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« MiMedx Group, Inc. v. Liventa Bioscience, Inc. (N.D. Ga. 2017) | Main | International Patent Prosecution and Practice Seminar »

August 17, 2017


It is instructive to study the file of EP 2718773 which is equivalent to US 7223552.

The European application was subjected to searching examination with much cited prior art, going so far as a summons to oral proceedings. The applicant avoided the need for a hearing by a response filed in August 2012, the crucial part of which reads: "There is no suggestion in D9, which describes measurement of MPO activity in frozen homogenized myocardial tissue, that a blood sample can be removed from a human patient and tested for levels of a circulating marker, i.e. MPO activity or mass, and a characterization of the risk of having or developing CVD being made therefrom." Those of us on this side of the Pond would take the view that this says it all.

If we take the claim of the 065 patent:
(a) the hand of man takes a plasma sample from a human patient having CVD;
(b) the hand of man contacts the plasma sample with anti-MPO antibodies, this being an in vitro technical process, not something occurring in nature and being of a transformative nature since a binding product is produced in vitro; and
(c) the hand of man carries out the further in vitro technical process of detecting the binding product, that detection permitting evaluation of whether there is elevated MPO mass.

On any reasonable view, this sequence of steps falls as a matter of substance and not mere appearance within the "process" category of Section 101. On judicial exceptions, the claimed subject matter is not directed to laws of nature but to laboratory operations conducted in test tubes with reagents. If the Memorandum Opinion had been submitted as an extended piece of work in response to a question at Bournemouth University, a failing grade would probably have been appropriate.

Mr. Cole,

By now I had hoped that you would have realized that what the Supreme Court (and merely being applied by the lower courts here) did was provide a weapon that removes the statutory categories from primary consideration.

We really do have a case where exceptions HAVE swallowed the rule.

It was the Supreme Court though that did this.

It was the Supreme Court that (indirect contradiction to the Act of 1952), reached back and reinstalled their "Gist of the invention" mantra that Congress had removed when Congress removed the power of common law development of "invention," "gist of the invention," or other of more than a dozen like phrases and IN THEIR PLACE chose a different path - that of 35 USC 103.

Architects of this change have spoken out (nigh 50 plus years ago) and have, in their time, battled our Supreme Court, who apparently feels compelled to answer to no one.

There indeed is a failing grade to be had here.

But that failing grade goes to our Supreme Court first and foremost.

@ Skeptical

Are you sure that it was the Supreme Court that did this, and not the lower courts, the USPTO and members of our profession through judicial cringe?

Where is the authority in ANY Supreme Court opinion that the standard procedure should be to ignore the affirmative provisions of Section 101, and instead to consider only the judicial exceptions? Have a look at the section entitled "8 Omitted-Case Canon" at page 93 of Scalia and Garner's book Reading Law (and remember with sorrow the passing of Antonin Scalia). Quoting briefly from their first paragraph: "Nor should the judge elaborate unprovided-for exceptions to a text, as Justice Blackburn noted while a circuit judge: 'If the Congress had intended to provide additional exceptions, it would have done so in clear language'" In Diamond v Chakrabarty, Justice Berger quoted United States v. Dubilier Condenser Corp.,289 U. S. 178, 289 U. S. 199 (1933)that courts ""should not read into the patent laws limitations and conditions which the legislature has not expressed." The judicial exceptions of laws of nature, abstract ideas and natural phenomena form a set of exclusions that does not and should not intersect with the set of four eligible categories. The duty of our profession is to remind the lower courts and the USPTO of this fact FIRMLY, CLEARLY and OFTEN with explicit reference to authority.

And as in my Recognicorp brief, where is the authority that the words "directed to" permit rewriting of a patent claim in violation of the "all elements" rule?

As has arisen in a completely different context, Jesus did not pray for a continuous 50-year supply of food. He did not even pray for food to the end of the year. His prayer was for the here and now: "Give us each day our daily bread." Equally in our profession though we might campaign for a new case to go to the Supreme Court or for Congress to amend Section 101, we have to practice our profession and represent our clients each day. All that we can do is to ensure that our claims clearly fall as a matter of substance and not mere outward appearance within one of the four eligible categories, and in court to argue clearly and fully for eligibility demanding that both positive compliance and judicial exceptions should be considered.

To directly answer your question, "Are you sure that it was the Supreme Court that did this"


Follow Justice Stevens along the arc of the eligibility cases (as well as his mentor and his protegee). Then follow those that joined him in the Bilski dissent dressed as a concurrence.

The Court (notably the current Court as opposed to your reference to past historical icons) has fractured and its views are not reconcilable with itself.

@ Skeptical

I suspect that we are both right, but in different ways.

Mr. Cole,

Call me skeptical (naturally), but the ways in which we are both right are not equal. I believe that you may be right in a "this is how it should be based on academics" model, while I am right based on "this is how it is in the real world because the Supreme Court DOES act as if it is above the Constitution, and legislates on statutory law from the bench."

Your snippets then of past Supreme Court lucidity, simply fall away in the aggregate view of what the Court has actually done - and the mess that the Court has created in US patent law.

The sad thing of course is that ALL of the proposed changes to Congress to undo the recent spate of eligibility decisions of the Court are in vain, unless the Congress exercises its own Constitutional power of jurisdiction stripping and removing the Supreme Court from the non-original jurisdiction of patent appeals.

Granted, an Article III court must still be involved (to preserve the holding of Judicial Review from the Marbury** case), and granted that the current CAFC is not a worthy vessel for such a responsibility, given how brow-beaten that entity has become; so a new dedicated Article III patent court should accompany any application of jurisdiction stripping.

That's a tall order for a legislature that is by and large captured (or at the least, overly influenced by the voices traceable to the merely juristic persons of corporations, such voices unduly amplified by our Citizens United case).

So the chances of a true and deep correction are not great.

** As a scholar, I am sure that you can appreciate that the judicial review holding of Marbury NOWHERE indicates that such review must be with the Supremes themselves, and that any view of the Supremes towards non-original jurisdiction stripping cannot rewrite that Constitutional power merely to enable the Court to keep its fingers in the wax nose of 101.

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