ASSOCIATION FOR MOLECULAR PATHOLOGY V. MYRIAD GENETICS (Fed. Cir. 2011)
In a much anticipated decision, the Court of Appeals for the Federal Circuit has rejected the Southern District of New York’s court’s holding that could have rendered invalid all patents claiming isolated forms of naturally occurring DNA molecules. However, the decision is somewhat nuanced and will be appealed.
Judge Lourie drafted the opinion of the court that was joined in-part by the entire panel. Judge Moore drafted a concurring opinion that agrees with the conclusion that the isolated DNA is patentable but disagrees with Judge Lourie’s methodology for determining when an isolated compound is sufficiently “man made” to no longer be considered a natural phenomenon or product of nature. Judge Bryson concurred in part, but dissented on the issue of whether an isolated human DNA molecule should not be patentable. Judge Bryson writes:
We are therefore required to decide whether the process of isolating genetic material from a human DNA molecule makes the isolated genetic material a patentable invention. The court concludes that it does; I conclude that it does not.
Focusing here briefly on the majority opinion, the court made four specific holdings:
- Affirmed: The District Court properly had jurisdiction over the case;
- Reversed: The district court erred in holding that Myriad’s claims directed to isolated DNA were invalid;
- Affirmed: The district court properly held that Myriad’s claims directed to comparing or analyzing gene sequences were invalid; and
- Reversed: The district court erred in holding that Myriad’s claims directed to screening potential cancer therapeutics via changes in cell growth rates were invalid.
The result here is that Myriad’s BRCA Gene patents are somewhat damaged, but remain strong. The plaintiffs are likely to either request an en banc rehearing or immediately file a petition for a writ of certiorari with the Supreme Court. Myriad is likely to request a rehearing on the issue of subject matter jurisdiction.
[More to Come]
Documents: Read the 105 page decision here.
How, I’m not so sure obviousness does not strongly bear on the issue of patentable subject matter. Music is not patentable subject matter. We all agree on that. A player piano is.
So, what about a player piano programmed to play a new song?
I see your point here that all the physical steps per se are old. Below, I’ve added some facts to change the claimed subject matter just a bit to where the claim literally cover both a disclosed physical correlation method and a disclosed non statutory, i.e., mental steps, correlation method.
Malcolm, if the claimed test covers both a physical test and an unpatentable mental steps comparison of two sequences, and the test is the point of novelty, is the claim invalid under 101? What if the specification discloses both tests, and declares them equivalent?
Personally, I think the claims are valid under 101 because, under Phillips, the courts would limit the claims to the physical test.
But shouldn’t such claims be invalid under 112, p.2, because they literally read on non statutory mental steps? See, Prater II. Prater II was, however, a case coming from the PTO using BRI.
You have a very limited set of tools, Mooney.
Maybe if you got your head out of your bvtt, you could see what was going on around you.
Meanwhile, you’re being left behind.
This makes no sense whatsoever, since I have never expressed a favorable opinion about the patent-eligibility of Beauregard claims.
Oh that’s right…I forgot who I’m talking to
+1
Lourie at page 47:
“With respect, no one could contemplate that snapping a leaf from a tree would be worthy of a patent, whereas isolating genes to provide useful diagnostic tools and medicines is surely what the patent laws are intended to encourage and protect. Snapping a leaf from a tree is a physical separation, not one creating a new chemical entity.”
There is so much that is inadequate about this statement. First of all, a leaf is chemically bonded to the branch, and removing it from the branch represents a chemical separation, just as in the isolation of genes. Lourie’s empty statement that it is a physical separation is devoid of meaningful content.
Second, he uses a potential utility of the isolated gene to imbue it with patent-eligibility, but does not do the same for the leaf. There are many instances in which “…isolating [leaves]…provide[s] useful…medicines…”
Is this “surely what the patent laws are intended to encourage and protect”? Isolating a gene and isolating a leaf are technical activities that are both well within the capability of the PHOSITA.
Like I said, I think that the holding is correct, but that the decision does not articulate cogent reasoning–which is par for the course at the CAFC.
