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« Court Report | Main | USPTO Provides Insight on PTAB Amendment Motions »

May 09, 2016

Comments

Hey Don,

These updated patent subject matter guidelines are merely a façade to cover up a nonsensical a Mayo/Alice framework that is "out of control." Example 29 is the poster child for why this framework is so bad, as created by SCOTUS and as implemented by the USPTO and the lower courts.

Read example 29 carefully, especially eligibility analysis of claims 1 and 6. It's a step in the right direction. Awkward, but a step nonetheless.

I am inclined to think that the life sciences examples are slightly less toxic than what we have seen on other occasions. This is only a first impression though.

Example 29 is nonsensical and illustrates the PTO's apparent intent to cause as much damage and confusion to as many practitioners as possible. This is because the PTO, apparently, has still not come to terms with the role that the prior art plays in subject matter eligibility.

Claim 2 recites *the exact same steps* as claim 1, plus one additional step ("diagnosing") that is ineligible on its own terms. The PTO deems claim 2 to be ineligible because the steps recited in claim 1 are insufficient to carry "diagnosis" across the eligibility bar. But the PTO has already stated that the steps in claim 1 are eligible.

The correct analysis is that claim 1 is ineligible due to a Sequenom problem. You can't discover a phenomenon and broadly claim "detect the phenomenon", nor can you broadly claim "detect the phenomenon using prior art detection methods known to be useful for that purpose", nor can you broadly claim "detect the phenomenon using this prior art detection method known to be useful for that purpose."

That's why claim 1 is ineligible. Claim 2 is ineligible because it adds only an ineligible step "correlate this!" to the ineligible method of claim 1.

This really isn't difficult stuff but the PTO makes it difficult by completely muffing the claim 1 analysis.

Examiner" "Read example 29 carefully, especially eligibility analysis of claims 1 and 6"

The "analysis" of claim 1 completely misses the issue!

At the very least, when the PTO presents hypotheticals like these it needs to be crystal clear about other serious statutory problems with the claims.

Why is that? Because a claim that has a serious statutory problem other than eligibility (e.g., anticipation, obviousness, written description, enablement) is, in pretty much every case, not going to rescuable by the recitation of subject matter that is ineligible for patenting on its own terms (e.g., "correlate it!", "display it!", etc).

I totally agree with The Memory Motel that Example 29 claim 1 vs. claim 2 makes no sense. There's also no comment about the different preambles, which would make sense in that I don't think they would usually be considered limiting (and thus would be ignored during examination), but perhaps the preambles help drive the different outcome, even though they should not and are not included in the stated reasoning? But even just following the rationale put forth by the PTO, it makes no sense for a method comprising the steps in claim 1 to become ineligible because a mental step is added (in claim 2).

Bockus: "it makes no sense for a method comprising the steps in claim 1 to become ineligible because a mental step is added (in claim 2)."

Just to be clear, "adding mental steps" to non-mental steps can create eligibility problems (or fail to fix an existing one) in at least two distinct claiming situations.

The first situation is where the recited non-mental step(s) are already in the prior art, as recited. In that case, the addition of a mental step impermissibily protects that mental step, at least from the viewpoint of practitioners of the prior art. That is the exact fact pattern addressed by the Supreme Court in Mayo. Note that whether or not the non-mental steps are deemed "eligible" or merely "anticipated" makes no practical difference (the statute is consistent with the view that non-inventive methods are both anticipated and ineligible). The bottom line is those old non-mental steps can't be patented, and the addition of the ineligible mental step can not confer patentability (or eligibility). Simple example of an ineligible claim falling into this first category: "A method comprising [performing old measurement] and determining [i.e., thinking about] [new" correlation] based on said measurement.

The second situation is where the recited non-mental steps are "new" but nevertheless ineligible because they don't add enough to an ineligible "newly discovered" natural phenomenon. This is where the PTO stumbled in its analysis of claim 1 in Example 29 (but somehow managed to regain its footing when considering the *same* subject matter in the context of claim 2!). The quintessential example is a claim reciting the detection of a "new" phenomenon (e.g, "an asteroid is here!"; "an antigen is here") using prior art tools known to be useful for that purpose (aka "conventional tools", e.g., a "telescope" or "antibody"). Adding a further mental step (e.g., "diagnosing" or "thinking about what it means") isn't going to save the claim. This is the Sequenom problem.

"I am inclined to think that the life sciences examples are slightly less toxic than what we have seen on other occasions."

Sure, "slightly less toxic" seems a fair characterization, although this is a low bar to clear. Basically, Mayo v Prometheus got §101 about as completely wrong as is possible, and the PTO is trying to confine the Mayo holding to a very narrow set of circumstances to minimize the damage.

I am not sure, however, how much this really helps. Sure, you can get your claims allowed now, but there is no guarantee that the courts will be as inclined to cabin Mayo narrowly as the PTO appears to be. In fact, quite the opposite. The CAFC has made clear that it feels compelled to give Mayo a very broad reading (see Judge Linn's dissent from the panel decision in Sequenom, or Judge Lourie's concurrence in the denial of en banc review).

I think that anyone who relies on these new examples when advising their clients has an ethical duty to tell them "making an amendment to track Ex. 29, Claim 1 may help us get to allowance, but there is a non-trivial likelihood that the claim that is allowed will be totally unenforceable in court."

I do not really trust that the analysis that the PTO presents is anything like how a court would think about most of these claims.

"I think that anyone who relies on these new examples when advising their clients has an ethical duty to tell them "making an amendment to track Ex. 29, Claim 1 may help us get to allowance, but there is a non-trivial likelihood that the claim that is allowed will be totally unenforceable in court.""

Whether or not you rely on the Examples or not, to advise a client otherwise (or fail to advise at all) would be incompetence. Sequenom is controlling law.

"[T]o advise a client otherwise (or fail to advise at all) would be incompetence."

Right. And one of your ethical duties as a lawyer is a duty of competence (ABA Rule 1.1), so as I said above, you have an ethical duty to offer such advice. We are agreeing here.

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