Fisherman inventor’s patent application frustrated by Alice test. In Re RUDY

A patent is a set of exclusive rights granted to the inventor of a new, useful and not obvious invention. In the United States an inventor gains a patent by filing a patent application with the United States Patent and Trademark Office. The patent application is reviewed by a patent examiner at the United States Patent and Trademark Office and if the patent application meets all the requirements, the inventor is granted a patent on the invention. A patent gives its owner the exclusive right to make, use, sell and import the invention in the United States.

Getting a patent is not a simple task. There are many requirements that an inventor must meet to get a patent on an invention. The invention must meet the patent requirements, including novelty, non-obviousness, written description, and enablement. But a fundamental requirement is the invention must be eligible subject matter for a patent. If the subject matter of an invention is not eligible for a patent, the invention cannot be patented in the United States.

United States Patent Law §35 U.S.C. 101 articulates eligible subject matter. A patent can be granted on any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof. There are also some judicially created exceptions to patent eligible subject matter, namely, laws of nature, physical phenomena, and abstract ideas.

Computer software was tricky subject for patent law. For several decades the USPTO and courts had trouble articulating exactly when computer software was eligible for patent protection. The United States Supreme Court articulated the present test to determine if computer software is eligible for patent protection in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208 (2014) . The first step in the Alice test is to determine whether the claims of the patent are directed to a patent-ineligible concept, like an abstract idea. If the first step is true, then each patent claim is reviewed both individually and ‘as an ordered combination’ to determine whether the additional elements ‘transform the nature of the claim’ into a patent-eligible application. However the Alice test is not confined to computer software, it can be applied to patents related to abstract ideas broadly.

An example of a case which applies the Alice test to something other than computer software is IN RE RUDY 2019-2301 (C.A.F.C. 2020). The patent at issue in this case relates to choosing the perfect fishing hook.

United States Patent Application No. 07/425,360 (“the ’360 application”) was filed in 1989. The application, entitled “Eyeless, Knotless, Colorable and/or Translucent/Transparent Fishing Hooks with Associatable Apparatus and Methods,” has been subject to several amendments, four appeals to the Patent Trial and Appeal Board and one appeal to the Court of Appeal for the Federal Circuit.

In March 2015 the patent examiner assigned to the application issued a final rejection as ineligible for patenting under 35 U.S.C. § 101. The Patent Trial and Appeal Board (“Board”) affirmed the rejection of the application. The Board concluded that the patent is 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.” The inventor appealed to the Federal Circuit.

The Federal Circuit observed the invention claimed in the patent application requires three steps. First, the user “observes the clarity of water” to determine whether the water is “clear, stained, or muddy.” Second, the user “measures light transmittance at a depth in the water where a fishing hook is to be placed.” Third and finally, the user “selects a colored or colorless . . . fishing hook” based on the clarity and light transmittance of the water, in accordance with a chart that is included in the application. The Federal Circuit concluded that this mental process of collecting and analyzing information is an abstract idea.

The Federal Circuit held that transformation of an abstract idea into a patent-eligible claim requires more than simply stating the abstract idea and instructing the user to perform the steps. The Federal Circuit affirmed the Board’s decision that the ’360 application was directed to an abstract idea and ineligible for patent protection.

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