Myriad's patent claims are directed, inter alia, to several isolated human DNA molecules that represent the BRCA1 and BRCA2 genes. These gene mutations are associated with an increased risk of developing breast and/or ovarian cancer. Because women with these gene mutations are much less likely to survive into old-age, many choose to undergo extensive preventive surgery in an attempt to avoid the risk. In other words, the genetic information and testing technology is important.
Fundamentals of Patentability: Most patentability decisions focus on either an invention's obviousness or a patent's failure to properly disclose the invention. The Myriad case looks at something more fundamental – whether isolated human DNA is, in general, the type of thing that should be patentable.
Product of Nature: In this case, all the parties agree that the claimed DNA molecules are "compositions of matter" that nominally fall within the statutory guidelines of patentable subject matter found in 35 U.S.C. § 101. The disagreement comes from the common law gloss that the Supreme Court has added to the statute. Namely, the Supreme Court has repeated stated that, regardless of the novelty of the invention, neither products of nature nor natural phenomena qualify for patenting. The big issue in this case boils down to whether the claimed molecules fall within this product of nature exception.
Human-Made Inventions: According to the Court, "human-made inventions" sit at the opposite end of the spectrum from products of nature. To be distinguishable from products of nature, a human made invention must be "markedly different" or express "distinctive" characteristics from what is found in nature.
Patenting Isolated cDNA: Myriad's patent also claim cDNA molecules that are synthesized in the lab using the naturally occurring enzymes reverse transcriptase and DNA polymerase. cDNA differs from native DNA in that the cDNA typically (and in this case) represents only the information for a single gene and with unnecessary (intron) information removed. Native DNA is typically part of a large single molecule (a chromosome) that includes lots of genes and lots of introns intermixed between and within gene coding. The human body has a natural process for accessing and using the particular gene when it is needed. To do this, enzymes are able to create an RNA strand that mirrors the DNA information and that removes the introns. In the human, that RNA is then used to create a protein used by the body. For Myriad, the RNA is instead transcribed back into DNA (now called cDNA because it is [c]omplementary to the RNA).
To be clear, Myriad did not claim to invent any of this process or to invent cDNA in general. Rather, Myriad invention is that it created a cDNA molecule that holds the exact same information as the naturally occurring BRCA1/BRCA2 RNA. Certainly, cDNA is chemically different from RNA — it is preferred in the lab because it is double-stranded and typically more stable. An additional difference here is that the claimed cDNA is isolated from the cell and the living organism so that it it can be tested and used in different ways.
Holding: cDNA is Markedly Different from That Found in Nature: The Federal Circuit considered these arguments, but decided to take a different perspective — focusing on differences instead of similarities. In holding the claims patentable, the court reasoned that:
- The claimed cDNA is a molecule that is not found in nature.
- The claimed cDNA is quite different from a native chromosomal DNA.
- Human intervention of cleaving and/or synthesizing is necessary to make the cDNA.
- Because the molecule is changed, it cannot be said to be merely "purified."
- Judge Moore goes on to explain that the cDNA sequence is "completely different than the corresponding RNA."
Insignificant Extra-Solution Modification: In a number of cases, the Supreme Court has worked to conflate the issues of patentable subject matter with issues of obviousness and novelty. Thus, for instance, courts have repeatedly noted that insignificant extra-solution modifications of an invention cannot whitewash an otherwise unpatentable invention. Here, potential conflation has a strong foothold because the real breakthrough at the time was discovery of the genetic sequence itself. It took tremendous effort and ingenuity to discover that transcription map and that map was the key to their discovery as outlined in the inventors 1994 Science article. However, in 1994 (the time of the invention) once a sequence was known, almost any trained molecular biology lab technician could manufacture the isolated cDNA with effort but without much necessary ingenuity. If the discovered map itself was unpatentable as merely information and the process to create the isolated DNA was already known, then where is the invention? This type of analysis is outside of mainstream Federal Circuit decisions, but if the Supreme Court takes the case, the interplay between what was invented and what was already known may well be an important element in to the court's discussion of patentable subject matter.
As if on cue, Gene Quinn’s IPWatchdog site has announced which invention will be awarded US Patent 8,000,000:
A Visual Prosthetic.
“The USPTO notified Second Sight Medical Products, Inc. that it will receive U.S. Patent No. 8,000,000 via Issue Notification sent July 27, 2011. Kuddos to the commentor known as LB, who first discovered that Application No. 11/874,690 will yield U.S. Patent No. 8,000,000”
I certainly see the humor in all of this.
I’ll take a stab at it.
As written, rejected under 112p1 and 112p2.
Never reaches a 101 analysis.
S-M eligibility under 101 relies on asserted utility, which must be specific–that is, the physical properties must result in the utility. In order to determine specificity, a WD adequate to determine the relationship between the physical properties and the utility is required, and is not present in this claim as written.
In short, 101 determination is predicated on 112 sufficiency.
112 fail.
Useless response.
Mooney is having a hard time these days, with the debt ceiling negotiations and the unsuccessful recall elections in Wisconsin, he is obviously frustrated.
