Mayo Collaborative Services v. Prometheus Laboratories, Inc. (Supreme Court 2011)
by Dennis Crouch
The Supreme Court has agreed to hear Mayo’s petition on the patentable subject matter eligibility of medical diagnostic methods. The issue raised on appeal is stated as follows:
Whether 35 U.S.C. § 101 is satisfied by a patent claim that covers observed correlations between blood test results and patient health, so that the claim effectively preempts all uses of the naturally occurring correlations, simply because well-known methods used to administer prescription drugs and test blood may involve “transformations” of body chemistry.
The claims asserted by Prometheus are directed toward a method of “optimizing therapeutic efficacy” by first administering an active drug (6-thioguanine) to a subject and then using the subject’s metabolite blood-level to adjust future doses of the drug. (U.S. Patents 6,355,623 and 6,680,302). Thus, most of the claims are centered around three ordered-steps of:
-
administering the drug to the subject;
-
determining the amount of drug in the subject’s blood; and
-
re-calibrating the drug dosage based on step-2.
A broader claim (claim 46 of the ‘632 patent) eliminates the administering step of claim 1 above.
The district court found the claims invalid as lacking patentable subject matter under 35 U.S.C. 101. On appeal, the Federal Circuit reversed — holding that the steps of “administering a drug” and “determining the level of 6-thioguanine” were both sufficiently transformative of “a particular article into a different state or thing.” That Federal Circut decision was based on the court’s machine-or-transformation test that was subsequently discredited by the Supreme Court in Bilski v. Kappos (2010). In the wake of its Bilski decision, the Supreme Court vacated the Federal Circuit’s Prometheus decision and remanded for a new opinion. On remand, the Federal Circuit again affirmed that the Prometheus claims are eligilble for patent protection. [See Rantanan’s post]
You didn’t answer the question. Here it is again.
Do you agree? If you don’t agree, explain why. Specifically, explain why a claim that adds a “new” mental step to an old unpatentable step is not, effectively, a claim to a mental process.
Good luck.
I have reviewed your Supreme Court law recherche blog carefully. I will need your tirajimmediately. Thanks for creating a sweet able & popular blog.
Thanks
Melisa
link to americantiredepotmodesto.com
Dennis! Dennis! Dennis! Dennis! Dennis! Dennis!
Crouch! Crouch! Crouch! Crouch! Crouch! Crouch!
WHERE IS THE THREAD ??????
Your posts seem to get longer the more uncomfortable you become AI.
Just for the record AI, no, I don’t think they’ll change the preemption doctrine at all. I’m hoping that they’ll better explain it to simpletons like yourself. Which I think I mentioned already.
“AI, if your read it and understood it then that is good enough for me. And the reason is, once the supremes are well focused on this point perhaps they will lay it out for you in english”
Understand is not the same as agreeing something is factual. I understand you personally want to dissect claims at 101, the way Stevens wanted to do but was not allowed to do in Diehr.
Your excuse now is using preemption as the new dissection. But the Supremes don’t agree. They made it clear in Diehr and reaffirmed in Bilski.
If the SCOTUS wanted preemption to be the new way of dissection then Diehr would not have been granted his patent. And this Court would have not added paragraph 14 to the Bilski decision.
So 6, you think you are going to get a majority to take us back to the pre Flook era, and make it possible to have a legal basis to effectively ban business methods, software, and in effect functionally eliminate “processes” as a separate statutory category?
Well, maybe you will get that if Obama is re-elected and has the political guts to appoint a liberal socialist anti patent justice to the high Court. Maybe then the 5-4 rulings will swing in favor of the backwards thinking, and dishonest anti-patent crowd.
But in the mean time 6, if you are really a PE your job is to follow the law as it stands. If you have any patent applications on your desk that show an application of the concept, especially ones clearly in the realm of science and technology, then you better pass them on 101 and move onto other issues.
Any attempt by you to use preemption as the basis for dissection is a willful and flagrant violation of the law and IMO grounds for your immediate termination.
Getting scofflaw and incompetent PE’s and their SPE ‘ too for that matter, out of the Office should be the real focus of patent reform!
A grant of the patent, a grant of the patent over 101, potato, potaato. We’re all aware of the difference in eligibility and validity that you like to make NAL. In this context, only 101 is at issue. 103 is not at issue in this case because this case is on summary judgement of invalidity over 101.
“The administering step clearly limits the claim to a specific subset.”
Which I agree with, indeed I have noted that this is tantamount in this case to a limitation to the field of diagnostics. Gl relying on that.
Not to mention, as I have also noted, if “the specific subset” is the only subset for which the abstract idea/natural phenom is useful for, then you still have a 101 problem.
“The brief incorrectly treats case law by treating the Benson and Flook cases on an independent basis in comparison to the Diehr case. ”
You can take them together or explain the basics, very simply, by taking them apart. This is a complicated issue for some re tards (see AI above) so there is not reason to take chances that one or two USSC justices might be confused and not get a unanimous decision to invalidate the patent.
“This confuses what was plainly stated in Bilski concerning Benson and Flook: ”
It doesn’t confuse it at all. Diehr did establish a limitation on the PRINCIPLES articulated in Benson and Flook. Although I doubt you know what that limitation is… even though I’ve told you guys on this site probably several hundred times now.
“to applying only that final portion of the claim in its attempt to establish preemption.”
No, they simply noted which natural phenom appeared to be an issue. That natural phenom happened to be in the claim itself at the end of the claim. It could have been left out of the explicit limitations of the claim entirely and if the claim still preempt all uses of the natural phenom then 101 would still be a problem. That is, there is no “dissection” required for this analysis.
AI, if your read it and understood it then that is good enough for me. And the reason is, once the supremes are well focused on this point perhaps they will lay it out for you in english so simple that simpletons like you can understand it.
I’m through being charitable for you in this thread.
There is a fourth error:
(4) The brief treats the decision by the CAFC – on the 101 question only – as a grant of the patent.
This is not true
101 is not the end of the analysis. There is no grant of patent based on the decision that the claim is eligible for patenting.
6,
The brief is weak for at least three reasons (in just the section of pages 22-24 that you reference):
(1) The brief incorrectly states that the claim one covers an open-ended use of the correlation.
