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ARTICLE
PROMETHEUS LABORATORIES, MENTAL
STEPS, AND PRINTED MATTER
Kevin Emerson Collins∗
ABSTRACT
This article identifies connections between the Supreme
Court’s recent opinion in Mayo Collaborative Services v. Prometheus
Laboratories and two doctrines that federal appellate courts have
used to curb the reach of patent protection: the historical mental
steps doctrine and the contemporary printed matter doctrine. These
connections suggest a new way of thinking about what the Court is
doing in its Prometheus Laboratories opinion. On its rhetorical
surface, the opinion clearly addresses the role that “laws of nature”
have long played in restricting the reach of patentable subject
matter. However, beneath its laws-of-nature rhetoric, Prometheus
Laboratories can also be construed as a case that explores the
impact of the unpatentability of the human mind on the reach of
patent protection. The Court’s Prometheus Laboratories opinion
resonates strongly with both historical limits on the patentability of
newly invented mental processes (mental steps) and contemporary
limits on the patentability of information that is meaningful to the
human mind (printed matter).
TABLE OF CONTENTS
I.
INTRODUCTION...................................................................... 392
II. PROMETHEUS LABORATORIES AND THE HISTORICAL
MENTAL STEPS DOCTRINE .................................................... 397
∗ Professor
of
Law,
Washington
University
School
of
Law.
kecollins@wulaw.wustl.edu. I thank the presenters and fellows at the University of
Houston’s 2012 Santa Fe conference for their useful comments.
391
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A. Substitute Exclusions .................................................... 398
1. The Claims ............................................................. 398
2. The Doctrinal Analyses. ......................................... 402
3. The Substantive Limits on Patentable
Subject Matter. ....................................................... 409
B. Disrupting the Status Quo: The Mental Steps
Doctrine Revived ........................................................... 411
1. In re Musgrave....................................................... 411
2. Diamond v. Diehr................................................... 416
III. PROMETHEUS LABORATORIES AND THE CONTEMPORARY
PRINTED MATTER DOCTRINE ................................................ 420
A. The Contemporary Core of the Printed Matter
Doctrine ......................................................................... 421
B. Complementary Exclusions ........................................... 427
C. Continuity with the Status Quo: Erasing the
Arbitrary Statutory Divide............................................ 430
IV. CONCLUSION ......................................................................... 434
I. INTRODUCTION
On its rhetorical surface, the U.S. Supreme Court opinion
in Mayo Collaborative Services v. Prometheus Laboratories
clearly addresses the role that “laws of nature” have long
played in restricting the reach of patentable subject matter
1
under § 101 of the Patent Act. The Court invalidates a claim
to a medical diagnostic method, reasoning that the claim is an
unpatentable attempt to privatize a newly discovered law of
nature in the abstract rather than a patentable description of
an inventive application of the law of nature.2 Given this
conceptual framework, the opinion, for the most part, cites and
discusses only the Court’s own cases addressing the
patentability of laws of nature.3
This Article offers a different perspective on the Court’s
Prometheus Laboratories opinion that is not focused solely on
the exclusion of laws of nature from patentable subject matter.
It identifies strong and multi-stranded connections between
1. Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1292
(2012).
2. Id. at 1294.
3. See id. at 1293, 1298–301 (citing, e.g., Diamond v. Diehr, 450 U.S. 175 (1981);
Parker v. Flook, 437 U.S. 584 (1978); Gottschalk v. Benson, 409 U.S. 63 (1972); Funk
Bros. Seed Co. v. Kalo Inoculant Co., 333 U.S. 127 (1948); O’Reilly v. Morse, 56 U.S. (15
How.) 62 (1853)).
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the Court’s Prometheus Laboratories opinion and two doctrines
that federal appellate courts have used to curb the reach of
patent protection: the historical mental steps doctrine of the
Court of Customs and Patent Appeals (CCPA) and the
contemporary printed matter doctrine of the Court of Appeals
for the Federal Circuit (CAFC).4 The goal of drawing these
connections is to suggest a different way of thinking about the
law that the Court has created in its Prometheus Laboratories
opinion. The connections demonstrate that, underneath its
rhetorical surface, the Court’s Prometheus Laboratories
opinion resonates strongly with both historical limits on the
patentability of mental processes (mental steps) and
contemporary limits on the patentability of information that is
meaningful to the human mind (printed matter). Perhaps this
resonance is significant. Perhaps it would make sense to
understand Prometheus Laboratories as a case that is as much
about the human mind as a limit on patent protection as it is
about laws of nature as a limit on patent protection.
The mental steps doctrine was a facet of the doctrine of
patentable subject matter that the CCPA employed to curtail the
patentability of method claims reciting processes that were
mental in the sense that they could be performed entirely by a
human mind.5 More specifically, it employed a point-of-novelty
analysis to restrict the patentability of mental processes. A
method claim reciting a mental process was not categorically
excluded from patentable subject matter. Rather, it was beyond
patentable subject matter only if a mental-process limitation was
the claim’s sole point of novelty.6 The mental steps doctrine was
relatively short lived. The CCPA first clearly articulated the
7
mental steps doctrine in its 1951 case In re Abrams, but it had
abandoned the doctrine by 1970 in the course of its struggle with
the patentability of computer software.8 The CAFC never revived
4. The CCPA was a precursor to the CAFC that heard patent applicants’ appeals
when the Patent and Trademark Office (PTO) rejected their applications. The CCPA was
dissolved, and the CAFC was founded, in 1982.
5. Diehr, 450 U.S. at 195–96 (1980) (Stevens, J., dissenting) (discussing the
principles of the “mental steps doctrine”).
6. Id.; see also infra notes 57–70 (explaining point-of-novelty analysis).
7. In re Abrams, 188 F.2d 165, 169 (C.C.P.A. 1951). Although Abrams articulates
the authoritative formulation of the mental steps doctrine, the CCPA’s application of the
mental steps doctrine to the Abrams claim is problematic. See infra text accompanying
notes 57–78.
8. In re Musgrave, 431 F.2d 882, 894–95 (C.C.P.A. 1970). Signs of the CCPA’s
skepticism towards the mental steps doctrine can be seen in earlier, pre-Musgrave cases.
See, e.g., In re Prater, 415 F.2d 1378, 1385, 1387 (C.C.P.A. 1968), superseded by 415 F.2d
1393 (C.C.P.A. 1969).
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the doctrine, and it does not consider the doctrine to be good law
today.9
The Court’s opinion in Prometheus Laboratories and the
mental steps doctrine of Abrams are connected on two distinct
levels. First, the two impose very similar limits on the
patentability of medical diagnostic claims like those at issue in
Prometheus Laboratories. The two are rough substitutes in the
area of medical diagnostics in the sense that the restrictions on
patentability articulated in Prometheus Laboratories and the
mental steps doctrine have considerable substantive redundancy.
Despite being decided over sixty years apart and being drawn to
inventions in different technological fields, the claims at issue in
Prometheus Laboratories and Abrams both describe diagnostic
methods that follow the identical template. They are both
determine-and-infer claims: they describe the acts of determining
a first fact and inferring a second fact through a mental syllogism
that is enabled by a newly discovered, natural correlation (a “law
of nature” in the Court’s terminology in Prometheus
10
Abrams and Prometheus Laboratories also
Laboratories).
employ parallel doctrinal analyses. In Prometheus Laboratories,
the Court employs what this Article refers to as a bracket-anddistinguish analysis to identify unpatentable claims to laws of
nature. It conceptually brackets off any laws of nature that are
wound up with the claimed subject matter and invalidates any
claims in which there is nothing that distinguishes the
remaining, unbracketed subject matter from conventional
technology.11 The bracket-and-distinguish analysis of Prometheus
Laboratories does for laws of nature precisely what the point-ofnovelty analysis of Abrams does for mental processes: the
distinction between a claim and the prior art cannot reside solely
in a feature of the claimed invention that, standing alone, is not
patentable subject matter. In determine-and-infer claims, the
two distinct kinds of unpatentable subject matter are
compounded in the same step: the inference step is a mental
process that employs a law of nature as a factual premise.
Prometheus Laboratories is thus a rough substitute for Abrams in
the area of diagnostic method claims: it is doing much of the very
work to limit the reach of the patent regime that used to be done
by the mental steps doctrine.
9. In re Bilski, 545 F.3d 943, 960–61 (Fed. Cir. 2008) (en banc), aff’d on other
grounds sub nom. Bilski v. Kappos, 130 S. Ct. 3218 (2010).
10. See infra Section II.A.1.
11. Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1297
(2012); see also infra notes 44–48 (explaining bracket-and-distinguish analysis).
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Second, Prometheus Laboratories and the mental steps
doctrine are connected in the sense that Prometheus Laboratories
removes all precedent that precludes a full revitalization of the
mental steps doctrine in the CAFC in the future. The CAFC
never revisited the CCPA’s abandonment of the mental steps
doctrine because it interpreted the Supreme Court’s reasoning in
Diamond v. Diehr to forbid a point-of-novelty analysis as a
12
methodology for identifying patentable subject matter. By
adopting and defending the bracket-and-distinguish analysis in
Prometheus Laboratories—the functional equivalent of a point-ofnovelty analysis—the Supreme Court has in effect, if not in
express language, repudiated its earlier position in Diehr,
undermined the CAFC’s position on the mental steps doctrine,
and cleared the way for the doctrine’s revival.
The cases at the contemporary core of the CAFC’s printed
matter doctrine involve claims with limitations that recite
information with content that is meaningful to the human
13
mind. More specifically, they employ a point-of-novelty analysis
to invalidate claims for a lack of novelty under § 102 or
nonobviousness under § 103 when the only difference between a
claimed invention and the prior art resides in the content of the
claimed information.14 For example, a claim to the combination of
an old kit of chemicals and a set of printed instructions conveying
a newly discovered method of using the chemicals is not
patentable under the printed matter doctrine.15 Similarly, a twostep method of giving known drugs to a patient and informing
the patient of the most effective way to ingest the drugs is not a
patentable invention when the information conveyed to the
patient is the only point of novelty.16 In both situations, the
distinction between the claimed invention and the prior art
resides in the content of the information, i.e., in the meaning that
the information has to a human interpreter.
The printed matter doctrine and Prometheus Laboratories
are complementary in the sense that they place distinct limits on
the reach of the patent regime that work together to achieve a
single goal: they prevent the discovery of a law of nature from
ever being a patentable event in and of itself. The discovery of a
12. Diamond v. Diehr, 450 U.S. 175, 188–89 (1981); In re Bilski, 545 F.3d at 958.
13. See, e.g., In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004).
14. See In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) (nonobviousness); In re
Ngai, 367 F.3d at 1338–39 (novelty); see also DONALD S. CHISUM, CHISUM ON PATENTS
§ 1.02[4][e], at 1–42 (2012).
15. In re Ngai, 367 F.3d at 1339.
16. King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1279 (Fed. Cir. 2010).
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law of nature is nothing more than the creation of a new type of
factual knowledge about the world. In turn, factual knowledge
per se exists in two distinct manifestations: it exists as mental
states within human minds, e.g., mental states of
“understanding” or “comprehending” the law of nature, and as
extra-mental information that is meaningful to human minds. To
prevent the raw factual knowledge that constitutes the discovery
of a law of nature from being a patentable entity, a two-pronged
restriction on patent protection is needed. The printed matter
doctrine uses a point-of-novelty analysis to restrict the
patentability of the extra-mental information that conveys or
disseminates factual knowledge. Prometheus Laboratories then
picks up where the printed matter doctrine leaves off. It uses the
bracket-and-distinguish analysis to restrict the patentability of
the manifestations of factual knowledge of a law of nature that
exist within human minds. If it is simply the mental
comprehension of a newly discovered law of nature that
distinguishes a claimed process from the prior art, Prometheus
Laboratories holds that the process is not patentable subject
matter.
The complementarity of Prometheus Laboratories and the
printed matter doctrine suggests a new way of understanding the
relationship between Prometheus Laboratories and contemporary
CAFC law. The conventional narrative emphasizes the break
that Prometheus Laboratories makes from the immediate past:
the Supreme Court retreated from its opinion in Diamond v.
Diehr and thus upset thirty years of the status quo in the CAFC
on the patentability of laws of nature.17 The dovetail connection
between the core of the CAFC’s contemporary printed matter
doctrine and Prometheus Laboratories inverts this narrative and
highlights a strand of continuity. To see this continuity, however,
the patent community must look at the Patent Act holistically,
breaking down the distinct, statutorily defined doctrinal silos
that traditionally structure patent scholarship. It must not
categorically isolate invalidity under § 101 (the statutory
provision at issue in Prometheus Laboratories and the mental
steps doctrine)18 from invalidity under §§ 102 and 103 (the
17. See, e.g., Bernard Chao, Moderating Mayo, 107 NW. L. REV. COLLOQUY 82, 88–89
(2012),
http://www.law.northwestern.edu/lawreview/colloquy/2012/12/LRColl2012n12
Chao.pdf. Similarly, Prometheus Laboratories also upends the CAFC’s longstanding
refusal to recognize the mental steps doctrine as a limit on patentable subject matter. See
infra text accompanying notes 147–55.
18. Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293–94
(2012) (discussing problems with patentability under section 101 of the Patent Act); see
also In re Abrams, 188 F.2d 165, 165 (C.C.P.A. 1951) (rejecting patent claim based on 35
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statutory provisions at issue in the contemporary core of the
printed matter doctrine).19
Viewed at close range, the two groups of connections drawn
in this Article tell two divergent stories. The connections between
Prometheus Laboratories and the historical mental steps doctrine
tell a story of both substantive redundancy—the two doctrines
invalidate similar, if not identical, sets of diagnostic method
claims—and inversion of the CAFC’s pre-Prometheus status quo.
