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November 17, 2008


Nice analysis, Kevin. Thanks.

Dear Kevin,

Regarding diagnostics: since intent is usually given no patentable weight, unless the assay methods used are novel and non-obvious, I don't see how claiming a kit or a device for diagnosing a condition/risk on the basis of a newly found correlation is going to confer patentability to the invention.

Could someone please develop the idea behind multiple uses for a mental step (i.e. correlation) being an argument against a claim to one of those uses preempting the activity?


Dear David:

Whether a claim is patentable under 102, 103 and 112 isn't my concern; I think kits and devices are more "tangible" embodiments of the correlation and thus are less at risk under the court's Bilski analysis. Don't you think that the machine part of the Bilski test would render patentable a device that "read" a drop of blood to detect increased homocysteine = need for vitamin supplements?

I think Diehr says that an algorithm useful in a claimed method can be patentable provided that the entirety of the algorithm isn't pre-empted - that was the distinction the court made in Dayton.

Sorry - Besson


To quibble just a bit, I think it was Benson where the court said an algorithm is patentable provided it doesn't preempt all applications; Flook said an invention is patentable provided the algorithm isn't the point of novelty; Diehr did cite the preemption argument from Benson (it also cited Flook), but I think Diehr is based primarily on the rule that an abstract algorithm is not patentable, but it is patentable if it has a practical application. That is certainly how the CAFC interpreted Diehr at least until Bilski (see e.g. Alappat). I think these three approaches to subject matter are different and incompatible. I entirely agree that the CAFC has finally decided to try to follow SCOTUS precedent. The hash in Bilski is the result of trying to follow incoherent precedent.

Dear Siebrasse:

That's what I get for referencing Judge Newman. I guess the point is that Benson says the invention DID preempt all applications and was unpatentable, and the invention in Diehr did not preempt the algorithm and so was patentable. I do agree that the CAFC will go astray if it blindly follows incoherent Supreme Court precendent - it seems Supreme Court justices have their own brand of gobbledygook.

Thanks for the comment.

Sorry, Norman - I am traveling and am pretty tired. I meant to say either "Dear Norman" or "Dear Mr. Siebrasse." No disrespect intended - thanks for the contribution.

If you would like another perspective on the issue, see:
W.M. Schuster's "Predictability and Patentable Processes: The Federal Circuit's In re Bilski Decision and Its Effect on the Incentive to Invent." 11 Columbia Science & Technology Law Review 1. Available at:

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