I would rather have cogent reasoning and an unfortunate outcome, which could be reviewed, than bad reasoning or no reasoning at all and a correct outcome.
I wrote it in response to Malcolm’s observation that one cannot patent the correlation between the existent of a disease and the existence of a protein/encoding gene, which is abstract. I think one can, that is if one recites the physical steps for a test that determines the presence of the gene.
C’mon, Ned. If you are claiming the physical steps, and the non-mental steps are novel, you are not “claiming the correlation”. This sort of sloppiness on your part is what drives people nuts.
I really do not understand why one cannot just claim “testing for BRCA1 and BRCA2” where the specification discloses a physical test using a probe, for example.
I explained one potential problem in my comment, immediately above.
BTW, by correct result, I mean that isolated DNA is patent eligible. Your presumption that it should not be is simply wrong. Patents were put in place to incentivize research by providing a mechanism for harvesting the fruits of one’s labor. But you would remove that incentive for genetic research. Wrong result. Wrong assumption.
Was the discovery public knowledge before they filed their patent on the isolated DNA? if so, for how long was it public knowledge prtior to the filing?
It’s a simple obviousness analysis. You don’t get to end run 102 definitions of what constitutes prior art by conflating 101 with 103, and calling the invention de minimus in view of the discovery. Stop conflating 101 and 103, and you’ll find that the statutes provide the guidance for reaching the correct result.
Hans,
Please re-read 35 USC 101 for what is “patent-eligible.”
Step away from the crowd conflating “patent-eligible” and “patent-able” – as noted by Dennis on the new thread, these are different, even fundamentally different, questions.
Ned, some of Myriad’s diagnostic method claims do indeed involve the utilization of mutation-specific hybridization probes. I have no problem with those claims. The way the test is done in practice is that human genomic DNA is extracted from a cell and purified. The purified genomic DNA is then amplified with selected primers that permit amplification of the coding sequences of the BRCA1 (or BRCA2) gene (and some amount of non-coding sequences), but NOT amplification of any other part of the genome. The amplicons are then sequenced using known sequencing techniques. The sequence reads are then compared to a reference sequence to determine the presence of variation. Any variations identified are evaluated to determine if they increase risk of cancer (some variations do, some do not). That’s it. The only thing that is patent-eligible here are the amplification primers, but those can be worked around.
Hans, I’ll leave it to the experts in the field to craft a technically competent claim. I wrote it in response to Malcolm’s observation that one cannot patent the correlation between the existent of a disease and the existence of a protein/encoding gene, which is abstract. I think one can, that is if one recites the physical steps for a test that determines the presence of the gene. Malcolm’s last point is that the point of novelty in the test cannot be a mental correlation.
On this last point, I really do not understand why one cannot just claim “testing for BRCA1 and BRCA2” where the specification discloses a physical test using a probe, for example.
The question would not be whether the claim was statutory, but rather whether a test that involved digitally comparing two sequences in a computer, or by hand for that matter, would be an infringement. That would of course depend upon claim construction.
“But wait, you’re really just arguing for a change in the law by pretending it’s already the law and closing your eyes and holding your breath, right?”
Yes.
You heard it here first, folks: Keith Ellison and Michelle Bachmann “are both ideologues who have precisely the same basic motivations.”
LOL.
Malcolm–
I just love the way you plant the impression in a reader’s mind that I thought a certain way.
Of course, whether I believe it or not, I never stated that I believed that my reasoning was significantly different from Lourie’s and Moore’s.
Your strategy is a time-honored one, and is not always easy to address successfully.
There are a couple of strategies that work, however. One is to completely ignore the statement and respond with an in-kind statement using the same logic, only with greater force, allowing for the precedence effect to erase the signal caused by the first comment.
Another is to expose the tactic for what it is, and hope that readers are smart enough to understand. Because I hold most of the patently-o readers in high esteem, this is the route I have chosen.
Malcolm, do you remember that thread where you asked about the motivation of Republicans, and I said that it was exactly the same as that of the Democrats, and that 2 people could do 2 different things for the very same reason?
