In re Ditto (Fed. Cir. 2012)

Cats and the Federal Circuit

By Kevin E. Noonan --

Unlike dog breeds that tend to be of ancient vintage (Labra-doodles and Yorkie-poos to the contrary), many cat breeds are of relatively recent parentage.  While there are many naturally occurring breeds (such as Maine Coons and Norwegian Forest Cats), a surprising number of cat breeds were developed in the last 50 years or so.  The most recent (and perhaps most extreme) are Savannahs, that are the result of breeding between a domestic short-haired cat and a serval, a wild, undomesticated African cat.  The Federal Circuit had the opportunity to opine on whether another (relatively) recent cat breed, the Pixie-Bob (at right), was patent-eligible subject matter or novel in an appeal from rejection on both these grounds before the Patent Office.  While the Court avoided the statutory subject matter question, it affirmed rejection for lack of novelty for the remarkably named applicant, Frank Robert Ditto.

Mr. Ditto claimed a breed of cats produced by mating a bobcat, lynx or bobcat-lynx mix with a domestic cat.  The sole independent claim is directed to "[a] domestic cat breed produced by breeding a purebred cat produced by mating a Bobcat, Lynx, or Bobcat Lynx species with a domestic cat," with dependent claims reciting various phenotypic characteristics of the cats (in most part relating to the cats' propensity to vocalize).  As explained in the specification, the breed has a unique combination of domesticated behaviors and "the spirit and disposition of the wild" cat as well as other specific traits (including "a variety of colors, have hind legs that are larger than their front legs, may have spotted fur or a stump tail, and have 'sturdy muscular bodies.'"

The Board affirmed the Examiner's rejection of §§ 101 and 102 grounds.  The basis for the § 101 rejection was that the breed was a "product of nature" that resulted from breedings that occurred in the wild.  The Board affirmed this rejection insofar as the claims did not require any particular degree of interbreeding and that naturally occurring cats could satisfy the limitations recited in claim 1.  With regard to the § 102 rejections, the Examiner cited two prior art references:  a 1994 Seattle Times article by Green relating to a Pixie-Bob produced by mating of a wild bobcat and a domestic cat (in a family barn without human intervention); and a 1995 Bellingham Herald article by Porter describing the Pixie-Bob breed and its introduction to The International Cat Association (TICA) as an "official" cat breed.  These references also satisfied the limitations recited in claim 1 on similar grounds, i.e., that there was no limitation as to the degree of breeding required and that "there was no evidence . . . suggest[ing] any difference between the Pixie-Bob cat [described in the cited prior art] and the claimed cats."

The Federal Circuit affirmed in a per curiam opinion before Judges Dyk, Prost, and Reyna.  Their opinion did not address the § 101 rejection, finding sufficient evidence that the claims were anticipated under § 102.  According to the panel, the term "purebred" was properly given its "broadest reasonable interpretation," particularly in view of the lack of any particular definition in Inventor Ditto's specification.  And the panel apparently relied on a dictionary definition of "breed" as meaning "a distinctive group of domestic animals differentiated from the wild type under the influence of man and usu[ally] incapable of maintaining its distinctive qualities in nature," citing Webster's Third New International Dictionary of the English Language 274 (1993).  Like the Board, the panel rejected Inventor Ditto's argument that the Green and Porter references did not describe a breeding that had achieved the desired level of domesticity (particularly with reference to the TICA "SBT" breeding standards).  Tellingly, Inventor Ditto's filing date (March 25, 1999) was after the date (May 1, 1998) when TICA accepted the Pixie-Bob as a recognized breed.  According to the panel, both the Green and Porter references disclosed characteristics and features of the Pixie-Bob cats that are distinctive and comprise the "desired effects" recited as a limitation in Inventor Ditto's claims.

The panel's decision finishes the patenting process for Inventor Ditto.  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).  But the question can be presented more starkly with the Savannah cat mentioned above.  This cat is bred solely with human intervention (there is no evidence that the African serval ever mated in the wild with a domestic cat and certainly not with an American domestic cat).  In addition, males in the F1 generation are sterile; indeed, it is not until the F4 generation that fertile males are produced.  This required backcrossing into the domesticated cat stock in order to produce cats that breed "true," i.e., that have both parents of the Savannah breed.  All of these aspects evince the "hand of man" and represent something that is the "product of human ingenuity 'having a distinctive name, character [and] use,'" Chakrabarty at 310, citing Hartranft v. Wiegmann, 121 U. S. 609, 121 U. S. 615 (1887).  Thus it is clear under prevailing precedent that the Savannah cat should comprise patent-eligible subject matter.  Although this question is beyond the scope of the question presented to the Supreme Court in the Myriad case or in Mayo v. Prometheus, the question remains whether this Court would find these "routine" and "conventional" breeding methods to provide "enough" for the Savannah cat to be "more than" a product of nature and become a patent-eligible product of man.

In re Ditto (Fed. Cir. 2012)
Panel: Circuit Judges Dyk, Prost, and Reyna
Opinion per curiam

Image of Pixie-bobs (above) by Angie 1900, from the Wikipedia Commons under the Creative Commons Attribution 3.0 Unported license.

Comments

[Skeptical]

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.

[Curmudgeon]

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

[Mark Slotawski]

"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!

[Kevin E. Noonan]

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.

[Kevin E. Noonan]

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

[Mark Slotawski]

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.

[Former Colleague]

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

http://qkme.me/3s6id6

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.