4. April 23, 2014 4
Science vs. Engineering
• These two fields have traditionally been inter-related,
but each has a unique domain (though they overlap in
method and products)
• Science, at its core, is the search for natural truths,
natural laws, and physical phenomena
• Engineering involves the application of these laws to
productive ends
6. April 23, 2014 6
The domains…
Algorithm, incorporates law into artifact
(process or product requiring intention)
7. April 23, 2014 7
Science vs. Engineering
science
engineering
8. April 23, 2014 8
Diamond v. Chakrabarthy, 447 U.S.
303 (1980)
• “While laws of nature, physical phenomena, and
abstract ideas are not patentable, respondent's claim
is not to a hitherto unknown natural phenomenon, but
to a nonnaturally occurring manufacture or
composition of matter -- a product of human ingenuity
‘having a distinctive name, character [and] use.’
Hartranft v. Wiegmann, 121 U. S. 609, 121 U. S. 615.
Funk Brothers Seed Co. v. Kalo Inoculant Co., 333 U.
S. 127, distinguished. Pp. 447 U. S. 308-310.”
9. April 23, 2014 9
Science vs. Engineering
Laws of nature,
physical
phenomena,
“abstract ideas” nonnaturally
occurring
manufacture or
composition of
matter -- a product of
human ingenuity
‘having a distinctive
name, character
[and] use
10. April 23, 2014 10
AMP v. Myriad
Claims include: “The isolated DNA of claim 1, wherein
said DNA has the nucleotide sequence set forth in SEQ
ID NO:1.”
11. April 23, 2014 11
How did this happen?
The “isolated and purified” anomaly
• Parke-Davis v. H.K. Mulfor & Co. In Parke-Davis,
Judge Learned Hand considered whether an isolated
and purified form of adrenalin was patentable. The
adrenalin, as patented in U.S. Patent No. 753,177,
was extracted from suprarenal glands as a salt, and
then further purified as a base…
12. April 23, 2014 12
The problem with “isolated and
purified”
Is “isolated and purified”
different from naturally-occurring
QuickTime™ and a
decompressor
are needed to see this picture.
?
13. April 23, 2014 13
The theory
Where the utility of the isolated and purified substance
deviated greatly from the substance in its natural form,
courts have suggested that the novelty requirement is
met. This is both because the purified substance does
not simply occur in nature, and the extraordinary or
unexpected results that are achieved when the
substance is isolated or purified is indicative of
patentable invention
14. April 23, 2014 14
The irrational implication…
• Priestley could have patented O2…
15. April 23, 2014 15
The irrational implication…
• After all, pure, isolated O2
does not occur in nature,
and it is extraordinarily
useful*
* Patent attorneys have actually made this
argument with me… nevermind photosynthesis
16. April 23, 2014 16
Can we reconcile law and reality?
Yes, consider Priestley’s oxygen
He invented a means of accumulating pure
oxygen, by heating mercuric acid. He did not
invent molecular, gaseous oxygen. Arguably,
acc. to Chakrabarthy and Bilski, O2 is a
“physical phenomenon,” not patent-eligible. So
give Priestley a process patent, but not on the
product
17. April 23, 2014 17
Can we reconcile law and reality?
• Thus, William Nicholson and
Anthony Carlisle’s electrolysis
of water in 1800 would not
have violated Priestley’s
patent and would itself be a
patent-eligible process.
18. April 23, 2014 18
Isolation and purification are
inventive, their products often aren’t
• As with adrenaline…
• As with O2…
• As with BRCA 1 & 2…
19. April 23, 2014 19
Post - Myriad and Bilski
Courts could reasonably finally jettison the conflation of
product with process and abandon the “isolated and
purified” myth… O2=O2, even while the means of
accumulated it in a purified form might be new and
inventive.
Similarly, BRCA1 and 2 are natural, not artifactual, and
un-susceptible to patent under the dictates of both
reason and case law.
