By Cheryl Beise, J.D.
While the court declined to "adopt a bright-line test that mental processes capable of being performed by fish are not patent eligible," the claims at issue recited abstract idea of collecting and analyzing information.
The Patent Trial and Appeal Board properly rejected several claims in a patent application directed to selecting a fishing hook color based on observable water conditions on the ground that the invention was directed to the patent-ineligible abstract idea of collecting and analyzing information. The rejected claims did not include any elements that would transform the claims into a patent-eligible invention. While the Board framed its analysis as a recitation of the Office’s Subject Matter Eligibility Office Guidance, which does not carry the force of law, the Board’s conclusions were "fully in accord with the relevant caselaw" (In re Rudy, April 24, 2020, Prost, S.).
In 1989, Christopher Rudy filed U.S. Patent Application No. 07/425,360 (the ’360 application), entitled "Eyeless, Knotless, Colorable and/or Translucent/Transparent Fishing Hooks with Associatable Apparatus and Methods." The application has undergone a lengthy prosecution, including numerous amendments and petitions, four Board appeals, and in 2014, an appeal to the Federal Circuit, which affirmed the obviousness of all claims at issue.
The present appeal derives from an October 2019 decision of the PTAB, affirming the Office’s rejection of claims 34, 35, 37, 38, 40, and of the ’360 application as patent-ineligible under 35 U.S.C. § 101. The Board found that the claims were directed to 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." Claims 26-33 and 54-60 were allowed, and all other claims were cancelled by Rudy. Shortly after the Board issued its decision in this case, the Patent Office issued supplemental guidance. See "October 2019 Patent Eligibility Guidance Update," 84 Fed. Reg. 55942 (Oct. 18, 2019).
Rudy appealed, arguing that the Board erred in relying on the Office Guidance, and in its conclusion that the claims are not patent eligible.
Patent Office Guidance. Rudy contended that the Board "misapplied or refused to apply … case law" in its subject matter eligibility analysis and committed legal error by instead applying the patent eligibility Office Guidance "as if it were prevailing law."
The Federal Circuit agreed that the Office Guidance "does not carry the force of law" and is not binding on a patent eligibility analysis. The Board and the court are bound follow Federal Circuit law and the relevant Supreme Court precedent, not the Office Guidance, when analyzing subject matter eligibility. The Federal Circuit also agreed that the Board in this case framed its analysis as a recitation of the Office Guidance. The court nevertheless concluded that the Board’s reasoning and conclusion were "fully in accord with the relevant caselaw."
Eligibility. Applying the Supreme Court’s two-step Alice/Mayo framework, the Federal Circuit first found that the claims at issue were directed to a patent-ineligible abstract idea. Representative claim 34 was directed to the abstract idea of selecting a fishing hook color based on the observed water conditions. The claim recites nothing more than collecting information and analyzing that information, the court said. The three elements of the claim—observing water clarity, measuring light transmittance, and selecting the color of the hook to be used—were each themselves abstract, being mental processes akin to data collection or analysis, the court noted.
None of Rudy’s arguments were persuasive. For example, Rudy attempted to invoke the machine-or-transformation test for patent eligibility by arguing that practicing claim 34 "acts upon or transforms fish" by transforming "freely swimming fish to hooked and landed fish" or by transforming a fishing hook "from one not having a target fish on it to one dressed with a fish when a successful strike ensues." The Federal Circuit affirmed that the machine-or-transformation test remains ‘a useful and important clue’ for determining eligibility under § 101," but it did not need to consider the test in this case because claim 34 did not actually recite or require the purported transformation that Rudy suggested. Even if claim 34 was read to require the act of fishing, "landing a fish is never a sure thing," the court said.
Claim 34 also failed Alice step two. The claim did not recite any elements, whether considered individually, or in ordered combination, that transformed the claim into a patent-eligible application of the abstract idea. All three steps of the claim were each directed to an abstract idea and the combination of recited elements did nothing to change that.
Lastly, Rudy contended that the Bard erred by considering claim 34 as illustrative of the other claims. The court disagreed. The court saw nothing in the remaining claims that would meaningfully distinguish them from claim 34 in a patent eligibility analysis. The only other independent claim, claim 38, included a slightly different chart and recited only one additional limitation regarding the physical details of the fishing hook and lure.
This case is No. 19-2301.
Attorneys: Christopher John Rudy, pro se. Mai-Trang Duc Dang, U.S. Patent and Trademark Office, for Andrei Iancu.
MainStory: TopStory GCNNews FedCirNews
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