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In re Rudy

Fed Cir Will Not Defer to Patent Office Guidance on § 101

In re Rudy, __ F.3d __, 2020 WL ___ (Fed. Cir. Apr. 24, 2020) (PROST, O’Malley, Taranto) (PTAB) (3 of 5 stars)

Fed Cir affirms § 101 rejection of Mr. Rudy’s claims. Mr. Rudy applied for claims relating to a method for fishing that involved evaluating the water to be fished and selecting a fishhook whose coloration was determined by a table in the claim. The opinion confirms that the Fed Cir is not bound by Patent Office guidance in evaluating subject matter eligibility, and where there is a conflict the law of the Supreme Court and the Fed Cir will control. “[A]lthough a portion of the Board’s analysis is framed as a recitation of the Office Guidance, in this particular case the Board’s reasoning and conclusion are nevertheless fully in accord with the relevant caselaw.” Op. at 6. The opinion applies the Alice/Mayo test and reasons that at step one, Mr. Rudy’s claim is directed to the abstract idea “of selecting a fishing hook based on observed water conditions.” Id. at 7. It addresses a fundamentally “mental process of hook color selection.” Id. That the claim’s preamble describes a “method for fishing” is not contradictory per Chargepoint, 920 F.3d 759 (Fed. Cir. 2019). That, in practice, a person fishing might use some instrument to evaluate the water does not make the claim non-abstract because no such limitation is in the claim. Nor is there an inventive concept (Alice/Mayo step two) sufficient to confer patent eligibility because each element of the claim is abstract, and together they merely repeat the core idea. The Board also did not err by treating one of Mr. Rudy’s claims as illustrative, and the opinion describes why none of the other appealed claims would reach a different result.

KEYWORDS: PATENT PROSECUTION; SUBJECT-MATTER ELIGIBILITY; PATENT OFFICE GUIDANCE