It Works: The Value of “Effective” Claim Limitations

by Dennis Crouch

University of Strathclyde v. Clear-Vu Lighting LLC (Fed. Cir. 2021)

The Federal Circuit’s recent Strathclyde decision focuses on claim limitations that require the invention to be effective.  One oddity of the decision is that the court (and the PTAB below) treat the limitation with full respect just like any other structural limitation.

Researchers at Strathclyde conducted a set of experiments and found that certain blue light (~405 nm wavelength) was effective at inactivating methicillin-resistant Staphylococcus aureus (MRSA) even at low intensity and without first applying a photosensitizing agent.  The resulting method claim focuses on this discovery and includes one simple step — inactivating MRSA bacteria by exposing it to blue (400-420 nm) light and without using a photosensitizer. U.S. Patent No. 9,839,706.

It turns out that the prior art (Nitzan) discloses a series of experiments using the same blue light and testing its effectiveness at inactivating MRSA bacteria. The tests compared the response of untreated bacteria as compared with bacteria treated with a photosensitizing agent.

Nitzan’s prior art procedure was identical to that claimed by Strathclyde with only one key difference.  Nitzan found that none of the MRSA bacteria were killed by the blue light without first applying a photosensitizing agent.  The patentee  (Strathclyde) later used the same frequency of blue light without a photosensitizing agent, and this time it worked to inactivate MRSA.

Thus, the only difference between Strathclyde’s claimed invention and the prior art is the requirement that the invention actually work to “inactivate” the bacteria.

1. A method for disinfecting … by inactivating … pathogenic Gram-positive bacteria … comprising exposing the … bacteria to visible light without using a photosensitizer … and wherein a portion of the visible light that inactivates the … bacteria consists of wavelengths in the range 400-420 nm. . .

Claim 1 of the ‘706 patent.  Traditionally, a functional “resulting” or “whereby” clause is only given patentable weight if it provides some structure or acts that are used to define the invention itself.  For instance, in drug treatment cases, “effective amount” limitations can be used to define the amount of drug given to the patient. Here, however, the “inactivating” limitation does not appear to change any particular structure or acts and so, in my view, does not add patentable weight.

The invention here seems quite important–treating MRSA using otherwise harmless light and without potentially toxic chemical pre-treatment.  And, Strathclyde should be able to patent the  advances that it introduced that actually contributed to the success. I suspect that Strathclyde did do something different than Nitzan in terms of light intensity or frequency of treatment, or some other conditions.  But, the claims here do not require a person of skill in the art to do anything different than Nitzan except achieve a different outcome. Clear-Vu did not make these patentable weight arguments to the Federal Circuit and the Federal Circuit did not raise them sua sponte.

This case was before the PTAB via IPR. The PTAB originally sided with the patent challenge Clear-Vu.  The PTAB concluded that Nitzan taught all of the elements of the invention except for actual success at killing MRSA.  However, another reference Ashkenazi suggested ways that someone of skill in the art would find obvious in terms of increasing light intensity to kill some of the bacteria.  Thus, the PTAB found the claims obvious.

On appeal, the Federal Circuit has reversed and reinstated the patent.  The court noted the complete absence of any prior art indicating that blue light alone would kill MRSA without a chemical pre-treatment to sensitize the bacteria.  Further, there was evidence that such an approach would fail.  Still Strathclyde succeeded and, according to the Federal Circuit, deserve its patent.

On this record, we conclude that no reasonable fact finder could have found that the combination of Ashkenazi and Nitzan discloses inactivating one or more Gram-positive bacteria without using a photosensitizer. The Board’s finding to the contrary is not supported by substantial evidence.

Slip Op.

54 thoughts on “It Works: The Value of “Effective” Claim Limitations

  1. 12

    All of it makes sense?

    ““It is equally clear from this description and appellant’s brief that, in the words of the second paragraph of section 112, ‘applicant regards as his invention’ the combination with his other tread ingredients of any inorganic salt capable of ‘maintaining the carbohydrate, the protein, or mixture thereof, in colloidal suspension***’. It is exactly this combination which appellant has particular pointed out and distinctly claimed in compliance with the second paragraph of 112.”

    That makes sense with a limitation interpreted under 112(3)?

    I don’t fault you for picking your interpretation, but I think you’re exaggerating about the clarity here.