It does not.
The administering step clearly limits the claim to a specific subset.
(2) The brief incorrectly treats case law by treating the Benson and Flook cases on an independent basis in comparison to the Diehr case. This confuses what was plainly stated in Bilski concerning Benson and Flook:
“Finally, in Diehr, the Court established a limitation on the principles articulated in Benson and Flook.”
(3) The brief engages in an incorrect and over-reaching claim dissection. At the top of page 22, the brief makes a leap from “the claims end
with the step of” to applying only that final portion of the claim in its attempt to establish preemption.
This clearly violates the case law established by Diehr and recently affirmed by Bilski:
No claim dissection.
6, I asked :”how about not a mere brief but actual case law from the CAFC or SCOTUS specifically defining your so called preemption test and/or instructing how to apply it? ”
And you came back with …….
NOTHING.
So yes, you wilted as usual. So you should have done what you always do when I back you into a corner and ask for case law. Cut, run, and ignore.
But oh wait, you have a link to a brief from a company pis mad and whining that it has to dare pay royalties on another company’s valid patent. And that is supposed to be your legal basis and guideline for applying a so called preemption test when examining claims for 101?
And what does this brief have to stand on?
An argument that the CAFC is not dissecting the claims like Stevens wanted done in Diehr, ( and apparently got away with in Flook) ?
What this brief really amounts to is an incessant whining that the CAFC is not dissecting claims and following the majority in Diehr.. and it’s just pathetic .
Listen to this….
“The Federal Circuit acknowledged that thinking
about “possible dosage adjustments” is a “mental
ste[p] and thus not patent-eligible per se.” App., infra,
21a, 23a. Yet the court found the claims valid because
they include two (and sometimes only one)
“prior steps [that] provide useful information” (id. at
23a), even though those steps are well-known, are
performed every day by countless medical personnel,”
So what? Did they not get the memo about novelty having no place in 101 analysis? And if the claim as a whole is so darn obvious why doesn’t the brief argue for 103 rather than this Steven 102 dissection crape?
The brief is weak. And while I can’t say the invention is novel and non obvious over the prior art it is no doubt statutory.
Transformation, application, science, technology, even an apparatus and or machine., the clam meets 101. So what if it has broad scope?
That’s the purpose of an inventor getting a patent.
To preempt what you invent!
link to articles.law360.s3.amazonaws.com
I just retrieved this for you from the bottom of the page in one of Malcolm’s posts you tard.
It has case citations in it. pg. 22-24.
I wilted on prom night? Lulz, AI, try not to confuse me with yourself ya senile old man.
6, first there is no link by Malcolm in any thread in this post to a Mayo brief. Second, how about not a mere brief but actual case law from the CAFC or SCOTUS specifically defining your so called preemption test and/or instructing how to apply it? Oh thats right, when faced with a challenge for case law you wilt faster than you did on prom night.
::6 goes down again::
I could tell you about it all day AI, but simply check the Mayo brief pg. 22-24 (link is in the thread below posted by Malcolm) for a brief summary written in simplistic language that perhaps even you can understand it halfway.
Oh please 6, do tell us. What is the preemption test?
::6 silenced::
I think there was a realization that hedging is gambling and the mood after the financial meltdown is anti high risk taking.
Make no mistake, the claim here passes 101 (which is the issue the Court is being asked).
Now, an issue is raised by TINLA as to whether the claim here passes 102 and 103.
“The prior art references must reveal that the recited range for that medication was known or would be obvious in view of one or more prior art ranges for adjusting that medication”
To me, the question comes down to whether the “limitations” in the “wherein” clauses are limiting.
Reading the claim as a whole, I would say that the “wherein” clauses are not limiting. Since the claim as a whole actually does not do anything with the “indicates a need to” elements, the claim has the same scope whether or not those elements are present. Since the claim has the same scope, the “wherein” clauses cannot be limiting.
Next, reading the claim as a whole, with all the steps old in the art, and the combination not providing anything new from the combination (re: KSR), the claim fails 103.
Take note that the 103 question is not before the High Court.
Prediction: Court states that claims pass 101, but “remands” back to the CAFC, with the analysis presented above.
And Malcolm, further to my statement that you parsed, the full statement of mine to you was:
“As I indicated to Hans Blix – I made no argument to the validity of the claims, only to the eligibility.”
this is the reference to Hans Blix:
To be direct:
I am not Actual Inventor.
I have not advanced any argument that the patents at issue are perfectly legit.
I have advanced the argument that this is not a 101 issue, but a 103 issue.
So tell me Hans Blix, how is your errant posturing doing anything here but “kicking up dust”?
Let’s actually try to stay focused on the issues (any pertinent issues at all).
Reply Jun 22, 2011 at 02:57 PM
Let’s be honest Malcolm and take what I say in context.
And Malcolm, further to my statement that you parsed, the full statement of mine to you was:
“As I indicated to Hans Blix – I made no argument to the validity of the claims, only to the eligibility.”
this is the reference to Hans Blix:
To be direct:
I am not Actual Inventor.
I have not advanced any argument that the patents at issue are perfectly legit.
I have advanced the argument that this is not a 101 issue, but a 103 issue.
So tell me Hans Blix, how is your errant posturing doing anything here but “kicking up dust”?
Let’s actually try to stay focused on the issues (any pertinent issues at all).
Reply Jun 22, 2011 at 02:57 PM
Let’s be honest Malcolm and take what I say in context.
(a) Simple answer – You must consider the claim as a whole for 101 purposes. As for the equities of the person with the memory, by your logic she should have an adequate remedy under 102/103/112. You say you’re indifferent as to which basis for invalidation applies, so let her use the ones that fit, rather than further disfiguring the law in this area.
(b) Preemption? – No, because there are other ways to apply this principle of nature. One would be simply to PREDICT metabolite concentration based on parameters (body weight, age, administered dosage, etc.) – and not “determine” anything.
Malcolm,
I deeply apologige for my ever so careless wording and any confusion this may have caused you.