Try Again–
Don’t play in Mooney’s sandbox, it’s like Wonderland.
Your attempts at discussion won’t go anywhere, and you will end up frustrated at the vacuous smugness with which Mooney rules his small fiefdom.
You remember that kid from grade school who had no friends?
Mooney.
For a cogent discussion of what Mooney is trying to say, see my post above made on Aug 10, 2011 at 08:16 PM.
Note that when I referred to “properties” in that earlier post, I was referring to “physical properties”, which wasn’t clear in the post, as I excerpted what I posted from a larger piece of writing.
I think I actually understand what Mooney is so inarticulately trying to describe.
His first statement, that “If the claim reads on a part of the human body (even an engineered part of a human body), it’s ineligible for patenting” is the statement of value.
What it says is that if a part of the human body would infringe a claim as written, that claim is ineligible for patenting.
Of course, it all turns on what is “a part of the human body” with respect to engineered components.
It is obvious with respect to non-engineered components that, for example, an in vivo or an ex vivo erythrocyte have exactly the same physical structure, and that although one can isolate erythrocytes from the body, any claim describing them physically would be infringed by an in vivo erythrocyte, and such claim would therefore be ineligible for patenting.
But I am curious, what are the conditions under which an “engineered” component is considered a “part of the human body” in Mooney’s world?
For instance, let’s say for sake of argument you engineered an erythrocyte, which under Mooney’s formulation would therefore NOT be a part of a human body, and would therefore be eligible for patenting.
However, if you now introduced it into the body, it would be ineligible for patenting? Is it not a “part of the body” if introduced into the blood?
How can the same engineered component’s eligibility for patenting depend on its disposition? Could it be restored to patentability if it were subsequently isolated from the blood and considered again ex vivo?
Of course not.
The failure lies in the categorical exception “part of a human body”, whatever that means.
Categorical exceptions rarely have a rational foundation, and do not represent good policy from a juridical perspective. Such statements may placate the unwashed voters, but create legal nightmares for the involved parties, and frustrates the stated aims of the patent system.
A better formulation – a general formulation – is to simply consider structural limitations in article claims, and to use the concept of specific utility to require that the structural differences between the claimed article and the naturally-existing article are the sole determinants of the asserted specific utility.
This being said, structural limitations are but a subset of the broader concept of the properties of an article or composition.
Once again, a general statement about the “specificity” requirement of the “utility” requirement of 101 is:
” The asserted utility must be “specific”, meaning that the manner of performance of (the asserted utility) must result from a unique property or properties of said first physical article or composition, which property is, or which properties are, not found in other physical articles or compositions capable of performing the same (asserted utility).”
Therein lies 101 patentability.
AI, I asked you a simple question here. I suggest you make an attempt to answer it before we again discuss this topic. You might find we actually agree on something where you think we disagree.
link to patentlyo.com
Um no, listen, I apologized to you for not responding to the points you thought important in a debate over Pennock. I thought I had. Why are you continuing this? Can’t you accept an apology?
As to Malcolm and 6, we cross swords at times, but I don’t see those folks as anything but sincere. They have their views, and advocate them forcefully. But they do listen and discuss.
I join every conversation with similar intention, to keep it to the issues. I have legal issues that I think important and say so, just like everyone else around here. So I advocate them. My biggest pet peeve is BRI, if you haven’t figured that out yet.
Um no, there is no reason we cannot have good conversations. Shall we bury the hatchet?
N
“, I can patent information itself. ”
They know Ned, they’ve been doing it for awhile now with the PTO’s blessing.
I don’t know ned, I’ve never heard of such a procedure if it does exist. Furthermore, I’m not sure about consulting with them. The only time I’ve seen hide or hair of them is walking past their office and at one of their little tables set out for community day. Iirc they gave me a fireball. And actually I may have asked them if I should give them a call if I had a legal issue. I don’t remember what they said though.
“you need to try a lot harder than that”
Yes, because Malcolm Mooney’s words are known to be pointless.
If you have a point to make, you need to try a lot harder than that. LOL.
Compare:
“but has nothing to do with claims to novel, structurally defined compositions of matter”
and
“Nobody here is saying that a functional limitation renders a composition claim ineligible or unpatentable.”
AI, consider the Benson claims: new math on an old computer.
1) Use dissection on this claim.
2) Use claim as a whole.
Except that DNA is eligible for patenting in Europe, too.
Dennis writes that “the discovered map itself was unpatentable as merely information”. It’s true that information is not patent eligible but new and useful molecules are. The existence of “information” describing an object does not render the object ineligible for patenting.
More specifically, if I create a novel and useful 100,000 nucleotide molecule, it doesn’t become ineligible for patenting merely because I publish a “map” describing the sequence. If I wait too long, it will render my molecule anticipated or obvious, but it does not render the molecule ineligible for patenting.
it seems to me that this is precisely what is missing from Supreme Court/CAFC analysis to date: novel but ineligible subject matter plus old/obvious eligibility-saving features = ???
