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« AT&T Mobility LLC v. Intellectual Ventures II LLC (PTAB 2016) | Main | Court Report »

May 25, 2016


The Office can always distinguish bad law, if it so chooses. That was the approach the Office took when Bruce Lehman was Commissioner and I was the Office's Solicitor. Our position was that bad law should not prevent patentable inventions from receiving protection or cause valid patents to be struck down. Since Bruce left, I fear the Office has not been willing to take that leadership role. Former Solicitor General Linck

I remain unhappy with the PTO's blanket assumption that isolating a natural product does not "change it's properties."
In particular, it's the rare natural product that has pharmaceutical utility in its natural state. To deem such inventions ineligible per se is a very short-sighted move.

I think that the Nancy Linick posting is one of the most important and influential statements that I have read in recent years.

What is really important is that the Office which includes people with the time and the expertise to analyse Supreme Court and Federal Circuit opinions should take the time to do so and come up with the real underlying rules of law which are applicable to on-going and future situations. Sadly I think that in 2014 the Office strayed from that approach and gold plated headline dicta rather than looking at what the holding really was, so that for example the narrow and cautious holding in Myriad was grossly exaggerated. Recent Federal Circuit opinions unfortunately follow that trend. It is incumbent on the Office to take a leadership role, and to lead in a benign direction.

"The Office can always distinguish bad law, if it so chooses."

KSR was decided 9 years ago. What are they waiting for?

There are times when being "too polite" becomes more of a disservice rather than being a service.

Dr. Noonan's write-up here is one of those times.

Aside from any of the General Linck commentary (which is interesting when one thinks that the Executive branch does not have the power to unilaterally decide for itself what is and what is not "bad law" ), the good doctor's desire to be polite comes at the expense of being clear and direct.

There is only so much lipstick that can be pasted on the pig that the Supreme Court has provided (with all due deference to Mr. Cole's proper desire for judicial restraint - the working material itself of the Supreme Court decisions is an unmitigated mess).

I would further point out that there was a recent court case that put ANY "Office guidance" (no matter how differently written) in its place: no effect for a court of law.

There is but one long-term workable solution, and that solution lies in the hands of Congress (and should include this time around (historians should reference 1952) the exercise by Congress to employ jurisdiction stripping and remove the non-original jurisdiction of patent case appeals from the Supreme Court and place these in a newly constructed - newly, because the current Federal Circuit has been too brow beaten by the Supreme Court - Article III court.

An outsider's view. Fools rush in...

In relation to potential conflict with Sequenom, did you not mean Claim 1 of Example 29 (Julitis)?

I respectfully suggest that Claim 1 of Julitis (Example 29) can be distinguished from Claim 1 of Sequenom.

I presume that the JUL-1 protein has a specific chemical structure that would be specified either in the specification or in reference to some other document. In the absence of knowledge about its connection to julitis, one could submit a claim to a process of detecting JUL-1 in blood plasma that would not entangle any natural phenomenon, law of nature or abstract idea, so it would go forward to 102 and 103 etc. Knowledge of the connection to julitis would only add utility and it would certainly be counter-intuitive to suppose that finding utility would take away patent-eligibility.

On the other hand Sequenom's Claim 1 is drawn to a method of detecting a "paternally-inherited nucleic acid of fetal origin". There would be no well-defined chemical specification of the chemical structure of "paternally-inherited" by specifying primers in terms of their chemical structure.

One could consider a scenario in which sisters-in-law became pregnant at the same time, with the result that the same grandmaternally-interited nucleic acid of fetal origin was paternally-inherited for one and maternally-inherited for the other. Thus if tested at the same time in the same laboratory with the same (physical) test, one test would infringe, and the other would not. Thus, in terms of physical processes we are not talking about a single process to detect a single biomarker, but rather a whole multitude of processes, many of which would be anticipated inherently under the construction adopted in the IPR adjudicating on Sequenom's claims (IPR 2012-00022). Thus the natural phenomenon of cffDNA in maternal blood serum is more deeply implicated than in the julitis example.

(Would this be the sort of argument to interest the sort of Supreme Court justice who is intrigued by problems like determine precisely which generations of genetically-modified seeds are subject to patent exhaustion, and which aren't?)

Another scenario to contemplate. Suppose that independent researchers discover that JUL-1 is a biomarker for julitis, freditis and maisitis. Presumably first-to-file might get a patent on the method of detecting JUL-1, if the claim passes novelty and unobviousness. But the independent researchers would not obtain separate patents (under PTO guidance, Example 29, Claim 2) on methods of diagnosing julitis, freditis and maisitis with the same routine and conventional JUL-1 detection test, and differing only in the final step of diagnosis.

Dear DP:

While I think the scenario about the sisters-in-law is a little stretched, I appreciate your point about the difference between detecting a specific molecule versus a heterogeneous collection of molecules (keeping in mind that the PTO's hypothetical does not specify some of your assumptions and the Sequenom decision does not depend on the heterogeneity you note).

But it is an intriguing distinction.

Of course, your freditis and maisitis hypo points out that Claim 1 preempts any use of the detection method, which seems to contradict the Court's concerns - you would have less preemption if methods for detecting julitis, freditis and maisitis were independently patentable, no?

Thanks for the comment.

I think the comment of "and it would certainly be counter-intuitive to suppose that finding utility would take away patent-eligibility" is perhaps a non-sequitur, or at least is not developed enough.

A claim with added "finding utility" depends on how the claim presents that "finding utility," and perhaps - invokes NOT the patent-eligibility concern (of 101), but the different patentABILITY concern (of 112).

I think that what we see running rampant here is an attempt (by the Court and by those urging the Court) to pretend that the Act of 1952 did not happen and to continue to treat the PRE-1952 single paragraph as if that single paragraph was still just a single paragraph and that the Courts still had the Congressional authority to set the meaning of the word "invention" (or "Gist," or "Gist of the Invention," or "spirit," or any of the dozen or so terms used prior to the Act of 1952) through the judicial branch law writing power of common law evolution.

The (at times certainly purposeful) obfuscation of what happened in 1952 and the "blender" approach of re-inserting ANY of 102/103/112 back into a PURE so-called 101 deliberation is the very worst of nose-of-wax mashing.

Lastly, let me remind everyone complaining about method claims that have (a very real) different step (anywhere - but including a last step) of what Congress also added in 1952: 35 USC 100(b):

(b) The term “process” means process, art, or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material.

Ponder on the portion: "and includes a new use of a KNOWN." If the "routine and conventional" is itself a "process," patent eligibility is DEFINED to exist for taking that routine and conventional to a new use. This does NOT mean that 102/103/112 is NOT applied to any such claim, but it does mean that any such claim is defined to be patent eligible. And yes, this is exactly what breaking up the single paragraph into each of their different sections of law was meant to be by Congress.

Someone(s) once said, when in doubt, look to the words that Congress stated.

Let's do that.

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