Flower arranging computer program not eligible for patent protection. IN RE: STURGEON

Flower arranging computer program not eligible for patent protection. IN RE: STURGEON

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.  If the patent application meets all the requirements, the patent application is granted.  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.  However, an even more fundamental requirement is the invention must be eligible subject matter for a patent.  If the subject matter of an invention is not eligible, 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.

The question of eligibility under § 101 is governed by the two-step framework set out by the Supreme Court in ALICE CORP LTD. v. CLS BANK INTERNATIONAL, 573 U.S. 208 (2014), and MAYO COLLABORATIVE SERVICES v. PROMETHEUS LABORATORIES, INC., 566 U.S. 66 (2012). The first step of the inquiry, is whether the claims of the patent are directed to a patent-ineligible concept, i.e., a law of nature, natural phenomenon, or abstract idea.  If the claims are not directed to a patent-ineligible concept the analysis stops there.  If the claims are directed to a patent-ineligible concept, then the elements of each claim are considered both individually and ‘as an ordered combination’ to determine whether the additional elements ‘transform the nature of the claim’ into a patent-eligible application.  To pass the second step of the inquiry an inventive concept needs to be demonstrated.  This can be a difficult concept to understand so it is helpful to review case precedent to understand how the rule is applied.

IN RE: JEANNINE A. STURGEON, 2020-1644 (C.A.F.C. 2021) is an example of a case where a computer program used to simulate floral arrangements was deemed ineligible subject matter.

U.S. Patent Application No. 14/212,028 (“the ’028 application”) is the focus of this case.  The ’028 application was originally filed on March 14, 2014, with a single claim.  The patent was directed to a method of creating a floral arrangement on an electronic display screen.  Essentially the invention was a method  to design a flower arrangement on a computer.

On April 5, 2017, the Examiner issued a final rejection of the patent application as ineligible under 35 U.S.C. § 101 and anticipated under § 102. Sturgeon appealed to the Patent Trial and Appeal Board. The Board affirmed the rejections under § 101 and reversed the rejections under § 102. Sturgeon appealed to the Court of Appeals for the Federal Circuit.

The Federal Circuit noted that the PTAB  properly found that the patent application was directed to “mental processes,” “the abstract idea of managing personal behavior,” and “methods of organizing human activity”—in this case, arranging flowers—and is thus an abstract idea.  The Federal Circuit also noted that the PTAB properly found that there was no inventive concept.  Selecting flower images, arranging the images and displaying the arrangement on a computer screen, without an improvement to computer functionality does not disclose an inventive concept. Based on these conclusions the Federal Circuit affirmed the rejection.

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