Right decision, wrong basis.

They're all the same.  That's kind of the point.

Lots of discussion this week about the Federal Circuit's decision in In re Roslin Institute, denying patent claims to a cloned sheep. 

The Federal Circuit affirmed the rejection of the claims under 101 as non-statutory.  But the claims were also rejected by the USPTO under 102 as anticipated, and 103 as obvious, over prior art.

According to the Court, the Board's reasoning for the prior art rejections was as follows:

 “‘[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). The Board then held that the claimed clones were anticipated and obvious because they were indistinguishable from clones produced through prior art cloning methods, i.e., embryotic nuclear transfer and in vitro fertilization. 

This raises two questions for me.  

First, the claims are to a cloned sheep.  They're not product-by-process claims (which probably would have made them patentable, given that Roslin got a patent on the cloning process used to make the sheep).  So why is the fact that you could have produced a clone with another process relevant?

Second, if the cloned sheep is really a copy of a pre-existing sheep, then why doesn't that pre-existing sheep anticipate the cloned sheep under 102?  

Finally, the reason I think this decision gets made under 101, rather than 102 or 103, is that the Court wants all of us (including the USPTO) to view 101 as a threshold that has to be got over before we worry about prior art.