In contrast, the connections between Prometheus Laboratories
and the contemporary printed matter doctrine tell a story of both
substantive complementarity—the two doctrines invalidate
distinct sets of claims to achieve a unified goal—and continuity
with the CAFC’s pre-Prometheus status quo. Viewed more
broadly, however, the two groups of connections both point to the
same line of future inquiry. Prometheus Laboratories is
intimately wound up with cases in which lower courts restrict the
reach of patent protection into the processes that comprise
human minds and the extra-mental information that is
meaningful to human minds. Thus, perhaps it would be
productive to understand Prometheus Laboratories as a case that
is as much about the unpatentability of the human mind as it is
about the unpatentability of laws of nature.
This Article proceeds in three parts. Part II identifies
connections between Prometheus Laboratories and the mental
steps doctrine of Abrams. Part III discusses the connections
between Prometheus Laboratories and the contemporary core of
the printed matter doctrine. Part IV concludes.
II. PROMETHEUS LABORATORIES AND THE HISTORICAL MENTAL
STEPS DOCTRINE
This Part examines two types of links between Prometheus
Laboratories and Abrams––the case in which the CCPA first
clearly articulated the mental steps doctrine. Section II.A
highlights the substantive redundancy of the exclusions from
patentable subject matter effectuated by Prometheus
Laboratories and Abrams in the area of medical diagnostics.
Section II.B argues that Prometheus Laboratories clears the way
for the revival of Abrams in the CAFC.
U.S.C.A § 31, which has been recodified as 35 U.S.C. § 101).
19. See King Pharm., 616 F.3d at 1274, 1278, 1283 (discussing the issues in the case
as related to section 102 of the Patent Act); In re Gulack, 703 F.2d at 1385 (discussing the
issues in the case as related to section 103 of the Patent Act).
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A. Substitute Exclusions
Prometheus Laboratories and Abrams have striking
similarities on two dimensions. First, Section II.A.1
demonstrates that the claims at issue in the two cases follow the
identical template: they both describe mental processes that are
enabled by knowledge of newly discovered laws of nature.
Second, Section II.A.2 illustrates that the doctrinal analyses
employed in the two cases—namely the bracket-and-distinguish
and point-of-novelty analyses—have parallel structures. Section
II.A.3 then examines the exclusions from patentable subject
matter that Prometheus Laboratories and Abrams generate.
Although one focuses on laws of nature and the other focuses on
mental processes, both draw the same outer boundary for
patentable subject matter when claims describe diagnostic
processes that involve mental acts of reasoning that employ
newly discovered laws of nature as factual premises.
1. The Claims. The patent claims at issue in Prometheus
Laboratories describe a medical diagnostic method.20 More
specifically, they describe a method through which a doctor can
determine whether there is a need to adjust the dosage of
thiopurine drugs taken by patients who have autoimmune
21
diseases. Upon ingestion of a thiopurine drug, a patient’s body
breaks the drug down into metabolites, including 6-TG.22 (Patients
metabolize thiopurine drugs differently, so two patients taking the
same dosage of a thiopurine drug may have significantly different
levels of the metabolites in their blood. 23) Even before the
researchers’ work, a general correlation between the levels of the
metabolites in a patient’s body and the likely clinical outcome for
the patient was already known. Too much of the metabolite leads to
concerns about safety and toxicity, whereas too little of the
metabolite leads to concerns about inefficacy.24 The inventors
quantified this correlation. They identified specific upper and lower
thresholds for 6-TG that, if surpassed, lead to the safety and
inefficacy concerns, respectively.25 Based on their discovery, the
researchers filed for, and received, patent protection for a method of
diagnosing whether a patient was taking an optimal amount of a
20.
21.
22.
23.
24.
25.
Prometheus Labs., 132 S. Ct. at 1294.
Id. at 1295.
Id.
Id.
Id.
Id.
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thiopurine drug.26 The Court took the following claim to be
representative:
A method of optimizing therapeutic efficacy for treatment of
an [autoimmune] disorder, comprising:
(a) administering a [thiopurine] drug . . . to a subject having
said . . . disorder; and
(b) determining the level of [6-TG] in said subject . . .
wherein the level of [6-TG] less than about 230 pmol per
8
8x10 red blood cells indicates a need to increase the
amount of said drug subsequently administered to said
subject and
wherein the level of [6-TG] greater than about 400 pmol
8
per 8x10 red blood cells indicates a need to decrease the
amount of said drug subsequently administered to said
27
subject.
The “wherein” clauses describe the mental step in which a
doctor comes to understand the need to adjust the drug dosage;
no post-understanding action on the part of the doctor, such as
an actual adjustment to the amount of the drug administered, is
28
required for infringement. As the Court summarized the claims,
they “tell a treating doctor to measure metabolite levels and to
consider the resulting measurements in light of the statistical
29
relationships they describe.”
Abrams arose from an invention in the field of petroleum
30
prospecting. It is often difficult to discern where oil is located
below the ground based on an inspection of the visible surface
of the ground. Drilling boreholes in a random fashion is
possible, but it is wasteful. The Abrams claims describe a
method of determining if boreholes are in the vicinity of a
petroleum deposit even though they do not directly tap into a
deposit.31 The factual premises that underlie the claims is that
petroleum deposits create “gaseous emanations in and about
the area of their location” and that these emanations can be
detected by measuring the rate at which air pressure rises in a
sealed-off borehole.32 The CCPA took a six-step method as
representative:
26.
27.
28.
29.
30.
31.
32.
Id.
Id.
Id. at 1296.
Id. at 1302.
In re Abrams, 188 F.2d 165, 165 (C.C.P.A. 1951).
Id. at 165–66.
Id.
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(1) sinking a number of boreholes . . . ,
(2) sealing off each of said boreholes from the
atmosphere . . . ,
(3) reducing the pressure in said borehole[s] . . . ,
(4) measuring the rate of pressure rise . . . ,
(5) [standardizing the data gathered on] the rate of
pressure rise . . . at a standard reference pressure . . . , and
(6) comparing the rates determined in step 5 for different
boreholes to detect anomalies which are indicative of the
33
presence of [petroleum] deposits.
The Abrams claims do not require subsequent drilling in the
vicinity of a borehole with an elevated rate of pressure rise for
infringement.34 The claim can be infringed simply by coming to
an understanding that certain boreholes have characteristics
that are indicative of the presence of petroleum deposits in the
area.35 That is, to paraphrase the above description from
Prometheus Laboratories, the claims “tell [an oil prospector] to
measure [the rates of pressure rise] and to consider the resulting
measurements in light of the statistical relationships they
36
describe.”
The claims at issue in Prometheus Laboratories and
Abrams share a number of characteristics. Both describe
methods for ascertaining some fact that cannot be readily
perceived through direct observation. Although the label
“diagnostic method” is often used to imply a method in the
medical arts, the Abrams claim is just as much of a diagnostic
method as the Prometheus Laboratories claim is. The Abrams
claim simply diagnoses the earth’s geology rather than a
patient’s heath. Additionally, both claims build on natural
correlations or laws of nature. In Prometheus Laboratories, the
law of nature is in part the correlation between the facts that
(i) the patient’s metabolite level is above a certain threshold
and (ii) a patient is taking so much of a thiopurine drug that
37
he has an elevated risk of suffering adverse side effects. In
Abrams, the law of nature is the correlation between the facts
that (i) there are unusually high gaseous emanations in a
33. Id. at 165.
34. Id. at 166.
35. Id. (stating that flow rate as a characteristic must be merely “compared to
detect anomalies which are indicative of the presence of [petroleum] deposits”).
36. Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1302
(2012).
37. Id. at 1295.
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borehole and (ii) there is a higher probability of a petroleum
deposit being near the borehole.38 The CCPA does not identify
the Abrams correlation as a law of nature, but it clearly is just
as natural and just as law-like as the Prometheus Laboratories
correlation, if not more so.39
Both claims also put the correlations to practical use in the
40
same way: they are determine-and-infer claims. They initially
describe (in one or more steps) the worldly, extra-mental, or
41
physical act of determining a first fact about an individual. Both
claims then describe a mental syllogism that employs the first
fact about the individual and the law of nature as premises to
infer a second fact about the individual as a conclusion. In
generic form, the claimed syllogism is as follows:
Premise 1: An individual has property X.
Premise 2: In general, individuals who have property X are
more likely than usual to have property Y.
Conclusion: Said individual is more likely than usual to
42
have property Y.
The common template becomes yet clearer when the Abrams
claim is redrafted in the exact format of the Prometheus
Laboratories claim with the inference in a “wherein” clause:
(1) sinking a number of boreholes . . .
(2) determining the rate of pressure rise in said
boreholes . . . at a standard reference pressure . . .
wherein an anomalously high rate of pressure rise indicates
43
a likelihood of petroleum deposits in the vicinity.
38. In re Abrams, 188 F.2d at 165–66. It is unclear from the Abrams opinion
whether this correlation was discovered by the patent applicant.
39. The Prometheus Laboratories correlation was held to be natural despite the fact
that thiopurine drugs are man-made pharmaceuticals. Prometheus Labs., 132 S. Ct. at
1296–97. Therefore, the man-made nature of the boreholes does not preclude the Abrams
correlation from being a law of nature.
40. For a more detailed explanation of the nature of the claimed logical inference,
see generally Kevin Emerson Collins, Propertizing Thought, 60 SMU L. REV. 317 (2007).
41. The term “individual” does not refer only to a human. It refers to a token rather
than a type, or a particular individual rather than a class of entities. For example, any
given borehole is an “individual” in Abrams.
42. The determine-and-infer template challenges the perception that Prometheus
Laboratories is a case with significant implications for biomedical diagnostics in
particular. See, e.g., Asher Hodes, Diagnosing Patentable Subject Matter, 26 BERKELEY
TECH. L.J. 225, 230–40 (2011); Brent Kendall et al., Top Court Decision Stirs Alarm in
Biotech, WALL ST. J., Mar. 21, 2012, at A1. Prometheus in fact addresses the patentability
of determine-and-infer claims in all technological arts, not only the biomedical arts. Cf.
Collins, supra note 40, at 342–44 (noting that the determine-and-infer template can be
used to draft a diagnostic claim in any art).
43. This claim is slightly broader than the actual Abrams claim because the single,
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The determine-and-infer template that underlies the claims
in Prometheus Laboratories and Abrams demonstrates that the
two cases result from two confrontations, over sixty years apart,
with the exact same challenge to the reach of patentable subject
matter. However, courts deciding the two cases identified
different problems in need of a solution. As explored in the
following Section, the doctrine deployed in Prometheus
Laboratories queries whether the claims impermissibly describe
newly discovered laws of nature in the abstract, whereas the
doctrine articulated in Abrams probes whether the claims are, in
effect, unpatentable claims to purely mental processes.
2. The Doctrinal Analyses. In Prometheus Laboratories, the
Supreme Court employs a bracket-and-distinguish analysis to draw
the boundary between categorically unpatentable claims to newly
discovered laws of nature per se and potentially patentable claims
to applications of those laws. As its name suggests, the bracket-anddistinguish analysis involves two steps. First, the Court identifies
the laws of nature at issue and conceptually brackets them off from
the remainder of the claimed subject matter.44 Second, the Court
compares the portion of the claimed subject matter that remains
outside of the brackets to the technology that was conventional at
the time of the invention.45 The claim does not describe patentable
subject matter if “the steps in the claimed processes (apart from the
natural laws themselves) involve well-understood, routine,
conventional activity previously engaged in by researchers in the
field.”46 In other words, “[p]urely ‘conventional or obvious’ ‘[pre]solution activity’ is normally not sufficient to transform an
unpatentable law of nature into a patent-eligible application of such
a law.”47 In contrast, if the claim recites in addition to the natural
law “other elements or a combination of elements, sometimes
referred to as an ‘inventive concept,’ sufficient to ensure that the
patent in practice amounts to significantly more than a patent upon
the natural law itself,” then the claim describes a patentable
application of a law of nature.48
generally formulated step (2) replaces a number of more particularized steps.
44. Prometheus Labs., 132 S. Ct. at 1297. The precedent from which Prometheus
Laboratories draws the bracket-and-distinguish analysis brackets the law of nature by
treating it as part of the prior art. Parker v. Flook, 437 U.S. 584, 591–92 (1978); infra note
136 and accompanying text. In contrast, Prometheus Laboratories brackets off the law of
nature without indicating that it should be part of the prior art. However, this difference
appears to be more semantic than substantive.
45. Prometheus Labs., 132 S. Ct. at 1298.
46. Id. at 1294.
47. Id. at 1298 (second alteration in original) (quoting Flook, 437 U.S. at 590).
48. Id. at 1294 (quoting Flook, 437 U.S. at 594). Prometheus Laboratories also
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The Court holds that the Prometheus Laboratories claims
49
fall on the unpatentable side of the boundary. The Court
identifies the correlation “between concentrations of certain
metabolites in the blood and the likelihood that a dosage of a
thiopurine drug will . . . cause harm” as a law of nature, and
finds nothing in the claimed subject matter beyond the law of
50
nature that makes the claim eligible for patent protection. The
“administering” and “determining” steps recite conventional
processes that were well-known in the prior art at the time of the
invention. The “administering” step was old because “doctors
used thiopurine drugs to treat patients suffering from
autoimmune disorders long before anyone” discovered the
correlations.51 Similarly, the “determining” step lacked novelty at
that time, as “methods for determining metabolite levels were
well known in the art.”52 The mental wherein step was concededly
new, but the Court attributes its novelty entirely to the newly
discovered laws of nature: it is nothing more than “a suggestion
that [a doctor] should take [the laws of nature] into account when
53
treating his patient.” Finally, recognizing that, in theory, an
“inventive concept” could come from the combination of steps that
individually were conventional, the Court noted that the
combination of the steps “adds nothing . . . that is not already
present when the steps are considered separately.”54 In summary,
the court explained its ruling as follows:
To put the matter more succinctly, the claims inform a
relevant audience about certain laws of nature; any additional
steps consist of well-understood, routine, conventional activity
already engaged in by the scientific community; and those
steps, when viewed as a whole, add nothing significant beyond
55
the sum of their parts taken separately.
discusses the dynamic costs of the claims at issue—that is, the social costs that follow
from the effects the claims will have on future inventors who seek to use the claimed
subject matter as an input into further innovation. Id. (“At the same time, upholding the
patents would risk disproportionately tying up the use of the underlying natural laws,
inhibiting their use in the making of further discoveries.”). It is possible that the existence
of significant dynamic costs will be a second prong of a conjunctive test for the
identification of impermissible claims to laws of nature. However, in order to draw out the
connections between Prometheus Laboratories and the mental steps and printed matter
doctrines, this Article does not dwell on the dynamic-cost issue.
