, but Morse came out more than a century before Hyatt, so no one on the Morse court had read Hyatt.

          A clarification, please: do you think that you are explaining to me what the law is, or what it should be? I will disagree either way, but I would like to be sure that I understand the scope of the debate here.

          To ask the question another way, suppose that Mayo had asserted Claim 1 above, and Athena had challenged the claim under §112(1) as a single-means claim. Do you contend that Athena would have won that challenge, or merely that they should have won? For my part, I would be shocked if such a challenge were to succeed.

          1. 5.2.1.4.1

            Interesting discussion. I don’t think the doctrines of non-enablement of full scope of the claims or the lack of an essential element are well developed. They look more like trap s for the unwary drafter. If I am wrong, I would appreciate a citation to a decision that is illuminating.

            1. 5.2.1.4.1.1

              don’t think the doctrines of non-enablement of full scope of the claims or the lack of an essential element are well developed.

              …conflation of 112 and 101 …?

          2. 5.2.1.4.2

            I asked for a case that reads Hyatt in the strong sense in which you read Hyatt.

            Well it’s all of the Written Description cases, they’re all built on this logic. I suppose the most clear cut statement of “this is single means therefore this is invalid” is Fiers v. Revel –

            Because the count at issue purports to cover all DNAs that code for J-IF, it is also analogous to a single means claim, which has been held not to comply with the first paragraph of section 112. See In re Hyatt, 708 F.2d 712, 218 USPQ 195, 197 (Fed.Cir.1983) (“the enabling disclosure of the specification [must] be commensurate in scope with the claim under consideration.”) Claiming all DNA’s that achieve a result without defining what means will do so is not in compliance with the description requirement; it is an attempt to preempt the future before it has arrived.

            (You can see why, as someone who works in software, this is a particular sticking point for me, as all of our claims are “all softwares that achieve a result”)

            A clarification, please: do you think that you are explaining to me what the law is, or what it should be?

            What it is. I don’t think there’s any debate that 112a must be met over the full breadth of its scope, which is the only legal holding you need. The rest is just logic.

            To ask the question another way, suppose that Mayo had asserted Claim 1 above, and Athena had challenged the claim under §112(1) as a single-means claim. Do you contend that Athena would have won that challenge, or merely that they should have won?

            They would have won. Compare the situation to that posited in Fiers, above. The Fiers claim at least limits to a broad category of structure (DNA) that performs a function. Claim 1 places no structural limitation whatsoever (“the step of”). The best argument that can be made for Claim 1 is that we know of many examples where 112a would be met. But we have no data on what total number of examples our known examples are a fraction of, so we can’t say that we possess all of the scope, most of the scope, or even a significant non-zero percentage of the scope. At a time just prior to the gun being invented, there were many string-tension projectile makers (such as the bow, the catapault, the trebuchet, etc) the fact that there were varied means of achieving the function does not change the fact that in reality those varied means all occupied a small corner of a universe which also includes chemical-explosion propulsion and which also likely includes other mechanisms we haven’t conceived of yet. A claim to all machine performing a function isn’t supported by a lot of string-tension machines, and a claim to detecting isn’t supported by knowledge of many means of detecting absent proof that the known means fill the entire breadth of the functionality.

            Despite what people like anon say, whenever someone jumps up a rung on a “ladder of abstraction” they are making an assertion that the species-to-genus jump is not relevant to the art. In some situations this is clearly met: When I show you a picture of my machine and I don’t claim the color of the machine, everyone knows that the color has no bearing on the working of it, so a claim that excludes the color is just as patentable as one that keeps it. But a claim that excludes all structure whatsoever and merely relies upon a functional result is an abstraction that can never be met because it requires a scientist (an inductive person) to quantify what he doesn’t know.

            Prove to me your mass spectrometer isn’t the bow of this situation, and then we’ll see if Claim 1 is valid.

            1. 5.2.1.4.2.1

              Btw the reason I pepper my arguments with “almost always” is because that occassionally (usually involving math and logic) a scientist is a deductive person, and in those cases you can prove that no other examples exist. In those limited situations, it may be possible to show that your disclosed solutions fill the breadth of the functional claim. Conversely, a function may be made using such tight language that we know all of scope. But those rarely occur. Generally functional language is used specifically to grab the broad outcome.

            2. 5.2.1.4.2.2

              You have no clue as to the Ladders of Abstraction.