Well, that logic works the other way around, too–for instance, Sen. Michelle Bachmann (R) (ugh) of Minnesota voted NO on the debt ceiling bill, as did Rep. Keith Ellison (D) (ugh).
2 people, politically opposed to each other in every conceivable way, both voted NO.
That is the conventional wisdom–the reality is that they are not so different as they would like everyone to believe. They are both ideologues who have precisely the same basic motivations.
Me, I am ashamed for the USA that either of them holds public office.
Anyway, I think that Lourie and Moore reached the correct decision, although they failed to cogently articulate their reasoning.
A perfect decision for further review.
I believe that those terminations are inherent in the composition claims, and therefore constitute explicit claim limitations. It is for that reason that I believe there to be patent-eligible S-M in those claims
If you think your reasoning is significantly different from Lourie’s and Moore’s, you are very confused.
You need somebody else to point out your error, and when they do, you run away.
Keep sxcking on that lollipop, IBP. Whatever makes you happy.
Strawman!
That is not the comparison given–it was to a leaf attached (chemically bonded) to a tree, not to a diamond in the ground.
Wrong. Your own words, IBP: “He should have stopped while he was ahead, because he contradicts his own reasoning: “…the diamond is the same lattice of carbon molecules, just with the earth removed…” It can just as easily be said that “the BRCA gene is the same lattice of nucleotide molecules, just with the remainder of the DNA molecule removed”, or something chemically correct to the same effect.”
That’s the quote what I was referring to.
I would urge you to simply stop digging.
Of course, I have no idea whether or not the terminations actually DO enable the asserted utility!
See Malcolm, the difference between you and I is that I KNOW when I don’t know what I’m talking about, and I own it.
You need somebody else to point out your error, and when they do, you run away.
If you’re going to define uniqueness by the availability of a utility that is unavailable to the natural form (which is what both Lourie and Moore do), then for a claim to be commensurate with the scope of the invention, the claim should explicitly be limited to those features of the invention that enable the asserted utility.
In this case, that would mean including as limitations the termination at the 3′ and 5′ ends of the sequence in question as a hydroxyl and a phosphate group, respectively.
I believe that those terminations are inherent in the composition claims, and therefore constitute explicit claim limitations. It is for that reason that I believe there to be patent-eligible S-M in those claims.
Ned, I know it’s not your field, but BRCA1 and BRCA2 are different genes, not variants of a “BRCA gene.” Also, what do you mean by “isolating” the gene? This sounds like you are suggesting that you actually create a BRCA1 (or BRCA2) cDNA from a person’s genomic DNA, then sequence the cDNA for the existence of mutations/variants. This would never, and I mean NEVER, happen in reality.
Strawman!
That is not the comparison given–it was to a leaf attached (chemically bonded) to a tree, not to a diamond in the ground.
Nice try.
I see you haven’t responded to the policy-decision post, likely because you cannot do so and save face.
I’ll do it for you. Lourie’s reasoning is inconsistent and contradictory. Moore’s reasoning WRT smaller molecules follows the same reasoning as does Lourie’s, which one could say was based on the judicial policy of stare decisis–but when it comes to larger molecules, she relies on policy entirely. Not only that, she doesn’t define the dividing line between large and small–it’s like pornography, she knows it when she sees it, although she can’t tell you what it is.
“and the claims should have been so limited.”
Could be Ned, but that isn’t at issue right now. The applicant’s arbitrarily defined their invention as they saw fit. What is currently before the court is whether their way of defining the invention is patentable or not.
Something which is not before the court, which you are now bringing up, is whether they could have claimed something different that would be patentable.
1. A method comprising:
isolating the BRCA gene from a sample cell of a patient; and
testing for the presence in the isolated gene of a type 1 or a type 2 variant.
What’s wrong with this claim?
From a 101 perspective, nothing is obviously wrong.
However, if “isolating the non-variant BRCA gene” is in the prior art, then you may have big problems, even if the “variant” sequences are newly discovered. The reason being that the claim you wrote captures the practice of the prior art in certain instances, e.g., the claim reads on the steps of isolating the normal BRCA gene and sequencing it.
