On April 22, 2016, the U.S. Court of Appeals for the Federal Circuit continued its post-Alice pattern of upholding claim rejections on subject-matter ineligibility grounds under 35 U.S.C. § 101. In In re Brown, No. 2015-1852, 2016 U.S. App. LEXIS 7291 (Fed. Cir. April 22, 2010), the Court upheld the decision of the Patent Trial and Appeal Board of the U.S. Patent Office to sustain the Examiner’s rejection of claims directed to a method of cutting hair to balance head shape. Specifically, the claimed method required that the archetype of a person’s head shape be identified, that the head be divided into at least three partial zones with corresponding hair patterns, and using scissors to cut hair in those zones to build or remove weight to balance head shape.
Following the first step of the test established in Mayo and Alice by the Supreme Court, the Federal Circuit analyzed the claims to determine whether their subject matter was directed to an abstract idea. The Court found that the claims were directed to “assigning hair designs to balance head shape.” Brown, 2016 U.S. App LEXIS 6407 at *4. It characterized the act of assigning hair designs to balance head shape as an abstract idea because it was claimed and described in the specification broadly, such that there was no requirement that it be performed physically or require use of an instrument. Id. at *5. Relying on the figures in the application, the Court stated that the specification suggests the act would be performed visually, and further observed that it could be accomplished entirely in the human mind. Id.
Under the second step of the Mayo/Alice test, the Court concluded that the final act of cutting hair based on the planned pattern using scissors was insufficient to provide an inventive concept that would render the claimed subject matter patent-eligible. The Court based its conclusion on the conventionality of the act of cutting hair, and expressly characterized the final act as “insignificant post-solution activity.” Id. at *4. The applicant had conceded both that the act of cutting hair “employ[ed] a well-known concept” and that the hair patterns to be applied were “industry recognized.” Id. The Court characterized the final step as a mere instruction to apply the abstract idea of assigning hair designs to balance head shape using scissors, which it concluded was insufficient to save the claims from being directed to ineligible abstract ideas.
This is yet another decision at least arguably involving dissection of the claim into conventional implementation and underlying discovery. In addition, the Court’s analysis appeared to impose a separate patent-eligibility inquiry on the purportedly novel portions of the claim, such that the claim elements distinguishing the claimed subject matter from the prior art must be patent-eligible when isolated from the remaining claim elements. This analytical structure differs from that employed in Diamond v. Diehr, 450 U.S. 175, 188–89 (1981) and DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014), each of which found the addition of abstract subject matter (i.e., an algorithm and a link-processing scheme) to constitute patent-eligible subject matter when considered in combination with the remaining claim elements and conventional hardware implementation. A casual reading of the claims at issue in this application may suggest that their subject matter would have substantial difficulty achieving patent protection, particularly in light of the applicant’s concessions regarding the conventionality of many claim elements. Accordingly, a better tool to reject the claims may have been to apply prior art and reject the claims under 35 U.S.C. § 102 or § 103.
With the continued bleed of reasoning from cases involving diagnostic methods and electronically implemented business methods into the subject-matter eligibility jurisprudence subsequent Mayo and Alice, patent owners and applicants must carefully tailor their patent applications, claim language, and arguments to increase the chances that method claims will survive a patent-eligibility challenge.
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