49. For a discussion of the claims at issue in Prometheus Laboratories, see supra
Section II.A.1.
50. Prometheus Labs., 132 S. Ct. at 1296–97.
51. Id. at 1297.
52. Id. at 1297–98.
53. Id. at 1297.
54. Id. at 1298.
55. Id.
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Reinforcing the Court’s position that it is the conventionality
of the claimed subject matter (other than the law of nature) that
led to the claims being labeled as unpatentable subject matter,
the Court left open for future cases the following question: “We
need not, and do not, now decide whether were the steps at issue
here less conventional, these features of the claims would prove
sufficient to invalidate them.”56
In Abrams, the CCPA uses a point-of-novelty analysis to
draw the boundary between categorically unpatentable claims to
purely mental processes and potentially patentable claims to
57
processes that happen to include some mental steps. Abrams
lays out this analysis in the form of three rules suggested by the
appellant. The first rule deals with the simple limiting case: “[i]f
all the steps of a method claim are purely mental,” the claim is
58
not patentable subject matter. The second and third rules deal
with mixed claims that embody both “positive and physical
steps”—i.e., extra-mental steps—in addition to purely mental
59
steps. The second rule holds that mixed claims are not
patentable subject matter if “the alleged novelty or advance over
the art” required for patentability under what are now the
novelty and nonobviousness provisions “resides [even in part] in
one or more of the so-called mental steps.”60 The third rule states
the implicit negative corollary of the second rule: mixed claims
are patentable subject matter if “the novelty or advance over the
art” required for patentability can be found “in one or more of the
positive and physical steps” without reference to any mental
steps.61 When the third rule applies, the mental steps “are
incidental parts of the [claimed] process which are essential to
[only] define, qualify or limit its scope” and not to demonstrate
62
that a patentable advance over the prior art has occurred. A
fourth, implicit rule not mentioned in Abrams is that claims
comprised of only extra-mental steps are never barred by the
63
mental steps doctrine.
The CCPA affirmed the PTO’s rejection of the Abrams claims
for failure to describe patentable subject matter under the
64
mental steps doctrine. The first two steps are extra-mental
56.
57.
58.
59.
60.
61.
62.
63.
64.
Id. at 1302.
In re Abrams, 188 F.2d 165, 167 (C.C.P.A. 1951).
Id. at 166.
Id.
Id.
Id.
Id.
Id. at 166–67.
For a discussion of the claims at issue in Abrams, see supra Section II.A.1.
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steps that lack novelty, whether taken individually or
collectively.65 The PTO identified the last two steps as purely
mental steps, and the CCPA seems to have concurred.66 The
dispute therefore centered on the third “reducing” and fourth
“measuring” steps, which are also clearly extra-mental steps that
cannot be performed by a mind alone.67 The patent applicant
argued that these steps embodied “differences in procedure over
the acknowledged prior art.”68 While apparently conceding the
novelty of these steps, the PTO concluded that they did not bring
the claim within the bounds of patentable subject matter because
“these steps . . . are without significance in the absence of the
[mental] calculation steps” in steps five and six.69 Without fully
explaining its reasoning, the CCPA agreed with the PTO’s
conclusion, noting that “it seems to us that [the claims] are
eliminated from the applicability of appellant’s proposed rule 3,
70
and fall within No. 2.”
Although it clearly states the basic rules of the mental steps
doctrine, Abrams may involve an incorrect application of those
rules to the claims at issue. Assuming that the “reducing” and
“measuring” steps are novel in relation to the prior art and that
the CCPA adopted the PTO’s reasoning, the CCPA’s reasoning in
71
Abrams is unsound. The PTO stated that the advance over the
prior art cannot reside in extra-mental steps whose sole utility is
the production of data that, in turn, is useful as only an input
into a subsequent, unclaimed mental activity.72 This
interpretation of the mental steps doctrine is untenable. It would
undermine the patentability of a large number of conventionally
65. In re Abrams, 188 F.2d at 167, 169.
66. Id. at 165, 167. But cf. id. at 167–68 (noting that the patent applicant argued
the fifth step was not a mental step).
67. Id. at 167–70.
68. Id. at 167.
69. Id. This point is made clearly in Commissioner of Patents’ brief in Abrams:
As stated by the Board of Appeals in its decision (R. 40) “the steps defined in the
claims on appeal without the mental steps would render the process
meaningless.” The sole function served by the manipulative or physical steps in
the claims is that of deriving certain numerical data. This data is completely
without utility in the absence of mental operations thereon. . . . [The mental
steps] consist[ ] of calculating and comparing operations to render the derived
figures useful.
Brief for the Commissioner of Patents at 4, In re Abrams, 188 F.2d 165 (C.C.P.A.
1951) (No. 5723).
70. In re Abrams, 188 F.2d at 170.
71. It is possible that the CCPA determined that these steps were old in the art,
making the applicability of Rule 2 a clear-cut issue. However, the CCPA never rebuts the
patent applicant’s argument that these steps represent an advance over the prior art.
72. In re Abrams, 188 F.2d at 167.
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patentable diagnostic technologies. For example, assume that an
inventor invents a chemical that turns blue in the presence of
human blood. In addition to a product claim, the inventor may
seek a method claim of diagnosing whether a stain is a blood
stain comprising applying the chemical to a stain. To the extent
that the chemical itself is novel and nonobvious, the method
claim should be patentable, too. However, under the PTO’s
reasoning in Abrams, the method claim would not be patentable
subject matter under the mental steps doctrine. Despite the fact
that it recites only extra-mental steps, those steps are “without
significance in the absence of the [mental] calculation steps” that
translate the blue color into a “diagnosis” that the stain is a blood
stain.73 To avoid turning the mental steps doctrine into a
radically overbroad exclusion from patentable subject matter, it
is important to make a clean distinction between limitations
reciting mental steps and limitations reciting extra-mental steps
that yield useful factual data. Under a normatively acceptable
version of the mental steps doctrine, only the former cannot be
considered when assessing whether the claim as a whole contains
an advance over the prior art.
Assuming that the “reducing” and “measuring” steps are
novel in relation to the prior art, the CCPA should have
undertaken something akin to a nonobviousness analysis as part
74
of the mental steps doctrine. It should have queried whether the
combination of the four extra-mental steps represents enough of
an advance over the prior art to be patentable: was the method of
sinking a number of boreholes, sealing off the boreholes from the
atmosphere, reducing the pressure in the boreholes, and
measuring the rate of temperature rise in the boreholes
nonobvious? If it was not, then the CCPA reached the correct
conclusion (albeit, perhaps, by the wrong route) as Rule 2 of the
mental steps doctrine should govern.75 If it was, however, then
76
Rule 3 should govern, as the patent applicant argued that it did.
A truncated version of the claimed method in which the mental
steps are excised would be a patentable advance over the prior
73. Id.
74. A literal reference to nonobviousness in Abrams would be anachronism. The
nonobviousness requirement was first codified in the Patent Act in 1952, the year after
Abrams was decided. Patent Act of 1952, Pub. L. No. 593-950, 66 Stat. 792 (codified as
amended at 35 U.S.C. § 103 (2006)). However, the nonobviousness requirement roughly
codified the pre-1952 judicial interpretation of the Patent Act that mandated more than
novelty for an invention to be patentable. Graham v. John Deere Co., 383 U.S. 1, 12–16
(1966).
75. In re Abrams, 188 F.2d at 166.
76. Id.
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art, meaning that the mental steps recited in the claim are either
superfluous or “incidental parts of the [claimed] process which
are essential to [only] define, qualify or limit its scope.”77 When
mental steps are appended to an otherwise patentable claim,
they merely restrict the scope of that patentable claim, and they
do not give the patent applicant any additional increment of
78
undeserved protection.
The CCPA never refined the mental steps doctrine to a point
where it developed enough precision in its formulation to
squarely address the issue, but under the common rules of the
nonobviousness doctrine, it would seem that mental steps can be
considered in an indirect manner in assessing the
79
Although the mental-step
nonobviousness of the claim.
limitations cannot be relied upon to distinguish a claim from the
prior art, mental processes can be used to demonstrate that the
claimed, extra-mental steps produce “unexpected results” and are
thus nonobvious.80 To the extent that the Abrams correlation was
81
newly discovered, the novel combination in Abrams of the
extra-mental
steps—sinking,
sealing,
reducing
and
measuring—seems to produce the unexpected result of
allowing an oil prospector to locate oil deposits. More broadly,
the novel combination of extra-mental steps has value (i.e.,
generating data that can be used in a mental process) that was
not understood before the date of the invention, and the
inventor identified that value. The invocation of unexpected
results is a common mode of reasoning used to support
nonobviousness,82 and there is no reason to conclude that it
should not apply to diagnostic claims as well.
In sum, the restriction on the patentability of laws of nature
articulated in Prometheus Laboratories and the mental steps
77. Id.
78. See Collins, supra note 40, at 331, 335.
79. This is not the only aspect of the mental steps doctrine that remained unclear or
unrefined throughout the decades during which the CCPA used the doctrine. See, e.g., infra
notes 101–03 and accompanying text. The lack of refinement of the mental steps doctrine by
the CCPA in the 1950s and 1960s, however, should not be taken to imply that the doctrine is
inherently unclear.
80. See, e.g., In re Huai-Hung Kao, 639 F.3d 1057, 1067–69, 1073–74 (Fed. Cir.
2011) (“On remand, the Board, in considering the evidence of unexpected results, should
determine whether there is a nexus between the unexpected [results] and aspects of the
claimed invention not already present in the prior art.”).
81. See supra note 38.
82. See Dan L. Burk, The Problem of Process in Biotechnology, 43 HOUS. L. REV.
561, 577 (2006) (“[U]nexpected or surprising results from a known method are a hallmark
of nonobviousness.”).
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doctrine of Abrams both follow the same two-step procedure.83
First, a court identifies a phenomenon that is, standing alone,
unpatentable subject matter and extracts it from the claimed
subject matter. Where Prometheus Laboratories brackets off laws
of nature, Abrams removes mental processes.84 Second, a court
examines what remains after the extraction in light of the prior
art. If what is left over after the extraction of a law of nature is
merely conventional activity, Prometheus Laboratories holds that
the claim does not describe patentable subject matter.85
Inversely, if there is an “inventive concept” in the remains, the
claim does describe patentable subject matter.86 If what is left
over after the extraction of mental processes does not constitute a
novel or nonobvious advance over the prior art, Abrams holds
that the claim does not describe patentable subject matter.87
Again, inversely, if there is a patentable advance over the prior
art in the extra-mental remains of a claimed invention, the claim
describes patentable subject matter.88
However, there are two points at which the Prometheus
Laboratories and Abrams analyses may diverge in identifying a
patentable advance over the prior art. First, it is possible that
the two analyses will use different baselines. Prometheus
Laboratories references conventional technology, whereas
89
Abrams uses the prior art as the baseline. Over time, the
reference to conventional technology may simply come to mean
the prior art, but a sui generis definition of conventional
technology is also conceivable. Second, it is possible that
Prometheus Laboratories and Abrams will employ different
standards for determining how much of an advance is needed
over this baseline in the remaining, unbracketed portion of the
claimed invention to constitute a patentable invention. The
mental steps doctrine seems to bootstrap the pre-existing and
well-developed novelty and nonobviousness doctrines into the
analysis of patentable subject matter.90 It is as of yet unclear
83. Cf. Diamond v. Diehr, 450 U.S. 175, 204 n.22 (1981) (Stevens, J., dissenting)
(noting the similarity between the bracket-and-distinguish analysis of Flook and the
mental steps doctrine).
84. Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1297
(2012); In re Abrams, 188 F.2d 165, 168 (C.C.P.A. 1951).
85. Prometheus Labs., 132 S. Ct. at 1305.
86. Id. at 1294 (quoting Parker v. Flook, 437 U.S. 584, 594 (1978)).
87. In re Abrams, 188 F.2d at 166, 170.
88. Id. at 166.
89. Prometheus Labs., 132 S. Ct. at 1294, 1298; In re Abrams, 188 F.2d at 167–69.
90. But cf. supra text accompanying notes 79–82 (noting that the role of
nonobviousness in the mental steps doctrine was never fully clarified).
