CAFC Affirms Board Holding that Fishing Method Claim is Patent Ineligible

On  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.

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