CAFC Affirms Board Holding that Fishing Method Claim is Patent Ineligible

By Rebecca Tapscott
April 30, 2020

“The CAFC concluded that the claim at issue “require[d] nothing more than collecting information (water clarity and light transmittance) and analyzing that information (by applying the chart included in the claim), which collectively amount to the abstract idea [mental process] of selecting a fishing hook based on the observed water conditions.”

https://depositphotos.com/9599988/stock-photo-float-fishing-line-and-hook.htmlOn  April 24, the U.S. Court of Appeals for the Federal Circuit (CAFC) upheld a Patent Trial and Appeal Board (PTAB) decision in In re: Rudy affirming an examiner’s rejection of a patent claim directed to “a method for fishing” as ineligible for patenting under 35 U.S.C. § 101. The CAFC concluded that the claim merely recited abstract, mental processes relating to data collection or analysis that were not eligible for patent protection.

Prosecution History of the ‘360 Application

U.S. Patent Application No. 07/425,360 (the ’360 application), entitled “Eyeless, Knotless, Colorable and/or Translucent/Transparent Fishing Hooks with Associatable Apparatus and Methods,” was filed by Christopher Rudy in 1989. Following a lengthy prosecution, including a previous appeal to the CAFC, Rudy appealed a 2019 PTAB decision wherein the PTAB concluded that the illustrative claim was directed to an abstract idea and “the claim limitations, taken individually or as an ordered combination, do not amount to significantly more than the abstract idea.” In determining that “select[ing] a colored or colorless quality of a fishing hook based on observed and measured water conditions… is a concept performed in the human mind” and, therefore, is an abstract idea, the PTAB considered the Alice/Mayo framework and the USPTO Office Guidelines.

Federal Circuit Review of Fishing Method Claim

On appeal, Rudy challenged both the PTAB’s reliance on the Office Guidelines and the holding of ineligibility. Although the CAFC agreed that Office Guidance is not binding and does not “modify or supplant the Supreme Court’s law regarding eligibility, or [the CAFC’s] interpretation or application thereof”, the court concluded that the Board’s reasoning was consistent with the relevant caselaw.

The CAFC reviewed the question of whether the claims were directed to patent-eligible subject matter and concluded that the illustrative claim was “directed to the abstract idea of selecting a fishing hook based on observed water conditions.” The claim required the steps of 1.) observing the quality of the water, 2.) measuring the light transmittance at a depth in the water where a fishing hook is to be placed, and 3.) selecting a colored or colorless “fishing hook based on the clarity and light transmittance of the water, in accordance with the chart that is included in the claim.” Citing Elec. Power Grp., LLC v. Alstom S.A., the CAFC noted that they have previously held that collecting and analyzing information are within the realm of abstract ideas. Thus, the CAFC reasoned that the claim at issue “require[d] nothing more than collecting information (water clarity and light transmittance) and analyzing that information (by applying the chart included in the claim), which collectively amount to the abstract idea [mental process] of selecting a fishing hook based on the observed water conditions.” The court noted that Rudy explained in his brief that “even a fish can distinguish colors…the fisherman can do this too.” While declining to “adopt a bright-line test that mental processes capable of being performed by fish are not patent eligible,” the court reasoned that Rudy’s statement that even fish can distinguish colors underscored the conclusion that the claim was directed to the abstract idea of selecting the color of a fishing hook.

The court rejected Rudy’s argument that the claimed step of determining light transmittance is not likely to be done mentally. In particular, the CAFC noted that the claims do not limit how the light transmittance is to be measured, as argued by Rudy, and the plain language of the claim encompasses mental determination. Further, the CAFC addressed Rudy’s argument that practicing the claimed method “‘acts upon or transforms fish’ by transforming ‘freely swimming fish to hooked and landed fish’ or by transforming a fishing hook ‘from one not having a target fish on it to one dressed with a fish when a successful strike ensues.’” The CAFC explained that the “machine-or-transformation test” of Bilski v. Kappos is important in determining eligibility; however, the court declined to decide whether the “transformation from free fish to hooked fish is the type of transformation” contemplated by Bilski because the claim does not actually recite the purported transformation (i.e. catching a fish).

Step Two of the Alice/Mayo Inquiry

The CAFC then turned to step two of the Alice/Mayo inquiry to determine “whether the elements of the claim, either individually or as an ordered combination, transform the nature of the claim into a patent eligible application of that abstract idea.” The court noted that the claim included three steps, i.e. observing water clarity, measuring light transmittance, and selecting the color of the hook to be used, that are also abstract, mental processes relating to data collection or analysis. Further, the CAFC reasoned, when considered as an ordered combination, the three steps merely repeat the abstract idea of selecting a fishing hook based on observed water conditions. Thus, the CAFC concluded that the claim failed to recite an inventive concept in accordance with step two of the Alice/Mayo test and was not patent eligible under 35 U.S.C. § 101.

