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« Court Report | Main | News from Abroad: Unitary Patent & Unified Patent Court »

December 11, 2012


Dr. Noonan,

The statement "However, the "product of nature" rejection before the Office remains unscrutinized and intriguing (and, truthfully and in full compliance with the Supreme Court's analytical protocol, is based in part on the prior existence -- i.e., on § 102 grounds -- of the breeding in nature)." is in clear error - As has been pointed out a couple of times on your boards, the Supreme Court's analytical protocol does NOT require a "prior existence -- i.e., on § 102 grounds." See Chakrabarty - especially the "though just discovered" quote.

What's the utility here? Very few things fail to meet the utility requirement, but as far as I can tell this is an example. And yes, one of my favorite comic strips is this one: http://t2.gstatic.com/images?q=tbn:ANd9GcQDQwporgMREd2rj9-MN5NLOweu-XkMcHGoo8Zgbv3VUijy7MroJFeaf5JFiA

"the Supreme Court's analytical protocol does NOT require a "prior existence -- i.e., on § 102 grounds." See Chakrabarty - especially the "though just discovered" quote. See Chakrabarty - especially the "though just discovered" quote."

Please provide the paragraph in which that quote appears. I think you are misinterpreting Chakrabarty.

Nothing about the phrase "though just discovered" precludes a determination that the "just discovered" composition did in fact exist "in nature" prior to the applicant's priority date. In fact, it's easier to argue that the opposite is true because the Court uses the phrase "just discovered" rather than, e.g., "just created by nature".

There has never been a case which addressed the situation you seem to be obsessed with, i.e., the case where a claimed composition never existed "in nature" prior to the filing of the application but suddenly appeared "in nature" later (whereby according to your "theory", the composition would suddenly turn from eligible subject matter into ineligible subject matter).

By the way, I assume you are the pro-software anti-nucleic acid commenter who posts at PatentlyO under the name "anon." Your writing style (and your positions) are instantly recognizable!

Dear Skeptical:

You misunderstood what I inartfully stated. I was actually thinking of the mash-up of 102 and 103 into the 101 analysis under Mayo, but didn't say that clearly. For the record, I agree that a mere product of nature does not become patent-eligible merely by being discovered. There must be the "hand of man" evinced that changes what exists in nature into a patent-eligible invention.

Thanks for pointing that out.

Dear Curmudgeon:

The case sets forth a quote from the patent regarding utility, wherein these animals are useful as show cats, for breeding and as pets. Although most purebred cat breeders don't make a profit on breeding (the idea is to produce the "best" cat in the breed), pedigreed cats can sell for $400-$800 apiece and show-quality cat for much more. In addition, there is always the possibility of breeding the next Morris the Cat, and even lesser lights adorn the packaging of cat foods and other products. So there is certainly commercial utility in producing a new cat breed, and probably utility sufficient to satisfy Section 101.

Thanks for the comment

pedigreed cats can sell for $400-$800 apiece and show-quality cat for much more.

Is the market value of a composition relevant to assessing its patentable utility, i.e., it's specific and substantial usefulness under 101? What if someone was willing to pay $10,000 (or more) for a stuffed cat? Would the stuffed cat become eligible subject matter? What if the stuffed cat's paw was engineered to lift up briefly when the owner entered the room?

Many, many compositions of matter are capable of pleasing people merely by existing and being "owned" by said people. Sculptures come to mind. Why is the pleasure of owning a sculpture not a patent-worthy utility but the pleasure of owning a cat is patent-worthy? It seems strange that a composition for viewing entertainment, e.g., a sculpture, might become eligible under 101 simply because it has been engineered to move but I have little doubt that is all that would be necessary at the PTO.

My addition to the "Sophisticated Cat" meme, in light of the 101 discussion.


Kevin, if you haven't checked out what the kids are doing with these so-called "memes" you will get a kick out of all the various sophisticated cats out there.

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