A claim is not merely “directed to” a law of nature under Alice step one if the end result of the process is new and useful. Here, for example, claims reciting a new and useful laboratory technique for preserving hepatocyte liver cells were found to be patent-eligible even though the core refreezing technique underlying the preservation could be characterized as a law of nature. “That one way of describing the process is to describe the natural ability of the subject matter to undergo the process does not make the claim ‘directed to’ that natural ability.” This would be a good case to consult and cite in response to a subject matter eligibility rejection predicated on preemption of a natural law.
Background / Facts: The patent being asserted here is directed to preserving hepatocytes, a type of liver cell that has a number of attributes useful for testing, diagnostic, and treatment purposes. The inventors discovered that some fraction of hepatocytes are capable of surviving multiple freeze-thaw cycles. Armed with this discovery, the inventors developed an improved process of preserving the hepatocytes by subjecting previously frozen and thawed cells to density gradient fractionation to separate viable cells from non-viable ones; recovering the viable cells; and refreezing the viable cells.
Issue(s): Whether the claims covering this preservation process are “directed to” a patent-eligible concept.
Holding(s): Yes. “It is enough in this case to recognize that the claims are simply not directed to the ability of hepatocytes to survive multiple freeze-thaw cycles. Rather, the claims of the [] patent are directed to a new and useful laboratory technique for preserving hepatocytes. This type of constructive process, carried out by an artisan to achieve ‘a new and useful end,’ is precisely the type of claim that is eligible for patenting. [] The inventors certainly discovered the cells’ ability to survive multiple freeze-thaw cycles, but that is not where they stopped, nor is it what they patented.” The court specifically drew a contrast with Genetic Technologies, where “the claim amounted to nothing other than identifying ‘information about a patient’s natural genetic makeup.’” Here, however, the fact “[t]hat one way of describing the process is to describe the natural ability of the subject matter to undergo the process does not make the claim ‘directed to’ that natural ability.”