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whether the bracket-and-distinguish analysis of Prometheus
Laboratories also bootstraps in §§ 102 and 103 in this manner, or
whether there is a sui generis standard that must be developed
to demonstrate an “inventive concept.” Prometheus Laboratories
does make several references to the “obvious” nature of the claim
(apart from the law of nature), but it is not explicit on this
point.91
3. The Substantive Limits on Patentable Subject Matter.
The similarity of both the claims and the doctrinal analyses in
Prometheus Laboratories and Abrams means that the doctrines
announced in the two cases are to some degree redundant in the
substantive limits that they place on the reach of patentable
subject matter. Prometheus Laboratories and Abrams are likely
to reach the same conclusion on the patentability of diagnostic
methods that take the form of determine-and-infer claims. In
determine-and-infer claims, the unpatentable subject matters
that are targeted in Prometheus Laboratories and Abrams are
compounded into a single step: the inference step is a mental
process that employs a law of nature as a factual premise.92
Therefore, the inference step cannot be used to demonstrate the
distinction between a claim and the prior art under either the
point-of-novelty analysis of the mental steps doctrine (because it
is a mental process) or the bracket-and-distinguish analysis of
Prometheus Laboratories (because its novelty resides in the use of
a newly discovered law of nature as a factual premise). For this
reason, the Prometheus Laboratories claims would be invalid
under the mental steps doctrine articulated in Abrams, and the
Abrams claims would be invalid under the laws-of-nature
doctrine articulated in Prometheus Laboratories.93 Prometheus
Laboratories is thus now doing some of the very work that used
to be performed by the mental steps doctrine.
However, Prometheus Laboratories and the mental steps
doctrine are unlikely to be perfect substitutes. They are likely to
yield different results in cases not involving claims like the
Abrams and Prometheus Laboratories claims with limitations
91. Prometheus Labs., 132 S. Ct. at 1298–99, 1303–04.
92. See supra text accompanying notes 40–43.
93. See Prometheus Labs., 132 S. Ct. at 1294, 1297 (“If a law of nature is not
patentable, then neither is a process reciting a law of nature, unless that process had
additional features that provide practical assurance that the process is more than a
drafting effort designed to monopolize the law of nature itself.”); In re Abrams, 188 F.2d at
166–67 (explaining that any patentable aspect of the claim must “advance over prior art”
and that advance must reside “in the physical [rather than the mental] steps set forth in
the claims”).
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that describe mental processes that are enabled by knowledge of
a newly discovered law of nature. Many claims to tangible
products and methods of using those products are premised on
newly discovered laws of nature, but they do not recite mental
processes as limitations.94 For example, consider the claim to a
combination of naturally occurring bacteria in Funk Brothers
95
Seed Co. v. Kalo Inoculant Co. If the bracket-and-distinguish
analysis of Prometheus Laboratories were to govern the Funk
Brothers claims, there would be serious questions about whether
a claim recites patentable subject matter, but the mental steps
doctrine would not place the patentability of the Funk Brothers
claims in doubt. Inversely, determine-and-infer claims may build
upon knowledge of newly discovered correlations that are social
constructs rather than laws of nature. For example, assume an
enterprising marketing firm discovers that consumers who use
Apple iPhones are more likely to make high-end purchases than
consumers who use Android phones. 96 This marketing firm could
attempt to patent the two-step diagnostic method of determining
whether a customer who walks into a retail store is using an
Apple or Android phone and understanding a need to pitch more
high-end products to the customer if the customer is using an
Apple phone. If Prometheus Laboratories is really about the
patentability of laws of nature, then its bracket-and-distinguish
analysis would not impact the patentability of this hypothetical
claim despite the fact that it follows the determine-and-infer
template to the letter. However, the claim would be invalid under
the mental steps doctrine.
The precise nature of the divergence between Prometheus
Laboratories and the mental steps doctrine will, of course,
depend on how Prometheus Laboratories is construed in future
cases. However, in the area of diagnostic method claims that
follow the determine-and-infer template and that employ laws of
nature as factual premises, Prometheus Laboratories is more or
less a substitute for Abrams. Prometheus Laboratories is now
doing much of the very work to limit the reach of the patent
regime that used to be done by the mental steps doctrine.
94. See Phillip McGarrigle & Vern Norviel, Laws of Nature and the Business of
Biotechnology, 24 SANTA CLARA COMPUTER & HIGH TECH. L.J. 275, 285 (2007).
95. Funk Bros. Seed Co. v. Kalo Inoculant Co., 333 U.S. 127, 131 (1948).
96. Cf. Dana Mattioli, On Orbitz, Mac Users Steered to Pricier Hotels, WALL ST. J.,
June 26, 2012, at A1 (noting a correlation between Mac users and people who are likely to
purchase more expensive hotel bookings).
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B. Disrupting the Status Quo: The Mental Steps Doctrine
Revived
Over the last forty years, the CCPA and CAFC have relied
on two cases to conclude that the mental steps doctrine is no
longer a viable facet of the doctrine of patentable subject matter.
Section II.B.1 considers the CCPA’s initial rejection of the mental
steps doctrine in In re Musgrave.97 From shortly after the opinion
was issued, however, the CCPA’s holding in Musgrave has been
recognized as unsound on many levels, and it has not been relied
upon to justify the demise of the mental steps doctrine in the long
run. Section II.B.2 turns to the real reason why the mental
steps doctrine remained unused in the CCPA and CAFC after
Musgrave: its point-of-novelty analysis was viewed an
impermissible technique for drawing the limits of patentable
subject matter. Beginning with Musgrave itself, the CCPA
reasoned that the § 101 analysis of patentable subject matter
could not be informed by the distinction between any part of a
claimed invention and the prior art.98 The Supreme Court
seemed to affirm this position with its reasoning in Diamond
99
v. Diehr, and for the last thirty years, the CAFC has justified
its rejection of the mental steps doctrine by citing Diehr.
However, the Supreme Court’s adoption of the bracket-anddistinguish analysis in Prometheus Laboratories has
undermined the authority of the relevant passages from Diehr
and has thus removed the only valid, binding precedent that
stands in the way of a revitalization of the mental steps
doctrine in the CAFC.
1. In re Musgrave. Musgrave was one of a series of cases to
reach the CCPA during the late 1960s and early 1970s in which
the PTO had relied on the mental steps doctrine to reject claims
100
The claimed invention in
to computer-software inventions.
Musgrave was a method of correcting seismographic data from an
“expanded-spread” of detectors to account for the hyperbolic
nature of the wave front being measured.101 The PTO’s argument,
derived from its examination guidelines for the patentability of
97. See In re Musgrave, 431 F.2d 882, 889 (C.C.P.A. 1970).
98. Id. at 885–86, 889–90.
99. Diamond v. Diehr, 450 U.S. 175, 187–188 (1981).
100. For discussion of these cases, see Pamela Samuelson, Benson Revisited: The
Case Against Patent Protection for Algorithms and Other Computer Program-Related
Inventions, 39 EMORY L.J. 1025, 1032–48 (1990). These CCPA opinions were all written
before the Supreme Court issued its opinion in Benson and shifted the conceptual frame
for the patentable subject matter analysis from mental processes to algorithms.
101. In re Musgrave, 431 F.2d at 884 (emphasis omitted).
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computer programs, was that software is analogous to a mental
process in that the logical operations performed by computers
were processes that could also be performed in the human
mind.102 The PTO therefore reasoned the mental steps doctrine of
Abrams should curtail the extent to which programmed
computers were patentable subject matter.103 In the first batch of
cases, the CCPA rejected the analogy and reversed the PTO’s
rejections of the computer-invention claims.104 It distinguished
Abrams and concluded that the mental steps doctrine did not
apply to either apparatus claims or method claims limited to
machine execution of their steps.105 In Musgrave, the CCPA
changed course. It directly undermined the unpatentability of
mental processes, holding that even mental processes per se were
patentable subject matter and that even Rule 1 of Abrams was
not good law.106
The CCPA justified its sweeping holding in Musgrave with
three distinct lines of argument. First, the CCPA stated that it
“need not be encumbered in [its] reasoning by the ‘Rules’ of
Abrams” that had structured the PTO’s opinion below “for the
reason that they have never enjoyed the approval of this
court.”107 Second, the CCPA noted that the text of § 101 made
no mention of mental processes being excluded from
patentable subject matter.108 Third, the CCPA implied that the
102. Examination of Patent Applications on Computer Programs: Notice of Issuance
of Guidelines, 33 Fed. Reg. 15,609 (Oct. 22, 1968).
103. See In re Musgrave, 431 F.2d at 885–88 (summarizing the Patent Office’s ruling
in favor of adopting Rule 2 of Abrams).
104. Samuelson, supra note 100, at 1041–42.
105. See id. at 1046–47. In In re Mahony and In re Bernhart, the CCPA held directly
that the mental steps doctrine did not invalidate apparatus claims or process claims that
were limited to machine execution. In re Mahony, 421 F.2d 742, 744–747 (C.C.P.A. 1970);
In re Bernhart, 417 F.2d 1395, 1399–1401 (C.C.P.A. 1969). In In re Prater, the CCPA
upheld apparatus claims but invalidated method claims for overbreadth under Section
112, paragraph 2 because the claims were broad enough to be infringed by either machine
or pencil-and-paper performance of the claimed method. In re Prater, 415 F.2d 1393,
1401–06 (C.C.P.A. 1969). The CCPA’s reasoning on the method claims in Prater was a bit
odd, and it did not rely on the mental steps doctrine. The patent applicants argued on
appeal that their method claims were limited to machine execution of the method, but the
claims were broad enough to encompass mental execution when read objectively in light
of the specification. The CCPA invalidated the method claims because they reached
beyond that which the applicant subjectively regarded as his invention. Id. at 1404–05. In
an earlier Prater opinion that was vacated after the grant of a petition for rehearing, the
CCPA criticized Abrams at length. In re Prater 415 F.2d 1378, 1381–87 (C.C.P.A. 1968),
superseded by 415 F.2d 1393 (C.C.P.A. 1969).
106. In re Musgrave, 431 F.2d at 888–93. As a secondary line of reasoning, Musgrave
also included a targeted attack on the point-of-novelty analysis of the mental steps
doctrine. Id. at 893.
107. Id. at 889.
108. Id. at 890.
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exclusion of mental processes from patentable subject matter
was unnecessary because there was another restriction on the
reach of patentable subject matter that could do the needed
work: the technological arts test.109 “All that is necessary, in
our view, to make a sequence of operational steps a statutory
‘process’ within 35 U.S.C. § 101 is that it be in the
technological arts so as to be in consonance with the
Constitutional purpose to promote the progress of ‘useful
arts.’”110 In sum, the CCPA stated:
We cannot agree with the [PTO] board that these
claims (all the steps of which can be carried out by the
disclosed apparatus) are directed to non-statutory processes
merely because some or all of the steps therein can also be
carried out in or with the aid of the human mind or because
it may be necessary for one performing the processes to
111
think.
The CCPA’s holding in Musgrave—that mental processes are
not a limit on the reach of patentable subject matter—is suspect
on many levels. In part, the problems follow from a conflict with
the Supreme Court’s subsequent interpretation of § 101. Only
two years after Musgrave, Gottschalk v. Benson—the Court’s first
in a trilogy of cases addressing the patentability of software
inventions—included “mental processes” in its list of exclusions
from patentable subject matter.112 Additionally, the technological
arts test adopted in Musgrave to replace the mental steps
doctrine was short lived. It has never been embraced by the
109. Id. at 893.
110. See id. In keeping with the spirit of the technological arts test, Musgrave
conceded that some types of mental processes might not be patentable subject matter. It
reasoned that whether mental processes were excluded from patentable subject matter
might be contingent on how “mental” is interpreted: “If so construed as to encompass only
steps incapable of being performed by a machine or apparatus, it might lead to a correct
result. . . . If . . . construed . . . so as to encompass steps performable by apparatus, as well
as mentally, then [even] the [first] “Rule” [of Abrams] is unsound . . . .” Id. at 890. Thus,
mental steps that described “peculiarly human mental activities” such as aesthetic or
moral judgments might not be patentable subject matter, but mental steps that were
analytical and deterministic were patentable subject matter. Id. at 889 n.4 (quoting
Robert I. Coulter, The Field of the Statutory Useful Arts, Part I, 34 J. PAT. OFF. SOC’Y 417,
426 (1952)). In the alternative, Musgrave also suggested that this restriction on the reach
of the patent regime could be accomplished through indefiniteness doctrine rather than
patentable subject matter. Id. at 893.
111. Id.
112. Gottschalk v. Benson, 409 U.S. 63, 67 (1972); see also Mayo Collaborative Servs.
v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293 (2012); Lab. Corp. of Am. Holdings v.
Metabolite Labs., Inc., 548 U.S. 124, 127 (2006) (Breyer, J., dissenting) (dissenting from
the dismissal of certiorari as improvidently granted); Parker v. Flook, 437 U.S. 584, 589
(1978).
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Supreme Court or the CAFC.113 An embrace of Musgrave’s
rejection of mental processes as a limit on patentable subject
matter is difficult given the ensuing rejection of Musgrave’s
embrace of the technological arts test. Interestingly, even the
CCPA itself did not seem to accept its own reasoning in Musgrave
at face value. In its subsequent opinions, the CCPA recognized
that Musgrave had purported to abandon the mental steps
doctrine, but taking the posture of an argument in the
alternative, the CCPA, continued to analyze claims under the
mental steps doctrine nonetheless.114
In part, however, Musgrave is also problematic even when
taken on its own terms. For example, the assertion that the
CCPA had never sanctioned the mental steps doctrine in Abrams
115
in the first place is highly questionable. The only reason offered
in Abrams for rejecting the patent applicant’s claims was that
they fell under the appellant’s proposed second rule—i.e., in a
claim reciting both mental and extra-mental steps, the
distinction between the claim and the prior art required for
patentability lies in the mental steps.116 But for the CCPA’s
adoption of the first and second rules, Abrams is a conclusory
statement of a holding without any supporting rationale at all.
The CCPA’s conclusion in Abrams that mental processes are not
patentable subject matter could not be stated more explicitly in
the opinion: “Citation of authority in support of the principle that
claims to mental concepts which constitute the very substance of
an alleged invention are not patentable is unnecessary. It is selfevident that thought is not patentable.”117 The Musgrave panel
may legitimately have disagreed with this conclusion and
thought little of its precedential basis, but it is disingenuous to
conclude that Abrams did not hold that mental processes are not
113. In re Bilski, 545 F.3d 943, 960 (Fed. Cir. 2008) (en banc), aff’d on other grounds
sub nom. Bilski v. Kappos, 130 S. Ct. 3218 (2010).
