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« USPTO Holds Forum on Subject Matter Eligibility -- Part I | Main | FDA Releases Draft Guidance on Biosimilars »

May 13, 2014


Does anyone see the ironic humor evident in the elevation of form (for the gifted scriveners) over substance as reflected in the Office protocols for proper claiming?

Does anyone think that the Supreme Court (or even the Patent Office) can keep up with the creativity of the scriveners when it comes to the art of claim drafting?

Would it not make more sense to simply make the law of 101 more clear and less complicated by intricate notions of eligibility? Have not the Supremes themselves cast doubt on the Office protocols (as already noted in the recent Alice oral arguments)?

That no one else has already grasped these answers, and their implications, I am...

It's not interesting to see how the Guidance is being applied to real inventions with real commercial significance, it's embarassing.


I completely agree with Courtenay that these Myriad Guidelines are embarrassing. Unfortunately for us and our clients, these Guidelines will be costly to deal with to get the patent protection our clients are entitled to. IMHO, the current USPTO hierarchy is out of control and acting ultra vires, the proposed "attributable ownerships" rules being another blatant example of unlawful rulemaking, harkening back to the "dark times" of the Dudas regime and the claim-continuation rules debacle.

Not to indulge in conspiracy theories (ok, to indulge just a little),...

Correlate the actions of the Executive Branch (and its contained Fourth Branch administrative agency of the Patent Office) - including in addition to the items shared by EG, the unbridled power of the too-closely-aligned Article I court of the PTAB and that court's recent indications of re-interpreting Article III court case decisions - all under a shadow realm of a non-vetted, no actual director in place (and not even nominated) Head of the Patent Office (the same office that still holds closed door meetings with powerful lobby groups)... all under the control and direction of a President who advocated clarity of government as one of his running planks...

Anyone else out there who is more than just a little...

Agreed Courtenay (and thank you for the great presentation on Friday).

The USPTO website says, "Driving Innovation, Not Litigation." I think they left out "away," as in "Driving Away Innovation, Not Litigation." The Guidance will be (and should be) litigated often.

I'm still searching for the case law that says if a composition of natural components can be "vibrated" into those natural components, then it is not patent eligible subject matter. Stunning (explosively stunning).

Which organization of patent "customers" is going to take the lead in lobbying Congress to clarify 35 USC 100(a), 100(b) and/or 101 to fix this problem of "judicial exceptions to the plain meaning of the statute (which I suspect is what the USPTO is hoping their grotesque take on BRI of the Myriad/Mayo holdings will prompt their offended customers to do)?

Well, Hans is certainly doing his best on the pharmaceutical/biotechnology side. I'm struck that the pomelo juice example is really a combination of American Fruit Growers mish-mashed up with Funk Brothers. Both wretched, but nonetheless part of our 101 history. What I found most odd about the USPTO forum on this subject matter the other day was the Office's statement that they were analyzing Myriad holistically -NOT just looking at the actual case and holding - but also considering the briefs, and oral arguments. I did hear that, right???

A problem with the USPTO example is that, in their claim 1, the preservative has a significant effect on the juice: it makes it stay fresh and drinkable longer than juice without the preservative. So even if the preservative doesn't change the structure of the juice, it does change a functional property of the juice. I think this distinguishes this claim from Funk Bros.

Lawerence - this is true - the pomelo example is distinguished from Funk. But, pomelo is largely the same as American Fruit Growers. And here is the problem: the USPTO is mixing up the "rule" established by American Fruit Growers with the "application" of the rule.

Here is the "rule" from American Fruit:

manufacture = produce from the raw material an article for use which possesses a new or distinctive form, quality, or property.

And here is the (rather inexplicable) application of the rule:

Addition of borax to the rind of natural fruit does not change the name, appearance, or general character of the fruit.

I think most of us would agree that SCOTUS applied the rule of American Fruit to arrive at a rather odd conclusion ("You need a change in property. This orange doesn't have any different property." Huh?). But, nevertheless, that doesn't change the actual rule. That is, we can disagree as to whether there is a different "form, quality, or property" in a borax orange (yuck) but we should at least all agree upon the rule, which very clearly discusses changes in characteristics, properties and function.

Instead of trying to apply the "rule", the USPTO tries to simply align the pomelo juice hypo with the facts of American Fruit, and thus conveniently arrive at the same outcome. This allows the USPTO to do two things: 1) ignore the thorny problem that the American Fruit rule seems to contradict the American Fruit outcome; and 2) argue that only structure matters. Huh?

If you want to have an example on how far (and how problematic) the interpretation of such guidelines can go, you may see the Non Final Action mailed last week for 11/921,030. It appears that such cells isolated from human tissue are no more eligible to a US patent


Page 2 of the OA seems to have misplaced claim 10...

(I do note that the claims supplied list it as withdrawn).

Other than that, and noting that the "non-oval" words do not appear to carry patentable weight (a conclusion I am open to amending), the claims rightly fail, as they appear to ONLY be claiming an item isolated that already has certain characteristics.

I do not see the problem here Luc.

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