Recently, a district court for the District of Columbia invalidated a patent claiming a system and method to guide the selection of therapeutic treatments using a computer program. See SmartGene v. Advanced Biological Laboratories, No. 1:08-CV-0642 (BAH), 2012 WL 1059611, ___ F. Supp. 2d ___ (D.D.C., March 30, 2012). The court ruled that the patent claims were abstract and not patent-eligible subject matter under 35 U.S.C. § 101, see id. at *18, because they are "merely a recitation of abstract steps, rather than an innovation that adds something 'specific to the laws of nature [or abstract ideas] other than what is well-understood, routine, conventional activity, previously engaged in by those in the field.'" Id. at *10 (quoting Mayo Collaborative Servs. v. Prometheus Labs., __ U.S. __, 132 S.Ct. 1289, 1299 (2012)).

The SmartGene opinion attracted considerable attention by virtue of its issuance upon the heels of the Supreme Court's ruling in Prometheus and its citation to that case. While the case is well worth reading, the result is unsurprising and does not depend on Prometheus. As shown by the court's thorough analysis of the claims and examination of more than thirty years of Supreme Court precedent, ABL's patent claims were unpatentable as abstract ideas under cases reaching back at least to Parker v. Flook, 437 U.S. 584, 98 S.Ct. 2522 (1978). The recitation of three databases – containing therapeutic treatment regimens, a list of "expert rules," and "advisory information" respectively – on a general purpose computer merely replicates the abstract, unpatentable thought process of a medical professional diagnosing and treating a patient. See SmartGene, 2012 WL 1059611 at *7-*13. The court also examined the claims under the "machine or transformation" test, and found that both the general-purpose computer was not a qualifying machine, and that the claims involved no transformation. Id. at *13-*18. In conclusion, thinking about a decision is still unpatentable.

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