Case: 19-2301    Document: 29     Page: 1    Filed: 04/24/2020




   United States Court of Appeals
       for the Federal Circuit
                  ______________________

         IN RE: CHRISTOPHER JOHN RUDY,
                       Appellant
                ______________________

                        2019-2301
                  ______________________

     Appeal from the United States Patent and Trademark
 Office, Patent Trial and Appeal Board in No. 07/425,360.
                   ______________________

                  Decided: April 24, 2020
                  ______________________

    CHRISTOPHER JOHN RUDY, Port Huron, MI, pro se.

    MAI-TRANG DUC DANG, Office of the Solicitor, United
 States Patent and Trademark Office, Alexandria, VA, for
 appellee Andrei Iancu. Also represented by THOMAS W.
 KRAUSE, DANIEL KAZHDAN.
                 ______________________

    Before PROST, Chief Judge, O’MALLEY and TARANTO,
                     Circuit Judges.
 PROST, Chief Judge.
     Christopher Rudy appeals from a decision of the Patent
 Trial and Appeal Board (“Board”) affirming the rejection of
 claims 34, 35, 37, 38, 40, and 45–49 of United States Patent
 Application No. 07/425,360 (“the ’360 application”) as inel-
 igible for patenting under 35 U.S.C. § 101. We affirm.
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 2                                                IN RE: RUDY




                               I
     Mr. Rudy originally filed the ’360 application on Octo-
 ber 21, 1989. The application, entitled “Eyeless, Knotless,
 Colorable and/or Translucent/Transparent Fishing Hooks
 with Associatable Apparatus and Methods,” has undergone
 a lengthy prosecution, including numerous amendments
 and petitions, four Board appeals, and a previous trip to
 this court in which we affirmed the obviousness of all
 claims then on appeal. In re Rudy, 558 F. App’x. 1011 (Fed.
 Cir. 2014).
     Claims 34, 35, 37, 38, 40, and 45–49 of the ’360 appli-
 cation were the subject of a March 2015 office action in
 which the Examiner rejected them as ineligible for patent-
 ing under 35 U.S.C. § 101. That rejection was made final
 in September 2015, and affirmed by the Board on October
 2, 2019. 1 Claim 34, which the Board considered illustra-
 tive, recites the following:
     34. A method for fishing comprising steps of
     (1) observing clarity of water to be fished to deter-
     mine whether the water is clear, stained, or muddy,
     (2) measuring light transmittance at a depth in the
     water where a fishing hook is to be placed, and then
     (3) selecting a colored or colorless quality of the
     fishing hook to be used by matching the observed
     water conditions ((1) and (2)) with a color or color-
     less quality which has been previously determined
     to be less attractive under said conditions than




     1   Claims 26–33 and 54–60 stand allowed. All re-
 maining claims of the ’360 application have been cancelled
 by the applicant. J.A. 957–58.
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 IN RE: RUDY                                                3



     those pointed out by the following correlation for
     fish-attractive non-fluorescent colors:




 J.A. 24, claim 34 (formatting adjusted).
     The Board conducted its analysis under a dual frame-
 work for patent eligibility, purporting to apply both 1) “the
 two-step framework described in Mayo [Collaborative Ser-
 vices v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012)]
 and Alice [Corp. v. CLS Bank International, 573 U.S. 208
 (2014)],” and 2) the Patent and Trademark Office’s 2019
 Revised Patent Subject Matter Eligibility Guidance, 84
 Fed. Reg. 50 (Jan. 7, 2019) (“Office Guidance”). 2 J.A. 4–5.




     2   Shortly after the Board issued its decision in this
 case, the Patent Office issued supplemental guidance. See
 October 2019 Patent Eligibility Guidance Update, 84 Fed.
 Reg. 55942 (Oct. 18, 2019). Although the supplement’s sub-
 stantive eligibility analysis is not relevant to this appeal,
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 4                                                   IN RE: RUDY




 The Board concluded “[u]nder the first step of the
 Mayo/Alice framework and Step 2A, Prong 1, of [the] Office
 Guidelines” that claim 34 is directed to the abstract idea of
 “select[ing] a colored or colorless quality of a fishing hook
 based on observed and measured water conditions, which
 is a concept performed in the human mind.” J.A. 9. The
 Board went on to conclude that “[u]nder the second step in
 the Mayo/Alice framework, and Step 2B of the 2019 Re-
 vised Guidance, we determine that the claim limitations,
 taken individually or as an ordered combination, do not
 amount to significantly more than” the abstract idea. J.A.
 11.
     Mr. Rudy timely appealed, challenging both the
 Board’s reliance on the Office Guidance, and the Board’s
 ultimate conclusion that the claims are not patent eligible.
 We have jurisdiction under 28 U.S.C. § 1295(a)(4)(A).
                                II
      Mr. Rudy contends that the Board “misapplied or re-
 fused 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.” Appellant’s
 Br. 1. Mr. Rudy argues that the Office Guidance “simplis-
 tically represent[s] patent-eligible subject matter law,” and
 is used by the Patent Office as a “shortcut to ease Mayo/Al-
 ice test application, with no force or effect of law.” Appel-
 lant’s Arg. 3 3; Reply Br. 7–8. We agree with Mr. Rudy that
 the Office Guidance is not, itself, the law of patent eligibil-
 ity, does not carry the force of law, and is not binding in our
 patent eligibility analysis.