    If Rich really thought these claims were 112(3), we should expect that in his 36 remaining years as a CCPA/CAFC judge he would have tanked a functionally defined computer invention with no disclosed algorithmic embodiments in such a way that killed those claims. But those claims are now a hallmark of the system Rich helped cultivate. That suggests to me that he did not think that these claims invoked 112(3).

    1. 12.1

      Double whoops.

  2. 11

    OT but important: “PTAB Grants Director Rehearing Request” [and decides it for patent owner] By Scott McKeown on his Post-Grant blog November 2, 2021.
    Smart move by PTO – no one can now argue the Director reconsideration request option from IPR decisions [adopted to satisfy the Sup. Ct. Arthrex decision on APJ appointments] is illusory.

    1. 11.1

      Nice strawman.

      Of course, it still remains to be seen whether Hirshfeld could legitimately wield that power.

      Given the specific words of the Court and the clear lack of “advice and consent” and all…

      1. 11.1.1

        I know the USPS needs funding as well as other government agencies. I know the USPS needs overtime. But, I also know they don’t need to take what is not theirs to do so. Raise the price of stamps. Make everyone pay their fair share Stop stealing from the creative people.

  3. 10

    This case seems a lot like Nautilus. In that case, the electrodes were spaced to be able to measure heart rate. Result was that it was indefinite since no information was claimed (disclosed?) about the spacing. How is this case different? Maybe just the lawyering?

  4. 9

    Three brief thoughts:

    (1) Traditionally, a functional “resulting” or “whereby” clause is only given patentable weight if it provides some structure or acts that are used to define the invention itself. “Inactivate” does not occur only in the “wherein” clause. It is one of the gerund (“inactivating”) method steps. The steps of the method are the structure.

    (2) Clear-Vu did not make these patentable weight arguments to the Federal Circuit and the Federal Circuit did not raise them sua sponte. Anyone dissatisfied with the outcome here (a category that does not include me, as I will explain further in #3 below) should pay attention to this point. So should anyone (e.g., point #6 below) interested in leveraging this precedent for their own purposes. A patent is presumed valid. “The word ‘presumption’ properly used refers only to a device for allocating the production burden.” Texas Dept. of Community Affairs v. Burdine, 450 U.S. 248, 255 n.8 (1981). In other words, no matter how self-evidently flawed a patent might be, a patent challenger must actually make the argument for invalidity before a court (or the PTAB) can invalidate. The challenger here did not make the relevant argument. That does mean that the patent is genuinely valid, nor that a future challenger who wants to make the right argument will never succeed in tanking these claims. No matter how slow and easy the pitches might be as they float directly over the plate, if the batter cannot be troubled to swing the bat properly, he will strike out.

    (3) This case was before the PTAB via IPR. The success of these inventors when the prior art failed is compelling evidence that these inventors have a real and patentable invention here. The scope of their claim, however, must correspond to the technique that the present inventors have enabled and no more. I suspect that there is a scope of enablement problem with the present claims, but that is not a consideration in the PTAB’s jurisdiction, nor in the CAFC’s when they hear an appeal from the PTAB.

    1. 9.1

      Thanks Greg.

    2. 9.2

      To be fair to the patentees with regard to #3 above, it would be perfectly fair to say that by reciting “inactivating” without reciting the necessary structure to achieve the inactivation, this clause is to be construed as a §112(f) limitation. In that case, the claim is limited to the precise durations, wavelengths, and concentrations disclosed in the spec (and equivalents).

    3. 9.3

      I agree that the issue here is most likely enablement rather than novelty or obviousness, but I do not agree that there is necessarily a problem with the scope of enablement.

      For whatever reason, Nitzan failed to disclose a method that is operable without a photosensitizer. It therefore does not enable such a method. If Nitzan did not exist, nobody would be questioning the breadth of Strathclyde’s claims, so long as Strathclyde’s disclosure, considered in isolation, enables the claimed result.

      Should Strathclyde be entitled to a lesser scope of protection than would have been the case if Nitzan had not previously tried and failed? I don’t think so. If anything, the opposite should be true: Nitzan arguably discourages others from even trying. In an obviousness context, it ‘teaches away’.