I thought that from the context of my statements that you could figure out that I was speaking separately of validity and eligibility. Of course, a claim can be invalid for 101 reasons, but I was using validity only in a non-101 sense. As my comments indicate, a claim can be elligible and yet still be invalid – and that was the condition my comments were geared to.
As it still reamins though, the lack of civility of your posts just does not make up for the impotency of your legal arguments. I was merely being hardworking at sharing with you the reasons why people do not take you seriously. Your response only confirms just why people should not do so.
Try to refrain from such empty postings.
P.S. I am not NAL.
6, you may have misundertood me.
I discussed Flook one day with Richard Stern. You know who he is and his importance to this debate. He suggested that Flook might have presented a patentable claim if the updated alarm limit had been produced from a measurement of something physical. This, it appears, was not an issue directly addressed in Diehr because it was not an issue in that case.
In one view, the Feds have answered the open Flook question with a “yes.” Measuring of something physical is enough. Actuall doing something with the measurement beyond, for example, calcuating an alarm limit or indicating the likelihooh of a heart attack or indicating the needed adjustment of a dosage level, was not required of the claim.
What I suggested in my post is that this “open question” from Flook will, at least potentially, now be directly addressed by the Supreme Court.
From my own perspective, I long ago came to the conclusion that the output of the process must be doing something that had practical utility. Simply measuring something, processing to generate useful data, but without this final usage step is not enough.
And by the way, you still owe me either an apology or a cite to time stamp with the explicit question per my post at 3:45 PM.
You can even apologize to NAL if you want.
Malcolm,
Again with the misdirection – “you admitted upthread that claims in the exact form of Prometheus’ claims are invalid.”
Tell me the time stamp of that admission – show me the actual words. Try not to lose site of any caveats I supplied – and try not to take things out of context.
As to the rest of your questions – let’s see you answer some of my points before I give you additional answers. You seem “real big” on asking questions and “real small” on actually addressing what I have already provided.
Time to even up the scales.
“Consider it your last chance to prove you have an ounce of integrity, or a functioning brain.”
By all means – after you (as in, after you provide some semblance of cogent legal backing for your position, as you have not yet provided one).
And I will be even more gracious than you and not demand with language such as “last chance.” Seriously, are you trying for the “internet-tough guy of the year award with such language? It should be evident that your name calling and bullying fools no one. And I do mean no one. Your having to resort to such only shows the lack of any real substance to your position.
But if it makes you feel any better (and if it helps us actually develop the issue) – oooooh, I am so scared.
Now will you actually address the legal issues like a grown-up?
And just to make it more interesting, NAL, after you post your reply I’ll post a reasonable, honest, thoughtful and direct answer from the position of someone who disagrees with me about the eligibility and/or validity of Prometheus’ claims and my reasoning with regards to same.
Hardworking Trainwreck Creator: I made no argument as to the validity of the claims
[puts on hazmat suit before engaging with filth]
Actually, NAL, you admitted upthread that claims in the exact form of Prometheus’ claims are invalid.
try to apply the legal concepts correctly
Which “correct” legal concepts were you applying when you admitted that you can not turn an old and therefore unpatentable method into a patentable method merely by adding a subsequent step of thinking about something “new”?
Please explain with all the forthrightness and articulation that you can muster. When considering your answer, if there is a single circumstance where you can add a subsequent mental step (and nothing more) to an otherwise old and therefore unpatentable process to obtain a valid claim, please describe the circumstance in detail and explain why such a claim is valid even if it has the effect of turning a long-time practitioner of the old process into an infringer merely because the practitioner is thinking about a “new” fact recited in the claim.
Consider it your last chance to prove you have an ounce of integrity, or a functioning brain. Please remember that “It can’t be done” is an acceptable answer.
Hardworking Trainwreck Creator I made no argument as to the validity of the claims
[puts on hazmat suit before engaging with filth]
Actually, NAL, you admitted upthread that claims in the exact form of Prometheus’ claims are invalid.
try to apply the legal concepts correctly
Which “correct” legal concepts were you applying when you admitted that you can not turn an old and therefore unpatentable method into a patentable method merely by adding a subsequent step of thinking about something “new”?
Please explain with all the forthrightness and articulation that you can muster. When considering your answer, if there is a single circumstance where you can add a subsequent mental step (and nothing more) to an otherwise old and therefore unpatentable process to obtain a valid claim, please describe the circumstance in detail and explain why such a claim is valid even if it has the effect of turning a long-time practitioner of the old process into an infringer merely because the practitioner is thinking about a “new” fact recited in the claim.
Consider it your last chance to prove you have an ounce of integrity, or a functioning brain. Please remember that “It can’t be done” is an acceptable answer.
Malcolm,
No one really minds you looking behind the curtain – really.
We just want you to present your arguments in a legally recognizable (and correct manner).
Conflating 103 and 101, dissecting claims (when you cannot), and handwaiving “fuzzy” rationales simply are not accepted. Like I said above, it is not that the subject is untouchable or that the topic is verboten – it is that your offering of legally flacid and incorrect arguments just don’t carry the day.
Calling others “cowards, shills and ignorati” in the face of your inability to make a cogent legal stand fools no one. And I do mean no one.
Nice strawman.
When considering one aspect of 35 USC and its impact on a specific type of claim, is it true that the Supreme Court can never, ever discuss or consider the necessary, inevitable implications that their decision will have on the other parts of 35 USC?
However, your position is that regardless of whether or not every use of the mental step would be covered it is still effectively a claim to the abstract idea because you are making infringers out of people doing the old steps in the art plus thinking a new thought.
She just doesn’t accept this because it doesn’t follow straight from the existing caselaw.
You are correct insofar that there isn’t a case already directly on point. If there were, we wouldn’t be having this discussion.
But the result does follow “straight” from existing case law. It follows directly from two lines of cases law. The first states that mental processes can not be patented, and the second says “that which infringes later, anticipates if before.”
Everyone (even NAL) agrees that you can’t turn an otherwise old and therefore unpatentable method into a patentable method merely by adding a step of thinking a “new” thought. And yet only some of us are able to articulate why that should be the case. For others the topic is verboten, a seemingly untouchable subject that must never be broached until the parties in this case brief the issue before a Federal court. “It has nothing to do with the 101 issue,” or so we are told.