Image Source: Deposit Photos
Image ID: 9599988
Copyright: sellingpix 

The Author

Rebecca Tapscott

Rebecca Tapscott is an intellectual property attorney who has joined IPWatchdog as our Staff Writer. She received her Bachelor of Science degree in chemistry from the University of Central Florida and received her Juris Doctorate in 2002 from the George Mason School of Law in Arlington, VA.

Prior to joining IPWatchdog, Rebecca has worked as a senior associate attorney for the Bilicki Law Firm and Diederiks & Whitelaw, PLC. Her practice has involved intellectual property litigation, the preparation and prosecution of patent applications in the chemical, mechanical arts, and electrical arts, strategic alliance and development agreements, and trademark prosecution and opposition matters. In addition, she is admitted to the Virginia State Bar and is a registered patent attorney with the United States Patent and Trademark Office. She is also a member of the American Bar Association and the American Intellectual Property Law Association.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 29 Comments comments.

  1. Anon April 30, 2020 7:28 am

    … a method of gathering wheat…

    (the scoreboard is broken)

  2. Paul Cole April 30, 2020 11:35 am

    I’m totally hooked on the logic of this decision.

    Come to think of it, if there is a petition for en banc review, there may not be much to hang it on.

  3. concerned April 30, 2020 5:12 pm

    Early prosecution of my application had an Electric Power Group rejection. It seems Alice and Electric Group are on a rejection checklist that examiners automatically go down just to see what sticks.

    The Electric Power Group was especially disingenuous in my case. If the solution was just collecting data and analyzing the same, at least one of the hundreds of thousands of working professionals and experts would have figure out that solution decades ago. To use Electric Power Group as a rejection was insulting to my profession.

    If Rudy had testimony from experts on how his method improved over prior art, or substantial winnings/trophies from tournaments documenting that his process dominated the competition, perhaps Rudy counters the mental process argument?

  4. Anon April 30, 2020 6:46 pm

    perhaps Rudy counters the mental process argument?”

    You presume too much.

    For example, you presume that the “mental process argument” is valid in the first place (hint: it is not).

    Method claims need not have hardware.

  5. MaxDrei May 1, 2020 4:50 am

    Reminds me of the “Blue squash ball” case of decades ago, in England. The prior art was the conventional black rubber ball for the game of squash racquets. But then somebody discovered (and evidenced) that, against the conventional white walls of the court, a plyer could discern and compute earlier the rapid flight of the ball if the ball were to a blue one rather than a black one.

    Objective problem: How to raise playing standards, in the game of squash racquets.

    Solution: Have the players play the game with a ball that is blue.

    Claim: A blue squash ball.

    Eligible? Why not?

    Novel: 100%

    Obvious? No way.

  6. Benny May 2, 2020 8:54 am

    Max @5, I disagree. It is known from prior art to manufacture squash balls. It is also known from the art of manufacturing balls for sports that they can be produced in a variety of colours. Therefore, it would be obvious to combine the 2 references and produce a blue squash ball, as the selection of colour is merely a technical feature. Furthermore, what does “blue” mean in a patent claim if not referenced to a particular range of neasurable colours in either kelvin or nanometer wavelength units?

    Regarding the patent referenced in the article – eligible or not, it is virtually unenforeceable, so it is beyond my comprehension how the inventor expected a return on the investment in legal fees.

  7. Anon May 2, 2020 1:04 pm

    Benny,

    You show your utter lack of understanding of patent law and why we have patent law with your comment of “the selection of colour is merely a technical feature

    Also, it is hardly unenforceable at all. The claim is NOT “playing squash with a blue squash blue.” The infringer would be the (deep pockets) manufacturer.

    I really do not know why you ever post Benny. Anything that you put up is almost always immediately quashed.

  8. Benny May 2, 2020 3:43 pm

    Anon,
    Max is, as I understand, not a US based attorney. The EPO would reject the claim using the exact terminology I used. (Ever filed in the EU? I have several EU patents in my name). Max also wrote “blue Squash ball ” as a claim with no further limitations. If it was patent eligible it would have been patented by now. Perhaps you would like to file an application for a dayglo orange golf ball? Improve your ability to play in low light conditions.