114. In In re Foster, the CCPA does seem to treat the technological arts test as
binding. See In re Foster, 438 F.2d 1011, 1014–15 (C.C.P.A. 1971) (holding that it is not
important whether a claim contains mental steps or not if it is within the technological
arts). However, in its next opinion on computer software in In re Benson, the CCPA was
already backtracking. In re Benson, 441 F.2d 682, 686–87 (C.C.P.A. 1971), rev’d sub nom.
Gottschalk v. Benson, 409 U.S. 63 (1972).
115. Musgrave oddly relies on an earlier CCPA opinion that had been withdrawn to
support its critique of Abrams. In re Musgrave, 431 F.2d at 888–89 (relying on In re
Prater, 415 F.2d 1393, 1385–87, superseded by 415 F.2d 1393 (C.C.P.A. 1969)).
116. In re Abrams, 188 F.2d 165, 166, 170 (C.C.P.A. 1951).
117. Id. at 168. This assertion echoes the patent treatises of the day: “[P]atent
protection is allowed only to exclude others from exercising their hands, not to exclude
them from using their brains.” EMERSON STRINGHAM, OUTLINE OF PATENT LAW AND
GUIDE TO DIGESTS § 1210, at 143 (1937).
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patentable.118 Furthermore, a number of CCPA opinions after
Abrams relied on one or more of the first two rules articulated in
Abrams that establish the exclusion from patentable subject
matter, and Musgrave cannot explain these cases away without
an en banc opinion.119
Taking a step back, the CCPA’s holding in Musgrave should
not bind the CAFC today because the claims at issue in Musgrave
presented a poor vehicle for assessing the costs and benefits of
the mental steps doctrine. Musgrave was a case about the
patentability of computer programs that performed complex
120
The PTO had conscripted the mental steps
calculations.
doctrine into the fight over the patentability of computer
software—a fight that it lost as computer-related and software
inventions eventually became routinely patentable.121 However,
the mental steps doctrine suffered collateral damage in this fight.
Rather than holding more narrowly that the mental steps
doctrine did not govern the patentability of machine-executed
processes (as it had done in earlier cases), Musgrave rejected the
mental steps doctrine in its entirety.122 It threw out the baby (the
application of the mental steps doctrine to claims that recite
steps that can be performed by the human mind) with the
bathwater (the application of the mental steps doctrine to claims
that recite the machine execution of operations that are
analogous the operations that can be performed by the human
mind).123 In deciding Musgrave, the CCPA could not have
assessed the impact of its decision on the patentability of claims
like the Abrams and Prometheus Laboratories determine-andinfer claims in which the advance over the prior art lies in
human, mental reasoning rather than in software.
118. See In re Abrams, 188 F.2d at 166, 169–70 (citing earlier court language that
purely mental acts are not proper subject matter for protection under the patent statutes
without excluding all mental processes).
119. In re Venner, 262 F.2d 91, 95 (C.C.P.A. 1958); In re Lundberg, 197 F.2d 336, 339
(C.C.P.A. 1952); In re Shao Wen Yuan, 188 F.2d 377, 380–81 (C.C.P.A. 1951).
120. In re Musgrave, 431 F.2d at 882–84.
121. See Randall M. Whitmeyer, A Plea for Due Processes: Defining the Proper Scope
of Patent Protection for Computer Software, 85 NW. U. L. REV. 1103, 1105 (1991) (“It is
estimated that there are currently ‘thousands’ of program-related United States patents,
an increasing number of which cover ‘pure’ software.” (footnotes omitted)).
122. In re Musgrave, 431 F.2d at 889. The PTO construed the Musgrave claims
broadly so as to encompass both computer execution and human execution of
mathematical steps, and it then rejected the claims under the second rule of Abrams. Id.
at 888–89. In previous cases, the CCPA had handled this issue by saying that the mental
steps doctrine did not govern method claims limited to machine execution of their steps.
See supra note 105.
123. See In re Musgrave, 431 F.2d at 893 (declaring the technological arts test to be
the sole test of patentability).
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2. Diamond v. Diehr. Although Musgrave has never
explicitly been overruled, its broad holding—that mental
processes per se are patentable subject matter—has had little
impact on the development of the doctrine of patentable subject
matter over the last forty years. Even in the immediate
aftermath of its Musgrave opinion and before Benson, the CCPA
was already hedging its bets in its subsequent cases involving
124
It cited Musgrave for the
computer-related inventions.
proposition that mental processes are patentable subject matter
but then offered alternative reasons why the particular claims at
issue could not be patented.125 The CAFC has, over the years,
invalidated a number of claims on the basis that they are in
126
effect claims to mental processes in the abstract, and it has
expressly recognized the infirmity of Musgrave’s broad holding.127
The reason why the mental steps doctrine was not picked up
again by the courts after Musgrave was a narrower objection to
the doctrine: its point-of-novelty analysis was thought to employ
an impermissible methodology for drawing the boundary of
128
patentable subject matter. The crux of this position was that
the § 101 analysis of patentable subject matter could not be
informed by the distinction between any part of a claimed
invention and the prior art.129 Distinction from the prior art was
to be assessed under only the separate statutory command of
130
§ 102 (novelty) and § 103 (nonobviousness).
The roots of this understanding of § 101 can also be traced to
Musgrave. In addition to its broad conclusion that Rule 1 of
Abrams was not good law, Musgrave reasoned that the second
and third rules of Abrams—those that implemented the point-of131
novelty analysis in particular—were “logically unsound.” It
reasoned that any given claimed invention should never be
patentable subject matter under Rule 3 on an earlier date—when
124. See In re Foster, 438 F.2d 1011, 1014–16 (C.C.P.A. 1971).
125. Id. at 1014–16; In re Benson, 441 F.2d 682, 686–87 (C.C.P.A. 1971), rev’d sub
nom. Gottschalk v. Benson, 409 U.S. 63 (1972).
126. See, e.g., In re Comiskey, 554 F.3d 967, 981–82 (Fed. Cir. 2009); In re Grams,
888 F.2d 835, 840–41 (Fed. Cir. 1989).
127. In re Comiskey, 554 F.3d at 978 n.11; see also In re Bilski, 545 F.3d 943, 960
(Fed. Cir. 2008) (en banc) (rejecting the use of the technological arts test set forth in
Musgrave), aff’d on other grounds sub nom. Bilski v. Kappos, 130 S. Ct. 3218 (2010).
128. See Diamond v. Diehr, 450 U.S. 175, 188–91 (1981) (Stevens, J., dissenting)
(tracing the history of the mental steps process and the court opinions that discontinued
the process).
129. Id.
130. In re Bergy, 596 F.2d 952, 962–63 (C.C.P.A. 1979), aff’d sub nom. Diamond v.
Chakrabarty, 447 U.S. 303 (1980).
131. In re Musgrave, 431 F.2d 882, 889–90 (C.C.P.A. 1970).
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the non-mental steps represented an advance over the prior art—
and then unpatentable subject matter under Rule 2 on a later
date—after the non-mental steps had become conventional.132 In
the CCPA’s view, allowing the “identical process” to be “first
within and later without the categories of statutory subject
matter, depending on such extraneous factors” as the state of the
133
prior art “would be an absurd result.”
Parker v. Flook, the Supreme Court’s second case of its
trilogy of cases addressing computer-related inventions, seemed
to reject the Musgrave position that the distinction between
certain limitations of a claim and the prior art was irrelevant to
134
the patentable subject matter analysis. Flook involved a claim
to a method of updating an alarm limit using a specified
formula.135 The Court employed a variant of the bracket-anddistinguish analysis that animates Prometheus Laboratories in
which it identified the formula as a law of nature, treated the
formula as part of the prior art, and then looked for something
136
that could distinguish the claimed invention from the prior art.
Because the claimed method contained no “patentable invention”
or “inventive concept” once the formula was bracketed off from
the rest of the claimed subject matter, the Court concluded that
the claim did not describe patentable subject matter.137
132. Id. at 889.
133. Id. Why this result would be logically absurd is unclear. It is an even mildly
curious result if and only if one fetishizes the claim, equates the claimed subject matter
with the invention, and steadfastly refuses to take into account what an inventor has
actually given to society in order to merit the claim. See Oskar Liivak, Rescuing the
Invention from the Cult of the Claim, 42 SETON HALL L. REV. 1, 6–8 (2012).
134. Parker v. Flook, 437 U.S. 584, 593–94 (1978).
135. Id. at 585.
136. Id. at 592–94. The motivating assumption for treating the law of nature as part
of the prior art was that the discovery of a law of nature “reveals a relationship that has
always existed.” Id. at 593 n.15.
137. Id. at 594. The bracket-and-distinguish analysis in Flook is a close cousin to, if
not identical with, the point-of-novelty analysis of the mental steps doctrine. See supra
Section II.A.2. Interestingly, despite the prominence of the mental steps doctrine and its
point-of-novelty analysis in the early cases addressing the patentability of computer
software under Section 101, see supra note 105, the Supreme Court’s Flook opinion does
not mention the mental steps doctrine as a source of support for the bracket-anddistinguish analysis that it uses to enforce Section 101. It cites instead a number of its
own precedents on the patentability of laws of nature, including Funk Brothers Seed Co.
v. Kalo Inoculant Co., 333 U.S. 127, 130 (1948). Flook therefore marks a transition from
the mental steps doctrine of Abrams to the laws of nature doctrine of Funk Brothers as
the principal doctrine for limiting the patentability of computer software under section
101—a doctrinal shift that, oddly, is not accompanied by a significant shift in the
substantive limit that distinguishes the software claims that could and could not be
patented. The transition, however, was not seamless. The Flook proceedings in the PTO
and the CCPA were a gap during which a point of novelty approach was used in a freefloating manner without express reliance on either Abrams or Funk Brothers. The
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The CCPA was not very receptive of the Supreme Court’s
reasoning in Flook, and it stuck to its guns on its refusal to
intermingle the analyses of patentable subject matter and
138
patentable distinction from the prior art. In fact, in In re Bergy,
the CCPA went out of its way to take the Supreme Court to the
woodshed for its Flook analysis.139 Bergy asserted that it is
“universally accepted” that novelty and statutory subject matter
“are separate and distinct” requirements for patentability that
are “wholly apart” from one another.140 It noted that “[t]erms
like . . . ‘inventive concept’ no longer have any useful place in
deciding questions under the 1952 [Patent] Act” and under § 101
in particular, despite the fact that the Supreme Court had used
141
precisely this term in its reasoning in Flook the year before. In
sum, the CCPA asserted that: “Prior art is irrelevant to the
determination of statutory subject matter under § 101.”142
In Diamond v. Diehr, the Supreme Court’s final case in its
trilogy on the status of software-related inventions as patentable
subject matter, the CCPA’s position from Musgrave and Bergy
seemed to have prevailed.143 Certain passages in Diehr clearly reject
a comingling of the analyses of patentable subject matter and the
distinction between a claimed invention and the prior art: “The
‘novelty’ of any element or steps in a process [under § 102], or even
of the process itself, is of no relevance in determining whether the
examiner and board of appeals at PTO employed a point-of-novelty analysis in rejecting
the Flook claims. In re Flook, 559 F.2d 21, 22 (C.C.P.A. 1977), rev’d sub nom. Flook, 437
U.S. at 584. To support this methodology for identifying patentable subject matter, they
relied the CCPA’s opinion in In re Christensen. Id. at 22–23 (referencing In re
Christensen, 478 F.2d 1392, 1394–95 (C.C.P.A. 1973), overruled by In re Taner, 681 F.2d
787 (C.C.P.A. 1982)). In re Christensen was the first CCPA opinion addressing the
patentability of software to issue after the Supreme Court’s decision in Benson. Relying
solely on Benson, expressly disavowing any reliance on the mental steps doctrine, and
thus writing on something of a blank canvas, Christensen concluded that “a method claim
in which the point of novelty is a mathematical equation” was not patentable subject
matter. In re Christensen, 478 F.2d at 1394. In its Flook brief before CCPA, the PTO again
relied solely on Benson and Christensen to support its rejection. Brief for the
Commissioner of Patents and Trademarks at 4–5, In re Flook, 559 F.2d 21 (C.C.P.A. 1977)
(No. 77-512). The CCPA distinguished Christensen, rejected the point-of-novelty analysis,
and upheld the claims. In re Flook, 559 F.2d at 23. The first mention of Funk Brothers et
al. in the Flook proceedings as a source for the bracket-and-distinguish analysis occurred
at the eleventh hour in the PTO’s petition for certiorari. Petition for a Writ of Certiorari to
the United States Court of Customs and Patent Appeals at 15–20, Parker v. Flook, 437
U.S. 584 (1978) (No. 77-642).
138. In re Bergy, 596 F.2d 952, 959–67 (C.C.P.A. 1979), aff’d sub nom. Diamond v.
Chakrabarty, 447 U.S. 303 (1980).
139. Id. at 959–64.
140. Id. at 960–61 (emphasis in original).
141. Id. at 962.
142. Id. at 962–63 (emphasis in original).
143. Diamond v. Diehr, 450 U.S. 175, 188–89 (1981).
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subject matter of a claim falls within the [§ ] 101 categories of
possibly patentable subject matter.”144 Other passages preclude a
point-of-novelty analysis insofar as they require examination of
claims “as a whole” and forbid “dissect[ing] the claims into old and
new elements and then . . . ignor[ing] the presence of the old
elements in the analysis.”145 These passages on their face seem to
reject both the bracket-and-distinguish analysis of Flook and the
point-of-novelty analysis of the mental steps doctrine.146
For the last thirty years, the CAFC has grounded its refusal
to employ the mental steps doctrine on its interpretation of Diehr
147
rather than its interpretation of Musgrave. The CAFC has
invalidated claims that recite both mental and extra-mental
steps for lack of patentable subject matter on the basis that,
viewed as a whole, they in effect claimed mental processes
because the extra-mental steps were merely data-gathering
steps.148 In so doing, however, it has never expressly relied on the
novelty, conventionality, or prior-art status of the extra-mental
149
steps to justify its holding.