As for me, I’m looking behind the curtain. The cowards, the shills, and the ignorati can sxck it.
You see Malcolm, you do not appear to understand the actual issues.
Rather, you get all juvenile at the mere sight of the hot-button word and your brain seems to lock up.
As I indicated to Hans Blix – I made no argument to the validity of the claims, only to the eligibility.
The fact that you try so hard to not “embrace the CAFC’s reasoning that the claims simply MUST be eligible under 101,” when that issue is so clear (and distinct) from validity is what is truly surprising. Rather than actually discuss this rationally, you descend to Ping-like put-downs and misrepresentations of positions. I notice that you have no reply to the actual 101 points I make – none.
It simply is not a matter that discussion of validity is verboten, it is that your 101 arguments are not arguments of validity that carry the day. You do understand that eligibility can be met and that validity can still be not met? You do undeerstand that the two are different concepts, correct?
And it is also that in discussing validity, you need to recognize that claims must be read as a whole. It is the claim as a whole that is judged. Your (continuing) efforts to discuss validity by trying to chop up the elements is what is meeting resistance – not that actual instant claims. It is your erroneous legal thinking that is meeting resistance – try to apply the legal concepts correctly and try to stay focused on advancing the actual issues.
“Do you have a cite to support your statement that the Supreme Court, when considering one aspect of 35 USC can never, ever discuss or consider the necessary, inevitable implications that their decision will have on the other parts of 35 USC?”
How will a holding under 101 be relevant case law re: 102/103? One step at a time. I think your issue is that you don’t like the invention (or lack thereof) and so you want the Supremes to find the patent invalid. I’m with you, frankly, but they have to find the patent invalid on the grounds on which the case was appealed – 101. I stand by my original and repeated statements that 102/103 should be irrelevant to a consideration of patent eligibility.
Put it this way – the Supreme Court will not cite 102/103 in its opinion and say that the claims are invalid because the patent-eligible component of the claim is old.
the Supreme Court … should not consider, or care about, whether the component of the claim giving rise to patent-eligibility is also the component that overcomes 102 and 103
Really? Even if both parties admit that all of the other steps are old in the art and it’s perfectly clear and indisputable that granting the claim will result in an effective patent over a “new” thought?
Do you have a cite to support your statement that the Supreme Court, when considering one aspect of 35 USC can never, ever discuss or consider the necessary, inevitable implications that their decision will have on the other parts of 35 USC?
I find your statement interesting, to say the least.
But as I noted upthread, there are some folks out there who simply refuse to consider the merits of these claims *except* in the 101 context. Invariably, these folks seem to embrace the CAFC’s reasoning that the claims simply MUST be eligible under 101, in spite of the CAFC’s disgraceful and presentation of the facts and sloppy analysis. Any other discussion of the facts of the case and the validity of the claims (and any claims structured similarly) is simply verboten for these people, even though these same people seem to otherwise enjoy discussing patent law and its application.
What are they afraid of, exactly? That’s a rhetorical question.
“What happens if the 101 issued is decided in Prometheus’ favor? They are invalid under 102 or 103, correct?”
So…. you agree with me that 101 and 102/103 are different issues that collectively relate to the validity of a patent but should not be blurred together? You agree that the Supreme Court will not directly rule on the issue of anticipation or obviousness? Because that is my point, a fairly elementary one at that. The issue for SCOTUS is 101, not 102/103.
My original comment was that the issue presented to the Supreme Court attempted to blur the line between 101 and 102/103. I’m not taking the side of Prometheus or Mayo, just stating that the issue presented is done in a misleading light.
Will the patent be considered valid in the end? Who knows, but the Supreme Court will only directly decide the issue of patent eligibility and should not consider, or care about, whether the component of the claim giving rise to patent-eligibility is also the component that overcomes 102 and 103. I honestly didn’t think that point was debatable.
“I hope I can wash your stink off.”
That is not an apology. Nor is it the cite to the post time that I asked for. Further, how is “stink” even associated with having you actually keep to the issue that we are trying to stick to?
And yes, that last question was rhetorical, in case you did not understand that.
But please, do not let your inability to recognize your crassness (no matter how uncalled for) get in the way of advancing the issues – just do not let your error of improper claim reading get in the way.
Lastly, I find it rather humorous that I have been associated (accused) of being both Ping and NAL, wherein NAL absolutely owned Malcolm (in truth, not that difficult to do) and Ping was just as crass as Malcolm (only much more correct in legal thinking as shown in the high level court results, and again, not that difficult to do).
What was the phrase? “Bring on the chuckles”?
“That’s the easy part. As I’ve explained before, there is absolutely zero disagreement on the Supreme Court or anywhere else about the fact that 101 forbids the patenting of purely mental processes. Of course this isn’t merely a formality. These same Justices are also in complete agreement that you can’t make a claim to a mental process eligible merely by throwing in *any* non-mental step, e.g., a claim that recited “A method, comprising thinking [insert new thought] and breathing oxygen.” The effect of such a claim is to remove the thought from the public domain and put the thought under patent protection. Again: you can not patent thoughts. This is a 101 issue. Call the thoughts “mental processes” or call them abstractions. Doesn’t matter. You cannot protect thoughts with a patent.”
Yes, but people such as NAL don’t think that it necessarily would in effect patent the thought because, in claims a bit different than your oxygen breathing one, the steps recited (like the ones in the instant case) limit the claim to a specific application. Indeed, in re to the preemption doctrine she notes that the abstract idea/natural phenom could be used in the context of “a cure” by which we can presume she means “a drug” and thus preemption would not apply. Similarly, she would no doubt feel as if there are other contexts not covered by the instant claims, where you could think the mental thought and not be infringing, thus the entire mental step is not covered, only it being used in a certain context and she thinks that is fine. She has not gone so far as to say that just yet, but that is probably mostly because she is close minded and doesn’t really understand your position well enough to intelligently respond.
However, your position is that regardless of whether or not every use of the mental step would be covered it is still effectively a claim to the abstract idea because you are making infringers out of people doing the old steps in the art plus thinking a new thought.
She just doesn’t accept this because it doesn’t follow straight from the existing caselaw.