 our discussion of the role of the Office Guidance applies
 equally to the supplement.
     3   Appellant’s Arg. refers to the Attached Argument
 Sheet submitted as an attachment to Mr. Rudy’s informal
 opening brief.
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 IN RE: RUDY                                                  5



     Section 101 of the Patent Act provides that “[w]hoever
 invents or discovers any new and useful process, machine,
 manufacture, or composition of matter, or any new and
 useful improvement thereof, may obtain a patent therefor,
 subject to the conditions and requirements of this title.” 35
 U.S.C. § 101. However, the Supreme Court “ha[s] long held
 that this provision contains an important implicit excep-
 tion: Laws of nature, natural phenomena, and abstract
 ideas are not patentable.” Assoc. for Molecular Pathology
 v. Myriad Genetics, Inc., 569 U.S. 589 (2013) (quoting
 Mayo, 566 U.S. at 71).
     In determining whether those judicial exceptions ap-
 ply, we are bound to “follow the Supreme Court’s two-step
 framework for patent eligibility under § 101.” Customedia
 Techs., LLC v. Dish Network Corp., 951 F.3d 1359, 1362
 (Fed. Cir. 2020) (citing Alice, 573 U.S. at 217); see also Riv-
 ers v. Roadway Express, Inc., 511 U.S. 298, 312 (1994)
 (“[O]nce the [Supreme] Court has spoken, it is the duty of
 other courts to respect that understanding of the governing
 rule of law.”) We are similarly bound by our own fulsome
 precedent on the proper application of the Supreme Court’s
 test. Newell Cos., Inc. v. Kenney Mfg. Co., 864 F.2d 757,
 765 (Fed. Cir. 1988) (“This Court has adopted the rule that
 prior decisions of a panel of the court are binding precedent
 on subsequent panels unless and until overturned [e]n
 banc.”); see Customedia, 951 F.3d at 1362–66 (collecting
 cases).
     We are not, however, bound by the Office Guidance,
 which cannot modify or supplant the Supreme Court’s law
 regarding patent eligibility, or our interpretation and ap-
 plication thereof. As we have previously explained:
     While we greatly respect the PTO’s expertise on all
     matters relating to patentability, including patent
     eligibility, we are not bound by its guidance. And,
     especially regarding the issue of patent eligibility
     and the efforts of the courts to determine the
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 6                                                IN RE: RUDY




     distinction between claims directed to [judicial ex-
     ceptions] and those directed to patent-eligible ap-
     plications of those [exceptions], we are mindful of
     the need for consistent application of our case law.
 Cleveland Clinic Found. v. True Health Diagnostics LLC,
 760 F. App’x. 1013, 1020 (Fed. Cir. 2019) (non-preceden-
 tial). Accordingly, we apply our law and the relevant Su-
 preme Court precedent, not the Office Guidance, when
 analyzing subject matter eligibility. To the extent the Of-
 fice Guidance contradicts or does not fully accord with our
 caselaw, it is our caselaw, and the Supreme Court prece-
 dent it is based upon, that must control. See id. at 1021
 (holding claims ineligible, despite Office Guidance suggest-
 ing otherwise, where statements and examples in the
 Guidance were inconsistent with Ariosa Diagnostics, Inc.
 v. Sequenom, Inc., 788 F.3d 1371 (Fed. Cir. 2015)).
                              III
     Turning to Mr. Rudy’s case, we conclude that although
 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.
     “We review the PTAB’s factual findings for substantial
 evidence and its legal conclusions de novo.” Redline Detec-
 tion, LLC v. Star Envirotech, Inc., 811 F.3d 435, 449 (Fed.
 Cir. 2015) (citation omitted). Whether a claim is drawn to
 patent-eligible subject matter under 35 U.S.C. § 101 is a
 question of law, which we review de novo. SRI Int’l., Inc.
 v. Cisco Sys., Inc., 930 F.3d 1295, 1302 (Fed. Cir. 2019).
     Applying the Supreme Court’s two-step Alice/Mayo
 framework, we first must determine whether the claims at
 issue are directed to a patent-ineligible concept, such as an
 abstract idea or a law of nature. Alice, 573 U.S. at 217. If
 they are, we must “consider the elements of each claim both
 individually and ‘as an ordered combination’ to determine
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 IN RE: RUDY                                                  7