Note that in the claim you wrote, you can’t avoid this potentional anticipation problem by referencing the fact that the recited variant sequences weren’t known. The reason that strategy doesn’t (or shouldn’t) work is because allowing the mere recitation of new “facts” to distinguish the claim from the prior art effectively precludes people who are practicing the prior art from merely thinking about those facts.
A better claim would recite a step of of testing for the variants that used a probe that specifically recognized the variants. An alternative improvement would be to limit the first step in the claim to the step of “isolating the BRCA gene from a cell, wherein said BRCA gene is a type 1 or type 2 variant.”
Just for the record, I’ll note that none of the issues I’ve identified here are “new”. They weren’t “new” when Breyer highlighted them in LabCorp either. Careful prosecutors of diagnostic claims have recognized the issues for many years.
patent”eligible” vs patent”able”
Not a diffciult concept folks.
Macolm, To take it from the abstract to the real, I think the claim could include the isolation of the BRCA gene as a step to determine whether the gene has a -1 or -2 variant.
For example
1. A method comprising:
isolating the BRCA gene from a sample cell of a patient; and
testing for the presence in the isolated gene of a type 1 or a type 2 variant.
What’s wrong with this claim?
The reasoning in my 12:13 comment is 100% accurate. If any aspect of my reasoning is incorrect, please let me know where you disagree. For example, you could explain how you would respond to an Examiner’s rejection of the claim on the grounds I set forth.
Thanks.
I’ll remember your whining when Beauregard claims are flushed down the drain.
The resulting claims MUST be circumscribed by the asserted utility
It’s called a method claim.
Conclusory statements = worthless rubbish
I’m big enough to tell you that
1) diamond versus diamond in the ground
2) isolated DNA molecule versus same sequence of nucleic acids in a chromosome
are two very different comparisons.
You know who else is big enough to tell you that? Myriad’s experts and their lawyers. And at least two judges (and surely quite a few more) on the Federal Circuit are big enough to agree (and why not? it’s correct and reasonable).
Ned–
When you said that “By allowing patents on DNA, or genes, where one first discovers the association between that DNA and something desirable or undesirable, the patent office is systematically allowing claims that are not commensurate in scope with the invention.”, you were on the right track.
The resulting claims MUST be circumscribed by the asserted utility, if it is the utility that is responsible for their S-M eligibility under 101. Furthermore, that circumscribing must be achieved through claim limitations, not limitations in the spec.
I so wish I could continue this discussion, but I–unlike Malcolm–have paid work to do.
I admit when I don’t know what I’m talking about.
If you don’t know what you’re talking about, maybe just don’t talk about it.
Close. See my posts above for my views. link to patentlyo.com
Did you even read the decision?
Yes. If there’s any “policy” “driving” her decision, it’s stare decisis and application of well-settled patent law. Hardly a radical policy.
“Did you even read the decision? You have entirely misunderstood what it is that she said.”
I get that same feeling that he hasn’t read the decision when reading what MM has posted on here on this topic. He may be correct that the “holding” will not be overturned on appeal, but if it isn’t then there sure as f will be better reasoning behind it because the current reasoning leads one inexoriably to the opposite conclusion than that which was reached.
Hey mal, why don’t you take it in the spirit in which it was offered?
Oh that’s right…I forgot who I’m talking to.
What I think patentable, 6, is the isolation of the two genes from a patient as part of a diagnostic method.
I think Moore and Bryson would agree that this was the real invention here, and the claims should have been so limited.
Which does suggest, does it not, that any test that results in a negative determination is not an infringement.
The difference being, I admit when I don’t know what I’m talking about. Instead of recognizing that and helping out, you find humor where there is none.
I really didn’t expect anything that lame from you–although, from your previous post, I should have recognized that you’re in fine form today.
Come on Mooney, cut me slack on this one…you know what I’m saying.
Are you big enough to put it into chemically correct terms?
It’s not ridiculous at all.