      1. 9.3.1

        “For whatever reason, Nitzan failed to disclose a method that is operable without a photosensitizer. It therefore does not enable such a method.”

        I think the relevant question is: if I do the step that Nitzan discloses, do I kill any of these bacteria?

        I seem to recall some case law directly on point, with the case holding that for purposes of anticipation it does not matter that a reference disclosing a method of treating a patient with a drug also “teaches away” from using that method (e.g., because the authors of the reference failed to find utility in the method).

        Again, this result may not align with everyone’s wishes about who “deserves” a patent. But as a formal matter, it makes sense.

        Look at it this way: if the very broad claim at issue here actually works across the full scope, then the method was inherently anticipated by the prior art, regardless of what “result” is disclosed in the prior art reference.

        1. 9.3.1.1

          It seems likely to me that Nitzan tried the Strathclyde method without a photosensitizer, perhaps merely as a control in a test batch. If that were true (and assuming there is valid evidence) and there really is no other difference, than it should be a 102 rejection, full stop. It seems to me that if the discovery here is that “if you just try it again sometimes it’ll work” that that isn’t a discovery and shouldn’t be patentable. if there is some other secret sauce going on, like maybe they increase the power or treatment duration, then that would be a 112 enablement or link to patentlyo.com Best Mode link to patentlyo.com issue.

        2. 9.3.1.2

          think the relevant question is: if I do the step that [fill in the blank] discloses, do I…

          You are talking about inherency.

        3. 9.3.1.3

          I agree, the problem here lies in 102 not 103 and that wasn’t up on appeal. Once the 102 was settled, the Court had no choice but to allow the claims

          I still don’t understand the Board’s 102 decision – blob:link to ptab.uspto.gov at pg 24. As I read it, they determined that the non photosensitizer administrations of Nitzan were not anticipatory as there is no evidence of how much time had elapsed.

          My problem with such an analysis is that the Board has read a limitation into the claim (to allow it) that isn’t there. The claim simply says show MRSA blue light and has no limitations as to the conditions of how long, at what intensity etc… As long as that’s the claim, I think the Board erred in not finding Claim 1 anticipated

          1. 9.3.1.3.1

            Meanwhile, at the EPO, the patent (1924323) issued in 2016 after a torrid examination of the merits of the claim over, notably, Ashkenazi. The claim is much less wordy than the one here, but recites the same veatures (no photosensitizer, 400-420 nm wavelength). I guess that its success at the EPO emboldened the Scottish applicant to push all the way to the Federal Circuit.

            I should have to read all through the lengthy EPO wrapper to see how Applicant satisfied the EPO on novelty. But the enablement issue strikes me as a non-starter. Everybody said it was not humanly possible to run a mile in less than 4 minutes. Then Bannister did it and, since then, we all know how to repeat the feat.

            1. 9.3.1.3.1.1

              Not following your attempted analogy to the Bannister under four minute mile…

              Are you confusing a fact with some (unknown) “enabled” method by which anyone can run an under four minute mile…?

      2. 9.3.2

        I do not agree that there is necessarily a problem with the scope of enablement.

        There may be no problem, as you say. One plausible construction of Strathclyde’s claim is that it is limited to the precise durations, wavelengths, and concentrations disclosed in the spec (and equivalents).

        Obviously, however, there are the durations, wavelengths, and concentrations that do not inactivate (as the prior art shows), and durations, wavelengths, and concentrations that do. The patentee does not have the option to leave it up to the next guy to figure out where is the boundary between those two categories and just say “Here is one set of durations, wavelengths, and concentrations that work. I claim all the durations, wavelengths, and concentrations that work, even the ones that I do not yet know about and do not teach.”

        Where there is uncertainty yet about the boundary between what works and what does not, one must limit one’s claims to that which one knows to work. To the extent that Strathclyde’s claims are meant to read even on conditions that Strathclyde does not teach (but which also successfully inactivate), there is a scope of enablement problem.

        1. 9.3.2.1

          “One plausible construction of Strathclyde’s claim is that it is limited to the precise durations, wavelengths, and concentrations disclosed in the spec (and equivalents).”

          That’s “plausible”, I suppose, but going there (i.e., reading a ton of unrecited limitations into the claim) to rescue this claim would be a rotten way to resolve the case.

