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August 12, 2010



As I've already commented on a different blog, my beef with this case is that it completely ducked resolving the 35 USC 101 issue clearly presented with regard to Claim 21, and instead substituted this bizarre new doctrine of “an anticipated method claim doesn’t become patentable if it simply includes an informing step about an inherent property of that method.” That's because there was no evidence presented that the "informing" feature of Claim 21 was disclosed in the prior art. Instead, the Gajarsa's opinion characterizes this "informing" feature as not patentable. That's as illogical as Justice Steven's saying in Parker v. Flook that an otherwise unknown algorithm is prior art under 35 USC 103.

I particularly cringe at the citation to the Ngai case to bolster this new doctrine. In Ngai, the patent applicant had created an admittedly new method for amplifying and normalizing RNA. In addition to method claims, the patent applicant included what many of us patent attorneys/agents referred to as “kit claims” which recited “instructions for use” where those instructions described the new method (in Ngai, the method for amplifying and normalizing RNA). The Federal Circuit in Ngai rejected those “kit claims” as either anticipated under 35 U.S.C. § 102 or unpatentable under 35 U.S.C. § 103 (it isn’t clear which basis the Federal Circuit relied upon) under the “printed matter is not patentable" doctrine. What particularly offends me about the Federal Circuit’s reliance on the “printed matter is not patentable" doctrine in Ngai is the following statement: “If we were to adopt Ngai’s position, anyone could continue patenting a product indefinitely provided that they add a new instruction sheet to the product.” So what? The logic of that statement for supporting the invalidity of “kit claims” in Ngai as anticipated/obvious still escapes me.

Creating new doctrines like this one outside the statutory scheme of 35 USC 101, 102, and 103 do nothing more than create additional chaos. I'm sure if Judge Newman had been part of this Federal Circuit panel she would have gone ballistic over this new doctrine.

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