This is relevant to certain types of claims to, e.g., methods of diagnosing disease, but has nothing to do with claims to novel, structurally defined compositions of matter.
Actual Inventor,
“Just like Mooney and 6 do”
Are you at all surprised by Ned’s rude behavior?
Ned is not interested in having a gentleman’s debate, because Ned is not willing to admit that his thinking may be incorrect.
In addition to the name calling and complete denial, other tricks include making excuses like “I did not see your comment,” or “I did not understand your comment.” The problem Ned has in making such excuses, is that he never actually then addresses the comments that he has chosen to ignore.
And you are absolutely correct in that Ned exhibits the exact same type of intellectually dishonest behavior that Mooney and 6 do. In those cases where Ned does deign to engage, he mistates premises, leads into wild tangents, or simply deflect the questions that he has been asked.
Would you be at all surprised that Ned has actually stated that these two bloggers are to be highly respected and congratulated for their views? When the utter baseness of these bloggers is pointed out, Ned merely comments that they have treated him respectfully (when they have not), as if that is supposed to make a difference. I guess that the world revolves around Ned Heller (as certainly his views on all things legal must do). To such an individual, “debate” merely means an opportunity to tell the world how things should be.
I never thought of it the way you just put it.
I don't know if the PTO has a procedure for this, but if there is a generic legal problem, you should let the solicitor handle it. I think they could do it by working out a strong legal argument and so that it may be available any examiner that has a need for it, perhaps by posting it in a "solicitor's folder for examiners" or some such. This way, the examiners themselves can simply adapt the argument to the case, until it gets heard by the Board. If the Board agrees, they will write an opinion and it will becomes the law of the land unless overturned by the Feds.
Can examiners consult with the solicitor for legal advice, or is that
discouraged?
No, Al, I made an argument, a consistent argument, that claims have to be treated as a whole, too weight what it is they are actually claiming, by looking at the significant of the subject matter and elements and not looking at them nominally.
You in contrast argued that that I favored dissection where elements were considered in isolation without weighing them and their contribution to the claim as a whole.
Now you are again insisting that I favor dissection when I favor claims as a whole. What all this shows is that you do not understand the difference.
Ned Heller :Projecting are we AI?
AI: No, I am just stating what you have posted.
Ned Heller : But just say I am wrong without making an argument and you will get the kind of post you just got.
AI: Now who is projecting. Actually you made an argument that dissection of claims is allowed at 101, and when challenged for the exact quote from SCOTUS that instructs examiners and judges to dissect claims, for ANY reason, you failed to deliver. Then when intellectually backed into a corner you call everyone names that challenged you. Just like Mooney and 6 do.
AI: And when called on such juvenile behavior you resort to more childish acts and simply accuse others of exactly what you are doing.
Thats the end Ned.
Projecting are we AI?
Make an argument and I will listen to you, even if I do not agree. But just say I am wrong without making an argument and you will get the kind of post you just got.
Malcolm, re:
“…This type of analysis is outside of mainstream Federal Circuit decisions…”
As a humble Yoorpean, it seems to me that this is precisely what is missing from Supreme Court/CAFC analysis to date: novel but ineligible subject matter plus old/obvious eligibility-saving features = ???
DC in 1994 (the time of the invention) once a sequence was known, almost any trained molecular biology lab technician could manufacture the isolated cDNA with effort but without much necessary ingenuity. If the discovered map itself was unpatentable as merely information and the process to create the isolated DNA was already known, then where is the invention? This type of analysis is outside of mainstream Federal Circuit decisions
Really? Sounds like a garden variety 103 analysis to me.
Lulz, Ned, the point is not to “win”. The point is to have the case in front of them and hopefully have them address it on the merits. By doing so you either a. win, or b. embarrass the f out of them while they stumble around trying to make excuses. Give the press and the patent community yet another opportunity to LOL at the courts.
“So, if 6 is to win, he has to persuade the Board that he is right and that the prior view of the solicitor’s office was wrong. A major, major undertaking for any examiner.”
Not really, the solicitor’s office has taken no official stance on your 112 issue, or any number of other issues I would raise. They need not be “wrong” on issues they have already spoken to.
“Personally, I can only hope that some examiner worth his salt takes a stand.”
Oh they do, the only problem is that when they do they either do it poorly, or else the case never goes to appeal. Have you not read some of the cases? Over at watchdog they posted a list of all the kinds of cases at the BPAI and Fed since Bilski. Bottom line, you’ll see that the BPAI rejects software per se as ineligible but gives B claims a green light pretty much 100% of the time. However, the cases that the examiners bring are ridiculously bad and I would have decided the same way if the only arguments before me where what they presented. They’re as bad at making a case as a primary I was talking to today is at defending the status quo. Furthermore, the applicant has too much power to prevent the appeal from ever happening and thus short circuiting the stand. Thereby demanding that the examiner do an exceptional job explaining his position in case after case after boring arse case. It is a lot of trouble.
Ned:
“I am restraining myself here because this post simply blew me away with its inane stu p id ty. I’m sorry, AI, but you really do not have a clue.”
