On March 2, attorney Maria Laccotripe Zacharakis of McCarter & English, Boston, submitted a response to the rejection to the PTO. She wrote that the compound “is not present in nature in useable form because it is present in extremely low concentrations in the soil” and that the isolation of the teixobactin “transformed the compound as it existed in nature” into a new and useful composition of matter or at least a new and useful improvement of it.
She quoted from an exchange during the oral arguments for Myriad. Justice Samuel Alito posed the example of a leaf from a plant in the Amazon that is found to cure cancer. Christopher A. Hansen, representing those who challenged Myriad’s patent, said that the leaf wouldn’t be patent eligible because it was a product of nature, But Alito asked, what if “you have to eat a whole forest to get the value, but if it’s extracted and reduced to a concentrated form, that’s not patentable?” Hansen said that it might well be patent eligible because the compound had been transformed from what was in nature by making it more concentrated and by giving it a function.