Did you even read the decision? You have entirely misunderstood what it is that she said.
The part to which you refer–the part where she said that “If I were deciding this case on a blank canvas, I might conclude that an isolated DNA sequence that includes most or all of a gene is not patentable subject matter.”–is put into context by her statement later in the paragraph concerning the preservation of settled expectations and extensive property rights.
The remainder of the design on the canvas is not the design of the law, but the design of policy.
Her decision was predicated on her desire to preserve “…the settled expectations of the inventing community…”, and upon the policy statement that “The settled expectations of the biotechnology industry…deserve deference.”
It can just as easily be said that “the BRCA gene is the same lattice of nucleotide molecules, just with the remainder of the DNA molecule removed”, or something chemically correct to the same effect.
LOLOLOLOLOLOLOL!!!!!!!
My own view is that the composition claims do contain patent-eligible S-M, but that the method claims do not contain patent-eligible S-M as written.
The majority agreed with you and their decision was grounded in easily understood case law. That’s why I and many, many others were able to confidently predict the result and the rationale for the result. That’s also why I can assure you that their holding won’t be overturned.
Lourie’s was a policy-driven decision, as was Moore’s.
Ridiculous. Moore expressed her view that if she didn’t have to follow the law, she might find that all isolated human genes are unpatentable. How can that possibly be characterized as a “policy-driven decision”?
However the issue is framed, one should not be able to patent the protein, the gene, or the isolated gene. That is my opinion.
I expect the 102 and 103 issues will be addressed soon enough, taking into account all the relevant facts.
I think that claims that properly limit the scope of the claims to the invention, the correlation between the presence of the BCRA 1 and 2 and the susceptibility to a to breast cancer, should be patentable.
Well, you’ve described the discovery perfectly, Ned. Unfortunately “correlations” and other facts are not patentable subject matter and they never will be.
I’m with Shilling on this one again. All the discussion about diagnostic methods is unnecessary if one adopts MY version of the utility test. So much easier, so much better.
Even the CEO of Fedex has now said that UNCERTAINTY is his #1 business concern. The uncertainty surrounding US patents is totally unacceptable, and worse, unnecessary.
As far as this decision goes, Lourie judges the composition claims patent-eligible based on a structural difference that is exclusively attributable to human intervention, and as a unique entity based upon a utility not exhibited by the naturally-occurring form.
Lourie’s was a policy-driven decision, as was Moore’s.
One of my favorite lines of Lourie’s was on page 46 where he refers to “carbon molecules”. Remember, THIS is the guy deciding a DNA patent case.
He should have stopped while he was ahead, because he contradicts his own reasoning: “…the diamond is the same lattice of carbon molecules, just with the earth removed…”
It can just as easily be said that “the BRCA gene is the same lattice of nucleotide molecules, just with the remainder of the DNA molecule removed”, or something chemically correct to the same effect.
He contradicts his own reasoning again when he states that breaking the leaf off a tree is not the same thing. It’s just breaking bonds, isn’t it? Is it not “cleaved from its combination with other parts of the tree”? Is it not “chemically different” than an intact, complete tree?
And he does it a third time, in his statements on page 47 regarding the physiologic use or benefit of diagnostic tools and medicines, which directly contradicts his statement on page 44 that physiological use or benefit NOT be used to determine patent eligibility.
Finally, on page 52, he tries to distinguish Myriad’s method claims from those upheld in Prometheus. This is bvllcrap, they are exactly the same. The only difference is that Prometheus was wrongly decided.
Nice job, Lourie. Nice policy-making.
Same goes for Moore. Her policy-based decision wasn’t even veiled at all, she put it right out there.
I particularly chafed when I read her bit about the “legitimate expectations of inventors”.
Essentially, this is her logic: we screwed up in deciding that genes were patentable, but everybody has relied in good faith on that screw-up, so we’re going to stick with it going forward.
What a cr*p decision, they just wrote all sorts of junk, knowing full-well that it would be appealed, or that it would be re-heard en banc.
My own view is that the composition claims do contain patent-eligible S-M, but that the method claims do not contain patent-eligible S-M as written.
