The Department of Justice stepped in to argue the AMP v. Myriad case five years ago today. It was during that argument at the Federal Circuit that the patent world got to hear about the DOJ’s “Magic Microscope” test. One year later, the case would make its way to the Supreme Court, where the PTO did not join in briefing the case. That contrasts with Cuozzo v. Lee, currently pending at the Supreme Court, in which both the PTO and the SG’s Office are briefing the case together.
© Johnson and Vobach 2016
Judge Moore noted the Magic Microscope test in her concurring opinion in the case:
Although the Patent Office has consistently followed the same policy for a decade (and arguably a century or more), the United States, as an amicus represented at argument by the Solicitor General, now argues that the Patent Office’s published guidelines are incorrect and a misstatement of the law. In place of these guidelines, the Solicitor General suggested that we should use a “magic microscope” as part of our section 101 analysis. If we could observe the claimed substance in nature using this microscope, the Solicitor General argues, it is not patentable. The magic microscope test applies equally to portions of a larger, naturally occurring molecule. For example, the optical field of view could be zoomed to see just a sequence of fifteen nucleotides within the chromosome. As long as you could “see” the claimed molecule in nature using the magic microscope, it would fall into the “laws of nature” exception and be unpatentable subject matter.
Certainly the magic microscope has curb appeal—its child-like simplicity an apparent virtue. The magic microscope, however, would not see the claimed DNA molecules at issue in this case. An isolated DNA molecule has different chemical bonds as compared to the “unisolated” sequence in the chromosome (the ends are different). In short, the claimed molecules cannot be seen in nature through the magic microscope. While you may be able to see the order of DNA nucleotides in the chromosome, the isolated fragment of 1369*1369 DNA is a different molecule. It may be that the microscope can also break and form chemical bonds to yield the claimed isolated DNA. Even so, the microscope must make some decisions: should the isolated DNA begin and end in a phosphate? a hydrogen? a hydroxyl? a methyl group? an acyl group? These decisions might be obvious to a person of ordinary skill in the art, but they are not inherent to the unisolated sequence as part of the chromosome. Creating the claimed isolated DNA sequences therefore results in a distinctly unnatural molecule. Even the dissent agrees that the isolated DNA molecules at issue require cleaving chemical bonds, though it disputes the importance of the resulting distinct “`molecular species.’” Dissent at 1375 (quoting Linus Pauling, The Nature of the Chemical Bond 6 (3d ed.1960)). The magic microscope test simply does not work the way the government claims.
Ass’n for Molecular Pathology v. US Patent and Trademark Office, 653 F.3d 1329, 1368-69 (Fed. Cir. 2011)(Judge Moore concurring).