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April 22, 2019


I am totally on board with the idea that the 1952 Act abrogated the holding of Funk Bros, but I take it that the SCotUS does not see it that way. Claim 10 seems to have some Funk and/or Myriad problems, to my eye, insofar as the distinction between the claim and the natural product appears to be merely one of purification and concentration.

@ Greg

Having spent many happy hours trying to figure out the true rule or rules of law that were applied by the Supreme Court in Funk Bros., I agree that the decision was problematic.

If you dig into the factual background in Funk, you will find that the main claim in issue covered ALL non-interfering mixtures of bacteria without the disclosure having made available to the skilled reader ANY non-interfering mixture. Nor, if my recollection is correct, did the specification contain any useful pointers towards finding any such mixture. All that the specification disclosed was the IDEA THAT SUCH NON-INTERFERING BACTERIA EXISTED and the practical ADVANTAGE of such a mixture, leaving it entirely to the skilled reader to research from first principles to find such mixtures as he or she could.

It is very unfortunate that the opinion of Justice Frankfurter is not more closely studied. However, the background needs to be widely known and appreciated in our profession so that the quoted dictum of Justice Douglas can be evaluated against the factual background of that case and appreciated as less far-reaching than currently supposed.

The holding in Mryiad was MERELY that isolation does not suffice, as explained both at the beginning and in the concluding paragraphs of Justice Thomas' opinion. The rule of law in Myriad was NOT intended to cover purification and concentration and to over-rule the ruling of Judge Learned Hand in Parke-Davis v. Mulford (1911; adrenalin).

We should note and appreciate the present opinion.

"[T]he proper application of the Supreme Court's Alice standard is an evolving and sometimes hazy area of law."

This SCREAMS Void for Vagueness and ultra vires Common Law law writing in a sphere of law Constitutionally delegated to one specific branch of the government (and that branch NOT sharing its authority to write that law).

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