            3. 5.2.1.4.2.3

              Thank you for another thoughtful reply.

              I would like to propose a distinction that gets at the reason why I would be shocked to see a court apply Morse (or Hyatt, or Fiers) as you propose. Each of the cases that you have cited so far concerns a claim that can be phrased as “an [apparatus] capable of [function]… .” In other words, you have cited a bunch of machine claims. In this regard, Fiers is woodenly on all fours with Hyatt, which is itself woodenly on all fours with Morse.

              The claim cited in the original post above—which you contend to be a single means claim—however, is a method claim. To apply Hyatt as you propose to this claim is not merely to apply Hyatt, but to extend Hyatt to a fact pattern materially distinct from the facts of Hyatt (or Morse).

              So, why should this machine vs. method distinction make a difference? Well, the patent laws exist to incentivize innovation, so when an appellate court is called upon to apply them, the court must take care to apply them in a manner consistent with that purpose.

              If Morse had been actually allowed to invent the telegraph and then claim “the use of… electric… current…, however developed, for marking or printing intelligible characters, signs, or letters, at any distances…,” then this would have been an obstacle, not a spur, to innovation. If one of Morse’s contemporaries had been experimenting to build the telephone at the time that Morse’s patent granted, this genius would have had to put the work aside for another fourteen years, because even to build a working telephone prototype would infringe Morse’s patent, even though Morse’s teaching would not have given this genius the barest hints of how to go about building a telephone. It is, therefore, very necessary and consistent with the internal logic of patent law that the statute preclude claims like Morse’s 8th claim.

              By contrast, consider the first U.S. patent, a method claim. The claim requires that one “boil[ ashes]… in water… .” The way that Hopkin’s patent taught to boil them is over a fire, because that is how people knew to boil things in 1790.

              Suppose, however, that at the same time as Samuel Hopkins was perfecting his process for making Pot ash, another American genius was inventing the electric heating element. Does Hopkins’ patent stand as an obstacle to this genius’ work? Not at all. In fact, by inventing one more valuable thing that one can do by boiling water, Hopkins’ patent actually creates even more incentive for this genius to pursue her work on electric heating elements.

              In other words, condemning Morse’s (or Hyatt’s) claim as a “single-means” claim in contravention of §112(a) serves the ends to which patent law was originally intended. Conversely, by condemning Hopkins’ (or Mayo’s) claim as a “single-means” claim, one works against the ends to which patent law was intended. It is because most of the judges on the CAFC are clever enough to know this that I would be very surprised if they were to extend the holding of Hyatt, as you contend, into the realm of method claims.

              1. 5.2.1.4.2.3.1

                To apply Hyatt as you propose to this claim is not merely to apply Hyatt, but to extend Hyatt to a fact pattern materially distinct from the facts of Hyatt (or Morse).

                Well I think not for two reasons – first, I’m not aware of different rules for different statutory categories. To call it an extension would be to say that there must be some additional legal hurdle that is applied. I think when you have hundreds of years of treating the statutory categories similarly, the burden is really on you to distinguish, not on me to extend. Second, I don’t see how a machine claim is somehow more dangerous than a method claim such that the same logic wouldn’t apply. A machine for performing a function only has utility when it is applying at least one method for performing the function. Thus the only “machines which perform a function” (i.e. machine claims) that don’t also achieve “a method for performing a function” (i.e. method claims) when used are machines that are unenabled, which have no patentability anyway.

                In fact, by inventing one more valuable thing that one can do by boiling water, Hopkins’ patent actually creates even more incentive for this genius to pursue her work on electric heating elements.

                But this is not what we’re talking about. Hopkins is not attempting to claim he invented *boiling water*, so there is no conflict when someone else comes in and claims a new way to boil water. There is a difference between claiming your NOVELTY by function and what is not your novelty by function. The situation is different than a single means claim, because in a single means claim the only element by definition must be the element that provides the novelty.

                IF Hopkins was claiming to have invented boiling water, then the later existence of electric heating would prove his claim is overbroad, and for the same logic as you say with respect to Morse the Hopkins claim would be impeding the advancement of the electric heater. Instead the use of boiling water in the Hopkins claim is a simply a context or background limitation. Again, it helps to think about a claim in Jepson format – in the context of boiling water, my invention is to do X to get Y. That’s why I carefully probed your previous hypotheticals to make sure that the claim was actually talking about a new genus of actions (reconfiguring the subject of a machine, for example) rather than simply providing a context for an old action.