“By allowing patents on DNA, or genes, where one first discovers the association between that DNA and something desirable or undesirable, the patent office is systematically allowing claims that are not commensurate in scope with the invention.”
Well remember Ned, the applicant gets to subjectively determine that lol.
Which is of course one of the problems with the patent system from my point of view, but which old hands at the system espouse as being the only way.
“This said, I think that claims that properly limit the scope of the claims to the invention, the correlation between the presence of the BCRA 1 and 2 and the susceptibility to a to breast cancer, should be patentable.”
So then in other words, we shouldn’t allow claims to chemical manufactures but we should allow claims to abstractions like a correlation?
Lulz, gl with that position.
Idk, I loled. It was your attempt to enforce e-authority beside his attempt to make a mockery of your attempt that was funny.
“Take your pick. I could care less.‘
Lulz – meanwhile real attorneys very much care to apply legit reasoning.
Hard, TINLA, Malcolm, 6, NWPA, I know the problem should be analyzed under 102/103 and 112. But bear with me for a second. The only discovery here is that patients with certain types of breast cancer have high amounts of a certain protein, i.e., that a then unknown gene was increasing the susceptibility to certain forms of cancer. Once the protein was identified, it was not invention to identify the gene that encodes the protein. Further, it is not invention to “isolate” that identified gene. The methodology for identifying a gene from a known protein was well known and within the skill of the art. The methodology for isolating a gene was within the skill of the art. Because the correlation between the protein/gene and the disease was the only discovery, the only thing patentable here should of them a test for the susceptibility to the disease by identifying whether a patient had the gene.
However the issue is framed, one should not be able to patent the protein, the gene, or the isolated gene. That is my opinion.
Now I would agree that isolated DNA is a manufacture of man, and presumptively within section 101. But since the answer to this question does not result in the correct answer, the question must be wrong.
By allowing patents on DNA, or genes, where one first discovers the association between that DNA and something desirable or undesirable, the patent office is systematically allowing claims that are not commensurate in scope with the invention.
This said, I think that claims that properly limit the scope of the claims to the invention, the correlation between the presence of the BCRA 1 and 2 and the susceptibility to a to breast cancer, should be patentable.
Hard, I know the problem should be analyzed under 102/103 and 112. But bear with me for a second. The only discovery here is that patients with certain types of breast cancer have high amounts of a certain protein, i.e., that a then unknown gene was increasing the susceptibility to certain forms of cancer. Once the protein was identified, it was not invention to identify the gene that encodes the protein. Further, it is not invention to “isolate” that identified gene. The methodology for identifying a gene from approaching was well known and within the skill of the art. The methodology for isolating a gene was within the skill of the art. Because the correlation between the protein/gene and the disease was the only discovery, the only thing patentable here should of them a test for the susceptibility to the disease by identifying whether a patient had the gene.
However the issue is framed, one should not be able to patent the protein, the gene, or the isolated gene. That is my opinion.
Now I would agree that isolated DNA is a manufacture of man, and presumptively within section 101. But since the answer to this question does not result in the correct answer, the question must be wrong.
By allowing patents on DNA, or genes, where one first discovers the association between that DNA and something desirable or undesirable, the patent office is systematically allowing claims that are not commensurate in scope with the invention.
This said, I think that claims that properly limit the scope of the claims to the invention, the correlation between the presence of the BCRA 1 and 2 and the susceptibility to a to breast cancer, should be patentable.
Whatev you say little Ms. I Don’t Like To Read Mah Caselawl N Understand It.
You can even read numerous articles on the subject, they’re ez to google. I’ll let you google your own, but I found three on my first go.
Please show me the Supreme Court phrasing of “take claims as a whole” that yields the selective result you arrive at.
Your error is the thought process you engage in by incorrectly parsing claims and not taking them as a whole as captured in your selective phrasing “claim effectively.”
Not an error. And it’s not “my” selective phrasing. It’s the Supreme Court’s phrasing.
Malcolm,
The given task was for you to rewrite the claim.
Pay attention please.