        2. 9.3.2.2

          “The patentee does not have the option to leave it up to the next guy to figure out where is the boundary between those two categories and just say “Here is one set of durations, wavelengths, and concentrations that work. I claim all the durations, wavelengths, and concentrations that work, even the ones that I do not yet know about and do not teach.”

          The bolded portion is doing a lot of work supporting this statement. We can safely discard it since no patentee is going to admit that they don’t teach part of their claim scope.

          Plenty of patents disclose a single embodiment while claiming innumerable unmentioned embodiments. The widely accepted nature of this practice pays for the mortgages of many posters here, myself included!

          Didn’t Rich pretty much bless this sort of claiming in In Re Fuetterer? They disclosed a few compounds that would work, but claimed the entire class of compounds that work work. Rich waved away the undue experimentation issue because the invention as conceived of by the inventor was the combination rather than the compounds necessary to make the combination work. Based on that, we should conclude that Rich would read the invention here as the result rather than the particular intensities that achieve the result. So he’d again happily support the inventor claiming many undisclosed embodiments that achieve the invention.

          1. 9.3.2.2.1

            Judge Rich explicitly upheld the Fuetterer claims on the basis of §112(3) (now §112(f)). There were no §102 or §103 challenges in Fuetterer, and the C.C.P.A. did not have statutory jurisdiction to resolve infringement disputes in ex parte appeals from the PTO, so there was no occasion for Judge Rich to construe the exact scope of that claim. Given, however, that it was explicitly sustained on the basis of §112(3), there is scant reason to suppose that it would have been construed to extend much beyond the disclosed embodiments.

            1. 9.3.2.2.1.1

              Reviewing the opinion, I’m going to say that you’re wrong to think there’s no/little reason to think the claims wouldn’t have been interpreted as limited by 112(3). But I think I was also wrong to conclude that Rich would have necessarily interpreted the claims as not limited by 112(3).

              There are lines which favor a 112(3) interpretation, and there are lines that undermine a 112(3) interpretation.

              For example, in favor:

              (1) “The use of such functional statements as here appear is specifically sanctioned by the third paragraph”

              (2) “If others in the future discover what inorganic salts additional to those enunerated do have such properties, It is clear appellant will have no control over them per se

              And against:

              (3) “It is equally clear from this description and appellant’s brief that, in the words of the second paragraph of section 112, ‘applicant regards as his invention’ the combination with his other tread ingredients of any inorganic salt capable of ‘maintaining the carbohydrate, the protein, or mixture thereof, in colloidal suspension***’. It is exactly this combination which appellant has particular pointed out and distinctly claimed in compliance with the second paragraph of 112.”

              (4) “his claims should not be so restricted that they can be avoided merely by using some inorganic salt not named by appellant in his disclosure.”

              Honestly, looking at those lines, I don’t think one can come to a solid conclusion of how Rich would have interpreted these claims. (2) and (4) directly contradict one another. Do you see any way to reconcile these statements?

              1. 9.3.2.2.1.1.1

                Yes. Section 112(f) explicitly says “and equivalent.” The claims are not limited to exactly the named salts, but rather to the named salts and equivalent (i.e., triple “substantial”) salts. That is the only reading that makes sense of the entire opinion, and therefore that is the correct reading.

              2. 9.3.2.2.1.1.2

                I don’t think one can come to a solid conclusion of how Rich would have interpreted these claims. (2) and (4) directly contradict one another. Do you see any way to reconcile these statements?

                The obvious point reconciling #2 & #4 is that §112(f) says “and equivalents.” In other words, if everyone already knows that NaOAc is equivalent to KOAc, then the patentee can disclose NaOAc and the claims will be construed to read on KOAc as well. If, on the other hand, calcium formate is also equivalent to NaOAc, but this point is not known at Fuetterer’s time of filing, then the one who discovers this as-yet-unknown utility for calcium formate will not be burdened by Fuetterer’s claims.

                1. It seems extraordinary generous reading to take:

                  “his claims should not be so restricted that they can be avoided merely by using some inorganic salt not named by appellant in his disclosure”

                  as meaning:

                  “his claims should not be so restricted that they can be avoided merely by using some inorganic salt equivalent to those not named by appellant in his disclosure”.