    You failed to explain why the method of selecting a fish hook as referenced in the article is “hardly unenforceable”. How would you enforce it? (Unenforceable in my comment refers to the patent in the article, not in Max’s comment. You should read more carefully before responding).

  9. MaxDrei May 2, 2020 3:59 pm

    Rarely do I agree with anon, but here he is on the nose. First, which squash player does not want to play to a higher standard, given the chance, Why would anybody NOT buy the claimed blue ball, given the opportunity.

    Second, there is nothing indefinite about “blue”. As long as the ball is “blue” it delivers its technical effect.

    Third, since when was “technical feature” an indicium of obviousness?

  10. Anon May 2, 2020 7:08 pm

    Benny is actually correct about something and the rarity should be celebrated: I had thought that you were still rambling on about the blue squash ball in view of the enforceability comment — but the answer STILL applies to any supplier of the fish hook system (since there need be a water transmittance device)

  11. MaxDrei May 3, 2020 4:38 am

    Benny, of course you are right, that the EPO would object to my suggested claim for want of clarity, Art 84 EPC. But in a real case, the claim would include a definition of “blue” that is in line with the scientific evidence I would be relying on for the plausibility of my non-obvious technical solution to the technical problem of computing faster the flight of the ball against a white background.

    As to orange golf balls, there is no inventive step because the technical effect (greater visibility) belongs to the common general knowledge of the skilled person. This is not so, with a blue squash ball.

    As to “technical” I guess what you mean is that the objection at the EPO would be that blue is an ordinary workshop variant and therefore not inventive. But that’s the whole point: blue was not an ordinary workshop variant. Rather, it solved a technical problem in a non-obvious way.

  12. AAA JJ May 4, 2020 8:45 am

    “It is also known from the art of manufacturing balls for sports that they can be produced in a variety of colours.”

    Tennis balls were originally an off white color. Somebody figured that the current yellowish green was easier to see. Charlie Finley experimented with orange baseballs in the 1970’s.

    “As to orange golf balls, there is no inventive step because the technical effect (greater visibility) belongs to the common general knowledge of the skilled person. This is not so, with a blue squash ball.”

    One of ordinary skill in the art has ordinary creativity. If a technique has been used to improve one area, …

    Is there an actual patent on this blue squash ball?

  13. Anon May 4, 2020 10:20 am

    The phrase “if a technique…” appears to be being applied in an excessively broad manner.

    Golf and squash have entirely different dynamics as to sighting of the ball during play.

    Whether or not there is an actual patent rather misses the legal point at hand.

    Let’s stay focus now, shall we?

  14. MaxDrei May 4, 2020 12:22 pm

    We need to distinguish between “easier to see” and ” computation of the flight path, earlier in the trajectory”. No squash player ever had any difficulty discerning the conventional black ball against the white wall. The evidence I mentioned came from the military. Something about the speed of reaction of fighter pilots. As to orange, it is conventional for any Hi Viz application. Blue isn’t. Blue is special, not suggested by the prior art.

    There is a patent, a GB, owner Viziball. But it was a derivation case. My hypo is a flight of fancy inspired by that case.

  15. AAA JJ May 4, 2020 12:38 pm

    “Whether or not there is an actual patent rather misses the legal point at hand.”

    It does? What is the point at hand?

    “Golf and squash have entirely different dynamics as to sighting of the ball during play.”

    Do tennis and squash have entirely different dynamics? What about baseball and squash?

    Changing the color of a ball to make it easier to see is old. Of course, if we had an actual patent on a blue squash ball, with an actual filing date, we could determine whether the change from black to blue was obvious. We could determine the scope and contents of the prior art and the level of ordinary skill in the art before the filing date.

    But according to you that misses the point.

    Whatev.

  16. AAA JJ May 4, 2020 12:51 pm

    GB 1 538 860. Filed September 1975.

    Yellow tennis balls existed before that. Charlie Finley’s “experiments” with orange baseballs were 1975 or earlier.

  17. MaxDrei May 4, 2020 4:16 pm

    Once again. Just to get the point across.

    Use of a blue squash ball instead of black has the consequence that players compute faster the flight of the ball against a white background, and so hit it more cleanly, more accurately, more controlled. By contrast, painting a baseball or a golf ball orange does nothing to raise the standard of the game in progress, even if it does raise the quality of the game in progress for spectators and TV viewers.

    Whoever could have imagined that? It was counter-intuitive.

  18. Anon May 4, 2020 6:09 pm

    MaxDrei,

    AAA JJ is being obstinate and obtuse. Clearly, the dynamics of sight involve the arena within which the sport is played, the physics involved in the game itself, and other variables that transcend the rather lazy attempt to classify all of these as “games with a ball.”