 whether the additional elements ‘transform the nature of
 the claim’ into a patent eligible application” of that abstract
 idea or natural law. Id. (quoting Mayo, 566 U.S. at 72).
                               A
      With respect to claim 34, we conclude, as the Board did,
 that the claim is directed to the abstract idea of selecting a
 fishing hook based on observed water conditions. The
 claimed method requires three steps. First, the user “ob-
 serv[es] the clarity of water” to determine whether the wa-
 ter is “clear, stained, or muddy.” J.A. 24. Second, the user
 “measur[es] light transmittance at a depth in the water
 where a fishing hook is to be placed.” Id. Third and finally,
 the user “select[s] 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.
 Id. This mental process of hook color selection based on a
 provided chart demonstrates that claim 34 as a whole is
 directed to an abstract idea. See Elec. Power Grp., LLC v.
 Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016) (“[W]e
 have treated analyzing information by steps people go
 through in their minds . . . without more, as essentially
 mental processes within the abstract-idea category.”).
      We have held in the computer context that “collecting
 information” and “analyzing” that information are within
 the realm of abstract ideas. Id. at 1353–54 (collecting
 cases). The same is true in other contexts, including the
 fishing context. Cf. Affinity Labs of Tex., LLC v. DirecTV,
 LLC, 838 F.3d 1253, 1259 (Fed. Cir. 2016) (“[M]erely limit-
 ing the field of use of the abstract idea to a particular ex-
 isting technological environment does not render the
 claims any less abstract.”). Claim 34 requires nothing
 more than collecting information (water clarity and light
 transmittance) and analyzing that information (by apply-
 ing the chart included in the claim), which collectively
 amount to the abstract idea of selecting a fishing hook
 based on the observed water conditions. Indeed, Mr. Rudy
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 8                                                  IN RE: RUDY




 concedes in his brief that “all that is required of the angler
 is observation, measuring, and comparison with a prede-
 termined chart.” Appellant’s Arg. 16. As Mr. Rudy contin-
 ued, “even a fish can distinguish and select colors . . . the
 fisherman can do this too.” Id. at 16–17. While we decline
 today to adopt a bright-line test that mental processes ca-
 pable of being performed by fish are not patent eligible, this
 observation underscores our conclusion that claim 34 is di-
 rected to the abstract idea of selecting the color of a fishing
 hook. See Elec. Power Grp., 830 F.3d at 1354
     We are not persuaded by Mr. Rudy’s arguments other-
 wise. Mr. Rudy contends that claim 34’s preamble, “a
 method for fishing,” is a substantive claim limitation such
 that each claim requires actually attempting to catch a fish
 by placing the selected fishing hook in the water. Appel-
 lant’s Arg. 8–9. Even if that were true, which we need not
 decide, such an “additional limitation” would not alter our
 conclusion because the “character of claim [34], as a whole,
 remains directed to [an] abstract idea.” Chargepoint, Inc.
 v. SemaConnect, Inc., 920 F.3d 759, 770 (Fed. Cir. 2019).
     Mr. Rudy further argues that claim 34 is not directed
 to an abstract idea both because fishing “is a practical tech-
 nological field . . . recognized by the PTO” and because he
 contends that observing light transmittance is unlikely to
 be performed mentally. Appellant’s Arg. 16–18. Neither is
 persuasive. There is no dispute that an applicant can ob-
 tain subject-matter eligible claims in the field of fishing.
 But that is irrelevant to the fact that the claims currently
 before us are not eligible. 4 And while Mr. Rudy contends
 that “it is doubtful a fisherman could mentally determine
 light transmittance with the accuracy and precision found


     4   For the same reason, we are not persuaded by Mr.
 Rudy’s argument that patents “similar” to his application
 were issued by the PTO decades ago. Appellant’s Arg. 23–
 24.
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 IN RE: RUDY                                                 9



 in the claims,” the plain language of the claims encom-
 passes such mental determination. J.A. 24. Mr. Rudy ad-
 mitted as much during prosecution, stating that light
 transmittance may be measured by any “instrument or
 method, the claims not specifying how that is to be done.”
 J.A. 994. Because the claims before us are not limited in
 the way Mr. Rudy suggests, we are not in a position to
 opine on whether theoretical claims that were so limited
 would be patent eligible. See Sanofi-Aventis U.S., LLC v.
 Dr. Reddy’s Labs., Inc., 933 F.3d 1367, 1374 (Fed. Cir.
 2019) (“We cannot issue an advisory opinion on such a the-
 oretical dispute and we decline to do so here.”)
     Finally, in an apparent attempt to invoke the machine-
 or-transformation test for patent eligibility, Mr. Rudy ar-
 gues that practicing claim 34 “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.” Appellant’s Arg. 18–19.
 While the machine-or-transformation test remains “a use-
 ful and important clue” for determining eligibility under
 § 101, Bilski v. Kappos, 561 U.S. 593, 604 (2010), we need
 not decide in this case whether the transformation from
 free fish to hooked fish is the type of transformation dis-
 cussed in Bilski and its predecessor cases. As Mr. Rudy
 explains elsewhere in his brief, even if claim 34 was read
 to require the act of fishing, “landing a fish is never a sure
 thing. Many an angler has gone fishing and returned
 empty handed.” Appellant’s Arg. at 18. Claim 34 therefore
 does not actually recite or require the purported transfor-
 mation that Mr. Rudy relies upon.
                               B
     Having concluded that claim 34 is directed to the ab-
 stract idea of selecting a fishing hook based on observed
 water conditions, we turn to step two of the Alice/Mayo in-
 quiry and ask whether the elements of the claim, either
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 10                                                IN RE: RUDY