                  If the limitation was 112(3), the Appellant’s claims absolutely should be avoided by using some undisclosed non-equivalent, right? So it’s weird for that line to be read as focused on the equivalent aspect of 112(3) while ignoring the “undisclosed non-equivalents” aspect entirely.

                  What you suggest is coherent and possible, but I remain skeptical because of the effort necessary to contort this line into coherence.

                  I also don’t see why he would have characterized the claimed invention (statement 3) as “any inorganic salt capable of…” if he was interpreting the claims under 112(3).

                2. You can read Fuetterer as if the author knows how §112(f) works and was assuming that the reader also understands as much. If you bring that hermeneutic to the text, all of it makes sense.

                  Alternatively, you can ignore §112(f) as you read Fuetterer (despite the fact that the opinion explicitly calls the reader’s attention to this statutory provision). In that case the text becomes a gibbering welter of self-contradictory mush.

                  The hermeneutical principle of charity counsels us to choose the first approach—to say nothing of the practical utility of reading a precedent in a manner in which it is capable of future application. I, for one, do not think that the choice between the first and second approaches to the text is an especially difficult choice. Give me the first reading any day.

      3. 9.3.3

        Mark,

        Have to disagree as what you posit is not in fact “teaching away” in the US Sovereign.

  5. 8

    I suspect that Strathclyde did do something different than Nitzan in terms of light intensity or frequency of treatment, or some other conditions.

    Either that or Nitzan didn’t accurately report their results.

    Regardless, the claimed method *as written* (if properly construed and ignoring the recited result) would seem to be anticipated by Nitzan.

    The issue is the same as someone trying to re-patent the administration of aspirin based on a finding that, e.g., eating aspirin reduces the growth of subdermal cancer of the pinkie toe. Congrats on the discovery! Every discovery is not deserving of a patent.

    1. 8.1

      Did you mean to make that error with method claims?

      Do you need a reminder from the Act of 1952?

    2. 8.2

      Anticipation is a 102 argument, with a different reference requirement, and only 103 was in issue here.

      OT P.S.: Title of article on Greg’s blog: “Patent Filings Roundup: IP Edge* Files Another 50, Comprising 13% of all District Court Litigation;…” [But some commentators here will still insist there is no such thing as a patent troll or PAE even as properly narrowly defined – that is: who’s sole business is suing others for cash settlements on patents acquired from others. Not inventors and not companies inventing, using, making or selling any products or methods.]
      *[IP Edge is one of several such large patent acquirers]

      1. 8.2.1

        Greg’s blog? I did not realize that such exists. 😉

        1. 8.2.1.1

          IPWatchdog

          1. 8.2.1.1.1

            Right, I figured that you meant “Gene’s” blog, not “Greg’s.” I am just giving you puckish grief.

      2. 8.2.2

        You mis-state the push back against the “Oh N0es Tr011s” propaganda there Paul.

        No one states otherwise that patent holders simply need not be practicing entities.

        The larger point is that one should not cast disdain on those who do not practice and seek to monetize their property rights — be it through court action or otherwise.

        Such attempts at “moralistic castigation” should themselves be castigated — as should your misstated cheerleading.

  6. 7

    As to how this should fare under 101: It’s a pure discovery, but it passes my test for eligibility

    Is it a method? Yes

    Is the result of the method purely an item of information? No

    Is the result of the method a useful mechanical or chemical change? Yes

    Eligible

  7. 6

    So two questions:

    1. Can we use such “effective” limitations with non-pharma inventions.

    2. Can “ineffective” limitations also be utilized (both in — and out of — pharma)?

  8. 5

    This is a lot of work on something that is so obviously going to be tanked under 101 anyway.

    1. 5.1

      §101? Really? How so?

      1. 5.1.1

        It’s pretty clearly controlled by Sequenom (and thus indirectly by Mayo) isn’t it?

        The logic in Sequenom was that if you discover that fetal dna was in the maternal plasma, and one of skill would have the tools and knowledge to extract the dna given that natural fact, a claim to extracting the dna was just applying the natural phenomena (i.e. ineligible subject matter + “apply it”). Same thing here – if you discover that blue light alone is sufficient to kill MRSA, and everyone seems to agree that one of skill did actually anticipatorily generate the blue light of the appropriate wavelength, then this claim is simply a claim to the natural phenomena while adding the words “apply it.”

