Guest Post: How to Patent Grapefruit Juice -- The New USPTO Guidance for Patent Eligible Subject Matter Is Both Sticky and Sour

by McDonnell Boehnen Hulbert & Berghoff LLP

[author: Anthony D. Sabatelli]

PomeloWhat does grapefruit juice, or more specifically pomelo juice, have to do with all this?  I will get to that connection in just a bit.  For those of you not in the know, a pomelo is a large, grapefruit-like citrus fruit with a mild, sweet flavor, but without the characteristic bitterness of a grapefruit.  Now, on to the bitterness of the present situation.

On March 4th, the U.S. Patent and Trademark Office issued guidelines to its examining corps for assessing patent eligible subject matter under 35 USC § 101.  The guidelines were issued in light of the Supreme Court's decisions in Myriad, Prometheus, and related cases.  See, "Guidance For Determining Subject Matter Eligibility Of Claims Reciting Or Involving Laws of Nature, Natural Phenomena, & Natural Products."  The Guidance is intended to help examiners determine whether the subject matter of a patent claim is significantly different from what exists in nature.

The Guidance sets forth a three-question inquiry with a complex twelve-factor analysis for determining whether a claim meets the criteria for patent eligibility under § 101.  The first question is whether the claim is directed to one of the four statutory categories of patentable subject matter, i.e., a process, machine, manufacture or composition of matter.  If the answer is "no", end of inquiry, and the claim is not patentable.  If "yes", one proceeds to the second question, which is whether the claim recites a judicial exception to patentability.  These exceptions are laws of nature (e.g., gravity), natural phenomena (e.g., wind), or abstract ideas (ideas in the abstract are not patentable -- only applications of the ideas are).  If the answer to this second question is "no", the claim meets the eligibility requirements under § 101.  If "yes", the next inquiry is whether the claim "as a whole" recites something "significantly different" than these judicial exceptions.  This determination is made by analyzing the claim against the twelve factors -- six of which weigh toward patent eligibility and six of which weigh against.

If you think this analysis is complicated, even the USPTO thinks likewise.  The Guidance actually states "[t]he determination of eligibility is not a single, simple determination, but is a conclusion reached by weighing the relevant factors, keeping in mind that the weight accorded each factor will vary based upon the facts of the application."  Perhaps even more concerning is that the Guidance goes on to state "[t]hese factors are not intended to be exclusive or exhaustive as the developing case law may generate additional factors over time."  Need I say more?

So what does all this have to do with grapefruit juice -- um, I mean pomelo juice?  The pomelo comes into play, because the USPTO used pomelo juice in a recent training slideshow presentation to its examiners.

The following three pomelo juice claims were analyzed under the Guidance.

Claim 1: A beverage composition comprising:
a) pomelo juice; and
b) a preservative.

Claim 2: A beverage composition comprising pasteurized pomelo juice.

Claim 3: A beverage composition comprising:
a) pomelo juice; and
b) preservative X.

Without going into excruciating detail -- I will leave that for when you accidentally squirt the pomelo juice in your eye -- the USPTO found the following.

Claim 1 is not patent eligible because it recites two components both found in nature, namely pomelo juice and a preservative (which in its "broadest, reasonable interpretation" would encompass vitamin E, which is another product of nature).  The USPTO likened this claim to the mixture of naturally occurring bacteria at issue in Funk Brothers, a pre-biotech era Supreme Court case that said the mixture was not patent eligible, because the bacteria themselves were not structurally altered by being mixed together.  In the present example, if instead the pomelo juice claim had specifically recited an artificial preservative, the USPTO would likely have come down in favor of patent eligibility.

Regarding Claim 2, the USPTO said this claim is patent eligible, because pasteurized pomelo juice is significantly different from what is found in nature.

As for Claim 3, the USPTO also determined this claim to be patent eligible.  Assuming that preservative X is non-naturally occurring (the USPTO didn't state this upfront in the presentation), then this composition is also significantly different from what is found in nature.

Keep in mind that even though Claims 2 and 3 would be patent eligible under the Guidance, they still need to be further analyzed for patentability under § 101 (for utility and double patenting), under § 102 (for novelty), under § 103 (for obviousness), and also under § 112 (for written description, enablement, and best mode).