In any event, I hope that you’re right, and I’d like to see such a “rule” in patent law, or if it is already there, to see it recognized explicitly, but idk if it will be man.
The upshot of all this is that it appears NAL has finally grasped the preemption doctrine. After like 3x years. Gj NAL. You go girl!
No wit or humor intended, Les.
If I am indeed in error, then I will apologize. If you are in error, will you?
Have a nice life, NAL.
I hope I can wash your stink off.
Last I checked the issue was 101. Or do I not know the facts of the case?
Apparently not. What happens if the 101 issued is decided in Prometheus’ favor? They are invalid under 102 or 103, correct? As a matter of law, correct, because the prior steps are admittedly old and only the final mental step is new, correct? Is there any other possible result?
Thanks for playing.
It is difficult or impossible for her to, under her current understanding, draw the line between an actual patenting of a mental step and an “effective” patenting of a metnal step. You haven’t done a good job of explaining the difference and why this “effective” patenting of a mental step would be related to 101.
For the record, I note that Ned understood it immediately, and plenty of others seem to get it.
why this “effective” patenting of a mental step would be related to 101
That’s the easy part. As I’ve explained before, there is absolutely zero disagreement on the Supreme Court or anywhere else about the fact that 101 forbids the patenting of purely mental processes. Of course this isn’t merely a formality. These same Justices are also in complete agreement that you can’t make a claim to a mental process eligible merely by throwing in *any* non-mental step, e.g., a claim that recited “A method, comprising thinking [insert new thought] and breathing oxygen.” The effect of such a claim is to remove the thought from the public domain and put the thought under patent protection. Again: you can not patent thoughts. This is a 101 issue. Call the thoughts “mental processes” or call them abstractions. Doesn’t matter. You cannot protect thoughts with a patent.
Note to the patent txxbxggers: if you don’t accept that such a claim presents a 101 issue and such a claim will never, ever be found patent eligible by the US Supreme Court, then I don’t see any reason to continue this discussion with you. Please continue living in your fantasy world.
Okay, with that established, it is a simple matter to understand that any patent claim which would have the practical effect of removing a particular thought about any subject, new or old from the public domain implicates 101. This is not controversial. Some people seem to wish to argue “No it doesn’t because the claim will be found invalid under 102 or 103 because the mental step will be ignored”. But the fact is that this radical dissection of claims in the 102/103 context is justified for the same reasons that claims containing only mental steps are not patent eligible.
the line between an actual patenting of a mental step and an “effective” patenting of a metnal step
Okay, here it is again.
1) Actual patenting of a mental step: “A method, said method comprising thinking about [insert new thought].”
2) Effective patenting of a mental step: “A method, said method comprising [old, unpatentable step] and [new thought about a result of the old unpatentable step].”
The second claim constitutes an effective patenting of a mental step because people who are practicing the prior art step and can NEVER infringe for merely doing that are suddenly turned into infringers simply because they have been taught a new fact and they happen to THINK about it. Again: the only new action that turns these otherwise non-infringing actors into infringers is THINKING about something that they might have read or were told. Thus, a thought about a fact in the public domain (where else could the fact possibly be if it is published) has been *effectively* removed by a patent claim, at least with respect to practioners of the prior art.
Two points that everyone needs to understand:
First, none of this is refutable unless you want to deny the basic premises. Denial of the premises is the radical position. The ineligibility or per se unpatentability of such claims (e.g., dissect the claim and throw out the mental step when considering validity under 102/103) are the only options short of creating a special judicial exception for “diagnostic” claims in the form that Prometheus adopted.
Second, the filing of lawsuits predicated on infringers whose only “new” action is thinking about a public, unpatentable fact is not some scary future possibility. It’s the theory of Prometheus’ case, as expressed in very clear terms under oath by Prometheus’ hired expert.
At over two hundred comments, the top three commentors still make up nearly half of all comments.
What I mean to say is – if you cannot succinctly formulate your opinion in a mere couple of comments, you should not be commenting. This has nothing to do with agreeing and everything to do with empty clanging.
“Maybe that’s because the degree to which a claim on the border of subject matter eligibility is perceived as obvious affects the outcome? Just maybe? And maybe there’s nothing wrong with that.”
I actually agree with you – adding a well-known processor to an otherwise patent ineligible software claim should not render the claim patent-eligible. Adding a well-known “computer-readable recording medium” to a software claim should not render it patent-eligible. But that is the patent world we live in, at least in the U.S., and the Fed Circuit and Supreme Court has consistently cautioned against blurring the line between 102 and 103.
“And yet some refuse to even address the issue.”
Last I checked the issue was 101. Or do I not know the facts of the case?
trying to close the busted tag
“st00pit, or just a lxixaxr… Redeem itself?
Let’s try to stay civil, Malcolm, shall we?
How do you advance the issue by resorting to such contemptible style of posting? Please stay focused and on the actual issue or otherwise people will think that perhaps you do not actually want to advance the issue…
“ new but ineligible process of … Actually those are exactly the facts of this case.” and “ Thank you, but that’s not the issue we’re discussing. We’re discussing a more specific set of facts”
Actually the facts are exactly as I have indicated and not as you now (and still) try to twist by parsing the claim and failing to read the claim as a whole. You once again (and still) are trying to notread the claim as a whole – quite plainly, and quite coherently, this is your error.
Further, I was very clear that I simply do not accept your conclusory statement that the instant claim is an effective patenting of a mental step in the way that you want to parse the claim to read. Did you simply respond before reading my entire statement? It appears that claims are not the only things that you improperly parse.
“ Really? Mental processes have nothing to do with eligibility under 101? Really?! ”
Again – claims (and my responses) as a whole – no strawmen allowed. Keep focused. Did I actually say that mental processes have nothing to do with eligibility under 101? I did not. Please do not misconstrue what I said. My writing is coherent – you just have to not parse that writing when you see a hot-button word – much like you have to not parse claims when you see the same.
