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  • Fixing the Funk-y Bilski test.

    Posted on July 8th, 2009 Sean 5 comments

    This piece builds on earlier pieces starting June 25, 2009, related to Bilski’s machine or transformation test. Ask yourself the following: does Bilski’s test capture all natural phenonema?

    Azotobacter is a genus of bacteria capable of fixing nitrogen, i.e., turning nitrogen into ammonium.

                           N2 + 8H+ –> 2NH4 (details omitted)                                                                   (A)

    What would Bilski’s machine or transformation test predict about the following claim?

                        1. A method of fixing nitrogen, comprising introducing Azotobacteraceae azotobacter to air under conditions sufficient to fix nitrogen in the introduced air. 

    Claim 1 recites transforming a composition known as air by taking a fraction of its nitrogen and converting it to ammonium per reaction (A).  So, Bilski’s test would declare this claim eligible, because claim 1 does not recite a Bilski’s natural principle. 

    Yet claim 1 merely recites what Azotobacteraceae azotobacter colonies do naturally.  Although both azotobacter and air are articles or compositions, they are not a the modified nouns used in 35 U.S.C. § 101—new and useful … manufacture, or composition—Diamond v. Charkrabarty, 477 US 303 (1980), because they are nature’s handiwork and not made by man.  Cf. Funk Brothers Seed Co. v. Kalo Inoculant Co., 333 U.S. 127 (1948) (concerning ineligibility of combinations of naturally occurring bacteria colonies).  Furthermore, the fixed air also embraces natural products, especially since the percent ammonium enrichment and nitrogen depletion are not recited in claim 1. 

    So, does the Funk-y (yes a pun is intended) Bilski test open the door for patent practitioners to file claims covering what natural product do, even if the natural products themselves are ineligible subject matter?  Does Bilski’s test need fixing (yes a second pun is intended)?

    CAFC, USPTO

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