Malcolm,
Anyone who has read this blog for more than a month or two would be “up to the task” of correcting you on this issue.
Your error is the thought process you engage in by incorrectly parsing claims and not taking them as a whole as captured in your selective phrasing “claim effectively.” You have shown that you arrive at this by violating Supreme Court direction and not taking the claim as a whole in your 101 analysis.
Your answer here will indeed by “crystal clear” – just not in the manner you think it to be.
Ned,
As you are a student of history, you are no doubt aware that 101 does not cover the statutory requirement of “new,” nor does it cover the distinction from that which is “within the skill of the ordinary artisan.”
To conflate any such 102/103 items with a 101 analysis is simply improper.
I believe that is all that TINLA IANYL is trying to impress upon you.
It’s a correct legal argument. I explained myself clearly. If you disagree with any of the following, please state clearly why you disagree:
“X correlates with Y” is certainly a fact or an abstraction. If your claim prevents an otherwise non-infringing actor from thinking that “X corrrelates with Y”, it is ineligible under 101 because the claim effectively covers a mental process (or is effectively a claim to an abstraction, or effectively claims a fact).
Thank you. I’m sure you aren’t up to task but I thought I’d make that fact crystal clear for everyone.
““Thus, Congress has passed protection for certain categories of inventions and discoveries.”
No, that’s not how it has been interpreted. It’s thus, you can “protectlol” certain categories of things which in turn may either be invented or discovered.”
It’s past time to get back on your meds. You really do need them.
Have MM take his best shot at the claim that was rejected under 101 so that the claim would be eligible under 101.
LOL.
“The moon is a sphere.”
Rewrite it so it’s eligible under 101, NWPA.
“Please refer to my comment above, particularly the part where I quoted 35 U.S.C. 101 to you as follows:”
I’m aware of how it is worded little lady, are you aware of how it is interpreted by your courts? Yes, no, maybe so? Because it appears your answer is “no”. I just explained it to you above.
“Thus, Congress has passed protection for certain categories of inventions and discoveries.”
No, that’s not how it has been interpreted. It’s thus, you can “protectlol” certain categories of things which in turn may either be invented or discovered.
“You attempted to bifurcate inventions as patentable and dicoveries as unpatentable.”
It wasn’t me, it was your courts ya jackarse. Read ur caselawl on the subject.
Holy f broje, stop embarrassing yourself. Go read your 101 caselawl.
And btw, if “I” was wrong, so were your courts. Because that’s where I got my “wrongness” from.
That’s rather the point trying to be force fed to you, isn’t it?
*yawn*
Here’s a lollipop. Go play with the other Diehrbots in your fantasy world where claim elements can never be analyzed, for any reason.
Why? I, and I believe MM as well, are both perfectly content to leave it unpatentable. How about you do the work, figure out what subject matter you want to add, and take your best shot at making it patent eligible?
“Would people be sequencing that part of the DNA molecule if not for the invention?”
I’m pretty sure the answer is yes.
They said they have people sequencing the whole thing now.
Besides that, there are so many shades of re tarded in your post I’m not even going to bother with the rest of them.
Under your incorrect logic a claim that read turning the oven off when it reaches 405 degrees would be inelgible under 101
That would be *your* incorrect logic, NWPA.
A claim that read “A method for controlling oven temp, comprising determining the temp of the oven, wherein a temp of 405.345233 degrees indicates that the oven should be turned off” would certainly implicate 101.
Or it would be anticipated or obvious after we ignore the “wherein” clause (because of the 101 issues raised by the clause).
Take your pick. I could care less.
“And, Shall Shill, I usually am near the top of the recommmended list on the New York Times”
Lulz, I’m not even one the “new your times list” tard. If you’re near the top of the list it is merely because the people reading it are nearly entirely ignorant.
Read the statute: “Whoever… discovers any new and useful process …composition of matter….
The hypo is that the discovery is of the protein. What did the inventor discover? What did he patent?
Lulz, did you predict this one? Bilski? Ariad?
Lulz, you have a worse record than I do tard.