“ More importantly, Hardworking, you haven’t explained why you believe that you can not turn an old and therefore unpatentable method into a patentable method merely by adding a subsequent step of thinking about something ‘new’”
Maybe I haven’t explained because that was not one of the questions you asked me to answer. I answered your questions as you actually have asked – as I copied them directly from your posts. Maybe I am not the one forgetting what has been posted. Perhaps you need to ask your questions in a more coherent manner (as you never did ask for an explanation of why I believe that I can not turn an old and therefore unpatentable method into a patentable method merely by adding a subsequent step of thinking about something ‘new’.
The great thing about writing and checking the comments here is that you can actually check the comments here to see what has been actually asked. If you still think that I am a “lxixaxr” on this point, please provide the post time that you asked this particular question on the thread.
If I am indeed in error, then I will apologize. If you are in error, will you?
MM I’ll just post this here since the site is being a btch.
You said to Hardworking: “Really? Mental processes have nothing to do with eligibility under 101? Really?! You seem deeply confused, or just ignorant of the law. Or maybe you are just unable to write coherently. ”
No, she just doesn’t understand your line of reasoning, to be sure, it is difficult to understand and I only picked it up in this thread after you’ve been trying to explain it for nigh on a year now. It is difficult or impossible for her to, under her current understanding, draw the line between an actual patenting of a mental step and an “effective” patenting of a metnal step. You haven’t done a good job of explaining the difference and why this “effective” patenting of a mental step would be related to 101. Although, even in light of your deficient teaching I have managed to pick up what you are saying. And I recognize that it is hard to teach.
Also, she isn’t so much stoopit as she is close minded and unable to expand her horizons. You are introducing her to a new concept and she is not accepting it.
“Pre-emption is not at play because the claim as a whole is directed to one use of the natural correlation”
So you think that there are other uses?
” For example, a cure that uses the correlation (directly with no intermediate analysis or “thinking”) would not be covered by the claim.”
“a cure”? What sort of cure are we talking about? A drug? A drug uses correlations? Come on NAL, there are pretty much no other uses for the correlation and certainly drugs are not a use of the correlation.
“The effective patenting of a mental step is not at play because you have violated the notion of taking the claim as a whole, and you want to only focus on one step of the claim. ”
Well no, that would be the “actual” patenting of a mental step. Malcolm is talking about what the claim effectively accomplishes. Be clear, they are two distinct things. And I believe he is right, although courts have not gone down the “effective patenting of a mental step” path just yet.
witty times 3
“where the too abstract line is” is at any abstract.
And for you Matt:
Abstract-
adj-Existing in thought or as an idea but not having a physical or concrete existence.
If it don’t have na physical or concrete existence then it is abstract son.
I agree Les, they should spend more time rejecting B claims. Just following orders is no excuse, they’re under oath.
end italics
QUESTION: Do you believe that you can turn a new but ineligible process of “thinking about a number” into statutory subject matter merely by adding an admittedly old and unpatentable step of determining a number?”
Hardworking ANSWER: Without anything more, as in additional steps, no. But this is not in any way related to the facts of this case either.
Actually those are exactly the facts of this case.
QUESTION “Do you really believe that you can turn an old and therefore unpatentable method into a patentable method merely by adding a subsequent step of thinking about something ‘new’?”
Hardworking ANSWER: Without anything more (as in additional steps), no. But this is not in any way related to a 101 issue.
Really? Mental processes have nothing to do with eligibility under 101? Really?! You seem deeply confused, or just ignorant of the law. Or maybe you are just unable to write coherently.
More importantly, Hardworking, you haven’t explained why you believe that you can not turn an old and therefore unpatentable method into a patentable method merely by adding a subsequent step of thinking about something ‘new’. Please explain your answer. I’m surprised that you forgot to do that. Actually, not really. I would have been far more surprised if you actually attempted to answer the question reasonably and coherently.
There is plenty of case law that supports the inclusion in valid patents of mental steps.
Thank you, but that’s not the issue we’re discussing. We’re discussing a more specific set of facts. Have you forgotten those facts already? I’ve only stated and re-stated them dozens of times already. Let me know if you need me to state the facts for you one more time.
As anyone can see, we’re starting to move closer to the really tough question: is “Hardworking” st00pit, or just a lxixaxr? Let’s see if “Hardworking” can redeem itself. I’m guessing not.
To be sure, Hardworking is NAL, not AI.
If one is inclined to ask how many socks someone else has in that person’s drawer, then it is probable that that person asking is looking for more socks.
This follows the adage that a liar thinks that everyone else is a liar.
To be direct:
I am not Actual Inventor.
I have not advanced any argument that the patents at issue are perfectly legit.
I have advanced the argument that this is not a 101 issue, but a 103 issue.
So tell me Hans Blix, how is your errant posturing doing anything here but “kicking up dust”?
Let’s actually try to stay focused on the issues (any pertinent issues at all).
“cannot possibly be patentable under 102/103. No claim with the structure of these claims can be both eligible for patenting and valid. And yet some refuse to even address the issue.”
Maybe because that there are too many people who think “maybe there’s nothing wrong with that” when conflating the issues between 101 and either 102 or 103. Maybe because “the issue” of “patent eligibility” and “patent validity” are separate and distinct issues. Maybe because it is important to recognize the difference between “patent eligibility” and “patent validity” as a basic tenant of patent law.
Further, I am not asking you to take the time to “clear things up for [me]” – I was being gentle in a rhetorical manner in suggesting that any muddling in the discussion of this matter is on your end. One does not have to agree that the instant claims are valid to make the argument that a question of patent eligibility is not the right question to ask. In other words, it is important that the law (and the justices interpreting the law) understand the difference between eligible subject matter and a valid (or invalid) patent for failing to meet a different provision of the law than 101.
Nevertheless, in order to move the issue forward:
“Do you really believe that you can turn an old and therefore unpatentable method into a patentable method merely by adding a subsequent step of thinking about something ‘new’?”
Without anything more (as in additional steps), no. But this is not in any way related to a 101 issue. If this were a 101 issue, the old method itself would fail the 101 test – this case does not present those facts.
“Do you believe that you can turn a new but ineligible process of “thinking about a number” into statutory subject matter merely by adding an admittedly old and unpatentable step of determining a number?”
Without anything more, as in additional steps, no. But this is not in any way related to the facts of this case either.
