Federal Circuit Nos. 2013-1307, -1313
In a nonprecedential decision, the Federal Circuit invalidated as obvious claims directed to systems and methods of searching for information relevant to a user query using a combination of content-based filtering and user feedback. Concurring on separate grounds, and in describing Alice Corp. v. CLS Bank, 573 U.S. ___, No. 13-298, as providing a “technological arts” test, Judge Mayer opined that the claims were invalid under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter even though the question of patentable subject matter was not raised on appeal.
A central theme to Judge Mayer’s analysis, the use of science and technology provides a lynchpin in the subject-matter eligibility determination, without which Judge Mayer concludes that patent claims untethered to significant advance are subject-matter ineligible. Along similar lines, Judge Mayer argues that the inventive concept of the claims itself must be directed to a new technology that is a novel application of scientific principles to solve technological problems. Further narrowing the patent-eligibility filter, Judge Mayer offers that claims drawn to unscientific fields (business, law, sports, sociology, and psychology) are patent-ineligible, going to far as to state that no amount of specificity could render claims directed to such unscientific fields subject-matter eligible.
Applying the “technological arts” test to the claims, Judge Mayer interprets the claims at issue as covering the abstract ideas of well-known and widely-used aspects of search and filtering. Without recitation of any application in the claims, the claim scope at issue is broadly viewed by Judge Mayer as covering a significant portion of all online advertising, and which if subject-matter eligible would provide broad and sweeping reach in return for minimal technological disclosure and improvement. In Judge Mayer’s view, therefore, the claims are clearly subject-matter ineligible.
Accordingly, although nonprecedential, Judge Mayer’s perspective provides a useful example of the breath with which the subject matter eligibility paradigm post Alice Corp. might be applied.