From: Lyons, Robert [e-mail address redacted] 
Sent: Wednesday, April 16, 2014 10:56 PM
To: myriad-mayo_2014
Subject: 2014 Guidance Memorandum for Subject Matter Eligibility of Claims 
Relating to ... Natural Products - Comments

1.	 I disagree strongly with the PTO analysis of Example III.B., Claim 1 
on page 7.  According to the background, a patient must eat 30 pounds of 
leaves per day for 4 weeks to achieve therapeutic effect in treating breast 
cancer, but 1 teaspoon of purified amazonic acid achieves the same effect 
as 30 pounds of leaves.  Nobody had previously been able to identify, isolate, 
extract, or purify the active ingredient in the leaf.  It appears to me that the 
purified amazonic acid is markedly different from what is found in nature.  
Purified amazonic acid is not naturally occurring and is not found in nature in 
that state; it is the leaf that is the product of nature.  The PTO also cannot 
blithely assume that the process of purifying the amazonic acid had no effect 
on its potency.  If previous investigators had been able to identify, isolate, 
extract, and purify amazonic acid from the leaf but did not know about its 
therapeutic value, then the compound may not be new or satisfy the novelty or 
obviousness requirements, but it is not patent ineligible subject matter. 
2.	I also disagree with the PTO discussion of Example III.C. on page 9.  
The discussion recites “Factor a) is not satisfied, because…gunpowder…are 
not markedly different from what exists in nature.”  The PTO analysis appears 
to assume that a mixture is not eligible subject matter if the various elements 
and compounds in the mixture have not been chemically altered from what is 
found in nature.  I believe this is wrong.  By the PTO reasoning, gunpowder 
itself would not be eligible subject matter for a patent, in spite of its tremendous 
utility.  Gunpowder, as a mixture, is not a naturally occurring product of nature.  
The act of selecting the ingredients and mixing them in the proper proportions 
is invention.  When nobody had previously appreciated the effect that can be 
achieved by mixing a particular selection of ingredients in the proper 
proportions, making the combination should be rewarded with patent 
protection.  Almost every invention is a combination of old or known elements; 
it is making a combination to produce a useful product that was previously 
substantially unknown that’s patentable.

Robert Lyons
Registered Patent Attorney

IP & Emerging Technologies Practice Group
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