        In other words, while removing an element but retaining the function of that element is indicia of non-obviousness (see MPEP 2144.04) and further this appears to be a teaching away situation (see 2144.05) the only reason the claim is non-obvious is because of the ineligible natural law that the photosensitizing agent was unnecessary to the result. That’s precisely the thing 101 seeks to expunge – allowance due solely to ineligible subject matter. When you run the 101 analysis you have an expressed ineligible subject matter (“without using a photosensitizer”) and conventional insignificant subject matter because the rest of the claim was actually anticipated by the prior art. Claim 1 is accurately portrayed as a command to apply the natural law discovery – that the prior art light wavelengths were sufficient on their own to kill the MRSA.

        It’s hard to imagine a world where Sequenom gets torn down and this doesn’t. At least in Sequenom you had to poke somewhere different. This literally requires doing the exact thing that was done before except NOT taking one of the steps.

        1. 5.1.1.1

          I should add that while “removing an element but retaining the function” is a standard of nonobviousness, I really don’t think it ought to be in situations like this. The prior art achieved a beneficial result while utilizing multiple variables. It would be obvious to attempt to achieve the result utilizing only some of the variables. That, to me, is what “routine experimentation” is – we know this works, let’s find out why. The Supreme Court would call this obvious to try.

          Further, there’s always a fiscal motivation for eliminating an element: If you can do something with just AB rather than ABC, you save costs on purchasing C. That’s a motivation. It makes even more sense if, as Dennis states “The invention here seems quite important–treating MRSA using otherwise harmless light and without potentially toxic chemical pre-treatment.” Not poisoning people who come into contact with the surface seems like a pretty decent motivation to me. So there’s an exemplary rationale and motivation in the art. Each of those individually is generally sufficient for obviousness.

          Removal of an element logic is suitable for situations where the art knew of ABC, had tried to reduce ABC and failed, and this inventor provided a new technologically-enabling teaching to achieve the result. In that situation, just as with teaching away, you have non-obviousness because there was a proven lack of enablement in the prior art – people tried, people failed, and the instant specification (assuming the claims are enabled) documents the key missing knowledge which forms the quid pro quo of the patent grant. We can identify what was missing and the benefit of its introduction.

          But this is a situation where ABC was tried, but there’s no evidence that AB had tried and was a failure. And how could there be? There is no amount of specification disclosure that would have changed the natural relationship. The enablement inherently existed already, it just hadn’t been the subject of the routine experimentation yet. You don’t get a patent for being the first through the door with a new method, you only get a patent if the leap you made in making the new method was a non-obvious leap. If the thing you’re claiming differs from the prior art only by making a previously-enabled change that the art was motivated to find, you haven’t done anything non-obvious.

        2. 5.1.1.2

          Same thing here [as in Sequenom] – if you discover that blue light alone is sufficient to kill MRSA, and everyone seems to agree that one of skill did actually anticipatorily generate the blue light of the appropriate wavelength, then this claim is simply a claim to the natural phenomena while adding the words “apply it.”

          Interesting. Thanks for the explanation. Now that I have read your 5.1.1, I am hoping that Celgene advances that theory, just so that we can see whether it works.

          The logic in Sequenom was that if you discover that fetal dna was in the maternal plasma, and one of skill would have the tools and knowledge to extract the dna given that natural fact, a claim to extracting the dna was just applying the natural phenomena (i.e. ineligible subject matter + “apply it”).

          Phrased that way, that was the logic that the challenger advanced in Rapid Litigation Mgt. Ltd. v. CellzDirect, 827 F.3d 1042 (Fed. Cir. 2016). The challenger won in Sequenom, but the patentee won CellzDirect. Evidently, then, the bare fact pattern that you describe is not—by itself—enough to carry the day for a patent challenger.

          It seems to me that the distinction between Sequenom and CellzDirect lies in the outcome of the method. The end result of Ariosa’s method was information. Ariosa’s method failed the MoT test. By contrast, Celsis’ method started with freeze-labile hepatocytes and finished with freeze-stable hepatocytes—a useful transformation of matter.

          In this regard, Strathclyde’s method is more akin to Celsis’ than Ariosa’s. One starts with an unhygienic surface and ends with a hygienic surface—a useful transformation of matter. My money is on Strathclyde to win a §101 fight.

