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Fish Hook Claims Can't Catch a Patent

April 29, 2020
Post by Julie L. Spieker

On April 24, 2020, The Court of Appeals for the Federal Circuit (“CAFC”) held that claims concerning a method for fishing, specifically that of selecting a fishing hook based on observed water conditions, are directed to an abstract idea.

According to 35 U.S.C. § 101, “[w]homever 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.” The Supreme Court has found that this provision contains an implicit exception and has held that laws of nature, natural phenomena, and abstract ideas are not patent eligible. The Supreme Court’s two-step Alice/Mayo process is the framework for determining patent eligibility under § 101. The first step is to determine whether the claims are directed to one of the enumerated patent-ineligible concepts. The second is to consider whether the elements of the claim individually, or as a whole, transform the nature of the claim into a patent eligible application of that abstract idea or natural law.

In the case of In re: Rudy, the claimed method requires three steps: observing the clarity of water, measuring light transmittance at a depth where a fishing hook is to be placed, and then selecting a fishing hook with a specific color in accordance with a provided chart. The Court of Appeals for the Federal Circuit (“CAFC”) concluded that the mental process of hook color selection based on a provided chart demonstrates that the claim is directed toward an abstract idea. Analyzing or collecting information by steps, without more, is an essentially mental process within the realm of abstract ideas.

The CAFC was not persuaded by Mr. Rudy’s argument that the preamble “a method for fishing” indicates a limitation that requires actually attempting to catch a fish. The CAFC concluded that this additional limitation would not alter the conclusion “because the character of the claim, as a whole remains directed to [an] abstract idea.” Nor was the CAFC persuaded that the claimed subject matter is not an abstract idea because fishing is a practical technological field recognized by the Patent and Trademark Office. The CAFC noted that while there may be subject-matter eligible claims with regard to fishing, the claims at issue are not. Further, Mr. Rudy argued that observing light transmittance is not likely performed mentally. The CAFC countered that the plain language of the claims encompasses metal determination and are not limited by an instrument or method.

Ultimately, the CAFC determined that the three elements of the claim: observing water clarity, measuring light transmittance, and selecting the color of the hook, do not add up to something more to transform the nature of the claims into a patent eligible application of that abstract idea. The claims are each themselves mental processes and not patent eligible under 35 USC 101.


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