                I don’t see why you go and create this Hopkins hypothetical when you had a perfectly good one in the paragraph before that: Convert Morse’s machine claim to a method claim and apply your logic.

                1. A method comprising: the step of using electric current for marking or printing intelligible characters, signs or letters at any distance.

                How is this claim less bad, under the same logic you apply to the machine and upon which we agree? The telephone I actually am not sure falls under the claim language, but if someone has been researching the fax machine, the television, or the internet computer, they would be making machines which have the purpose of performing methods which infringe on the single step of the Morse method claim. They would have to “set aside” their research for the duration of the patent despite the Morse disclosure being insufficient to enable the inventions, because even if they didn’t infringe by producing the machine, the machine would be worthless because it’s purpose is to perform a method that would be an infringement. (I’m not entirely sure on the law of infringement, since that isn’t my job, but I assume selling a fax machine would be an inducement to infringe a Morse method claim and an actual infringement of a Morse machine claim, so even without a machine claim you’d still be on the hook for infringement or at best would be making your buyers infringers, which would clearly disincentivize your research since you couldn’t commercialize it.)

                It makes little sense to say that single-means logic only applies to machine claims and not method claims. All “single means” logic is is that in a particular fact situation, we know that the facts reduce to a conclusion of “overbroad claim.”

                Overbreadth is overbreadth, regardless of statutory category. Overbreadth is a negative thing, because it provides for undue riches to the non-inventor because he hired a smart scrivener, and it disincentivizes research and disclosure that would close the gap. If someone invents the bow but gets a claim on all machines that fire a projectile, that disincentivizes me researching the gun, or disclosing the gun if I’ve already discovered it. If someone invents the bow and merely gets a method claim on the act of firing a projectile, I’m still disincentivized from researching or disclosing my gun, because the purpose of my gun is to infringe the overbroad method claim – and in fact infringe it better than copycat unlicensed bows would. Whereas if the method claim is properly sized, I have incentive to disclose my gun. To throw out the machine claim under the logic it disincentivizes but then keep the method claim makes the throwing out of the machine claim a hollow victory.

                1. . Instead the use of boiling water in the Hopkins claim is a simply a context or background limitation.

                  Whereto, the “single means” then?

                  If there be “context” limitations, does one even have “single means” to begin with?

                  I think when you have hundreds of years of treating the statutory categories similarly, the burden is really on you to distinguish, not on me to extend.

                  That’s exactly what Greg has done with the explication in his post to you. You seem to simply want to sidestep what he has provided there.

                  we know that the facts reduce to a conclusion of “overbroad claim.”

                  Overbreadth is overbreadth, regardless of statutory category.

                  No – you are muddling different categories and basically saying that it does not matter.

                  It matters very much. The Ends do not justify the Means.

                  This all comes down to your view of the Ladders of Abstraction and the implied existence (for you) that any such ladders merely have two rungs:

                  picture claims
                  (exacting, which would be “proper,” albeit for any picture claim, one COULD devise some “wiggle” that if your “logic” were to be applied, would result in NO patents. Ever.) or

                  claims wanting “too much.”

                  The actuality is, of course, that the Genus/Species paradigm is NOT a fit for the actual gradients and multitude of steps on any actual Ladder of Abstraction.

                  There need not be the exacting showing of full scope that you seem locked into wanting. This is very much evident in your own “art field” of computing — given (as I have directed you to**) the teachings of equivalency.

                  **Once again, see the writings of PoIR on the Slashdot/Techdirt/Ars Technica circuit, along with an understanding of the primary differences between the three items of 1) math, 2) applied math, and 3) the philosophy of Math(S).

                2. Hopkins is not attempting to claim he invented *boiling water*…

                  And Mayo does not pretend to have invented detecting antibodies.

                  I don’t see why you go and create this Hopkins hypothetical…

                  I mention Hopkins because Mayo’s Claim 1 above stands in exactly the same position as Hopkins’ claim, a point that I have tried several times to stress, most explicitly in 5.2.1.3.1.1 above. Any way of boiling water will work for practicing Hopkins’ method (even ways of boiling water that were not in the art at the time that Hopkins filed), and any way of detecting MuSK autoantibodies will work for practicing Mayo’s method (even ways of detection that were not in the art at the time of Mayo’s filing).

