On March 10, 2016, the Federal Circuit ruled that it cannot review the U.S. Patent and Trademark Office’s patent-eligibility guidelines to examiners on how to apply the Supreme Court’s Alice ruling.  The appeals court held that could not consider the USPTO’s Interim Eligibility Guidance because it did not create any substantive or procedural right enforceable against the USPTO. In re Smith, Case No.  2015-1664, 2016 WL 909410, (Fed. Cir. Mar. 10, 2016) (precedential).

Applicants Ray and Amanda Tears Smith appealed the USPTO Board’s final decision affirming the rejection of claims 1–18 of U.S. Patent Application No. 12/912,410 for claiming patent-ineligible subject matter.  The Patent Application, titled “Blackjack Variation,” related to a wagering game implemented on a computer.

On appeal, the Smiths argued that the USPTO routinely applies Alice too broadly.  The USPTO Interim Eligibility Guidance, the Smiths claimed, improperly extended the bounds of the Supreme Court’s four patent-eligibility decisions from their specific technological fields.  Specifically, the Smiths asserted that since the Supreme Court’s patent-eligibility decisions have never addressed computer-implemented games, the USPTO’s extension of Alice to such games was without legal authority or precedence.

The USPTO responded that the Smiths could not properly challenge the Interim Eligibility Guidance because it was not a substantive rule, but rather the USPTO’s interpretation of the Supreme Court’s decision.  The Federal Circuit agreed.

While an applicant dissatisfied with a final decision of the Board may appeal to the Federal Circuit, an action taken in accordance with the Interim Eligibility Guidance is not appealable, the court held. The Federal Circuit noted that the Interim Eligibility Guidance itself provides that it “is not intended to create any right or benefit, substantive or procedural, enforceable by any party against the Office. Rejections will continue to be based upon the substantive law, and it is these rejections that are appealable.”  Interim Eligibility Guidance, Vol. 79 Fed. Reg. 74618, 74619 (Dec. 16, 2014) (emphasis added).

Reviewing de novo the examiner’s determination that the claims covered only the abstract idea of rules for playing a wagering game and lacked an inventive concept sufficient to transform the claimed subject matter into a patent-eligible application of that idea, the Federal Circuit affirmed the Board’s decision.