Be wise to pay attention to the “without anything more” caveat – and consider your propensity for not taking claims as a whole, as you must.
“Quite plainly, the reason it must be one or the other is because it violates 101 issues (either pre-emption or the effective patenting of a mental step).”
Do you agree? If you don’t agree, explain why.
I do not agree.
Pre-emption is not at play because the claim as a whole is directed to one use of the natural correlation. Other uses not identified are not covered. For example, a cure that uses the correlation (directly with no intermediate analysis or “thinking”) would not be covered by the claim.
The effective patenting of a mental step is not at play because you have violated the notion of taking the claim as a whole, and you want to only focus on one step of the claim. There is plenty of case law that supports the inclusion in valid patents of mental steps. I simply do not accept your conclusory statement that the instant claim is an effective patenting of a mental step in the way that you want to parse the claim to read.
“6 is always on about pre-emption. I wonder if he agrees with that passage of the Brief.”
Of course I do, it is the cliff’s notes of what I’m preaching on here every other week. Although they use wording that is likely to confuse the likes of Ned and other confusolots. They don’t go into the necessary detail to fully flesh out the preemption doctrine, they just scratch the surface, and that leads to misunderstanding. Luckily for us, the supremes on the bench right now seem to understand preemption just fine and don’t need the brief to hold their hand through the details.
For instance, one might think from what they wrote that if Benson has recited what to do with the numbers then the patent would have been fine. But that is not necessarily the case. It MIGHT have been fine, and it might not have. Although in the factual situation of Benson I believe it very likely that they would have been fine.
your point is just muddled to me
Please answer the questions I posed to Casual Observer. If you are unwilling to do so or if you don’t understand the questions, it’s not worth my time trying to clear things up for you.
It is irrelevant whether the methods are “well-known” for 101 purposes. I was at the Bilski SCOTUS oral argument and it was incredible how often this line was blurred by the judges.
LOL. Maybe that’s because the degree to which a claim on the border of subject matter eligibility is perceived as obvious affects the outcome? Just maybe? And maybe there’s nothing wrong with that.
More importantly, however, in this case the facts are such that there is no dispute between any of the parties that the claim would turn people who are practicing the “well known” prior art into infringers merely because, after the application was published, they learned an unpatentable fact.
It’s amazing how many people comment on this case without knowing the facts. It’s almost as amazing as the people who refuse to acknowledge the fact that even if the claims are judged to be patent eligible they cannot possibly be patentable under 102/103. No claim with the structure of these claims can be both eligible for patenting and valid.
And yet some refuse to even address the issue.
Malcolm,
It is not anticipation that would sink such a claim, as it would be obviousness.
As such, no one is saying that anyone is allowed to ignroe the recitation of the ‘new” mental step – in fact, I keep reading that people keep on telling you to not dissect the claims.
Either you have presented a strawman argument here, or your point is just muddled to me.
Either way, any muddle between 102 and 103 is completely separate from 101.
Please stop posting, Les.
Agreed.
Three things I should have understood.
Addressed to me only while my Mother was living in Hanover. “Quote” You have a cousin that just got killed in a car wreck. My response was who? I don’t know anyone I am related to around here.
I mentioned a medical problem to my Mother. Her response All the manning girls have that.
Killherforthekeys….
You look just like your Mother.. not.. you look just like Ma.
I don’t like the following from the issue presented for appeal: “simply because well known methods used to administer prescription drugs and test blood may involve “transformations” of body chemistry.”
It is irrelevant whether the methods are “well-known” for 101 purposes. I was at the Bilski SCOTUS oral argument and it was incredible how often this line was blurred by the judges.
If ever there was a comment not worth responding to, it’s Les’ comment at 1:42 pm.
Nope, no mention of disclosing anything:
§ 1.75 Claim(s).
(a) The specification must conclude with a claim particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention or discovery.
(b) More than one claim may be presented provided they differ substantially from each other and are not unduly multiplied.
(c) One or more claims may be presented in dependent form, referring back to and further limiting another claim or claims in the same application. Any dependent claim which refers to more than one other claim (“multiple dependent claim”) shall refer to such other claims in the alternative only. A multiple dependent claim shall not serve as a basis for any other multiple dependent claim. For fee calculation purposes under § 1.16, a multiple dependent claim will be considered to be that number of claims to which direct reference is made therein. For fee calculation purposes also, any claim depending from a multiple dependent claim will be considered to be that number of claims to which direct reference is made in that multiple dependent claim. In addition to the other filing fees, any original application which is filed with, or is amended to include, multiple dependent claims must have paid therein the fee set forth in § 1.16(j). Claims in dependent form shall be construed to include all the limitations of the claim incorporated by reference into the dependent claim. A multiple dependent claim shall be construed to incorporate by reference all the limitations of each of the particular claims in relation to which it is being considered.
(d)
(1) The claim or claims must conform to the invention as set forth in the remainder of the specification and the terms and phrases used in the claims must find clear support or antecedent basis in the description so that the meaning of the terms in the claims may be ascertainable by reference to the description. (See § 1.58(a)).
(2) See §§ 1.141 to 1.146 as to claiming different inventions in one application.
(e) Where the nature of the case admits, as in the case of an improvement, any independent claim should contain in the following order:
(1) A preamble comprising a general description of all the elements or steps of the claimed combination which are conventional or known,
(2) A phrase such as “wherein the improvement comprises,” and
(3) Those elements, steps, and/or relationships which constitute that portion of the claimed combination which the applicant considers as the new or improved portion.
(f) If there are several claims, they shall be numbered consecutively in Arabic numerals.
(g) The least restrictive claim should be presented as claim number 1, and all dependent claims should be grouped together with the claim or claims to which they refer to the extent practicable.
link to uspto.gov
The problem is that by bypassing any 103 analysis
I’m not suggesting that any “analysis” be bypassed.
Do you understand the facts in this case?
The claim recites (1) an old step of determining a number, e.g., the level of a particular metabolite in the blood (this is admitted by both parties) and (2) a mental step of thinking a “new” thought about that number.
As I’ve pointed out numerous times, I could really care less whether you hold that a claim of this type is invalid under 101 or per se obvious/anticipated. Quite plainly, the reason it must be one or the other is because it violates 101 issues (either pre-emption or the effective patenting of a mental step).