Actually Ned, I am not “The Supreme Court said in reply to Ned Heller…” But interestingly enough when I read that post I had to think about it before I decided that I agreed with it. I suppose according to your logic that makes my thinking “inane stu p id ty” as well.
In your view everyone that disagrees with you is wrong and just doesn’t understand. According to you the SCOTUS, The PTO, Actual Inventors, and attorneys are all wrong, and you are right.
But have you ever stopped to think that maybe, just maybe, everyone else is right, and you are the one that is wrong?
::Plays Twilight Zone music for Ned::
Somewhat of a good point. 6 can take is views only so far. The Board has to back him up for 6’s views on the law to be taken to the courts. 6 cannot appeal if the Board back the applicant.
So, if 6 is to win, he has to persuade the Board that he is right and that the prior view of the solicitor’s office was wrong. A major, major undertaking for any examiner.
Now, if the likes of IBM were to ask the solicitor’s office to take a stand on B-claims so that they could once again get the matter to the F-circuit, perhaps then 6 could get his case that far for a decision. I know that IBM was extremely disappointed when the PTO conceded to IBM in the B-case. They felt confident they would win on appeal and have the legal issue put behind it.
Personally, I can only hope that some examiner worth his salt takes a stand.
If I do recall, i4i’s claims were to something other than a B claim. However, I will freely admit that you can find instances of the small guy winning and the big guy losing. That, to me, is rather irrelevant. If the big guy takes a hit, meh, it isn’t the end of the world. If the little guy takes a hit, it may very well be the end of his “world”.
You may be crushing the small Guy. But Congress will be crushing the small Firms.
I guess if you can’t beat them you do exactly what they did.
“seems more than a bit quixotic to me”
lulz – like Malcolm hasn’t been tarred with that before.
Yes, because mindless dolts who cannot even get into law school should make it a habit and interpret the law as they see fit.
Wait – this already happens…
and this leads to…
wait…
wait…
…
…
wait…
…
appeals.
T O O L
crush the small guy…
…like i4i.
Oh wait…
Leo, perhaps you are right that no one cares about B-claims. The same is NOT true of isolated DNA and cDNA. The PTO has been issuing these patents for quite some time, never bringing the question of their patentability to the courts for resolution. It now appears that had they even asked Justice for their opinion, it would have been quite negative on isolated DNA, less so on cDNA. But to the extent they failed to bring the legal question to the proper forum for resolution, they failed in their duty to the American people who may be paying a price for bogus patents and to the patentees who may have received bogus patents upon which they may have invested their fortunes.
We have all discussed the plague of bad patents unleashed by Alappat and State Street. Congress is now reacting to an extent. But the plague of DNA patents is also disruptive, as is made clear by the discussions in this case.
6, I admire your guts, 6. Go for it.
“The PTO has its policies and they require submission to authority.”
Lulz. There are a great many issues which the PTO takes no official position on. Like your 112 issue here. Not to mention, the PTO may very well have its policiies but that does not mean that an examiner with a sig is not free to apply the law to the best of his ability sans a superior demanding he do otherwise.
Indeed Leo, save for the issues of patentability that are raised over and over and over. I personally would rather not have to bend my mind around granting a patent to a CD with an undefined number and sequence of one’s and 0’s on it that supposedly magically produces an effect.
I mean, it just makes me feel dirty. Especially if they’re being used to crush the small guy.
The Director had a duty to bring legal issues to the courts for decision. It should not decide these issues itself, issuing patents with dubious validity.
Why? If tje validity of Beauregard claims under 101 has not reached the Federal Circuit a single time since 1995, why does it matter? They are clearly not very important to anyone. From this perspective, railing about them seems more than a bit quixotic to me.
I think there has to be a functional tie between the instructions and execution. Here, there is no requirement that the instructions be accessible by the computer for execution. However,
“A computer readable media from which instructions are accessed by a computer and executed, wherein the instructions comprise:”
might pass muster under Section 112. But, in the claim at bar, there is no functional relationship between “readable” and “execution.”
Section 112 fail.
Without the functional relationship, 101 fail.
But, who are you, 6, to think? Yours is to obey. The PTO has its policies and they require submission to authority.
You know my opinion, 6. The Director had a duty to bring legal issues to the courts for decision. It should not decide these issues itself, issuing patents with dubious validity.
Ah, the March of the Software Patent Sockpuppets is back in swing! So much stxxpxit. So little time.
basics Cool – what is the only function of a substrate for computer programs? To transfer the program to the computer.
Actually, another key function is to store computer-readable instructions and other information that may be used to program a computer but, in fact, need never be used for that purpose. Hence the suffix “-able” in the term “computer readable”.
In this genuine and very reasonable sense, “computer-readable” media is no different from instructions written on a piece of paper. In fact, paper is a computer-readable medium. Is an old piece of paper with instructions for practicing a “new” method written on the paper an exception to the printed matter doctrine? Let us know, and explain why or why not. Thanks.
