Presentation on theme: "1 Bioinformatics Practice Considerations October 20, 2011 Ling Zhong, Ph.D."— Presentation transcript:
1 Bioinformatics Practice Considerations October 20, 2011 Ling Zhong, Ph.D.
2 Bioinformatics Use of computational methods and biological data to solve problems in the field of biology Storage, retrieval and analysis of biological data Challenges Overlap of biotechnology and computer technology One of ordinary skill in the art
3 Inventions Computer-implemented methods Biological molecules (e.g., genes, proteins, metabolites) or chemical compounds Uses of biological molecules or chemical compounds
5 § Composition Biotechnology invention Isolated biological molecules eligible (Myriad) Computer-related invention (MPEP ) Descriptive material per se (e.g., database) ineligible Functional descriptive material (e.g., database plus computer programs) eligible when claimed in combination with computer readable media Nonfunctional descriptive material recorded on computer readable media ineligible Transitory computer-readable media per se ineligible
6 § Process Prometheus and Classen Transformative steps (e.g., administering, determining, growing) not insignificant RCT – eligible “Inventions with specific applications or improvements to technologies in the marketplace are not likely to be so abstract that they override the statutory language [of § 101] and framework of the Patent Act”
7 § Process Ultramercial – eligible Application of a mere idea of advertising with many intricate and complex computer programming steps CyberSource – ineligible A computer-implemented method is ineligible if one could perform the method mentally without a computer A computer readable medium containing program instructions for a computer to perform a method is ineligible if the computer-implemented method could be performed entirely in a human mind
8 § 112, ¶ 1 Computer-implemented functional claim limitation Written description All claims Sufficiently identifying how the invention achieves the claimed function Enablement Full scope of computer-implemented functional claim limitation
9 § 112, ¶ 6 Computer-implemented means-plus-function (MPF) limitation (Aoyama) The corresponding structure must include an algorithm to transform a general purpose computer or microprocessor. The specification must sufficiently disclose the algorithm. A rejection under § 112, ¶ 2 is appropriate if No disclosure of the corresponding algorithm No detail about the means to accomplish the software function Merely referencing a specialized computer
10 §§ 102, 103 Computer-implemented functional claim limitation Broadest reasonable interpretation - anticipation Implementing a known function on a computer - obvious Adapting an existing process to incorporate internet and web browser technologies for communicating and displaying information - obvious Functional descriptive material – claim limitation Nonfunctional descriptive material – not claim limitation Mere data (e.g., gene sequence) difference does not alter an actual process step.
11 Exemplary claims Process/method System/apparatus Computer program product (i.e., software) Biological molecules or chemical compounds Uses of biological molecules or chemical compounds
12 Takeaway Eligible subject matter Machine-or-transformation test Specific applications of an abstract idea or law of nature without preempting the use thereof Improvements to technologies in the marketplace Ample disclosure covering biotechnology and computer aspects Sequence rules Means-plus-function