The Federal Circuit nonetheless determines that claims directed to a method of fishing are directed to an abstract idea. In re Rudy, Appeal No. 2019-2301, Fed. Cir., April 24, 2020.
But kudos to the pro se inventor’s persistence. The application at issue – USSN 07/425,360 – was filed in October 21, 1989 and has thus undergone 31 years of prosecution including 4 Board appeals and a previous visit to the Federal Circuit. In re Rudy, 558 F. App’x 1011 (Fed. Cir. 2014). Claim 34 of the application is directed to a method of fishing, and recites the steps of observing the clarity of water, measuring light transmittance at a depth at which a hook is to be placed, and selecting a colored or colorless fishing hook accordingly with the assistance of a chart provided in the claim.
Applicant first gave voice to his frustration with the Office Guidance, and the Board’s adherence to it:
Mr. Rudy contends that the Board “misapplied or refused to apply…case law” in its subject matter eligibility analysis and committed legal error by instead applying the Office Guidance “as if it were prevailing law.” Mr. Rudy argues that the Office Guidance “simplistically represent[s] patent-eligible subject matter law,” and is used by the Patent Office as a shortcut to ease Mato/Alic test application, with no force or effect of law.”
Amen, brother, amen.
Though it didn’t help in the ensuing analysis, perhaps it provided a bit of balm that the Federal Circuit at least acknowledged Applicant’s frustration, and agreed with its substance:
We agree with Mr. Rudy that the Office Guidance is not, itself, the law of patent eligibility, does not carry the force of law, and is not binding in our patent eligibility analysis…To the extent the Office Guidance contradicts or does not fully accord with our caselaw, it is our caselaw, and the Supreme Court precedent it is based upon, that must control.
Citing Cleveland Clinic Found. v. True Health Diagnostics LLC 760 F. App’x 1013, 1020 (Fed. Cir. 2019)(holding claims ineligible, despite Office Guidance suggesting otherwise, where statements and examples in the Guidance were inconsistent with Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371 (Fed. Cir. 2015).
Done agreeing with Applicant, the Federal Circuit moved on and clarified:
We have held in the computer context that “collecting information” and “analyzing” that information are within the realm of abstract ideas. The same is true in other contexts, including the fishing context.
Applicant did not do himself any favors by arguing, probably in efforts to provide patentable advantage to the claims, that “all that is required of the angler is observation, measuring, and comparison with a predetermined chart…even a fish can distinguish and select colors…the fisherman can do this too.” It did however, provide the opportunity for the Court to provide the title quote for this post, and for that sir, I thank you.