By the way, you are forgiven, “basics,” for not knowing this highly technical fact about “computer-readable media.” I mean, surely you weren’t trying to misrepresent basic facts about this technology, were you? I’m sure you are highly educated, like all proponents of software patenting. LOL.
Egads. The only functional relationship of information to a carrier of information is that the information is carried. If I can repatent the carrier every time the information changes, I can patent information itself. This is the pith and essence of why the Supreme Court views claims as a whole in determining what is being claimed. The carrier or the information. On this issue, anony-mouse, I am very sure I know which way the Supreme Court would decide the issue.
Ned,
You are making an incorrect implicit assumption that the exception requires a unique functional relationship.
It does not.
The exact same functional relationship for every media to the contents of that media will do. Your conflation of 112 to the exception indicates you do not understand what is going on.
As noted, a functional relationship exists from the program to the media to the computer. That is reality. That is all that is needed.
“because the medium doesn’t function any differently depending on what’s printed on it.”
Sure it does. Take two identical media and put two different programs on the media, one program per media and configure one machine with each media.
Do you have different functioning machines?
Accept the reality and stop fighting it.
“the printed matter must alter the function of the substrate”
Cool – what is the only function of a substrate for computer programs? To transfer the program to the computer.
Sounds all good to me.
“Computer-readable media are the exact opposite of the exception to the printed matter doctrine. They’re exactly what the doctrine was intended to prevent.”
Except the opposite is true – this is exactly what the exception is for, and that is why it makes the exception to the doctrine critical to the points of this thread.
Now if you don’t want any exception, that’s a different story, but that is not the reality of the situation, is it?
Yes I see that the existence of the exception absolutely ruins your day.
No wonder those who want to push a different agenda have such a problem with the exception.
As they say, svcks to be you.
anony-mouse, "impossible?"
The function claimed for the stored program is its function in a stored program computer. That function is unrelated to the media whose only function is to carry the program to the computer.
Compare my hypo:
1. Apparatus comprising:
means for trimming a horse; and
a moon rocket.
The functions of each are unrelated. Major Section 112 problem.
Now consider that a moon rocket requires a map that varies with mission. The map itself is abstract.
Can I claim a moon rocket readable carriage for conveying a map to a moon rocket?
Just how does the map functionally relate to the carriage? It doesn't. The functionality relates to the moon rocket.
This is why the claims have to, in my opinion, include the moon rocket and the map be claimed as part of that.
the law only requires a functional relationship – not a unique one-to-one relationship.
The printed matter doctrine requires only a functional relationship with the substrate – which is absent, because the medium doesn’t function any differently depending on what’s printed on it.
112, on the other hand, requires a more specific relationship between function and structure. Not necessarily one-to-one, but the functional limitation of the claim has to meaningfully narrow down the set of structures that would infringe the claim in order for the claim to be definite.
So, draft me an arbitrary Beauregard claim, find me an arbitrary prior art medium, and I’ll show you a computer that makes the prior art medium anticipate the claim. There you go. Indefinite and anticipated all at the same time.
Functionally related to something in the claim. That is what we are talking about.
In fact, IANANE’s coffee mug is all that is legally required.
In fact, if that were all that the law required, there would be no printed matter doctrine at all, because the exception would apply in every case.
The “functionally related” requirement is what it says on the tin – the printed matter must alter the function of the substrate. That means something more than merely an inert carrier that outputs the printed matter on request, because the mug functions in exactly the same way whether it holds coffee or water or a chain of color-coded paper clips that represent a cDNA sequence. All it does is carry the contents to their destination.
Yes, the data on the computer-readable medium alters the function of a computer. But the data isn’t printed on a computer. It’s printed on something that is deliberately claimed apart from the computer, on a medium specifically designed to do nothing with the data other than hold it till the computer needs it – completely independently of what that data is.
Computer-readable media are the exact opposite of the exception to the printed matter doctrine. They’re exactly what the doctrine was intended to prevent.
“and appears to have no functional relationship to the media‘
This is just preposterous. It is impossible for the media not to have a functional realationship to both the program and to the machine, otherwise there is no way for the machine to change.
The fact that the machine changes blows away all of your over the top theorizing. Try to let the reality be your baseline.
You are reaching far far too much – the law only requires a functional relationship – not a unique one-to-one relationship.
If there is a functional relationship, that is all that is required.
“you will know that Beauregard claims are justifiable only as a component of a machine. I think “computer readable” is not sufficient”
Why not? The only requirement is ‘functionally related.” This does not mean anything more than functionally related, and certainly does not mean fully functionally dependent, as you indicate.
All that is needed is some relationship that is functional. In fact, IANANE’s coffee mug is all that is legally required.
I do not see where you derive the subjective “beyond the pale” statement, unless you have some preconceived notion well beyond the actual legal requirement. What is the source oof your legal understanding?
I assume a future invention that would allow one to encode DNA strings arbitrarily, using the genetic code as information, an alphabet or number system.
Okay, suppose arguendo that that exists now. Let’s consider the code as some form of two-bit-per-nucleotide binary encoding. So what? It’s still nothing more than a sequence of bits, where the only relationship between the sequence and the eventual function is completely arbitrary depending on how you set up your computer.
