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« Conference & CLE Calendar | Main | In re Stepan Co. (Fed. Cir. 2017) »

October 08, 2017


The representative claims here seem boring, unfortunately.

"I still cannot agree that a patent eligibility issue has anything to do with whether the claims recite new/novel features."

I will make you agree in ten seconds but I predict that you will still resist because you're too proud to admit error.

Consider a claim:

1. A process, comprising correlating [insert sequence here] with a higher likelihood of Schiff's disease.

That's ineligible. You can't claim a correlation or any other fact. Compare:

2. A process comprising [insert new non-obvious step of isolating and reading gene sequence from a human], wherein the sequence is [insert sequence here] and wherein said sequence is correlated with a higher likelihood of Schiff's disease.

That's eligible.

This is a good thing, by the way. It's the way things should be (also the way things are). Last, just so there's no confusion:

3. A process comprising [using old method to identify gene sequence] wherein the sequence is [insert sequence here] and wherein said sequence is correlated with a higher likelihood of Schiff's disease.

That's ineligible. And it's ineligible because it turns people practicing the prior art into infringers merely because they think about the meaning of data. You can't protect "thinking about data" with patents. Claims that do so are ineligible.

Once again, this is the way things should be. It's the way things are. And it's the way things are going to stay. Get used to it.

So the only way that eligibility doesn't matter to you, Friend, is with regard to the previously unknown sequence? Just checking.

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