Musgrave may have been the
immediate cause of the CAFC’s initial abandonment of the
mental steps doctrine, but, in the long term, it was Diehr that
was responsible for the doctrine’s continued disuse.
Prometheus Laboratories changes the outlook for the future
of the mental steps doctrine. Prometheus Laboratories does not
openly acknowledge that it is contradicting or overruling any
aspect of Diehr, but it does severely undermine the very passages
from Diehr upon which the CAFC has relied in its refusal to
150
reconsider the mental steps doctrine. It draws heavily from
Flook to explain the bracket-and-distinguish analysis that is
151
difficult to square with this language from Diehr. It dissects the
claim into a newly discovered law of nature and the remainder of
144. Id.
145. Id. at 188.
146. See id. at 195–201 (Stevens, J., dissenting).
147. For a recent en banc opinion affirming this interpretation of Diehr, see In re
Bilski, 545 F.3d 943, 958 (Fed. Cir. 2008) (en banc), aff’d on other grounds sub nom. Bilski
v. Kappos, 130 S. Ct. 3218 (2010).
148. See supra note 126.
149. See In re Bilski, 545 F.3d at 958.
150. Compare Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289,
1297 (2012) (dissecting the claim into a newly discovered law of nature and three steps,
then concluding that such steps are unpatentable due to their lack of novelty), with Diehr,
450 U.S. at 188–89 (“The ‘novelty’ of any element or steps in a process, or even of the
process itself, is of no relevance in determining whether the subject matter of a claim falls
within the [Section] 101 categories of possibly patentable subject matter.”).
151. See supra text accompanying notes 135–146 (describing the conflict between
Flook and Diehr).
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the claim, and compares the remaining steps to the prior art,
concluding that the claim is not patentable subject matter
because the remaining steps lack novelty.152 It fails to cite the
language from Diehr prohibiting the dissection of a claim into
components and the comparison of a subset of the components to
the prior art.153 It expressly notes that there may be redundancy
between the novelty and statutory subject matter inquiries: “We
recognize that, in evaluating the significance of additional steps,
the [§ ] 101 patent-eligibility inquiry and, say, the [§ ] 102 novelty
154
inquiry might sometimes overlap.” Prometheus Laboratories
also reinterprets the holding in Diehr in a manner that makes it
consistent with the bracket-and-distinguish analysis that the
Court employed in Flook. Emphasizing a point on which Diehr
was silent, Prometheus Laboratories suggests the claim at issue
in Diehr described patentable subject matter because Diehr
“nowhere suggested that all these steps [other than the law of
nature], or at least the combination of those steps, were in
context obvious, already in use, or purely conventional.”155 In
sum, given its elevation of Flook and its concomitant demotion of
Diehr, Prometheus Laboratories severely undercuts the precedent
upon which the CAFC has relied for the last thirty years in its
refusal to employ the mental steps doctrine. The CAFC now has
no valid justification for refusing to revitalize the mental steps
doctrine.
III. PROMETHEUS LABORATORIES AND THE CONTEMPORARY
PRINTED MATTER DOCTRINE
This Part draws connections between Prometheus
Laboratories and the printed matter doctrine of the CAFC.
Section III.A identifies the contemporary core of the printed
matter doctrine. Section III.B argues that Prometheus
Laboratories dovetails with the contemporary core of printed
matter doctrine, creating a complementary restriction on the
reach of the patent regime. Working together, Prometheus
Laboratories and the printed matter doctrine prevent the
discovery of a law of nature from being an event that, in and of
itself, triggers the availability of patent protection. Section III.C
152. See supra Section II.A.2 (describing the bracket-and-distinguish analysis of
Prometheus Laboratories).
153. But cf. Prometheus Labs., 132 S. Ct. at 1304 (citing the “as a whole” language
from Diehr to support a description of the Sections 102 and 103 analyses of a claim in
relation to the prior art).
154. Id.
155. Id. at 1299.
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discusses the shift in perspective that is needed to see
Prometheus Laboratories as a continuation, rather than a
disruption, of the pre-Prometheus status quo in the CAFC. The
statutory distinction between the grounding of the doctrine of
patentable subject matter (and thus both Prometheus
Laboratories and the mental steps doctrine) in § 101 and the
grounding of the contemporary core of the printed matter
doctrine in §§ 102 and 103 must be recognized as arbitrary and
without significance.
A. The Contemporary Core of the Printed Matter Doctrine
The printed matter doctrine curtails the patentability of
information that is intelligible or meaningful to the human
mind.156 More precisely, it uses a point-of-novelty analysis to
invalidate patent claims in which a limitation specifying the
“content” of information must be considered in order to
demonstrate a novel and nonobvious advance over the prior art
under §§ 102 and 103 of the Patent Act, respectively.157 The
printed matter doctrine has a long history that reaches back into
patent opinions from the early twentieth century,158 and it has
evolved significantly during this time.159 All printed matter
156. If the information has not been recorded on a tangible substrate, then it is not
patentable subject matter without any reference to the printed matter doctrine. In re
Nuijten, 500 F.3d 1346, 1353 (Fed. Cir. 2007) (invalidating “signal” claims under Section
101).
157.
In re Gulack, 703 F.2d 1381, 1386 (Fed. Cir. 1983); CHISUM, supra note 14,
§ 1.02[4][e], at 1–36 (equating “printed matter” with “informational content” in the
CAFC’s application of the printed matter doctrine). Some printed matter cases are
decided under the auspices of the patentable subject matter doctrine of Section 101. See
generally infra Section III.C (discussing the arbitrariness of the statutory divide between
Section 101, on the one hand, and Sections 102 and 103, on the other hand, in printed
matter cases).
158. For a historical overview, see generally Morton C. Jacobs, Patentability of
Printed Matter: Critique and Proposal, 18 GEO. WASH. L. REV. 475 (1950).
159. For example, some early printed matter cases state that the advance over the
prior art cannot reside in an “arrangement of printed matter” rather than in the “content”
of printed matter. See, e.g., In re Lockert, 65 F.2d 159, 160 (C.C.P.A. 1933); In re Russell,
48 F.2d 668, 669 (C.C.P.A. 1931); Flood v. Coe, 31 F. Supp. 348, 349 (D.D.C. 1940). For a
case in which the doctrine’s focus expands from arrangements of printed matter to also
encompass the content of printed matter, see In re Sterling, 70 F.2d 910, 912 (C.C.P.A.
1934) (noting that the printed matter doctrine had previously governed “arrangement of
printed matter” and that it should also logically govern “the substance of language of that
which is printed”). A rule that prohibits novelty from residing entirely in the arrangement
of printed matter may in some instances create a broader exclusion from the patent
regime than a rule that prohibits novelty in the informational content of printed matter.
See Kevin Emerson Collins, Semiotics 101: Taking the Printed Matter Doctrine Seriously,
85 IND. L.J. 1379, 1424–27 (2010) (discussing the patentability of a new system of
indexing printed matter with old contents).
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opinions therefore cannot easily be reconciled.160 Taking a
reductionist approach, this Article examines only what it
identifies as the coherent, contemporary core of the CAFC’s
printed matter cases. It considers only printed matter cases in
which claims describe a combination of already-known objects or
processes, and information that conveys newly discovered
knowledge to human minds.161
Two recent CAFC cases applying the printed matter doctrine
nicely illustrate the coherent core of the contemporary printed
162
163
matter doctrine: In re Ngai and King Pharmaceuticals. In
Ngai, an inventor had discovered a new use for an existing set of
chemicals, and he had sought a “kit” claim to the prior-art group
of chemicals in combination with written instructions on how to
use the chemicals in the new manner.164 The CAFC relied on the
printed matter doctrine to invalidate the claim for lack of
novelty.165 Only the content of the information conveyed by the
printed matter to a human reader distinguished the claim from
the prior art as a factual matter, and any advance in the content
of this printed matter could not be considered in assessing whether
the claim described a novel invention under § 102.166 In King
Pharmaceuticals, the CAFC extended the printed matter doctrine
from product claims to method claims and from the content of
printed matter to the content of spoken matter.167 The patents at
issue arose from “the unexpected finding that administration of
metaxalone”—a known drug—“with food increases both the rate
and extent of absorption via the oral dosage form in human
168
subjects.” One family of claims described a two-step method of,
first, “administering” metaxalone to patients with food and, second,
letting the patient know about the increase in bioavailability of
160. Some printed matter cases are not easily generalized because the claims
involved are downright quirky. See, e.g., In re Jie Xiao, 462 F. App’x 947, 951 (Fed. Cir.
2011) (rejecting claims to combination locks employing meaningless wildcard symbols); In
re Miller, 418 F.2d 1392, 1396 (C.C.P.A. 1969) (assessing the patentability of measuring
cups with false quantity indications printed on them).
161. For an extended discussion of the restriction of the printed matter doctrine to
information that is intelligible to the human mind, see Collins, supra note 159, at 1417–
31. See also In re Lowry, 32 F.3d 1579, 1583 (Fed. Cir. 1994) (quoting In re Bernhart, 417
F.2d 1395, 1399 (C.C.P.A. 1969)); In re Jones, 373 F.2d 1007, 1012–14 (C.C.P.A. 1967)
(holding “code disks” patentable under the printed matter doctrine because they are cogs
in a machine, not human-readable texts).
162. In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004).
163. King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1278–80 (Fed. Cir. 2010).
164. In re Ngai, 367 F.3d at 1337–38.
165. Id. at 1339.
166. Id.
167. King Pharm., 616 F.3d at 1278–79.
168. Id. at 1270.
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metaxalone that occurs when the drug is consumed with food.169
Some claims in this family described a method of informing the
patient in which “the metaxalone is from a container with printed
labeling advising” of the increased bioavailability, and others more
broadly described the step of “informing” the patient of the
increased bioavailability.170 The CAFC invalidated these claims
under the printed matter doctrine of § 102 and its point-of-novelty
analysis.171 Despite the fact that the informing steps were novel as a
factual matter, the court held that “[t]he ‘informing’ limitation adds
no novelty to the method” as a legal matter because § 102 novelty
cannot reside in the content of information, i.e., the meaning that
the information has to a human mind.172 Given that the remainder
of the claim (i.e., the step of administering of metaxalone to a
patient with food) was anticipated by the prior art under the
inherency doctrine, the claim was anticipated and invalid.173
The printed matter doctrine has a misleadingly narrow
name in that it restricts the patentability of all humanintelligible information, regardless of whether the information is
printed matter. The printed matter doctrine is technologically
neutral, meaning that it curtails the patentability of all
information that is intelligible to only a human mind, including
information in the form of audio tapes,174 e-books,175 and (as in
King Pharmaceuticals) speech.176
The mental steps and printed matter doctrines are close
cousins on a doctrinal level because they employ the same pointof-novelty analysis.177 The point-of-novelty analysis in the printed
matter doctrine predates both Abrams and its three rules of the
169. Id. at 1270–71. Another family of claims described one-step methods of
“administering” metaxalone to patients with food and thereby increasing the drug’s
bioavailability. Id. The CAFC invalidated the one-step methods under the inherency
doctrine because they were anticipated by the prior art. Id. at 1275–77.
170. Id. at 1271.
171. Id. at 1279–80.
172. Id. at 1278.
173. Id. at 1276. For another recent case that uses the printed matter doctrine to
invalidate claims following the template of the King Pharmaceuticals claims, see In re
Huai-Hung Kao, 639 F.3d 1057, 1072–73 (Fed. Cir. 2011). See also In re J-Med Pharm.,
Inc., 471 F. App’x 900, 900 (Fed. Cir. 2012) (issuing a summary affirmance of the PTO’s
rejection of claims to a combination of decongestants and administration instructions);
AstraZeneca LP v. Apotex, Inc., 633 F.3d 1042, 1063–65 (Fed. Cir. 2010) (affirming the
PTO’s rejection of claims to a combination of a corticosteroid and administration
instructions).
174. Ex parte Carver, 227 U.S.P.Q. (BNA) 465, 467 (B.P.A.I. 1985).
175. See infra note 193.
176. King Pharm., 616 F.3d at 1278.
177. In re Gulack, 703 F.2d 1381, 1385 & n.8 (Fed. Cir. 1983) (printed matter); In re
Abrams, 188 F.2d 165, 166 (C.C.P.A. 1951) (mental steps).
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mental steps doctrine.178 Nonetheless, the PTO has used Abrams
to clarify the printed matter doctrine, stating that “the second
and third rules mentioned in In re Abrams . . . are equally
applicable to printed matter as they are to mental steps, since
both are nonstatutory.”179 The printed matter doctrine now
mirrors Abrams’s three rules. First, if a claim provides only
printed-matter limitations, the claim does not describe
patentable subject matter.180 Second, if a claim describes both
conventionally patentable subject matter and printed-matter
limitations and the latter are needed to demonstrate the novelty
or nonobviousness of the claimed subject matter, the claim is not
a patentable advance over the prior art because the content of
181
the printed matter cannot be given “patentable weight.” Third,
if a claim describes both conventionally patentable subject
matter and printed-matter limitations and the former is
sufficient to demonstrate novelty and nonobviousness, the claim
is patentable.182 In fact, the second and third rules first
articulated in Abrams have arguably reached a greater
refinement in the printed matter doctrine than they did in the
mental steps doctrine. The role of nonobviousness in rules two
and three has been explored in significant depth in printed
matter cases (through the “patentable weight” analysis in
nonobviousness cases),183 but it was never addressed in a mental
steps case.184
An important historical exception to the restriction on
patentability set forth in the printed matter doctrine is the
cooperative-relation exception. If the printed matter has a
cooperative relationship with the underlying substrate, then the
content of printed matter can be considered in assessing whether
the invention presented a patentable advance over the prior art.185
Older cases elaborating the cooperative-relation exception often
involved a structural relationship between the printed matter and
178. In re Sterling, 70 F.2d 910, 912 (C.C.P.A. 1934). Cf. supra Section II.A.2
(discussing the three rules of Abrams).
