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« USPTO Extends Comments Deadline, Will Hold Roundtables on RCE Practice | Main | USPTO Issues First-Inventor-to-File Examination Guidelines and Final Rule »

February 12, 2013

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Comments

Don,

Ah, the nonsensical "magic microscope" argument arrives at SCOTUS. May it fail like the disingenuous argument by the ACLU/PubPat that this case is about patenting human genes and "Who owns you?"

Two items now caught in the filter Dr. Zuhn. I am passing the captcha, but....

EG,

When I first read the "magic microscope" argument I was more than Skeptical.

But then I had to digest Prometheus.

And the magic microscope argument gained legs.


If you analogize -

the method to Law of Nature prohibition in Prometheus to a -

manufacture/composition to Product of Nature prohibition, -

and follow an analogous dismissal of anything not Law of Nature, as the Court did, -

you are left with a comparison between the isloated item (regardless of how it was isolated, or how much it cost to isolate, or how much human effort went into isolating) and -

the non-isolated item and -

you are in fact using a magic microscope to see if you have effected "enough" of a difference between what was already there in nature (even if that thing was buried in a MASSIVE amount of other things) and -

what you are claiming as your invention.


The rationale given by the Court to dismiss all of that "stuff" in Prometheus is analagous (or more properly stated as can easily be seen as analagous) to the "stuff" that preceeds the product of nature in Myriad.

All of that "stuff" is just old and necessary steps TO GET TO the product of nature, and if the claim is not effectively other than the product of nature (zoomed in with the magic microscope), then you have not done enough.

Prometheus provide the power to the 'scope.


IN a further analogy, just as the notion in Prometheus that there was no such thing as a "small" law of nature, there can very likely be an analagous notion that there is no such thing as too small a product of nature.

If you claim a snippet, and the snippet is in fact recognizable in nature for the same (or EFFECTIVELY the same) effects as your snippet (based on the claim or what the invention does), and you have not effectively done anything else, then you have not done what the Court may determine (in its view) to be "enough."

There is an odd philosophical balance achievable from what Prometheus holds.

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