                  You cannot have one of these claims be an invalid “single-means” claim without the other one being so. But, really, if this is all that it takes to make something a single-means claim, then nearly all method claims ever granted are invalid single-means claims. According to the argument that you are advancing, unless a method claim recites not only a gerund step (“detecting”), but also a specific apparatus to perform that gerund step (“ELISA plate”), it fails §112(1). That conclusion is both shocking, and a significant extension of Hyatt beyond its fact.

                  Overbreadth is overbreadth, regardless of statutory category. Overbreadth is a negative thing, because it provides for undue riches to the non-inventor because he hired a smart scrivener, and it disincentivizes research and disclosure that would close the gap.

                  Two points:

                  (1) I agree, of course, with the above.

                  (2) I begin to wonder if we are merely quibbling over terminology. To my mind, “single-means” is a subset of “not enabled over its full scope.” I begin to gather, however, that you are treating “single-means” as if it were synonymous with “not enabled over its full scope.” If so, I think that your definition of “single-means” is idiosyncratic, but mostly harmless.

                  I do not believe that there is, however, any sort of problem with enablement of Mayo’s Claim 1 over its full scope (or at least no more than there is over the full scope of Hopkins’ Pot ash claim). Therefore, the “single-means” designation is still ill-suited to Mayo’s Claim 1.

                3. Some more random history here that’s relevant – It used to be (prior to 52) that it was invalidating to intentionally put known conventionalities into the body of the claim. That was called aggregation and it violated what is present day 112b because it failed to point out and particularly claim the invention.

                  Let’s say I have a novel, non-obvious bike sitting in a cluttered garage. It used to be that if you claimed a system comprising the garage and all of the items inside it, that claim would fail because it is hiding the actual novelty – the bike. The only thing you could do would be to claim the bike, and if you started intentionally adding known features beyond the bike, you were running the risk of violating 112b. After ’52, despite the wording of the law remaining virtually the same, the CCPA decided to entirely reverse course with specious reasoning, allowing people to add additional features under the clearly-wrong reasoning that there was no harm in further limiting a claim.

                  Allowing patentees to continually add in known limitations certainly helps get things past the office, which has a de facto policy of allowing something once you need “too many” references to reject it under 103, despite that manifestly not being the law. But it leads to some truly terrible claiming. Take the Hopkins method above. What I would call a “good” scrivener would assert the context as context – “into a boiling pot of water, do X.” A “bad” scrivener (unfortunately, most scriveners I see) would make an affirmative limitation – boil the water in a pot. That disclosure would certainly help in the teaching of the invention, but it’s a bad limitation for the invention itself – it shouldn’t (and under the law couldn’t) move you toward patentability because the art knew how to boil water, so it won’t help for 103, and all you’re doing is creating a possible (albeit unlikely) situation where Party A boils water and Party B comes along and performs the other method steps, and now you’ve gone and limited yourself out of infringement of your invention. If doing acts in a boiling pot generates a non-obvious result, the acts are inventive absent someone’s ability to, or actual generation of, boiling water. If they are not inventive, tacking on the known ability to boil water shouldn’t help your case.

                  You’ll notice that the inclusion of conventional subject matter appears to be a massive distinction between where the supreme court is and where the CAFC and most practicioners are. Most Supreme decisions emphasize 1) the failure to be benefitted by an intelligent scrivener and 2) the need to add to the store of knowledge in the field, both of which cut against including conventional subject matter in a claim. Conversely, CAFC decisions routinely highlight the “claim as a whole.” This is why 101 is such a sticking point for people – if you’re taught under a claim as a whole scheme, the idea that some parts of the claim are more important and treated differently from others is not acceptable. Conversely, when you’re taught under a “you need to add to the store of knowledge” scheme, it’s very easy for you to not ignore, but quickly dismiss certain limitations as not being relevant to patentability or eligibility.

                4. [T]he CCPA decided to entirely reverse course with specious reasoning, allowing people to add additional features under the clearly-wrong reasoning…

                  Suffice it to say, the CCPA’s reasoning is not only not “clearly-wrong,” but to some of us it is actually intuitively correct. If I invent a new lock, and then content myself to claim the lock only in the context of a castle-door, it is my loss and no one else’s.