179. Ex parte Jenny, 130 U.S.P.Q. (BNA) 318, 320 (P.O.B.A. 1961). CCPA approved
of the PTO’s reasoning in In re Jones, 373 F.2d 1007, 1013–14 (C.C.P.A.1967).
180. This is the gist of the cases in which the printed matter doctrine is applied as a
facet of Section 101. See infra notes 218–19 and accompanying text.
181. In re Miller, 418 F.2d 1392, 1396 (C.C.P.A. 1969). But see infra text
accompanying notes 185–203 (discussing the cooperative-relation exception to the printed
matter doctrine).
182. Jenny, 130 U.S.P.Q. at 320.
183. See infra notes 181–82 and accompanying text.
184. See supra text accompanying notes 74–82.
185. See Jacobs, supra note 158, at 477–78.
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the substrate.186 For example, many of the printed matter cases
from the first half of the twentieth century involved claims to
tickets of various kinds.187 The formal arrangement of the
information on these tickets allowed the tickets to be torn or
punched in ways that were not previously possible, allowing tickettakers to divide up or obliterate the bits of information on the
188
tickets more easily than was possible in the prior art. Despite the
fact that these claims described printed matter at their points of
novelty, the courts often upheld these claims because the advance
over the prior art resided in the “cooperative relationship between
the printed indicia and the structural features” of the tickets.189 In
more recent cases, the structural-relation exception to the printed
matter doctrine has evolved into a functional-relation exception: so
long as the content of the printed matter has a functional
relationship to the underlying substrate, that content can be
considered in assessing the novelty and nonobviousness of the
invention. Thus, the informational content of human-readable
printed matter could be considered to assess patentability in claims
to sets of measuring spoons with false textual indications of the size
of the spoon that facilitated the preparation of half- or doublerecipes.190 Similarly, a claim to a circular band imprinted with a
looping series of numbers that had no beginning or end could rely
on the numbers to create a distinction from the prior art because
the looping nature of the substrate (the band) and the numbers
191
displayed a functional relationship.
Although it has played an important role in many historical
printed matter cases, the cooperative-relation exception has not
played a significant role in limiting the reach of the printed
matter doctrine in the cases at the doctrine’s contemporary
192
core. When claims have limitations that describe information
that has newly discovered knowledge as its contents (as opposed
to limitations that describe a new manner of conveying
information that has already-known knowledge as its contents),
patent owners’ arguments that the cooperative-relation exception
186. See, e.g., Flood v. Coe, 31 F. Supp. 348, 349 (D.D.C. 1940).
187. Collins, supra note 159, at 1393–94 (describing the ticket-tearing cases).
188. Flood, 31 F. Supp. at 348–49.
189. Id. at 349; see also Jacobs, supra note 158, at 485 (“[I]f the meaning of the
language is of no significance, and the novelty lies in the useful manner of arranging the
printed matter on a sheet, it is a manufacture.”).
190. In re Miller, 418 F.2d 1392, 1395–96 (C.C.P.A. 1969).
191. In re Gulack, 703 F.2d 1381, 1386 (Fed. Cir. 1983).
192. See King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1279 (Fed. Cir. 2010)
(rejecting the argument that the relationship between the informing limitation and the
method was functional).
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should preserve the validity of their claims have never carried
the day.193 In King Pharmaceuticals, the patent owner argued
that there was a functional relationship between the content of
the information conveyed to the patient and the administering of
metaxalone to a patient because “the ‘informing’ limitation
increases the likelihood that the patient will take metaxalone
194
with food, thereby increasing the efficiency of the method.” The
CAFC rejected this argument, holding that the printed matter
doctrine precluded the content of the oral or written information
from being considered when assessing the legal novelty of the
claim under § 102.195 A yet more recent CAFC case on the printed
matter doctrine, AstraZeneca LP v. Apotex, Inc., adds another
twist to the cooperative-relation argument made in King
Pharmaceuticals.196 Like King Pharmaceuticals, AstraZeneca
involved a claim to a combination of an already-known drug and
printed instructions conveying knowledge about how to use the
drug in a more effective manner.197 However, in AstraZeneca, the
drug could not be legally sold without the claimed printed matter
because the FDA approved the drug for sale on the condition that
the printed matter appeared on the label.198 Invoking the functionalrelation exception, the patent owner argued that the drug-plus-label
claim was valid under the printed matter doctrine because the
claimed combination “is a new and useful patentable kit that did
not exist in the prior art—‘a nebulized budesonide product that can
be [legally sold and] safely and effectively administered oncedaily.’”199 The CAFC rejected this argument, concluding that the
informational content of the printed matter could not establish the
193. The one exception is the PTO’s policy for dealing with software-on-disk claims or
Beauregard claims. The PTO rejects claims to songs or e-books encoded on computer disks
as “nonfunctional descriptive material” but it allows claims to most software programs
encoded on disks by labeling the software as “functional descriptive material.”
Examination Guidelines for Computer-Related Inventions, 61 Fed. Reg. 7478, 7481 (Feb.
28, 1996). Through this policy, the PTO is arguably reaching the correct final result on
patentability. However, this outcome cannot be explained in a conceptually coherent
manner with the cooperative-relation exception. Rather, the outcome should be explained
by the fact that software-on-disk claims do not encode information that is intelligible to
only the human mind. The distinction the PTO is attempting to make is a distinction
between human-readable information, on the one hand, and information in the form of
stimuli or signals encoded that causes a machine to act in a pre-determined manner, on
the other hand. Collins, supra note 159, at 1421–24.
194. King Pharm., 616 F.3d at 1279.
195. Id. The CAFC also considered and rejected the same functional-relation
argument in In re Huai-Hung Kao, 639 F.3d 1057, 1072–73 (Fed. Cir. 2011).
196. AstraZeneca LP v. Apotex, Inc., 623 F. Supp. 2d 579, 590–91 (D.N.J. 2009),
aff’d, 633 F.3d 1042 (Fed. Cir. 2010).
197. Id. at 584.
198. Id. at 590–91.
199. Id.
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legal novelty of the claimed combination despite the existence of
this functional relationship between the drug and the content of the
printed matter.200 In sum, the CAFC has been very stingy with the
cooperative-relation exception to the printed matter doctrine when
a claim describes an old product or method in combination with
information that has newly discovered knowledge about how to use
the product as its content. As the CAFC has noted, if it were to
adopt a broader interpretation of the cooperative-relation exception,
then “anyone could continue patenting a product indefinitely
provided that they add a new instruction sheet to the product.”201
Almost thirty years ago, one commentator extrapolated from
the existence of the functional-relation exception to the printed
matter doctrine and predicted that patent applicants would
pursue claims like the Ngai, King Pharmaceuticals, and
AstraZeneca claims that describe a combination of an old product
plus new instructions on how to use the product.202 He understood
that patent applicants would defend the nonobviousness of such
claims by alleging a functional relationship between the
“intellectual content of the imprinted matter” and “the particular
substrate on which it is imprinted”:
Instructions for carving a turkey could be etched on the
blade (or handle) of a knife. Instructions for throwing a
curve (or spitter) could be printed on the cover of a baseball,
and pharmacists could print the doctor’s instructions on the
203
surface of tablets and pills . . . .
As the cases discussed above demonstrate, however, this
argument has not to date been palatable to the CAFC, and the
cooperative-relation exception has not played an important role
in limiting the core of the contemporary printed matter doctrine.
The CAFC has not allowed the functional-relation exception to
preserve the patentability of claims to combinations of old objects
and human-readable information that conveys the knowledge
required to engage in new methods of using those objects.
B. Complementary Exclusions
The relationship between Prometheus Laboratories and the
mental steps doctrine was one of (partial) redundancy: either
facet of patent law could be called upon to invalidate the
Prometheus Laboratories claims and other determine-and-infer
200.
201.
202.
203.
Id. at 591.
In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004).
Alton D. Rollins, Printed Matter, 65 J. PAT. OFF. SOC’Y 467, 469–70 (1983).
Id. at 470.
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claims in which a mental act of reasoning employs a newly
discovered law of nature as a premise.204 The relationship
between Prometheus Laboratories and the printed matter
doctrine is different. The printed matter doctrine cannot do the
work that Prometheus Laboratories does. The core of the CAFC’s
contemporary printed matter doctrine would not invalidate the
Prometheus Laboratories claims because those claims do not have
limitations describing the informational contents of texts, speech,
or diagrams.205 Rather, Prometheus Laboratories complements or
dovetails the printed matter doctrine. Each of the two doctrines
invalidates a distinct set of claims, but they work together to
effectuate a unified policy goal: they prevent the discovery of a
law of nature from ever being patentable, in and of itself.
The printed matter doctrine is not targeted specifically at
206
laws of nature. It invalidates claims with limitations that
describe the contents of human-readable information even if
those contents are not a law of nature.207 Yet, many of the cases
at the contemporary core of the printed matter doctrine do
involve laws of nature. For example, the King Pharmaceuticals
claims are premised on a newly discovered correlation that
mirrors the correlation at issue in Prometheus Laboratories. In
Prometheus Laboratories, the newly discovered law of nature was
the correlation between (1) a patient who is taking a thiopurine
drug having a metabolite level above a certain threshold and
(2) the patient having an increased likelihood of suffering
adverse side effects from the thiopurine drug.208 In King
Pharmaceuticals, the newly discovered correlation was between
(1) a patient who is taking metaxalone having ingested the drug
with food and (2) the patient enjoying greater bioavailability of
209
the metaxalone.
Given that the Prometheus Laboratories
correlation is a law of nature, it is difficult to understand how the
204. See supra Section II.A.3 (describing the substantive redundancy of Prometheus
Laboratories and the mental steps doctrine in the area of medical diagnostics).
205. For a discussion of the claims at issue in Prometheus Laboratories, see supra
Section II.A.1.
206. See Collins, supra note 159, at 1380 (defining the printed matter doctrine as one
that governs “information recorded in [a] substrate or medium” which reaches claims such
as those involving printed matter describing new uses for old machines (quoting CHISUM,
supra note 14, § 1.02[4], at 1–25)).
207. See, e.g., In re Jie Xiao, 462 F. App’x 947, 951 (Fed. Cir. 2011) (rejecting claims
to combination locks employing meaningless wildcard symbols). The irrelevance of
whether informational content is a law of nature under the printed matter doctrine
parallels the irrelevance of whether a mental process is enabled by a law of nature under
the mental steps doctrine. See supra text accompanying note 96.
208. See supra text accompanying notes 20–25.
209. See supra text accompanying note 168.
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King Pharmaceuticals correlation could not be a law of nature,
too.210
King Pharmaceuticals and Prometheus Laboratories enforce
complementary limits on the reach of patent protection. Each
excludes a different type of claim in which the discovery of a law
of nature masquerades as a patentable invention. The discovery
of a law of nature is nothing more than the creation of a new type
of previously nonexistent factual knowledge about the world.
Factual knowledge per se, in turn, exists in two forms: it exists as
mental states within human minds and as extra-mental
211
information that is meaningful to human minds. To prevent the
raw factual knowledge that constitutes the discovery of a law of
nature from itself being a patentable entity, a two-pronged
restriction on patent protection is needed. The printed matter
doctrine uses a point-of-novelty analysis to restrict the
patentability the extra-mental information that conveys or
disseminates a newly discovered law of nature. For example, in
King Pharmaceuticals, the “informing” step describes the extramental codification of information (a label) or speech act that is
needed to transmit knowledge from one mind to another.
Prometheus Laboratories then picks up where the printed matter
doctrine leaves off. It uses the bracket-and-distinguish analysis
to restrict the patentability of the form of factual knowledge of a
law of nature that exists within human minds. If it is simply the
mental comprehension of a newly discovered law of nature that
distinguishes a claimed process from the prior art, Prometheus
Laboratories holds that the process is not patentable subject
matter.212
Because the bracket-and-distinguish analysis of Prometheus
Laboratories mirrors the point-of-novelty analysis of the printed
213
matter doctrine, Prometheus Laboratories meshes seamlessly
with the core of the CAFC’s contemporary printed matter
210. Other cases at the core of the contemporary printed matter doctrine also involve
information with factual content that is readily classified as a law of nature. See, e.g., In
re Huai-Hung Kao, 639 F.3d 1057, 1072–73 (Fed. Cir. 2011); AstraZeneca LP v. Apotex,
Inc., 633 F.3d 1042, 1063–65 (Fed. Cir. 2010); In re Ngai, 367 F.3d 1336, 1337–38 (Fed.
Cir. 2004).
211. Cf. JAEGWON KIM, PHILOSOPHY OF MIND 25 (2d ed. 2006) (describing the
philosophical understanding of human knowledge); ROBERT CUMMINS, MEANING AND
MENTAL REPRESENTATION 2 (1989) (discussing the process of understanding extra-mental
representations).
212. See Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1297
(2012); supra text accompanying notes 49–56.
213. See supra Section II.A.2 (illustrating the parallel between the bracket-anddistinguish analysis of Prometheus and the point-of-novelty analysis of the mental steps
doctrine).
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doctrine to achieve a single policy goal. The discovery of a law of
nature cannot, in and of itself, yield a patentable invention
because factual knowledge per se cannot differentiate a claim
from the prior art, regardless of whether the factual knowledge
exists as a mental state of comprehension or as the contents an
extra-mental codification of information that is meaningful to a
human mind.