If what you said were true, Malcolm, then wouldn’t the panel have also upheld the invalidity of claim 20 of the ‘282 patent?
No.
Malcolm, said: “If you want to patent a process that uses this discovery, at least one step in the process OTHER THAN the mental step needs to be novel and non-obvious (and eligible under 101, and also valid under 112).”
If what you said were true, Malcolm, then wouldn’t the panel have also upheld the invalidity of claim 20 of the ‘282 patent?
20. A method for screening potential cancer therapeutics which comprises: growing a trans-formed eukaryotic host cell containing an altered BRCA1 gene causing cancer in the presence of a compound suspected of being a cancer therapeu-tic, growing said transformed eukaryotic host cell in the absence of said compound, determining the rate of growth of said host cell in the presence of said compound and the rate of growth of said host cell in the absence of said compound and comparing the growth rate of said host cells, wherein a slower rate of growth of said host cell in the pres-ence of said compound is indicative of a cancer therapeutic.
How do you explain that?
But wait, you’re really just arguing for a change in the law by pretending it’s already the law and closing your eyes and holding your breath, right?
6 said: “[Congress] has yet to pass any protection for discoveries that I’m aware of.”
Please refer to my comment above, particularly the part where I quoted 35 U.S.C. 101 to you as follows:
Congress wrote 101 to grant patents to “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.”
Thus, Congress has passed protection for certain categories of inventions and discoveries. You attempted to bifurcate inventions as patentable and dicoveries as unpatentable. You were wrong. Please simply recognize it and move on to something else.
Ned, that’s a 103 issue, not 101.
“What difference does it make?”
Gee, let’s see – a correct legal argumnet, or a specious rant….
Sequencing ANY part of the DNA molecule as of the filing date of the patent applications was not novel or non-obvious. There have been later-developed sequencing techniques, of course, but the point remains. And last time I checked, it doesn’t matter WHY someone infringes. They do or they don’t.
“Myriad’s method claims were terrible.”
You’re not alone in saying that the Myriad method claims were drafted poorly, Malcolm. My patent attorney brother has said the same thing. If Myriad truly focused on the isolated gene claims, it’s entirely possible that the method claims were somewhat an afterthought, and thus not given the attention they needed.
It might be nice if this blog had the same feature as the New York Times where you can recommend comments that way you can filter out comments based on the number of people that like them.
(And, Shall Shill, I usually am near the top of the recommmended list on the New York Times for my comments. 6 and MM are always at the bottom. But, since DC has been editing my comments, they have not been getting as many recommendations.)
You know, Shall, the arguments that are played out here actually mirror pretty closely the arguments that are played out at the SCOTUS and the Federal Circuit.
And, some of us have excellent records of predicting the outcomes of these cases. MM and 6 are the comic relief. We need them to constantly remind us that the barbarians (6) are at the gate and the mob (MM) is outside the great hall.
Under your incorrect logic a claim that read turning the oven off when it reaches 405 degrees would be inelgible under 101 as it would prevent people from thinking about ovens.
Have MM take his best shot at the claim that was rejected under 101 so that the claim would be eligible under 101.
Hans:
Would people be sequencing that part of the DNA molecule if not for the invention? A patent would not preclude someone from contemplating anything, it would preclude someone from practicing the invention, which is a diagnostic method.
The reason we have such jumbled thinking throughout 101 is that people just do not seem to acknowledge that their brains process information. When we get an invention where part of it is processing information then suddenly all sorts of bizarre words and characterizations start appearing. Diagnostic patents do include information processing. Do some information gathering and figure out what it means.
The fact that there is a step of figuring it out does not make it abstract or a mental step. It would be abstract if the step of figuring it did not enable a person of ordinary skill in the art to practice the invention. It would be a mental step if you couldn’t program a computer to do the step. Neither are true.
“When analysis of the prior art reveals that the only distinction between the prior art and the claim is ineligible subject matter,”
Of course, what you don’t say – and what Diehr does say, is that “the claim” must be taken as a whole.
That’s rather the point trying to be force fed to you, isn’t it?