Which means that you’re left with the same problem. Sure, you can define the bits as “structure”, whether they’re stored charge or oriented dipoles or tiny pits or nucleotides, but the fundamental problem is that no particular “structural” arrangement of those bits definitively corresponds to the function, and any arbitrary “structural” arrangement of those bits can be made to correspond to the function by suitably programming your (unclaimed) computer.
Indeed, that would almost be like limiting software to copyright protection. Hmm….
Regarding possible lines of rejection, check 112. The function of the code is in a computer, not claimed, and appears to have no functional relationship to the media. The lack of a cooperating functional relationship is a 112 problem.
One might suggest that the computer be set forth as a stored programmed computer, background, and the media be claimed as part of the computer, the part that stores the program.
IANAE, I was thinking of the coffee mug analogy just about the same time you were writing your post. Bravo.
I don't fully understand your cDNA limitation. I assume a future invention that would allow one to encode DNA strings arbitrarily, using the genetic code as information, an alphabet or number system. This coupled with a DNA reader would be ideal computer memory, or at least, long term memory depending on the speed of encoding and decoding. I believe scientists have been working on the use of DNA in computers for some time. This is not entirely science fiction.
But, if and when it is done, the amount of information stored per the size of storage media would greatly expand.
Given this, one has to expect such storage to be just around the corner.
See, e.g., the DNA computer: link to physicsworld.com
link to computer.howstuffworks.com
if those who need most to open their minds would do so, substantial learning and mending of the various friendships could take place.
The contest for World’s Smuggest A-Hole is officially over. Congratulations! Your award is another sockpuppet for your impressive collection.
I am restraining myself here because this post simply blew me away with its inane stu p id ty. I'm sorry, AI, but you really do not have a clue.
Understand? I merely ask what it is. If you, kind sir, can explain it to us, please do.
The claim is to a computer readable media. It comprises a computer program. What is the functional relationship between the program and the media?
I bring in cDNA just for example. Another example
could be a book describing program, or for that matter, a complete listing. If I scan this program using a computer, is that "reading" it. Do I have to positively add in elements such as optical character recognition and a compiler? If not why not?
If we admit that a description of a program that can be compiled is covered, does one infringe by reading into a Kindle computer? Is there some implicit requirement that the program be exetured? Where is that implied in "computer readable?
I am looking for understanding here.
If a book describing a program being computer readable is sufficient, why not a book describing a recipe for cooking something. It can be read by a computer and displayed. The recipe describes a series of steps that are useful, after all.
If you have followed my posts on this topic you will know that Beauregard claims are justifiable only as a component of a machine. I think "computer readable" is not sufficient. I think the claims need to define a programmed computer in the background
section consisting of two parts: a CPU and a programmed memory, and then define the article as the programmed memory of the computer. With this construction of the claims, I have no problem.
I think the courts would treat the subject matter after the colon as a the invention, and the making using and selling of that to be direct infringement. But "computer readable" is way, way beyond the pale and is loaded with Section 112 problems.
Hmm. I was discussing a few issues with Ned. I don’t see much name-calling there.
Then there was some dxxxchebag who thought that a hook was a body part.
And then an xxxwipe with a long obnoxious pseudonym jumped in and made a false accusation.
So I guess you can go f yourself, too.
“And I’ve done so.”
[as Malcolm pounds the table]
T O O L
“And I’ve done so.”
Name calling and conclusory statements don’t do it.
You have been politely asked to present legal arguments to support your position
And I’ve done so. Have I convinced you that the PTO’s position (granting Beauregard claims) is wrong?
Apparently not.
Now ask me if I care. Better yet, tell me why I should care. I’m laughing already.
So MM, care to take a stab at how the 101 should go?
The claim is of the form:
A computer readable media including instructions which, when executed by a computer, cause the computer to perform the following:
Determine some information
Determine some more information
Generate a computer generated landscape
Generate a computer graphic
WHEREIN (note the weird wherein) the information and the more information determine a certain outcome based upon the computer graphic.
“Go f yourself, HW.”
Malcolm,
You have been politely asked to present legal arguments to support your position and overcome the existing case law on the subject.
Yet all you can do is rant, proclaim (unfounded) conclusions, and be belligerent.
Is it any wonder that you find yourself repeating the same impotent position “about, oh, five hundred times over the past half decade”?
I wonder if you realize just how silly you look when asked to make a cogent argument and all you can do is pound the table.
Although a bit of trepidation is likely in order (no matter on what end of the spectrum you tend to fall), I look forward to reading what the SCOTUS has to say when the esteemed Justices opine on gene patents. Particularly since Myriad presents a bit of a chicken-and-egg question — that is thus perhaps not scientifically, definitively solvable — policy considerations will probably weigh heavily in their ultimate determination. Which also makes one wonder to what extent the Court’s new political makeup will affect the case’s outcome.
Clearly, having functional elements and limitations in claims is proper.