                  I sometimes marvel at the way that you describe the working of the PTO in your own art unit. I can assure you that no one in the 1600s would ever give up on the rejection of the conventional lock in the context of a castle door because it requires “too many” references to make that rejection. It almost makes me want to try to take on some computer work, in order that I might experience this phenomenon of examiners who are afraid to make §112(a) rejections, or §103 rejections that require more than a 3-way combination. I have never seen such a reluctance as you describe to be commonplace in your end of the PTO.

                5. Whereto, the “single means” then?

                  That’s my point. Hopkins isn’t a single means claim, it’s not relevant to what we’re talking about here.

                  No – you are muddling different categories and basically saying that it does not matter.

                  The logic that invalidates a single means claim applies whether it is a machine claim or a method claim. The logic is that a specification can, at most, disclose a manner in which the inventor can achieve the result. But the claim is drawn to all manners of achieving the result. A claim must enable and describe over the full breadth of the scope, and because the full breadth of a functional scope is unknowable, we cannot say that the disclosed means ever fills the scope of the function. That’s true for machines, that’s true for methods.

                  The actuality is, of course, that the Genus/Species paradigm is NOT a fit for the actual gradients and multitude of steps on any actual Ladder of Abstraction.

                  You don’t need to get hung up on genus/species. The fact is that 112a applies over the entire scope of a claim, and to conclude that 112a is met for a function, you have to know the true reach of the function, and you can’t know that because by definition it requires you to know what you do not know in an inductive system. Knowing multiple ways of propelling something with string tension may make one confident they have fulfilled 112a over the breadth of “a machine that fires projectiles”, until someone comes along later and produces a chemical explosion propulsion and shows them how little they actually knew.

                  And Mayo does not pretend to have invented detecting antibodies.

                  Mayo claims to have invented detecting a specific antibody that was not detected before. That is the claim – detecting an epitome of MuSK. Either that act is novel or it is not. If it is not novel, the claim should have been tossed on 102. Obviously they are asserting, and the office agrees, that it was novel to detect an epitome of MuSK, which means Mayo pretend to have invented the functional act claimed.

                  That’s always the case in a single means claim. Mayo is forced to claim novelty in the function, because the function is the only limitation in the claim. If there was no novelty in the function, there’d be no novelty in the claim, because the function is the only limitation.

                  Any way of boiling water will work for practicing Hopkins’ method (even ways of boiling water that were not in the art at the time that Hopkins filed), and any way of detecting MuSK autoantibodies will work for practicing Mayo’s method (even ways of detection that were not in the art at the time of Mayo’s filing).

                  No, they simply are not similar claims. True that both of them are directed to results not limited to particular means of achievement, but Hopkins was not attempting to claim he invented boiling water, while Mayo is claiming they invented detecting MuSK autoantibodies. Hopkins uses boiling water as a context to set up the true novelty of his claim, whereas detecting MuSK *is* the novelty of Mayo’s claim.

                  In General Electric v. Wabash, the claim was “a filament for electric incandescent lamps or other devices, composed substantially of tungsten and made up mainly of a number of comparatively large grains of such size and contour as to prevent substantial sagging and offsetting during a normal or commercially useful life for such a lamp or other device.” This is a claim to “grains for achieving the function of preventign sagging and offsetting.” I’m just going to block quote the two paragraphs in a row which highlight the legal distinction:

                  The claim uses indeterminate adjectives which describe the function of the grains to the exclusion of any structural definition, and thus falls within the condemnation of the doctrine that a patentee may not broaden his product claims by describing the product in terms of function.[8] Claim 25 vividly illustrates the vice of a description in terms of function. “As a description of the invention it is insufficient and if allowed would extend the monopoly beyond the invention.”[9] The Court of Appeals for the Ninth Circuit relied on the fact that the description in the claims is not “wholly” functional.[10] 80 F.2d 958, 963. But the vice of a functional claim exists not only when a claim is “wholly” functional, if that is ever true, but also when the inventor is painstaking when he recites what has already been seen, and then uses conveniently functional language at the exact point of novelty.[11]

                  A limited use of terms of effect or result, which accurately define the essential qualities of a product to one skilled in the art, may in some instances be permissible and even desirable, but a characteristic essential to novelty 372*372 may not be distinguished from the old art solely by its tendency to remedy the problems in the art met by the patent.