Do you agree? If you don’t agree, explain why. Specifically, explain why a claim that adds a “new” mental step to an old unpatentable step is not, effectively, a claim to a mental process. In your answer, consider the person whose job for years prior to the filing of the application has been practicing the old step, but who is subsequently taught the “new” mental step when they read about the “new” “correlation” in a letter sent to them by the patentee. They are now infringers when they go back to their job unless they “unlearn” what they have been taught.
Also, be aware that this is exactly how Prometheus interprets the scope of their claim.
Step up to the plate, “Casual Observer”. Or slink back under the rock with the rest of the dxxxchebag trolls who can’t handle the truth.
“Claims don’t have to disclose anything, including utility.”
–Les, 06/22/11
the war crime that is most office actions….
You’ve got some nerve saying that in a thread about an embarrassingly badly-drafted set of claims.
But I suppose that’s completely different, because it’s not like we agents are ever under “orders” to draft claims in a particular way.
“Just following orders” … that explains the war crime that is most office actions….
” Doesn’t that approach reflect any underlying prejudice against patenting certain types of subject matter?”
Yeah, it reflects a strong underlying judicial prejudice against these things we like to call the “judicial exceptions”.
Lionel The actual claims in question are ridiculous and need to be rejected uner 102/103. However, I agree that 101 should not be used.
Lionel, is any claim in the form:
1) Old step
2) Mental step of contemplating result of old step in light of “new” fact taught in specification
anticipated? Or just these particular claims? If the former, can you explain why you are allowed to ignore the recitation of the “new” mental step for the anticipation analysis?
First, the claims DO have to disclose things.
Second, I KNOW that statements of asserted utility do not have to be made in the claims.
Third, a statement of asserted utility WAS made in this claim.
Fourth, the claim as written evidences NO specific and substantial utility relative to the asserted utility, and is therefore describes a wholly inoperative invention.
I can re-post the reasoning and analysis, but would prefer to link to the previous thread in which it was discussed, if only Dennis would find it.
OK, you’re a Parker v. Flook fundamentalist. The problem is that by bypassing any 103 analysis the court can come in with a bias against the patentability of entire classes of technology, and never really consider obviousness. Isn’t KSR enough to deal with this? Why does 101 have to function as a super-103? Doesn’t that approach reflect any underlying prejudice against patenting certain types of subject matter?
Claims don’t have to disclose anything, including utility. The requirement is that the invention BE useful.
Clearly treating someones disease is useful.
In Bilski v. Kappos, the Supreme Court basically decided that compliance with the “machine or transformation test” was neither necessary to sufficient. But the CAFC assumed in this case that compliance with the MoT test is sufficient – so it is clearly wrong!
Anyway, the MoT test originates from Cochrane v. Deener whether it was decided to be a sufficient condition. Turning a sufficient condition into a necessary condition violates basic logic. At least the argument for the one type of condition don’t apply for the other one. So I think the courts should stop even *thinking* about the MoT-test. Transformation imho is a process creating value – and patents are always supposed to create value, else they are useless.
QUESTION: could anyone tell me how (un)usual it is for the SCOTUS to grant certorioari a second time for the same case? Even if the first decision was a one line decision?
Blah, blah, blah, blah…
I’ll say it one more time, as it bears repeating:
The invention is wholly inoperative, as claims disclose no specific and substantial utility whatsoever, and are therefore invalid for lack of utility under 101.
All these posts about 103, 101 s-m eligibility, laws of nature, pre-emption, insignificant post-solution activity, infringing by merely thinking…you guys sound like Congress.
I’m sorry–I enjoy going back-and-forth with many of you, but this thread is a complete waste of time. You guys went off the rails early, and have ended up in Wonderland.
And DENNIS, where is that mystery thread?????
That should read –cures the cancer–.
David –
The logic you are applying is inappropriate.
For example, lets say the disease is cancer and the level test is of sodium nitride and the “drug” is lemon juice and controlling the level of sodium nitride to be withing the recited range with lemon juice curse the cancer.
Is it obvious now? Of course not.
This is why the courts have developed the “as a whole” standard and why it is inappropriate to dissect the important bits out of the claim as you have done.
Anyway, Obviousness is another question. Whats at issue here is does the claim recite a method under 35 USC 100 and 101.
The Mayo Brief (link above) I found very helpful on the distinction between Benson, Flook, on the one hand, and Diehr on the other. See the passage starting at the foot of page 22 and ending at the top of page 24. thank you for the Link Malcolm Mooney. 6 is always on about pre-emption. I wonder if he agrees with that passage of the Brief.
BTW, MM, I think if the Brief laboured any more than it does the point that mere thinking about it constitutes infringement, SCOTUS would get irritated. I liked the bits about freedom of speech and the impossibility of ridding your memory of an infringing thought, once thunk. Bravo F&R (or whoever wrote this Brief).
The actual claims in question are ridiculous and need to be rejected uner 102/103. However, I agree that 101 should not be used.
“I don’t know if I would say that the ranges recited in Prometheus’ claims are “inherent” but it does show (again) how weird these claims are”
So those maybe the ranges did not indicate a presence of excess stuff such that a dosage amount would need to be adjusted prior to them teaching that it did? They magically made that range indicate that just by teaching it? Or did it already exist in the prior art, waiting for them to find it and teach us about it?
“We really do no know why the claims in Bilski were abstract. With Steven gone, we might have a working majority that will actually tackle that issue.”
OMG, are you still this much in denial over the SCOTUS Bilski ruling? The Court was VERY specific why. Bilki’s claims covered both the concept of hedging and the application.
During oral argument a justice pointed out that if a professor lectured about Bilkis concept it would infringe.
Personally I do not have a problem with such a broad use of a concept being patentable but the Courts want to draw the line at thinking, speaking and teaching concepts. So Bilski did not get his patent.
But let us not pretend that other so called business methods that have a clear application of science and technology be it with or without machines and transformations, are not instant 101 statutory subject matter. Thats the law so deal with it Ned and like Stevens, move on.
I answered your dadburn question – I’m cooperating here, I’m cooperating with ya…