It will indeed be very interesting to see how the Guidance is applied as applicants begin to receive office actions on their biotechnology patent applications.

* Dr. Sabatelli is a Partner with Dilworth IP.

Image of Citrus grandis 'Honey White Brand' or 'Khao Nam Phueng' grown in Nakhon Chai Si, Nakhon Pathom province in Thailand (above) from the Wikipedia Commons under the Creative Commons Attribution-Share Alike 3.0 Unported license.



DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© McDonnell Boehnen Hulbert & Berghoff LLP | Attorney Advertising

Written by:

McDonnell Boehnen Hulbert & Berghoff LLP

McDonnell Boehnen Hulbert & Berghoff LLP on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
Sign up using*

Already signed up? Log in here

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Custom Email Digest
Privacy Policy (Updated: October 8, 2015):

JD Supra provides users with access to its legal industry publishing services (the "Service") through its website (the "Website") as well as through other sources. Our policies with regard to data collection and use of personal information of users of the Service, regardless of the manner in which users access the Service, and visitors to the Website are set forth in this statement ("Policy"). By using the Service, you signify your acceptance of this Policy.

Information Collection and Use by JD Supra

JD Supra collects users' names, companies, titles, e-mail address and industry. JD Supra also tracks the pages that users visit, logs IP addresses and aggregates non-personally identifiable user data and browser type. This data is gathered using cookies and other technologies.

The information and data collected is used to authenticate users and to send notifications relating to the Service, including email alerts to which users have subscribed; to manage the Service and Website, to improve the Service and to customize the user's experience. This information is also provided to the authors of the content to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

JD Supra does not sell, rent or otherwise provide your details to third parties, other than to the authors of the content on JD Supra.

If you prefer not to enable cookies, you may change your browser settings to disable cookies; however, please note that rejecting cookies while visiting the Website may result in certain parts of the Website not operating correctly or as efficiently as if cookies were allowed.

Email Choice/Opt-out

Users who opt in to receive emails may choose to no longer receive e-mail updates and newsletters by selecting the "opt-out of future email" option in the email they receive from JD Supra or in their JD Supra account management screen.


JD Supra takes reasonable precautions to insure that user information is kept private. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. However, please note that no method of transmitting or storing data is completely secure and we cannot guarantee the security of user information. Unauthorized entry or use, hardware or software failure, and other factors may compromise the security of user information at any time.

If you have reason to believe that your interaction with us is no longer secure, you must immediately notify us of the problem by contacting us at In the unlikely event that we believe that the security of your user information in our possession or control may have been compromised, we may seek to notify you of that development and, if so, will endeavor to do so as promptly as practicable under the circumstances.

Sharing and Disclosure of Information JD Supra Collects

Except as otherwise described in this privacy statement, JD Supra will not disclose personal information to any third party unless we believe that disclosure is necessary to: (1) comply with applicable laws; (2) respond to governmental inquiries or requests; (3) comply with valid legal process; (4) protect the rights, privacy, safety or property of JD Supra, users of the Service, Website visitors or the public; (5) permit us to pursue available remedies or limit the damages that we may sustain; and (6) enforce our Terms & Conditions of Use.

In the event there is a change in the corporate structure of JD Supra such as, but not limited to, merger, consolidation, sale, liquidation or transfer of substantial assets, JD Supra may, in its sole discretion, transfer, sell or assign information collected on and through the Service to one or more affiliated or unaffiliated third parties.

Links to Other Websites

This Website and the Service may contain links to other websites. The operator of such other websites may collect information about you, including through cookies or other technologies. If you are using the Service through the Website and link to another site, you will leave the Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We shall have no responsibility or liability for your visitation to, and the data collection and use practices of, such other sites. This Policy applies solely to the information collected in connection with your use of this Website and does not apply to any practices conducted offline or in connection with any other websites.

Changes in Our Privacy Policy

We reserve the right to change this Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our privacy policy will become effective upon posting of the revised policy on the Website. By continuing to use the Service or Website following such changes, you will be deemed to have agreed to such changes. If you do not agree with the terms of this Policy, as it may be amended from time to time, in whole or part, please do not continue using the Service or the Website.

Contacting JD Supra

If you have any questions about this privacy statement, the practices of this site, your dealings with this Web site, or if you would like to change any of the information you have provided to us, please contact us at:

- hide
*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.