Thursday, May 08, 2014

Roslin Institute loses Dolly the Sheep case at CAFC

Judge Dyk wrote the opinion finding unpatentable subject matter:

The Board held that all of Roslin’s pending claims—claims 155-159
and 164—were unpatentable subject matter under 35
U.S.C. § 101. The Board also rejected Roslin’s claims as
anticipated and obvious under 35 U.S.C. §§ 102 and 103.
We affirm the Board’s rejection of the claims under § 101.

The application at issue involved claims to the clone, not to
the method of cloning:

Campbell and Wilmut obtained a patent on the somatic
method of cloning mammals, which has been assigned
to Roslin. See U.S. Patent No. 7,514,258 (the ’258
patent). The ’258 patent is not before us in this appeal.
Instead, the dispute here concerns the Patent and Trademark
Office’s (PTO) rejection of Campbell’s and Wilmut’s
claims to the clones themselves, set forth in the ’233
application, titled Quiescent Cell Populations for Nuclear

In re Best was mentioned:

The Board also affirmed the examiner’s finding that
Campbell’s and Wilmut’s claimed subject matter was
anticipated by and obvious in light of the relevant prior
art under 35 U.S.C. §§ 102 and 103. Specifically, the
Board explained that “‘[w]here . . . the claimed and prior
art products are identical or substantially identical, or are
produced by identical or substantially identical processes,
the PTO can require an applicant to prove that the prior
art products do not necessarily or inherently possess the
characteristics of his claimed product.’” J.A. 21 (quoting
In re Best, 562 F.2d 1252, 1255 (CCPA 1977)) (alteration
and omission in original).

One notes

The Court
further clarified that “[a]n unpatentable article, like an
article on which the patent has expired, is in the public
domain and may be made and sold by whoever chooses to
do so.” Id. at 231; see also Bonito Boats, Inc. v. Thunder
Craft Boats, Inc., 489 U.S. 141 (1989). Roslin’s claimed
clones are exact genetic copies of patent ineligible subject
matter.2 Accordingly, they are not eligible for patent



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