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May 21, 2015


Well, the "obtaining a sample of a skin lesion" step certainly ensures that no one will complain that you can "do it all in your head."

I see that this is pre-AIA patent, so it cannot be challenged in PGR. I guess, therefore, that if its 101 soundness is to be challenged, it will be a while before the occasion can present itself. We will have to wait and see.

Was not there considerable hyperbole in some prior comments on this blog that the Sup. Ct. had rendered all medical diagnostic test methods unpatentable, especially those involving human genetic material?

Arguing non-obviousness in a 101 rejection is just beyond bizarre. Still can't get the 'ole brain wrapped around that incoherence. Maybe more coffee will help . . . maybe not.

Greg L: as with pretty much any biological test, there must be some physical action, so "do it all in your head" isn't truly the problem here. However, if one considers the association between an elevated C6orf218 and high likelihood of melanoma to be a law of nature, then collecting a skin sample and running a test for elevated C6orf218 would seem to be a trivial application of that natural law.
I'm guessing that Dermtech has other patent(s) that cover the process of obtaining and processing the skin sample (if they are/were indeed novel), and methods for measuring nucleic acid levels from biological samples are well known in the art.
This would seem to be on shaky ground after Mayo v Prometheus.

This would seem to be on shaky ground after Mayo v Prometheus.

I do not disagree. I do not think that this claim should be on shaky ground, but it probably is.

As for the "do it all in one's head," see the In re BRCA-1 Cancer Test opinion for an example of a biological test that was disparaged as a purely mental operation.

Any - and every - claim can be made to fail if one allows elements of the claim to be removed as if they did not exist (for any reason).

This applies to:
field of use,
"old" elements,
elements traditional to the field,
elements necessary for other actions,
elements of mental steps, and
elements sounding in "function."

Once you jump on the slippery slope of "what is the claim REALLY to" while parsing out elements of the claim as if they don't exist (no matter how "pretty" the language, i.e., "directed to"), you cannot stop the slide to the bottom.

Paul: as you well know, getting a patent and enforcing it are two different things. We will need a bit more time and experience before anyone can determine whether what has been written on this blog was hyperbole. Although I hope in fact that it will turn out that way.

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