                  The first paragraph is, as near as I can tell, the original expression of single means overbreadth logic (although this is not a single means claim). The last three lines – “a characteristic essential to novelty may not be distinguished from the old art solely by its tendancy to remedy the problem in the art met by the patent” is the holding that leads to single means invalidation. Because novelty must exist in the single limitation, when that limitation is functional it is distinguishing from the art based solely on function.

                  Contrast that with the prior part of that sentence – “A limited use of terms of effect or result, which accurately define the essential qualities of a product to one skilled in the art, may in some instances be permissible and even desirable.” This logic eventually led to In Re Fuetterer, which pointed out that referring to old things by their known functions was proper.

                  There is simply a legal difference between referring to a class of known things by their function (in which case the function is just shorthand for nominating a bunch of previously known, enabled, possessed things that you could have written out longhand with no inventive or scope change), and instead describing the current improvement by it’s functional result. The latter makes the claim overbroad because it inherently covers not only the known but unknown manners of achieving a novelty when it is entirely possible to accurately portray the invention by reference to structure (i.e. it, prior to ’52, failed to “point out and particularly claim” under indefiniteness and post ’52 failed to “possess the entire breadth of the scope” under written description).

                  To my mind, “single-means” is a subset of “not enabled over its full scope.” I begin to gather, however, that you are treating “single-means” as if it were synonymous with “not enabled over its full scope.” If so, I think that your definition of “single-means” is idiosyncratic, but mostly harmless.

                  It’s a subset because 112a requires a fact-based analysis of knowledge in the art after reading the spec to the scope of the claim. However, two shortcuts exist. First, when the novelty of a claim is claimed by function we can forego the factual analysis with a logical one: There is no way of knowing the full scope of the function, so there is no way to conclude the knowledge in the art + the spec knowledge, no matter how extensive, meets the full scope. Second, when the claim has only a single limitation, the novelty of the claim must lie within that function. The combination of these two shortcuts yields the inherent invalidity of single means claims – either there is no novelty, or there is novelty claimed by function which allows us to forego the factual analysis and conclude it is overbroad. All single means claims are invalid, and most single means claims violate 112a (since those that violate 102 ought to be easily found and prevented by the office), but not all 112a violations are single means violations.

                  I do not believe that there is, however, any sort of problem with enablement of Mayo’s Claim 1 over its full scope (or at least no more than there is over the full scope of Hopkins’ Pot ash claim). Therefore, the “single-means” designation is still ill-suited to Mayo’s Claim 1.

                  I find this difficult that you’re not being convinced of given everything you’ve said. You make this analogy to boiling water and say that “Mayo didn’t claim to invent detecting.” Let’s probe this:

                  You realize that the intended use of the claim (a method for diagnosing neurotransmission disorders) is simply not relevant to a 102 analysis, right? (Frankly, it’s questionable that it’s relevant to a 103 analysis, but that’s another issue) Under a 102 analysis, the only question is “Was the detecting step performed before?” If someone had previously detected antibodies to an epitome of MuSK the claim would not issue. The office allowed the claim, so legally we must conclude that it has not been performed before. When you make the statement that Mayo does not claim they invented the detecting, that is, as a matter of law, factually incorrect until you prove otherwise. By law, Mayo is the de facto first person to detect what the claim says was detected.

                  I’m not sure if you agree with this or not, since you keep saying that “Mayo does not pretend to have invented detecting antibodies.” But the claim is not merely detecting antibodies generally. Such a claim obviously would fail 102.

                  Given that nobody has performed the detection before, where does the support come from? It comes from the specification. Does the specification describe every manner of detecting? We don’t know, because we don’t know what discoveries the future will hold. It’s entirely possible that the specification is the first and last word on this type of detecting, but probably not. There will probably be better ways of performing a detection beyond the original way of doing so – ask Sequenom. Therefore, we cannot say that 112a is met over the breadth of it’s scope. Therefore, the claim fails 112a. Therefore, the claim is invalid.

                  The only way out of the overbreadth logic is to claim that there is no novelty in the detection step at all. But to argue that is to admit invalidity anyway, just under 102. You have this kind of half-admission where you say that they didn’t claim to invent “detecting” without making the full admission as to whether they did or did not invent the detecting STEP. So was the thing that is claimed to be detected detected before, or not?

                6. Mayo claims to have invented detecting a specific antibody that was not detected before. That is the claim – detecting an epito[p]e of MuSK… [T]hey are asserting… that it was novel to detect an epito[p]e of MuSK, which means Mayo pretend[s] to have invented the functional act claimed.

