645 F. App'x 1014
Fed. Cir.2016Background
- Patent application No. 09/795,210 claims a method for cutting hair involving: (a) defining head shape (balanced, horizontal oblong, vertical oblong); (b) designating at least three partial zones; (c) identifying at least three hair patterns; (d) assigning patterns to zones to build/remove weight; and (e) using scissors to cut hair per assigned patterns.
- The specification explains the goal is consistent, reproducible hairstyles that balance head shape, and acknowledges the hair patterns are known in the art.
- Claim 1 (representative) was amended to expressly recite use of scissors; the examiner and the Patent Trial and Appeal Board rejected the claims under 35 U.S.C. § 101.
- The Board held the claims are directed to an abstract idea (assigning hair designs to balance head shape) and that the cutting step is insignificant post-solution activity.
- Brown appealed; the Federal Circuit reviews § 101 determinations de novo and applied the Mayo/Alice two-step framework.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether the claimed method is directed to a patent-ineligible abstract idea | Brown: the claims require physical manipulation (defining head shape, designating zones, and using scissors), so they are not abstract | Board: core of the claim is the mental process of defining shape and assigning patterns; cutting is routine and conventional | Held: claims are directed to the abstract idea of assigning hair designs to balance head shape |
| Whether adding use of scissors or other physical steps supplies an inventive concept under Mayo/Alice step two | Brown: step (e) (use of scissors) is a meaningful, necessary, machine-or-transformation-type limitation that confers eligibility | Board: using scissors only implements the abstract idea and is mere application/insignificant post-solution activity; hair patterns are industry-recognized and cutting is conventional | Held: scissors limitation is insufficient; no inventive concept; claims fail § 101 and are unpatentable |
Key Cases Cited
- In re Ferguson, 558 F.3d 1359 (Fed. Cir. 2009) (standard of de novo review for § 101 determinations)
- Mayo Collaborative Servs. v. Prometheus Labs., 566 U.S. 66 (2012) (two-step test for patent-eligible subject matter)
- Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208 (2014) (application of Mayo framework; ‘‘apply it’’ language and requirement for an inventive concept)