Identifying the techniques to be used in performing an abstract idea is insufficient to render a claim patent-eligible when those techniques are well-understood, routine, and conventional techniques. Here, for example, spelling out how to compare gene sequences using routine, ordinary techniques was found to not add “enough” to make the claims as a whole patent-eligible.
Background / Facts: The patents being asserted here were addressed in Myriad but include method claims which were not previously considered by the Supreme Court or by the Federal Circuit. The two method claims now on appeal involve comparisons between the wild-type BRCA sequences with a patient’s BRCA sequences. In addition to reciting a general comparison of sequences, the claims describe the way in which the sequences are compared: they are compared by 1) hybridizing a BRCA gene probe and 2) detecting the presence of a hybridization product; or by similar 1) amplification of the BRCA1 gene and 2) sequencing of the amplified nucleic acids.
Issue(s): Whether the particular mechanism for the comparisons renders the claims patent-eligible.
Holding(s): No. “We need not decide if Mayo [addressing methods exploiting natural relationships] is directly on point here because the method claims before us suffer from a separate infirmity: they recite abstract ideas.” Applying the two-step Alice test, the court first dismissed the claimed comparison of genetic sequences as “correspond[ing] to the first step of Alice” and “directed to the patent-ineligible abstract idea of comparing BRCA sequences and determining the existence of alterations.” Turning to the second step of Alice, the court found that “[t]he non-patent-ineligible elements of [the] claims [] do not add ‘enough’ to make the claims as a whole patent-eligible. The district court found, and Myriad does not challenge, that the elements of the second paragraphs of [the] claims [] ‘set forth well-understood, routine and conventional activity engaged in by scientists at the time of Myriad’s patent applications.’ … The second paragraphs of [the] claims [] do nothing more than spell out what practitioners already knew—how to compare gene sequences using routine, ordinary techniques. Nothing is added by identifying the techniques to be used in making the comparison because those comparison techniques were the well-understood, routine, and conventional techniques that a scientist would have thought of when instructed to compare two gene sequences.”