                  Hm, maybe I see the hangup between us here. I would characterize the state of things slightly different.

                  Hopkins did not pretend to invent boiling tout court. He invented boiling one particular reagent (furnace burnt ash). Similarly, Mayo does not pretend to have invented detecting antibodies. Rather, they invented the detection of one particular antibody (the MuSK epitope).

                  This detection is not done by any particular, new means. One uses the bog ordinary antibody detection means already known to the art (ELISA plates, mass spectrometers, etc).

                  Having disclosed the particular epitope to be detected, the skilled artisan knows what means can be used to effect that detection. Those means do not need to be either described or claimed with any specificity. Any convention detection means will serve to practice the full scope of this invention.

                  It is as if Mayo had claimed a method of looking at a particular (novel) rock formation with a flashlight. The flashlight is not novel, and the details of the flashlight are not especially important to the claim. The rock formation (where it is found and its recognizable identifying characteristics) need to be described and claimed with particularity. Once one has done that much, however, it is irrelevant to quibble that someone might someday invent a new flashlight, and that the claims must be limited so as not to read on looking at the rock with that new flashlight.

                  The detecting, in other words, is not the invention. The epitope is the invention.

              2. 5.2.1.4.2.3.2

                The telephone I actually am not sure falls under the claim language…

                Good point. I should have said fax machine, not telephone.

                How is [“a method… of using electric current for… printing… letters at any distance”] less bad, under the same logic you apply to the machine and upon which we agree?

                Once again, you are correct. I had thought that the distinction lay in the category (machine vs method), but you have demonstrated that my intuition was wrong in this. Rather, the distinction lies elsewhere.

                In any event, as I explain above, Mayo’s claim stands on all fours with Hopkins’ in the context of the present discussion. If you do not think it correct to tank Hopkins’ claim as “overbroad” (or do you?) under Hyatt, then you should not think Mayo’s claim “overbroad.” That is really the fundamental point that I am trying to make.

      2. 5.2.2

        GregDL on claim 1:

        You are merely prohibited from using [any detection method] in one particular diagnostic technique.

        To be clear, the claim prevents anybody from using any detection method, even a newly invented detection method, from detecting “in a bodily fluid of said mammal autoantibodies to an epitope of MuSK”.

        I wonder what “diagnostic technique” Greg is referring to? I am pretty sure he won’t bother to explain that to any of us but, hey, it’s Friday so anything is possible.

        Did the inventors here invent autoantibodies? Nope. Did they invent epitopes of MuSK? Nope. Did they invent autoantibodies to epitopes? Nope. Did they invent autoantibodies to epitopes of MuSK? Nope. (Happy to be proven wrong about any of this — maybe someone here who is otherwise totally obsessed about facts will provide that proof! Let’s wait and see! So exciting.)

        So what are the “inventors” here trying to do? Well, plainly they are trying to prevent anyone from detecting a particular natural phenomenon. Apparently they believe that they own this particular natural phenomenon. Even further than that, they are trying to own an associated “meaning” of this natural phenomenon.

        Somehow Greg DeLassus doesn’t have a problem with this. In fact, Greg has a very very serious problem with these inventors NOT owning this natural phenomenon. We can speculate as to why Greg DeLassus — allegedly an attorney with some research experience — holds this strong but very odd belief but that would be irresponsible and uncivilized.

  5. 4

    “Other than patents, is there any reason anybody would contribute any of their savings to a research program dedicated to improving the health of children?

    I can’t think of any. I mean, if I had 20 million bucks to spare, I’m thinking a big yacht or a third house. Maybe something on Lake Tahoe, with a big wine cellar, and a pool. Helping people, where I don’t get paid back? That’s for chumps. My friends and all agree about this, too, which is how I know that I’m right.

    Sincerely,

    Big White Daddy

    P.S. Jealous people who don’t want to kiss my ring and who want to tax me are pretty much exactly like people who killed all those J ews in Germany.”

    1. 4.1

      …white…?

      Malcolm continues to be the most racyest person around, with rants that are gossamerly veiled (if even that).

      Is this really the forum for Malcolm’s rants?

      1. 4.1.1

        the most racyest person around

        LOL

        Truly, we must never ever mention race in any context, unless we’re having a very serious debate on national TV about those “very nice” white supremacists and their super serious scientific views and their precious right to express those views freely without being punched in the face.

