USPTO Guidance Cannot Modify or Supplant the Alice/Mayo Framework

| Karen Cassidy Selvaggio


Before Prost, O’Malley, and Taranto. Appeal from the Patent Trial and Appeal Board.

Summary: The Patent and Trademark Office’s October 2019 Revised Patent Subject Matter Eligibility Guidance cannot be used to modify or supplant case law regarding patent eligibility requirements.

Christopher Rudy (“Rudy”) filed a patent application related to fishing hooks. During prosecution, a patent Examiner rejected claims related to selecting a fishing hook as ineligible under 35 U.S.C. § 101. Rudy appealed the Examiner’s rejection to the Patent Trial and Appeal Board (“PTAB”). The Board conducted its review of the Rudy’s appeal under a dual framework for patent eligibility, examining Rudy’s claims under (1) the Alice/Mayo framework and (2) the PTO’s October 2019 Revised Patent Subject Matter Eligibility Guidance (“Office Guidance”). The Board affirmed the Examiner’s rejection and Rudy appealed, arguing that both the Board’s reliance on the October Revised Guidance and its ultimate conclusion were improper.

Although the Federal Circuity affirmed the Board’s finding of patent ineligibility, it also agreed with Rudy that the Office Guidance does not carry the force of law and is not binding on the courts. On the contrary, the Federal Circuit explained that when determining whether a judicial exception under 35 U.S.C. § 101 applies, the courts are bound to follow the Supreme Court’s two-step framework set forth in the Alice and Mayo decisions, as well as the Federal Circuit’s precedent on the proper application of these tests. Moreover, the Federal Circuit explained, to the extent the Office Guidance contradicts or does not fully agree with case law, Federal Circuit or Supreme Court precedent must control. Nonetheless, the Federal Circuit found that, although the Board’s analysis was framed as a recitation of the Office Guidance, the Board’s reasoning and conclusion were consistent with the relevant case law. In particular, the Federal Circuit agreed with the Board that Rudy’s claim for selecting a fishing hook did not amount to anything more than an abstract idea. Specifically, the Federal Circuit found Rudy’s claim for selecting a fishing hook was equivalent to collecting information (determining water clarity and light transmittance) and analyzing that data (applying a chart from the claims), which collectively amounted to the abstract idea of selecting a fishing hook based on the observed water conditions. Accordingly, the Federal Circuit held Rudy’s claim failed the Alice/Mayo test and affirmed the Board’s ruling.

Editor: Paul Stewart