That’s nice. Nobody here is saying that a functional limitation renders a composition claim ineligible or unpatentable.
But it’s not proper for the only novel element in a composition claim to be a functional element without corresponding structure.
Yes Ned both me and MM realize we’re “setting ourselves up to allow B claims” if they were properly drafted and told us about the structure. That is, “if the structure were identifiable” by the information provided in the application.
Thing is Nedo, nobody wants to say what the structure is because as soon as you do that your claim will be limited to that whether you drafted it to be or not, and then the claim is worthless. Nobody wants such claims.
I would. 😉
Malcolm, you do realize that you are setting yourself up to allowing Beauregard type claims. If the only problem with Beauregard claims is that the structure bearing the useful information is not identifiable, then once it becomes identifiable, it becomes patentable.
By all means, Ned, go ahead and identify the structure on the computer-readable media and recite that structure in the claims, as you must, in such a way that one skilled in the art can distinguish the computer-readable composition from other computer-readable compositions on the basis of its recited structure.
I’m all for it.
Note that such a claim is the furthest thing possible from a Beauregard claim.
Hardworking: Malcolm turns a deliberate blind eye
False. Go f yourself, HW.
if you could define the functional relationship between the computer program and the media,
It’s the same as the functional relationship between the coffee and the cup. The cup holds the coffee until an unclaimed system that the coffee has an actual functional relationship with causes the cup to dump the coffee into the unclaimed system that the coffee has the actual functional relationship with.
Assume for the moment, that the computer readable media is encoded cDNA.
Do you mean “assume … that the computer readable media is limited to encoded cDNA”? And further assume that the “computer” comes in only one standard type that parses the cDNA in only one possible way to produce a detectable, tangible, predictable end product? Because that really would change everything.
“This is what I meant.”
It is not what you said.
You employ a “significance” argument in dissecting a claim – just as assuredly as Malcolm attempts to ignore portions of a claim.
Case law is very very clear on this point. Malcolm and you are both wrong. “Significance” as you would have it plays the same forbidden role in the action of not taking the claim as a whole. Thus, your long-held premise of “point of novelty” is shown to be false, as directly held by the highest law in the land.
Ned,
You do not understand the functional relationship between a computer program and the media?
Seriously?
Assume…is encoded cDNA…? Please return to some semblance of rationality in your discussions.
Gracias, mi amigo. We shall travel 1000 miles times 1000 miles to avoid that painful truth.
Ping, if you could define the functional relationship between the computer program and the media, please make the attempt. Assume for the moment, that the computer readable media is encoded cDNA.
Proceed.
Ned,
Your post is a clear non-sequitur.
The lengths that people will go to to avoid the painful truth…
Diversions and leading-away questions; yet no answers that are on point.
Very Ping-like, if you ask me.
The claim as a whole must relate to patentable subject matter, true. Still, if parts of a claim that have no functional relation to the other parts of a claim, the claim suffer from a problem that has nothing to do with 101. They have a problem with Section 112, p. 2.
E.g., Apparatus comprising:
means for triming a horse; and
a moon rocket.
There is something fundamentally wrong with such a claim regardless of 101. Agreed?
“Malcolm, you do realize that”
The beautiful thing Ned is that Malcolm turns a deliberate blind eye to this logic – just as you turn a deliberate blind eye to the logic in ignoring the exception to the printed matter doctrine. As you yourself can testify, there is a world of difference between realizing something and accepting that something.
If you ever get around to exploring that facet of the law, you may then have the tools to open the pearly gates that you have locked in front of you by your decision to dwell in the dark.
Clearly, it is not merely the form of the claim that is critical. Clearly, having functional elements and limitations in claims is proper. And clearly, when the phrase “claim as a whole” must be used, then that is what must be used. A seed of a thought for you to contemplate: when “claim as a whole” must be used, the “point of novelty” is the entire claim, and not any one part of the claim.
Think about this for awhile.
Actually, Hard, I agree with you that Malcolm’s reliance on structure to distinguish patentable cDNA from unpatentable CD-ROMs, where the novelty is in the information, in untenable. See, my post here
link to patentlyo.com
From Diehr:
“A claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula, computer program, or digital computer. Respondents’ claims must be considered as a whole, it being inappropriate to dissect the claims into old and new elements and then to ignore the presence of the old elements in the analysis. ”
This is what I meant.
There are some wonderful threads in this thread, and if those who need most to open their minds would do so, substantial learning and mending of the various friendships could take place.
Let’s start with the obvious on-the-mend between Ned and New Light. With New Light’s ode to elevated Constitutionality, Ned is almost giddy with the thoughts of amending that relationship, and contributes with a jewel of a notion laying just under the notes of a music CD.
For the notion of a music CD, which can be claimed completely in structureal terms with absolutely no functional language (a listing of every pit and groove may make for some dreary and quite lengthy claims, but would be expressly proper for Malcolm’s taste of “all structure” – yet would still absolutely fail to be a proper claim.
