In a recent precedential decision, the Federal Circuit affirmed a Patent Trial and Appeal Board decision, upholding an examiner's final rejection of claims to a fishing method as unpatentable under 35 U.S.C. § 101. In re Rudy, Case 2019-2301, Slip Op. (Fed. Cir. Apr. 24, 2020). Appeals to both the Board and the Federal Circuit were cast by a pro se applicant, who is also a patent attorney.
The application, originally filed in 1989, includes a prosecution history that is stuffed to the gills, including multiple visits to the Board and a prior Federal Circuit appeal where the court affirmed a Board conclusion that then-pending claims were obvious. In re Rudy, 558 F. App'x. 1011 (Fed. Cir. 2014).
In the 2020 appeal, the court reviewed the Board's assessment of the eligibility of a representative claim that recites a three-step method for fishing, summarized as follows:
- First, the method includes observing and determining the clarity of water (g., clear, stained, or muddy) (water condition A);
- Second, the method includes measuring light transmittance at a depth in the water where a fishing hook is to be placed (water condition B); and
- Third, the method includes selecting a colored or colorless quality of the fishing hook to be used by matching the water condition A and the water condition B to a chart of previously-determined hook color qualities.
The Board, weighing the scales, had concluded that the claim recites the abstract idea of "select[ing] a colored or colorless quality of a fishing hook based on observed and measured water conditions, which is a concept performed in the human mind." Slip Op. at 1. Whether taken individually or as an ordered combination, the Board found that the claim's limitations did not amount to significantly more than the abstract idea. In arriving at these conclusions, the Board followed the Alice/Mayo guidance of the Patent Office for assessing eligibility under Section 101, and specifically Steps 2A and 2B thereof.
On appeal, the Federal Circuit affirmed the Board's decision. Noting that the Patent Office's 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) applied by the Board was non-binding, the Court concluded that the Board's application of that Guidance was nevertheless consistent with controlling Supreme Court precedent. Slip Op. at 3-6. The court adopted the Board's conclusion in Step 2A that the "mental process of hook color selection . demonstrates that [the] claim[s] as a whole [are] directed to an abstract idea." Id. at 7. The court analogized the claims to the "steps people go through in their minds," Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016), and "collecting [and analyzing] information", id., noting that such activity, even "in [the] fishing context," "requires nothing more than collecting . water clarity and light transmittance [information] and analyzing that information [using] the chart included in the claim, which collectively amount to the abstract idea of selecting a fishing hook based on the observed water conditions." Slip Op. at 7.
The 2019 Revised Guidance synthesizes holdings of a number of Federal Circuit cases to categorize as ineligible those claims that recite "mental processes-concepts performed in the human mind (including an observation, evaluation, judgment, opinion)." 84 Fed. Reg. 50, 52 (Jan. 7, 2019). Generally, claims drawn to mental processes that are capable of performance in the human mind, or with pen and paper by a human, are excluded from patentability on Section 101 eligibility grounds, even if such claims include generic computer components. Id.
In response to the appellant's concessions that "all that is required of the angler is observation, measuring, and comparison with a predetermined chart" and that "even a fish can distinguish and select colors", Slip Op. at 8 (citing appellant's brief), the court refused to "adopt a bright-line test that mental processes capable of being performed by fish are not patent eligible." Id. While refusing to hold fish brain processes ipso facto patent ineligible, the court nevertheless "underscor[ed the] conclusion that [the appealed claims were] directed to the abstract idea of selecting the color of a fishing hook." Id. The court further agreed with the Board's conclusion regarding Step 2B, holding that the claim[s] "fail to recite an inventive concept." Id. at 10.
Ironically, whereas mental processes capable of being performed by a human are categorically ineligible for patenting, the Court refrains from categorically excluding the mental processes of fish from that which is patentable. It is unknown whether any patent practitioners have argued, successfully or otherwise, capability-of-fish-mental-performance as a basis for eligibility, but it is good to know that this line of attack is available, should the facts of the case warrant it.
Regarding the school of concessions made by the applicant-attorney, it is worth noting that even some patent attorneys apparently cannot fathom how incautious statements may later prove destructive of Section 101 eligibility, and that even a patent attorney applicant may be caught in the net of decisions and Patent Office guidance related to Section 101 eligibility that have spawned in recent years. For example, the court pointed to the applicant-attorney's aforementioned brief remarks and earlier statements during prosecution that "light transmittance may be measured by any 'instrument or method, the claims not specifying how that is to be done'" as dispositive of the recitation of the abstract idea at Step 2A. Id. at 8, 9.
Although the Federal Circuit found the claims of the application ineligible for patenting, the court did ultimately agree with Appellant on at least one point: "landing a fish is never a sure thing. Many an angler has gone fishing and returned empty handed." Id. at 9.
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