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July 18, 2016


Also still incomprehensible to me: how in Claim 2 of Example 29, adding step (c) to the language of Claim 1 renders the claim ineligible. (Step (c) being "diagnosing the patient with julitis when the presence of JUL-1 in the plasma sample is detected.") I wonder if the analysis of claim 1 is somehow being thrown off by the presence in the hypothetical of novel antibodies and the statement that prior to the invention, porcine antibodies "were not routinely or conventionally used to detect human proteins such as JUL-1." But that still would not explain how claim 2 becomes ineligible when a step is added.

I am so glad that the Office folded in Bascom to their memo.

Oh, wait....



It isn't logical and it isn't supposed to be. The Office has taken the position that the novelty of the method rescues it from Sec. 101 invalidity, except when the Supreme Court has expressly held that it does not. Now, I think there are better ways to distinguish these cases, but so long as the PTO believes (as does the CAFC) that their hands are tied, and the Supreme Court is unwilling to revisit the issue, this is the best we are going to get (at least in the Office).

Which is better than nothing.

Thanks for the comment.

Dr. Noonan,

I disagree with a "fait accompli, we have to take this because it is better than nothing" approach or mindset.

One does not throw a big juicy steak to the wolf at the back door "because it is better than nothing."

Thanks, Kevin.
Also I'm wondering if the claim analysis in Bascom (essentially considering the claim as a whole?) signals a retreat from the approach we had seen in some earlier cases pulling the claim apart and analyzing each limitation separately. But maybe now a court can choose to consider the claim as a whole (if they wish to deem it valid) or not (if they wish to invalidate it), with appropriate citations for either approach.

I think the point with claim 2 is that it adds in a new judicial exception, the abstract idea, and that for whatever reason, the claim then becomes "as a whole" directed to that judicial exception without reciting "significantly more." Claim 1 is not considered "directed to" the natural phenomena judicial exception. It's a bit of handwaving but the office's rationale helps explain their logic, if shaky at least its followable.

"I'm wondering if the claim analysis in Bascom (essentially considering the claim as a whole?) signals a retreat from the approach we had seen in some earlier cases pulling the claim apart and analyzing each limitation separately."

I think what it indicates is that one's outcome in a CAFC § 101 case is very panel dependent. I do not doubt for a moment that if Judge Dyk had been on the Bascom panel, then we would have seen a great deal more dissection (at least in a concurrence or dissent). Basically, by this point if a judge wants to dissect, there is precedent to support that approach (BRCA1 Cancer Test, Sequenom, etc) and if one wants not to dissect, there is precedent to support that (Bascom, CellzDirect, etc).

It all comes down to what the judges on a given panel want to do. This is a crummy way to run a system of laws, but at least for the moment it is what we get.


More "but that's what we got."

Accepting "what we got" is just not acceptable.

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