As has been said in previous postings on this blog, the factual situation in Prometheus could be described as an outlier, the claim that came before the Supreme Court was idiosyncratically drafted, and it is impossible to determine any workable rule from the opinion handed down. The purported rule if given its broadest reasonable interpretation would read onto a number of situations where patentable subject matter has been considered to be available for at least a century. I have on my desk a copy of a final rejection from the USPTO objecting to a structural term (“cup-like”) on the grounds of indefiniteness because it is not clear how similar an element must be to be cup-like and because the metes and bounds would allegedly be undertimable to an ordinary skilled artisan. There is no way of knowing the metes and bounds of any purported rule in Prometheus, and if the opinion is carefully studied it will be seen from the concluding remarks that the court expressly shrank from making any new rule.

In both the UK and the US which share a common legal tradition there are some decisions of our highest court which have been enduringly influential and there are others which are important only for their own facts, should and do have no enduring effect, and after a few years are forgotten. In the patent field, Graham and Festo are arguably decisions of the first kind and Prometheus is arguably a decision of the second kind. It is submitted that neither the lower courts nor the USPTO should be over-zealous in applying such an imperfectly reasoned and marginal decision as Prometheus.

With the utmost respect, Bernard, and with reference to Judge Prost’s opinion in in Alice,a direction to apply the law with greater or less rigour is so much garbage. At every level, whether examiner, supervisory examiner, appeal board or CAFC the task of the administrative agency or tribunal is NOT to apply the law with a high, a moderate or a low degree of rigour but to apply the law CORRECTLY according to the evidence and the arguments submitted. To come to judgment on matters to be decided with predetermined prejudices or attitudes is to deny parties due process. Every court in both our countries has a statue of justice. She has scales for weighing evidence and arguments and is blindfold so she does not see anything else and upset the weighing process. Insofar as greater rigour is concerned, that is an invitation to remove the blindfold, and is a potential source of great wrong.