 individually or as an ordered combination, transform the
 nature of the claim into a patent eligible application of that
 abstract idea. Alice, 573 U.S. at 217. We conclude that
 they do not.
      In this case, the three elements of the claim (observing
 water clarity, measuring light transmittance, and selecting
 the color of the hook to be used) are each themselves ab-
 stract, being mental processes akin to data collection or
 analysis. Considered as an ordered combination, these
 three steps merely repeat the abstract idea of selecting a
 fishing hook based on observed water conditions. But
 transformation of an abstract idea into a patent-eligible
 claim “requires more than simply stating the abstract idea
 while adding the words ‘apply it.’” Alice, 573 U.S. at 222
 (quoting Mayo, 566 U.S. at 72). Here, the elements of the
 claim, either individually or as an ordered combination, do
 not amount to “‘significantly more than a patent upon the
 ineligible concept itself.’” Id. at 219 (quoting Mayo, 566
 U.S. at 73) (alterations omitted). Accordingly, claim 34
 fails to recite an inventive concept at step two of the Al-
 ice/Mayo test, and is not patent eligible under 35 U.S.C.
 § 101.
                               C
     Mr. Rudy further contends that the Board erred by con-
 sidering Claim 34 illustrative of all pending claims and not
 separately analyzing them. Appellant’s Arg. 8, 9. We see
 nothing in the remaining claims, however, that would
 meaningfully distinguish them from claim 34 in a patent
 eligibility analysis.
      Claim 38, the only other independent claim on appeal,
 begins with a method that is substantively identical to
 claim 34, but includes a slightly different chart for select-
 ing the fishing hook color. J.A. 26. Because the substance
 of claim 34’s hook color chart was not the basis of our eligi-
 bility determination, the slightly different substance of
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 IN RE: RUDY                                                11



 claim 38’s chart does not render it patent eligible. Claim
 38 includes only one additional limitation, which recites:
     wherein the fishing hook used is disintegrated from
     but is otherwise connectable to a fishing lure or
     other tackle and has a shaft portion, a bend portion
     connected to the shaft portion, and a barb or point
     at the terminus of the bend, and wherein the fish-
     ing hook used is made of a suitable material, which
     permits transmittance of light therethrough and is
     colored to colorless in nature.
 J.A. 26. These physical details of the fishing hook and lure,
 which Mr. Rudy does not contend are novel or unconven-
 tional, do not change our conclusion that claim 38 is ineli-
 gible for patenting. Our step-one analysis of claim 34 is
 equally applicable to claim 38 because, as described above,
 this limitation does not change the fact that the character
 of the claim, as a whole, is directed to an abstract idea. And
 our step-two analysis is equally applicable because “‘well-
 understood, routine, conventional activities’ previously
 known to the industry” cannot provide an inventive con-
 cept. Alice, 573 at 221 (quoting Mayo, 566 U.S. at 79). We
 therefore affirm that Board’s conclusion that claim 38 is
 not patent eligible.
     For the same reasons, we affirm the Board’s conclu-
 sions that dependent claims 35, 37, and 40 are not patent
 eligible, as each recites the physical attributes of the con-
 nection between the fishing hook and the fishing lure in
 ways not meaningfully distinct from claim 38. We also af-
 firm the Board’s conclusions regarding claims 45–49, which
 differ from the previously discussed claims only in that
 they mandate a specific color of fishing hook, which neither
 changes the character of the claims as a whole, nor pro-
 vides an inventive concept distinct from the abstract idea
 itself. See, e.g., J.A. 27 (“[Claim] 49. The method of claim
 37, wherein the fishing hook used is selected to be red.”).
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 12                                                IN RE: RUDY




                              III
     For the foregoing reasons, the Board’s conclusion that
 claims 34, 35, 37, 38, 40, and 45–49 of the ’360 application
 are ineligible for patenting is affirmed.
                         AFFIRMED
                            COSTS
      The parties shall bear their own costs.
