In light of our decision in In re Bilski, 545 F.3d 943 (Fed. Cir. 2008) (en banc), we
affirm the district court’s grant of summary judgment that these claims are invalid under
35 U.S.C. § 101. Dr. Classen’s claims are neither “tied to a particular machine or
apparatus” nor do they “transform a particular article into a different state or thing.”
Bilski, 545 F.3d at 954. Therefore we affirm.
The FireOfGenius blog wrote:
Chakrabarty holds that a genetically modified bacterium is a patentable “manufacture” or “composition of matter” under section 101.
Perhaps patentee Classen Immunotherapies will seek certiorari on the ground that the Federal Circuit’s rejection of the method claim can’t be squared with Chakrabarty’s holding that a genetically modified bacterium is a manufacture . . .
IPBiz notes that one will not find the term "genetically modified" anywhere in Diamond v. Chakrabarty, 447 U.S. 303 (1980). The holding is along the lines: A live, human-made micro-organism is patentable subject matter under § 101. The entity was "a bacterium from the genus Pseudomons containing therein at least two stable energy-generating plasmids, each of said plasmids providing a separate hydrocarbon degradative pathway. Joe Miller got the holding of the 5-4 case wrong. The case was about genetic engineering, not about genetic modification.
Footnote 1 of Chakrabarty is instructive:
Plasmids are hereditary units physically separate from the chromosomes of the cell. In prior research, Chakrabarty and an associate discovered that plasmids control the oil degradation abilities of certain bacteria. In particular, the two researchers discovered plasmids capable of degrading camphor and octane, two components of crude oil. In the work represented by the patent application at issue here, Chakrabarty discovered a process by which four different plasmids, capable of degrading four different oil components, could be transferred to and maintained stably in a single Pseudomonas bacterium, which itself has no capacity for degrading oil.
At the time, four known species of oil-metabolizing bacteria were known to exist, but when introduced into an oil spill, competed with each other, limiting the amount of crude oil that they degraded. The genes necessary to degrade oil were carried on plasmids, which could be transferred among species. By irradiating the transformed organism with UV light after plasmid transfer, Prof. Chakrabarty discovered a method for genetic cross-linking that fixed all four plasmid genes in place and produced a new, stable, bacteria species (now called Burkholderia) capable of consuming oil one or two orders of magnitude faster than the previous four strains of oil-eating microbes. The new microbe, which Chakrabarty called "multi-plasmid hydrocarbon-degrading Pseudomonas," could digest about two-thirds of the hydrocarbons that would be found in a typical oil spill.
Not frequently discussed is that "oil-eating" bacteria have a preference for aliphatic [sp3] carbon over aromatic [sp2] carbon. They eat the benign stuff and leave behind the toxic stuff. Roughly 2/3 (or more) of a petroleum crude is aliphatic.