          1. 5.1.1.2.1

            I agree that “detect this fact using known detection method” claims raise eligibility concerns that are distinct from those in CellzDirect or in this anti-microbial method case.

          2. 5.1.1.2.2

            The end result of Ariosa’s method was information.

            I don’t know why you say that (other than it fits your theory) – the claim in Sequenom didn’t require getting information at all, that’s just your opinion about one possibly utility is.

            Meanwhile the actual claimed step of Ariosa’s method required amplifying paternal dna when no amplification was required at all in the prior art. It *added* to the conventional method. This subtracts from the conventional method.

            I do agree that CellzDirect (which I just read now) appears to be opposite to me, though not because of the result. They specifically state it is not because of the result. There is a distinction in that in CellzDirect there was at least a non-anticipatory prior art – even though one I think we all agree would be obvious (simple duplication) – apart from the natural law. Here the prior art is anticipatory when the natural law is cleaved away, but I admit I don’t have a case stating that distinction is relevant.

            1. 5.1.1.2.2.1

              A problem is that one court reads the Alice words that you can’t state ineligible subject matter and then say “apply it” and another court reads the Mayo statement that all inventions use, reflect, rest upon, or APPLY laws of nature” creating a schism over the same language. I question the Cellzdirect court of really applying the two step Alice process. They never really deal with step 2 and instead use their own practical application shortcut which is of dubious quality. Everything has utility so a broad conception of practical application would render every claim that meets the utility test eligible. (The Office kind of trades on this knowledge to get out of actually doing 101 a lot of the time)

              Perhaps the real problem is that neither claim is non-obvious. As I said above, I can understand how you can find this claim non-obvious based on precedent but it really shouldn’t be so. Doing the same thing twice (Cellz) and removing pieces and trying again (here) are basic experimentation steps that don’t constitute non-obvious action or inventive leaps.

              1. 5.1.1.2.2.1.1

                I suppose that in the patty-cake “polite” pillow fight between you and Greg, that your statement of, “creating a schism over the same language” reflects my long-asserted views on the muckery created by the Supreme Court is “better” not admitted to, eh?

                1. “creating a schism over the same language” reflects my long-asserted views on the muckery created by the Supreme Court is “better” not admitted to, eh?

                  The Supreme Court was pretty clear. The rule is that MERELY doing something like “apply this” is not eligible, but the fact that a patent contains an application of ineligible subject matter does not render the claim ineligible. There’s no double speak at all – If you do step one and find that ineligible subject matter is claimed *that is not enough to toss the claim*, but it if there is nothing else worthwhile the claim will end up getting tossed after the step two analysis.

                  The “muckery” is that the Federal Circuit took the “Obviously not everything is ineligible” language out of context in order to bolster the outcome they want to have.

                  Look, you can certainly argue based upon FC precedent that maybe this is eligible, but not if you just use the supreme court language. There is no question that the claim contains a natural law, and that the rest of the limitations were conventionally done. The “practical application” test the FC created is what is mucking things up.

                2. I am trying to decide which is more delusional: the things that you think that you see or the things that you refuse to see.

    2. 5.2

      It will be interesting to see what they do with this. They’re not just observing something. They’re actually doing something.

      1. 5.2.1

        Are you saying that observing is not “doing something”…?

  9. 4

    For me, this “effective” is more often indicative of the leniency towards Pharma in regards to the possession (at the time of filing) requirement.

  10. 3

    My dad got the mrsa and it almost killed him off. Back to about normal now after $$$$ in hospital.

  11. 2

    “No, I don’t sell an infringing product, I sell one that implements the prior art method. If it’s successful, well, that’s just an ‘off-label’ use!”

  12. 1

    Patent Attorney: PTO, would you give me a patent covering a desired result, limited only by the requirement to have one variable be in a range conducive to achieving that result, but without actually specifying that range?

    PTO: My goodness, Mr. Patent Attorney! We’d have to discuss the terms but I suppose I would.

    Patent Attorney: Would you give me a patent covering a desired result with no such limitation?

    PTO: Mr. Patent Attorney, I’m shocked! What sort of patents do you think I issue?

    Patent Attorney: Madam, we’ve already established exactly what sort of patents you issue. Now we are just haggling about the scope.

    1. 1.1

      The obviousspin is nonetheless amusing.

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