http://blogs.law.stanford.edu/lawandbiosciences/2012/03/21/mayo-v-prometheus-a-shift-in-the-machine-or-transformation-test/ Wed, 15 May 2013 21:56:51 +0000 http://wordpress.org/?v=2.9.2 hourly 1 http://blogs.law.stanford.edu/lawandbiosciences/2012/03/21/mayo-v-prometheus-a-shift-in-the-machine-or-transformation-test/comment-page-1/#comment-19669 Jake S Thu, 22 Mar 2012 21:00:49 +0000 http://blogs.law.stanford.edu/lawandbiosciences/?p=2259#comment-19669 One of the more interesting aspects of the decision is its subtle allusion to the "obvious to try" standard for nonobviousness (§ 103). The Court relies heavily on the fact that the patent implicates "well-understood, routine, conventional activity." Its difficult to read that phrase and not think that these are remarkably similar concerns in whether a subject-matter eligible invention is nonetheless obvious because it was "obvious to try." More simply put, the "well-understood, routine, conventional activity" puts the "try" in "obvious to try." Despite the Court's insistence that these are separate inquiries, I'd like to know what invention is "obvious to try" but does not require the public to use "well-understood, routine, conventional activity." Does this "basic research tools exclusion" swallow "obvious to try" under § 103? One of the more interesting aspects of the decision is its subtle allusion to the “obvious to try” standard for nonobviousness (§ 103). The Court relies heavily on the fact that the patent implicates “well-understood, routine, conventional activity.” Its difficult to read that phrase and not think that these are remarkably similar concerns in whether a subject-matter eligible invention is nonetheless obvious because it was “obvious to try.” More simply put, the “well-understood, routine, conventional activity” puts the “try” in “obvious to try.” Despite the Court’s insistence that these are separate inquiries, I’d like to know what invention is “obvious to try” but does not require the public to use “well-understood, routine, conventional activity.” Does this “basic research tools exclusion” swallow “obvious to try” under § 103?

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