Sequenom, the loser in “Ariosa,” has filed a petition seeking Supreme Court review of the Fed. Cir.’s invalidation of the claims of US Pat. No. 6,258,540 as an attempt to claim a natural product, cffDNA. While there is no dispute among the commentators that this decision was flat-out wrong, the majority of the panel seemed to agree that it was compelled by the “Mayo/Alice Rule” (after they spotted the natural product, cffDNA, and ignored the other claim steps as conventional). (A copy of the Petition can be found at the end of this post.)
As previously noted by me, this is not a great case to settle the issue of whether or not claims based on biomarkers are patent-eligible. All of the claims on appeal, except for claim 21, are simply directed to methods for detecting cffDNA in a maternal serum or plasma sample. These claims are as patentable as a method of testing transgenic potatoes for the level of the precursor to acrylamide – a carcinogen that you do not want in your chips. The claim is a method claim, even if the precursor enzyme is a natural product. Even the ACLU in Myriad argued that, while a new method of mining gold would be patentable subject matter, a gold nugget is not.