956 F.3d 1379
Fed. Cir.2020Background
- Patent application ’360 (filed 1989) titled for eyeless, knotless, colorable/translucent fishing hooks; claims 34, 35, 37, 38, 40, 45–49 were rejected under 35 U.S.C. § 101 as patent-ineligible and the rejection was affirmed by the PTAB.
- Claim 34 (illustrative) recites a three-step method: (1) observe water clarity (clear/stained/muddy), (2) measure light transmittance at fishing depth, and (3) select a colored or colorless hook by matching those observations to a predetermined chart indicating less attractive colors.
- The PTAB analyzed eligibility using both the Supreme Court’s Alice/Mayo two-step framework and the USPTO’s 2019 Revised Patent Subject Matter Eligibility Guidance (Office Guidance), concluding the claim embodies an abstract idea (a mental process) and lacks an inventive concept.
- Rudy argued the Office Guidance is not binding law and that the Board misapplied controlling caselaw; he also argued the claim is patent-eligible because it pertains to practical fishing technology and (he asserted) effects on fish or physical hooks.
- The Federal Circuit held the Office Guidance is not binding but found the Board’s reasoning consistent with Supreme Court and Federal Circuit precedent: claim 34 is directed to an abstract mental process and its limitations do not supply an inventive concept.
- The court affirmed ineligibility of claims 34, 35, 37, 38, 40, and 45–49, applying the same analysis to the other independent and dependent claims (differences in charts or physical hook details did not change the result).
Issues
| Issue | Plaintiff's Argument (Rudy) | Defendant's Argument (PTAB/USPTO) | Held |
|---|---|---|---|
| Whether the PTO’s 2019 Office Guidance is binding law | Guidance is not binding practice and misrepresents §101 law; Board relied on it improperly | Guidance useful but not dispositive; Board applied it alongside Alice/Mayo | Guidance not binding; court applies Supreme Court/Federal Circuit law; Board’s result stands |
| Whether claim 34 is directed to an abstract idea (Alice/Mayo Step 1) | Claim is a practical fishing method, involves measurement/instrument use, and may transform physical fish/hook; not merely a mental process | Claim recites observation, measurement, and selection—mental processes/data analysis—i.e., an abstract idea | Claim 34 is directed to an abstract idea (mental process of selecting hook color based on observations) |
| Whether claim elements supply an inventive concept (Alice/Mayo Step 2) | Combination of observing, measuring, and selecting in a fishing context is transformative and technological; physical-hardware details (in other claims) are sufficient | Elements are routine, conventional, or purely mental; ordered combination merely repeats the abstract idea | Elements do not add significantly more; claim lacks inventive concept and is ineligible |
| Whether treating claim 34 as representative for other claims was error | Board should analyze each claim separately; dependent and other independent claims have different physical limitations or colors | Other claims differ only in non-meaningful ways (chart variations, routine physical hook attributes) that do not change eligibility | Using claim 34 as representative was appropriate; remaining claims are also ineligible |
Key Cases Cited
- Mayo Collaborative Servs. v. Prometheus Labs., 566 U.S. 66 (establishes two-step framework for patent eligibility)
- Alice Corp. v. CLS Bank Int’l, 573 U.S. 208 (applies two-step test and requires an inventive concept beyond the abstract idea)
- Assoc. for Molecular Pathology v. Myriad Genetics, 569 U.S. 589 (judicial exceptions: laws of nature, natural phenomena, abstract ideas not patentable)
- Bilski v. Kappos, 561 U.S. 593 (machine-or-transformation is a useful clue to eligibility)
- Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350 (collecting/analyzing information as an abstract idea)
- Affinity Labs of Tex., LLC v. DirecTV, LLC, 838 F.3d 1253 (limiting field of use does not avoid abstraction)
- Customedia Techs., LLC v. Dish Network Corp., 951 F.3d 1359 (Federal Circuit binds to Supreme Court two-step framework)
- ChargePoint, Inc. v. SemaConnect, Inc., 920 F.3d 759 (claim’s character as a whole controls abstractness determination)