C. Continuity with the Status Quo: Erasing the Arbitrary
Statutory Divide
One reason why the complementarity of Prometheus
Laboratories and the contemporary core of the CAFC’s printed
matter doctrine has to date been overlooked is that the two facets
of patent law are conventionally understood to be grounded in
different statutory provisions of the Patent Act.214 Prometheus
Laboratories is a § 101 case that limits the reach of patentable
subject matter, whereas the contemporary core of the printed
matter doctrine is grounded in both the novelty provision of § 102
215
and the closely allied nonobviousness provision of § 103. This
statutory divide, however, is arbitrary.216 The conventional
classification system within patent law that separates
Prometheus Laboratories and the printed matter doctrine into
hermetically sealed boxes needs to be reconsidered.
The arbitrariness of the statutory divide is evident within
the printed matter doctrine itself because, beyond the doctrine’s
contemporary core, there is an internal split in its own statutory
217
grounding. Two different types of printed matter cases are
associated with two different statutes in the Patent Act, despite
the fact that the two types of cases use identical reasoning. When
214. Another reason is that the Supreme Court precedent suggests that the laws-ofnature exclusion is in part about preventing the privatization of something “that has
always existed” rather than something that was invented by mankind. See Parker v.
Flook 437 U.S. 584, 593 n.15 (1978) (“The underlying notion [behind the prohibition on
patenting a law of nature] is that [a law of nature] reveals a relationship that has always
existed.”). In contrast, the labels and speech at issue in printed matter cases are clearly
artifacts of human ingenuity, and the printed matter doctrine governs informational
content about both natural and man-made systems.
215. See Prometheus Labs., 132 S. Ct. at 1293–94 (explaining that Section 101 of the
Patent Act is the basic principle against which the claim is to be measured); Collins,
supra note 159, at 1402–03 (noting that printed matter claims “are analyzed under either
the novelty provisions in section 102 or the nonobviousness provisions in section 103”).
216. Neither the exclusion of laws of nature from patentable subject matter nor the
printed matter doctrine is codified in the express language of the Patent Act. Both are
creatures of judicial interpretation. See 35 U.S.C. §§ 101, 102, 103 (2006).
217. Andrew Chin, Gene Probes as Unpatentable Printed Material, 20 FED. CIR. B.J.
527, 532–33 (2010–2011).
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brought to bear on claims to printed matter per se in many older
cases, the printed matter doctrine is classified as a facet of the
§ 101 doctrine of patentable subject matter.218 For example,
although they have physical materiality, books are not within the
statutory meaning of “manufactures” in § 101.219 In the core of its
contemporary applications, however, the printed matter doctrine
has been used to scrutinize the patentability of claims to
traditionally patentable objects and methods that include
printed-matter limitations.220 In these cases, the claim is
presumed to describe patentable subject matter, and the limit on
the reach of patent protection attributable to the printed matter
doctrine is categorized as part of either the novelty provision of
221
§ 102 or the nonobviousness provision of § 103. Here, the pointof-novelty analysis means that the content of the printed matter
cannot be considered when determining whether a claimed
invention constitutes a patentable advance over the prior art.
The newness of the instructions may make the claimed subject
matter, taken as a whole, new as a purely factual matter, but the
claimed subject matter is not novel as a legal matter because the
advance over the prior art resides solely in the content of the
printed matter. The statutory division of the printed matter
doctrine between § 101, on the one hand, and §§ 102 and 103, on
the other, has deep historical roots, but it does not affect the
substance of the analysis.222 The printed matter doctrine draws
the same boundary around the inventions that can be patented in
both its § 101 applications and its §§ 102 and 103 applications.
The § 101 cases simply apply the general printed-matter rule
when the only limitation on the scope of a claim is the content of
the printed matter: the advance over the prior art, if it exists,
must by definition reside in the content of the printed matter,
and the claim is per se invalid.
218. Id. at 532.
219. CHISUM, supra note 14, § 1.02[4], at 1–24 (“Under traditional doctrine, ‘printed
matter’ by itself did not constitute a ‘manufacture’ . . . .”); cf. In re Chatfield, 545 F.2d 152,
157 (C.C.P.A. 1976) (“Some inventions, however meritorious, do not constitute patentable
subject matter, e.g., printed matter . . . .”). The PTO’s distinction between functional and
nonfunctional descriptive material in Beauregard claims illustrates a contemporary use of
the printed matter doctrine as a facet of the Section 101 doctrine of patentable subject
matter. See supra note 193.
220. See supra Section III.A (identifying the core of the contemporary printed matter
doctrine in CAFC cases).
221. See, e.g., In re Ngai, 367 F.3d 1336, 1338–39 (Fed. Cir. 2004) (novelty); In re
Gulack, 703 F.2d 1381, 1385, 1386 (Fed. Cir. 1983) (nonobviousness).
222. See In re Sterling, 70 F.2d 910, 912 (C.C.P.A. 1934) (using the same reasoning to
affirm printed-matter rejections based both on a lack of novelty and on an absence of
patentable subject matter).
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The arbitrariness of the statutory divide can also be seen in
a juxtaposition of the proceedings in King Pharmaceuticals and
Prometheus Laboratories. In both proceedings, the courts
considered arguments that the case should be decided under the
other statutory provision.
The district court in King Pharmaceuticals invalidated the
“informing” claims for lack of patentable subject matter under
§ 101, relying on the bracket-and-distinguish analysis of Flook to
support its conclusion: “[T]he discovery of . . . a phenomenon [of
nature] cannot support a patent [under § 101] unless there is
223
some other inventive concept in its application.” The CAFC
reversed the district court on this doctrinal point, holding that
the Supreme Court has mandated “a [§ ] 101 patentability
analysis [that] is directed to the claim as a whole, not individual
224
limitations.” However, the CAFC upheld the district court’s
judgment of invalidity by invoking the printed matter doctrine
and applying it as part of the novelty analysis of § 102.225 Not only
did King Pharmaceuticals start out as a § 101 case in the district
court and end up as a § 102 case in the CAFC, it may be that the
return leg of a round trip lies in the near future. After
Prometheus Laboratories and its elevation of Flook over Diehr, it
is unclear that the CAFC’s rejection of the district court’s
classification of the invalidity determination as a § 101 issue is
correct. The district court’s argument may someday carry the
day, and King Pharmaceuticals may present a § 101 issue.226
Inversely, the Solicitor General’s amicus brief in Prometheus
Laboratories extrapolated from King Pharmaceuticals and urged
the Court to view the case as raising a § 102 issue of novelty and
inherency rather than as a § 101 issue of patentable subject
223. King Pharm., Inc. v. Eon Labs, Inc., 593 F. Supp. 2d 501, 512 (E.D.N.Y. 2009)
(quoting Parker v. Flook, 437 U.S. 584, 594 (1978) (first and second alterations in
original)), aff’d on other grounds, 616 F.3d 1267 (Fed. Cir. 2010).
224. King Pharm., 616 F.3d at 1277. Technically, the CAFC cited Flook, not Diehr, to
support the “claim as a whole” approach to Section 101. Id. However, this interpretation
of Flook is highly influenced by the Court’s subsequent opinion in Diehr. See supra text
accompanying notes 147–49 (discussing the CAFC’s interpretation of Diehr before
Prometheus Laboratories). Furthermore, the CAFC also cited its own decision in In re
Bilski to support its “claim as a whole” principle. King Pharm., 616 F.3d at 1277. The
cited passage of In re Bilski, in turn, relies on Diehr, not Flook. In re Bilski, 545 F.3d 943,
958 (Fed. Cir. 2008) (en banc), aff’d on other grounds sub nom. Bilski v. Kappos, 130 S. Ct.
3218 (2010).
225. King Pharm., 616 F.3d at 1278–79.
226. In fact, the Supreme Court suggested as much toward the end of its Prometheus
Laboratories opinion when it noted in response to an argument by the Solicitor General
that the analysis of distinction from the prior art under Section 103 needed to examine
the claim “as a whole.” See infra text accompanying notes 233–35.
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matter.227 Interestingly, the Solicitor General’s views cite the
CAFC’s printed matter doctrine for support, but they in fact sound
much more like the CCPA’s mental steps doctrine (implemented
228
through §§ 102 and 103 rather than § 101). The Solicitor General
noted that the “administering” and “determining” steps existed in
the prior art.229 Yet, like the CAFC, the Solicitor General interpreted
the Supreme Court’s opinion in Diehr to overrule Flook and forbid
consideration of the distinction of any part of the claim from the
prior art as part of the analysis of patentable subject matter.230 After
opining that the claims did recite patentable subject matter, the
brief concluded that the claims were likely to be invalid under a
point of novelty analysis rooted in either § 102 or § 103:
A patent applicant cannot . . . avoid a rejection under
Section 102 or 103 merely by appending a purely mental
step or inference to a process that is otherwise known in (or
obvious in light of) the prior art. . . . Because the “wherein”
clauses of respondent’s claims do not recite any physical
step to be performed by a doctor (or anyone else), they add
no patentable weight to the “administering” and
231
“determining” steps.
To defend a point-of-novelty analysis for a “mental step or
inference,” the Solicitor General cited not to the historical mental
steps doctrine of the CCPA, but to the contemporary printed
matter doctrine of the CAFC.232
The Supreme Court went out of its way in Prometheus
Laboratories to comment on and reject the Solicitor General’s
227. Brief for the United States as Amicus Curiae Supporting Neither Party at 11,
Mayo Collaborative Servs. V. Prometheus Labs., Inc., 132 S. Ct. 1289 (2012) (No. 101150). For a similar analysis offered immediately after the issuance of King
Pharmaceuticals and a year before the Supreme Court even accepted certiorari in
Prometheus Laboratories, see Kevin Emerson Collins, An Initial Comment on King
Pharmaceuticals: The Printed Matter Doctrine as a Structural Doctrine and Its
Implications for Prometheus Laboratories, 2010 PATENTLY-O PAT. L.J. 111, 116 (2010),
http://www.patentlyo.com/lawjournal/2010/08/collins-printed-matter.html.
228.
See Brief for the United States as Amicus Curiae Supporting Neither Party,
supra note 227, at 28–29 (using the printed matter doctrine for support); cf. Collins, supra
note 159, at 1396–97 (comparing the patentable weight approach with the mental steps
doctrine).
229. Brief for the United States as Amicus Curiae Supporting Neither Party, supra
note 227, at 27.
230. Id. at 16–17.
231. Id. at 27, 28–29; see also id. at 26 (“[The] claimed process differs from the prior
art only with respect to the mental inference a doctor may draw after the ‘administering’
and ‘determining’ steps have been completed. Although that similarity to the prior art is
irrelevant to the Section 101 inquiry, it would likely warrant invalidation of the claims
under 35 U.S.C. 102 or 103.” (citation omitted)).
232. Id. at 29 & n.9 (citing In re Ngai, 367 F.3d 1336 (Fed. Cir. 2004); King Pharm.,
Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1278 (2010)).
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proposal.233 The Court made space within § 101 for its bracket-anddistinguish analysis by noting that the Solicitor General’s proposal
“would make the ‘law of nature’ exception to [§ ] 101 patentability a
234
dead letter.” Additionally, the Court questioned whether a pointof-novelty analysis could be employed under the auspices of the
novelty and nonobviousness analyses, noting that “[§§ ] 102 and 103
say nothing about treating laws of nature as if they were part of the
prior art when applying those sections.”235 Thus, whether the
printed matter doctrine will remain an artifact of §§ 102 and 103, or
whether it will be forced to migrate back to its historical origins as
an artifact of § 101 patentable subject matter, is now an open
question.
IV. CONCLUSION
The reasoning that animates the Supreme Court’s opinion in
Prometheus Laboratories draws from the Court’s own precedents
addressing the exclusion of laws of nature from patentable
subject matter. This Article contextualizes Prometheus
Laboratories within two different bodies of patent law that have,
to date, been addressed by only lower courts: the historical
mental steps doctrine of the CCPA and the contemporary printed
matter doctrine of the CAFC. The connections between
Prometheus Laboratories and the mental steps doctrine tell a
story of partial redundancy and disruption of the status quo. In
contrast, the connections between Prometheus Laboratories and
the printed matter doctrine tell a more easily overlooked story of
complementarity and continuity with the status quo. More
broadly, however, the strength and multi-stranded nature of both
sets of connections raises the possibility of looking past the lawsof-nature rhetoric that animates the Supreme Court’s
Prometheus Laboratories opinion. Perhaps it makes sense to
233. Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1303–04
(2012). However, the Court did not go out of its way to point out the conflict between its
bracket-and-extract analysis for laws of nature employed in Prometheus Laboratories and
the passages in Diehr that both the CAFC and the Solicitor General had interpreted to
prohibit such an analysis. See id. at 1304 (“We recognize that, in evaluating the
significance of additional steps, the [Section] 101 patent-eligibility inquiry and, say, the
[Section] 102 novelty inquiry might sometimes overlap.”).
234. Id. at 1303.
235. Id. at 1304; cf. Brian J. McNamara, Patent Protection of Computer Hardware
and Software, 12 WAKE FOREST J. BUS. & INTELL. PROP. L. 137, 169 (2012) (referring to
the Court’s recognition in Prometheus Laboratories that Sections 101 and 102 overlap). To
further confuse the issue, the Court cited its language from its opinion on Section 101 in
Diehr that a claim must be considered “as a whole” to support the proposition that
Sections 102 and 103 must consider the claim as a whole. Prometheus Labs., 132 S. Ct. at
1304.
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reconceptualize Prometheus Laboratories as a case about the
limits on the patent regime that follow from the unpatentability
of mental processes (mental steps) and information that is
intelligible to humans (printed matter). That is, perhaps
Prometheus Laboratories can be best explained by focusing on the
unpatentability of the human mind.