        And same with gender. This is a very difficult time for men! Oh so diffiicult.

        LOLOLOLOLOLOLOLOL

        Yes, the behavior of you and your glibertarian cohorts is very “transparent”, “anon.” You don’t realize how transparent it is because … well, we all know why derp derp derp.

        1. 4.1.1.1

          It is it a matter of “mentioning” race.

          Clearly.

          It is HOW you are mentioning it.

          Come man, get a Fn clue.

          All that YOU are doing is being the Trump of these boards, refusing to see that you are what you Accuse Others of.

          1. 4.1.1.1.1

            It is it a matter of “mentioning” race. Clearly.
            It is HOW you are mentioning it.

            Because Big White Daddy Warbucks doesn’t like to be laughed at or exposed. He earned his respect the good old fashioned way: by inheriting it, or stealing it, or both!

            Boo hoo hoo hoo!

            1. 4.1.1.1.1.1

              Doubling down on “white” does NOT help you.

              1. 4.1.1.1.1.1.1

                Doubling down on “white” does NOT help you

                Tell it to the Repu k k ke party.

                1. I am telling you because you are the one making the mistake in a conversation with me.

                  Maybe try owning what you say instead of trying to blame others.

  6. 3

    Are the recited detecting steps old in the art? Then it’s a Mayo problem. You can’t patent a new “meaning” layered on top of old technology.

    Beyond that there may be a Sequenom problem.

    Also news flash: you don’t need patents to promote basic research like this. Patents definitely do help to further enrich the incredibly wealthy investor class however which is great news if your life is devoted to being a prostitute or shill for those people.

    1. 3.1

      Also news flash: you don’t need patents to promote basic research like this.

      My gob, the dissembling runs wild. News flash right back at you: patents are not built for any art unit on ANY strict “need for.”

      And if you want to cry your crocodile tears about the “injustice” of patents for the wealthy, then will you finally explain the dichotomy if you being most against the form of innovation that is most accessible by the NON- wealthy? It’s as if you relish the cognitive dissonance of creating protection for innovators…

      1. 3.1.1

        “anon”, getting himself all sweaty and riled up:

        patents are not built for any art unit on ANY strict “need for.”

        he screeches in my face. Meanwhile, his bff “Atari Man” rants off below:

        If you’re not going to protect inventions like these, there may as well not be a patent system.

        and “anon” gives him a high five.

        But he’s totally not a hypocrite! Nope. He’s a very very serious person.

        LOL

        1. 3.1.1.1

          Put
          The
          Shovel
          Down

          (and please retire already your number one meme of Accuse Others)

  7. 2

    Is Elon branching out into Pharma now?

  8. 1

    The claim is the same format as Mayo. Which is why the CAFC should find a way to distinguish it from Mayo, so as to preserve the claim, because giving investors reason to risk their capital to commercialize inventions like these is why there’s a patent system in the first place. If you’re not going to protect inventions like these, there may as well not be a patent system.

    We already know Lourie will say it’s ineligible, and Newman will say it’s eligible, so it will come down to Stoll’s view.

    I wonder if Newman ever thought that some day she’d have a colleague on the bench who is half her age.

    1. 1.1

      because giving investors reason to risk their capital to commercialize inventions like these is why there’s a patent system in the first place

      One of – and certainly not the only reason why we have a patent system.

    2. 1.2

      Lol.

      Thank goodness the maximalists aren’t all about the ends justifying the means.

      Lolololololololol

      1. 1.2.1

        You are doing that one-bucketing thing again…

        1. 1.2.1.1

          Yes you are a hypocrite with one sad song.

          1. 1.2.1.1.1

            …and now you are doing that old Malcolm meme of Accuse Others Of That Which Malcolm Does…

    3. 1.3

      [T]he CAFC should find a way to distinguish it from Mayo, so as to preserve the claim…

      From your lips to God’s own ears. I would love to see Mayo distinguished into infinitessimal insignificance. Better still, if the CAFC is feeling really ambitious, they could to unto Mayo what Chakrabarty did unto Funk Bros (i.e., retroactively change the legal basis on which the case was decided).

      The Mayo claims deserved to fail, but they should have failed under §102, not §101. The CAFC could invent some cockamamie story about how all of that talk of “routine and conventional” in Mayo really referred to §102, and give birth to a new line of precedent in which Mayo is really a novelty case, not a subject matter eligibility case.

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