A mathematical equation, even directed toward solving a particular problem, cannot be patented. Prometheus (“Mayo”) 132 S. Ct. at 1299. However, in Diehr, the S. Ct. stated, hopefully, that “[a]n application of a law of nature or a mathematical algorithm to a known structure or process may well be deserving of patent protection.” Diehr, 450 U.S. at 1987. Post-Mayo, we have seen precious few examples. In a recent Bd App decision, Ex parte Potts, App. No. 2011-004700 (July 18, 2012), the Board entered a new ground of rejection, patent-ineligibility under 101, to send the application back to the Examiner. The main claims did sound broad, and involved preparing a self-organizing map (SOM) – by topographical data mining (?) from outcomes of previously treated  patients, generating a similar SOM for the patient – insofar as possible – and comparing them to predict whether or not the patient would respond  to a given treatment.

The novel feature was apparently the use of SOM’s for “class prediction” rather than “class discovery.” While this avoided the closest prior art – an earlier patent that is probably invalid as well – Potts could not convince the Board that the claims were more than an attempt to patent “the mathematical formulae underlying those manipulations and presentations [of the data].” The Board did not cite Diehr in passing but relied on Mayo and cited Bilski and Flook with approval:

“The prohibition against patenting abstract ideas ‘ cannot be circumvented by attempting to limit the use of the formula to a particular environment.” Mayo, 132 S. Ct. at 1297, citing….. Flook, 95 U.S. at 595 n.18 (“a claim for an improved method of calculation, even when tied to a specific end use, is unpatentable subject matter under 101.”)

This language is deadly for “business method claims”, including those in the diagnostic field. In fact, the more complicated the algorithm required to manipulate the data, the more likely the claim will be pushed into the patent-ineligible trash can where attempts to patent abstract ideas end up.

In Bancorp v. Sun Life, App. No. 2011-1467 (Fed. Cir. July 26, 2012), the claims involved use of a complex algorithm to track and adjust the value of stable value/protected life insurance policies. The court cited Mayo, 132 S. Ct. at 1294 for the rule that recitation of patent ineligible subject matter does not become patent eligible merely by adding the words “apply it.” Bilski was cited for the proposition that limiting an abstract idea to one field of use or adding token post-solution components does not make the concept patentable.” The claims were held patent-ineligible.

Is an algorithm a law of nature or an abstract idea? I think the more “correct” answer is law of nature, but the presence of one in a claim seems to push the entire claim over into “abstract idea” a la Bilski. The problem may be pragmatic. Like a rejection based on lack of adequate written description that permits a court to avoid application of the Wands factors, a 101 rejection based on the presence of an algorithm lets a court invalidate a claim without further consideration of what constitutes an “abstract idea”. Thus, unpopular “business method claims” will continue to pass through the increasingly fine filter of 101, while the really hard intellectual work goes undone.

Some time ago, I posted that abstract ideas should be confined to those “philosophical” musings that cannot be subjected to proof or disproof by the scientific methods: e.g., “the love you take is equal to the love you make.” If this is what the Chakrabarty Court had in mind, I wish they would have said so thirty-some years ago. Judge Rader could not have written his dissent in Bilski and the IP world might be a much less hostile work environment than it is today.

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  1. bruce toman says:

    I would love to read your reflections on what a “law of nature” is – and is not – under patent law. I had always assumed the term meant E=mc^2 and the like, but after Prometheus and even your column today i don’t know.

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