And in that single moment, the fallacy of Malcolm’s clarion (and half decade) call screaches its death knell. For you see, not only is “all structure” not a legal requirement, it, by itself, does not even guarantee a patentable (or patent-eligible) claim.
So it is music that reunites New Light and Ned. But what about reuniting Ned and Malcolm? Well, just as “light” serves a purpose, so does the “dark.” Ned and Malcolm can both cuddle together in the darkness they embrace by ignoring the full doctrine of printed matter. As both recoil from the power of the exception to that doctrine, may they comfort each other. And perhaps, strengthened by their shared misery, maybe New Light can draw them both into the light with his lyrical musings on the crossover of applied math. For if math can cross over in being applied, then too, “printed matter” can cross over when “applied” – that is, when functionally related.
All that then remains is for the concept of “claim as a whole” to be properly learned, and salvation may yet be achieved.
Malcolm: “In the case of claims to nucleic acids, the structure is inevitably there (the USPTO is very diligent about rejecting chem/bio claims that rely solely on function to distinguish the inventions from the prior art). In the case of Beauregard claims, the structure is inevitably absent. The only claimed distinction between old computer-readable media and the new subject matter of a Beuregard claim is the new information on the computer-“readable” media, i.e., the information that the computer “reads” in order to “learn” the new processing method.”
Malcolm, you do realize that you are setting yourself up to allowing Beauregard type claims. If the only problem with Beauregard claims is that the structure bearing the useful information is not identifiable, then once it becomes identifiable, it becomes patentable.
Take cDNA for example. I invent a new machine that uses the genetic code as a number set and which can encode cDNA with for example computer programs that can be read by a computer. The only thing that varies from the prior art is the computer code. But because I claim the media in terms of cDNA, which has a definable chemical structure, it becomes your position that for this reason, that it as a defined chemical structure, it is completely patentable.
The distinction you make your between encoded cDNA and an encoded CD-ROM is a distinction without a difference.
Why don’t you all try taking some DNA from a Pig or a Monkey and mixing it with Human DNA, then play with that. Now that will be Patentable. I bet if you play around enough you will be able to see the light. If they can use a Pigs Aorta and it is not rejected.. then who knows where this could go. Or should there be a c in front of the DNA?
It might be a better idea to spend money on that than on destroying Corn for fuel. And anyway what is it …Pappas Grass that will do the same? So why would we not use Pappas Grass? Why, because it is just to easy to use the cheapest and best solution. And way to many Constituents that grow corn. So let them grow Pappas Grass. Again to easy, and so much fun to award Grants that waste our tax paying dollars.
Ned Heller : AI, “claim as a whole” does not dissect and consider only one part. It rather assesses the significance of the statutory part of the claim. ”
Wrong again Ned. Diehr, which set the precedent for claims as a whole, does not instruct anyone to as you say “assesses the significance of the statutory part of the claim.” Instead the entire claim is taken, evaluated, assessed. That’s what claims as a whole, means.
I dont care how you try to wiggle and weasel word your way to be able to dissect claims, I am going to call you on it every time! And you will NEVER be able to cite the case law to say otherwise.
So MM, I have a B claim in front of me atm. Do I 101 it?
“Which 112 issues in particular concern you the most?”
Did I say I was concerned?
No. I did not. Why do you think that I am concerned?
“In any event, my point (perfectly clear…” Well obviously your point is not perfectly clear, now is it?
“In the case of Beauregard claims…” Once more you delve into your favorite cannard of having nofunctional language allowed in proper claiming, when the law is perfectly clear that some functional language (and not even needing 112P6) is proper claiming.
I get you don’t like it – but you have to do a better job of making a legal argument if you are going to convince anyone that you are correct. It doesn’t matter if you have stated this “about, oh, five hundred times over the past half decade” – you were not convincing in any single time that you stated it. In fact, you might consider changing how you approach the issue, as you have not become any more convincing in the exercise of your legal “skills”.
Malcolm, the chemical structures themselves are old, and vary from the prior art only in terms of order. The order itself is the information
That’s a loser argument, Ned, for simple, straighforward reasons that have already been provided, numerous times.
I’m not going through it again. Not now, anyway.
T.A. : The immediate claims at issue do not have unambiguous chemical structures.
Are there 112 issues in some of the composition claims? Maybe. Which 112 issues in particular concern you the most?
In any event, my point (perfectly clear to all who were willing to understand) is that a properly claimed molecular composition (like all properly claimed compositions and/or articles of manufacture) is claimed by reference to structural features that unambiguously distinguish it from other compositions in the prior art. You can reference the structures expressly in the claim, or indirectly by invocation of 112P6. But the structure needs to be there or you’ve got serious problems of one kind or another.
In the case of claims to nucleic acids, the structure is inevitably there (the USPTO is very diligent about rejecting chem/bio claims that rely solely on function to distinguish the inventions from the prior art). In the case of Beauregard claims, the structure is inevitably absent. The only claimed distinction between old computer-readable media and the new subject matter of a Beuregard claim is the new information on the computer-“readable” media, i.e., the information that the computer “reads” in order to “learn” the new processing method.