Patzke+Core+Categories+2

New Core Concepts:

These concepts are quotes from the District Court Ruling and the Federal Circuit Court Ruling. These are only the written opinions and not the briefs or oral arguments. Three concepts are: Utility, Biological Information, and Tests (implying legal tests, not diagnostic tests).

UTILITY "Because it is undisputed that the claimed compositions and methods possess **utility**, the sole task of this Court is to resolve whether the claimed compositions and methods constitutestatutory subject matter or fall within the judicially created products of nature exception to patentable subject matter" (bold added, **108). (Sweet, District Court Ruling)**

The majority opinion states, "it is the distinctive nature of DNA //molecules// as isolated compositions of matter that determine their patent eligibility rather than their physiological **use of benefit**." Furthermore, "[t]he claimed isolated DNA molecules are distinct from their natural existence as portions of larger entities, and their information content is irrelevant to that fact….[G]enes…are bestdescribed in patents by their [chemical] structures rather than their [informational] functions.” (Lourie, First Federal Circuit Court Ruling)

Focusing specifically on //Funk Brothers// and //Chakrabarty//, Moore posits that the issue at hand is to “analyze the isolated DNA claims …, to determine whether they have markedly different characteristics with the potential for significant **utility**” (*1361, pdf p17) (Moore, First Federal Circuit Court Ruling).

Citing //Funk Brothers//, Moore determines that “[t]he ability to use isolated DNA molecules as the basis for diagnostic gene testing is clearly an ‘enlargement of the range of … **utility**’ as compared to nature” (93, pdf p19). Furthermore, he goes on to define utility of the patents-in-suit “[d]iagnostic testing, however, is not a natural **utility** – the body does not naturally engage in this type of testing, and certainly does not do so with the shorter (non-naturally occurring) isolated DNA used by man” (94, pdf p19). Finally, situating his reasoning in the chemical components of DNA, Moore states, “the different chemical structure of the isolated DNA, which is a product of the intervention of man, leads to a different and beneficial **utility**” (94, pdf p19). (Moore, First Federal Circuit Court Ruling)

BIOLOGICAL INFORMATION

“Gene sequences constitute the **biological information** insofar as they describe the structural and chemical properties of a particular DNA molecule and serve as the cellular "blueprint" for the production of proteins. …[T]he information content of a human gene sequence is fixed …”(**31,*194). (Sweet, District Court Ruling)**


 * “**DNA represents the physical embodiment of **biological information**, distinct in its essential characteristics from any other chemical found in nature. It is concluded that DNA's existence in an "isolated" form alters neither this fundamental quality of DNA as it exists in the body nor the information it encodes.” (4-**5, *187) (Sweet, District Court Ruling)

TESTS OF SIMILARITY AND DIFFERENCE

Referring back to //Chakrabarty//, Bryson states: “In sum, the test employed by the Supreme Court in //Chakrabarty//, requires us to focus on two things: (1) the //similarity in structure// between what is claimed and what is found in nature and (2) the //similarity in utility// between what is claimed and what is found in nature" (italics added). (Bryson, First Federal Circuit Court Ruling)