    I think that he has been “playing an examiner on the Internet” too long, and has gotten stuck in that mode.

  19. Anon May 5, 2020 8:13 am

    AAA JJ’s lazy thinking is reminding me of the age-old quote attributed to Charles H. Duell:

    Everything that can be invented has been invented.

    While apocryphal, the meaning of that quote (apparently) persists because people like AAA JJ persist in their lazy ways.

  20. AAA JJ May 5, 2020 8:49 am

    The A’s and Indians played two spring training games in March, 1973 with orange baseballs. Charlie Finley’s thinking was that the orange balls would improve offense by making the balls easier for the batters to see. The experiment was a failure because the batters couldn’t pick up the spin of the red threads against the orange ball. (Obvious solution: change the color of the threads.) But the “idea” of “hey, maybe changing the color of the game ball will improve the play of the game” was out there 2.5 years before the application for the blue squash ball was filed. That’s all the “teaching” or “suggestion” or “motivation” one of ordinary skill in the art needs.

    “It was counter-intuitive.”

    No, it wasn’t. It was entirely obvious.

  21. Benny May 5, 2020 9:16 am

    AAA JJ,
    Er, no. If one innovator tried to improve play by increasing visibility of the ball and found that it didn’t work, it would be counter-intuitive for another inventor to try the same trick and expect success.

  22. Benny May 5, 2020 9:22 am

    AAA JJ,
    Er, no. If one innovator tried to improve play by increasing visibility of the ball and found that it didn’t work, it would be counter intuitive for another inventor to try the same trick and expect success.

  23. Anon May 5, 2020 9:51 am

    Wow – when even Benny dresses down AAA JJ, it’s time for AAA JJ to hit the showers and contemplate why he missed the ball.

  24. AAA JJ May 5, 2020 10:26 am

    “Whoever could have imagined that?”

    Charlie Finley imagined it in March, 1973. Two and half years before the filing date.

    “If one innovator tried to improve play by increasing visibility of the ball and found that it didn’t work, it would be counter intuitive for another inventor to try the same trick and expect success.”

    Only if all the “innovator” did was try the exact same approach. But your “argument” ignores the fact that one of ordinary skill has…skill.

    In September, 1975 there was nothing inventive or non-obvious about changing the color of a squash ball to improve play. Nothing.

  25. Anon May 5, 2020 10:43 am

    AAA JJ,

    It is you that persist in ignorance.

    All “games with a ball” are just not the same for the advance under discussion. Wake up from your dreaming of playing an examiner on the Internet.

    Or should I call you Charley?

  26. AAA JJ May 5, 2020 10:56 am

    So what is your argument? That the prior art from baseball is non-analogous to squash?

    My argument is not “all games with a ball.” It is now you that is playing examiner. Mischaracterize the argument and then knock down the mischaracterization.

    Talk about lazy.

  27. Anon May 5, 2020 11:51 am

    Sorry Charley, but my position is clearly not the mischaracterization that you are attempting. As I previously noted, the dynamics of the different games clearly come into play. You ARE insisting on glossing over those differences. And doing so in a ‘because I said so’ manner that only makes your error more pronounced.

    By the way, the claim was not: “Change the color of the ball.” which appears to be the Strawman that YOU want to wrestle with.

  28. MaxDrei May 5, 2020 12:55 pm

    At # 24 I read that:

    “in 1975 there was nothing inventive or non-obvious about changing the color of a squash ball to improve play. Nothing.”

    And yet. And yet. First, in 1975, nobody even dreamed, never mind suggested, that a black squash ball was anything other than optimally visible against the all-enveloping white wall. Nothing in the prior art gave any motivation to tinker with the standard black colour. Nobody in the ball games space imagined that a change of colour of the ball would deliver any improvement whatsoever. To the contrary, what could be a better ball colour, against a white wall background, than black?

    The only person in the world who might have disputed it would have been the military psychology researcher who created the report about fighter pilots and their surprising and unexpected visual acuity performance.

    But I like this debate. It shows how determinedly resistant people (even patent attorneys) are to the idea that something as “abstract” as a mere colour can nevertheless found a claim of a utility patent.

  29. AAA JJ May 5, 2020 1:57 pm

    “Nothing in the prior art gave any motivation to tinker with the standard black colour.”

    Not true.

    “Nobody in the ball games space imagined that a change of colour of the ball would deliver any improvement whatsoever.”

    Also not true.