Utility and Eligibility

by Dennis Crouch

In re Smith, 22-1301 (Fed. Cir. Sept 9, 2022) (nonprecedential). 

Smith is a short opinion affirming the USPTO’s refusal to issue Jason Smith’s patent on eligibility grounds.  The invention is a software method that allows customers to purchase assets from multiple vendors.  The Board rejected the claims as directed to the abstract idea of “storage, organization, and display (e.g., retrieval) of data, which has consistently been held . . . to constitute an abstract idea.”  The Appellate panel then found Smith’s arguments to the contrary unpersuasive.   In his 2011 post-Bilski article, Prof Risch wrote some about the overlap between utility and eligiblity and suggested merger of the two doctrines. “The cleanest test would replace the current patentable-subject-matter test altogether with eligibility utility.” Michael Risch, A Surprisingly Useful Requirement, 19 Geo. Mason L. Rev. 57 (2011).  The problem  for Smith though is that the courts have not accepted Prof. Risch’s suggestions.

Perhaps the most interesting argument by Smith was his statement that “[t]he starting point for the Board’s analysis of should have been to determine whether the claims complied with the useful requirement.” The brief goes on to argue that: “If it is useful, it is by law patent eligible.”  On appeal, the Federal Circuit noted first that Smith’s argument is “without citation” and then found that it is also without merit.  In particular, the court concluded that utility and eligibility are separate and distinct doctrines: “utility is not the test for patent eligibility.” The Supreme Court alluded to this distinction in its Myriad Genetics decision. Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013) (isolation of “important and useful gene [is] not an act of invention”).  Further, utility is not a prong of the Alice/Mayo analysis.

Per Curiam Opinion by Judges Lourie, Dyk, and Hughes
James Mitchell (Mitchell IP) represented Mr. Smith; Sarah Craven (USPTO Associate Solicitor) was on the other side.

= = =


46 thoughts on “Utility and Eligibility

  1. 13

    Well they were on – IMO- the right tack, but with the wrong formulation.

    “If it’s useful it must be eligible” can’t work, as pointed out in this thread.

    The question is not IF it’s useful. The question is WHERE it’s useful.

    If the utility of a method arises within a human mind, it ought not to be eligible.

    1. 13.1

      “IMO” and “marty” says it all.

      Hint: your “stickiness” to “your opinion” is simply not a good thing in regards to patent law.

    1. 12.1

      If so, how would man-made “maps” (such as phlogiston and the aether) fare as to innovation protection?

      After all, “the map is not the land.”

      (This also leads to Sherry Knowles views on “Discoveries”)

  2. 11

    I can’t believe anybody bothers filing claims as plainly ineligible as these. Is it just a clueless pro se problem or is the problem that some small portion of the patent bar still thinks this kind of undiluted nuttery is viable? Or both?

    1. 11.1

      It is all over both my counterfeit birth certs. are EGAN and then changed to remove me from my principle position that built the co. Altering birth certs. to commit fraud and theft is a felony.

  3. 10

    The easy answer here as to, “why not ask about utility?” Is that utility (in the patent sense) is an extremely low hurdle, and is just not a viable “Means” to get to a desired Ends.

    Those seeking to block patent protection for certain forms of innovation want an Ends without regard to the (legal) Means.

    This is also why the patent naysayers have been so feeble in their “dialogues” on these boards (and yes, read that as NOT HAVING any actual dialogues on the merits).

  4. 9

    OT, but the continued discussion of section 230.

    Here is an interesting debate where it appears that Klobuchar is trying to facilitate censorship. Cruz is trying to eliminate section 230.

    link to youtube.com

    1. 8.1

      Lol – I’m right here.

      Just happened to have a slightly busier week than normal. Were you looking for something explicit here in regards to an otherwise expected mangling by the particular CAFC faction?


          Thanks 6 – that’s a pretty edgy pic. But I have to say, your other recent “no” series is a better (nigh photo-realistic) version of me.

  5. 6

    >>The Board rejected the claims as directed to the abstract idea of “storage, organization, and display (e.g., retrieval) of data, which has consistently been held . . . to constitute an abstract idea.”

    So what the CAFC judges do can be characterize as this. Just ridiculous shxt.

    1. 6.1

      They are just using 101 rather than 103 to reject claims they don’t like.

      Just shameful. J. Rich would have no respect for the current judges. Not a whit.

      1. 6.1.1

        Wait… would the Giles Rich who wrote that diaper services weren’t patent eligible not respect these judges? Or would the Giles Rich who changed his mind about what 101 means without a statutory change not respect these judges who change their minds about what 101 means without a statutory change?


            Ben is being Ben, as everyone knows that Judge Rich’s views towards “business method patents” evolved over time.


            Your right. It’s unfair to compare the current CAFC following direction from their superiors to someone who just changed their mind and expected the law to change with it.

            Giles Rich wouldn’t see his reflection in the CAFC… he’d see that reflection in SCOTUS!


              What is a supposedly low-level examiner doing making sophisticated, albeit fallacious, arguments against J. Rich? Methinks there be a ringer.


                No, this is not as “Learned” a hand as may appear at first blush, given that Ben simply does not seem to recognize the relationship between (the later) Judge and the ‘scriviners’ of the Act of 1952.

                Rather, this is merely more of Ben being Ben.

  6. 5

    I’m so pissed (I sound like Sarah!), I woke up in the middle of the night with this really cool idea for a patent application, and of course I did not write anything down. Woke up hours later, and can’t remember a thing about it, Bugger!

    1. 5.2

      really cool idea for a patent application
      ‘ideas are abstract and therefore your invention doesn’t meet the requirements of 35 USC 101’ — Federal Circuit

      1. 5.2.2

        Thankfully I am a patent attorney and can transform the idea into something that is patent eligible, at least I hope so. Now I have to remember what I came up with.

    1. 4.2

      > a “nuanced argument.”

      To a panel with sledge hammers and swords?

      Not likely to work out well.

  7. 3

    Yeah, nothing there, no meat on this bone. I hate 101 rejections, but this one correctly was rejected on that basis imo.

  8. 2

    The brief goes on to argue that: “If it is useful, it is by law patent eligible.”
    It is a quaint argument that was never going to be persuasive. Not sure why the Federal Circuit didn’t just R36 this.

    1. 2.1

      This Per Curiam opinion contains yet another Fed. Cir. statement that Alice et al “abstraction”-type unpatentable claims includes “storage, organization, and display (e.g., retrieval) of data, which has consistently been held . . . to constitute an abstract idea.” [Not encouraging for many such applicants?]


          The key word in that line by the Fed. Cir. is “consistency,” a word not often associated with discussions of 101 unpatentable subject matter decisions, to put it mildly. So a test would be to point out post-Alice Fed. Cir. decisions sustaining a claim to only “storage, organization, and display (e.g., retrieval) of data”?


            Wasn’t one of the cases that went the other way having to do with jet fighter “display” (albeit, with jitter compensation)…?

    2. 2.2

      Maybe that is a clue how not to just get an R36. Put a novel argument in there so they feel the need (or want to get a rush) in rejecting the argument.

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