Utility and Eligibility | Patently-O

&#13
&#13
&#13

by Dennis Crouch

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 Cir. Sept 9, 2022) (nonprecedential). 

Smith is a quick view affirming the USPTO’s refusal to issue Jason Smith’s patent on eligibility grounds.  The invention is a software package technique that lets shoppers to order belongings from a number of distributors.  The Board rejected the promises as directed to the summary notion of “storage, firm, and display (e.g., retrieval) of information, which has continually been held . . . to constitute an summary notion.”  The Appellate panel then discovered Smith’s arguments to the opposite unpersuasive.   In his 2011 publish-Bilski posting, Prof Risch wrote some about the overlap amongst utility and eligiblity and instructed merger of the two doctrines. “The cleanest examination would switch the existing patentable-issue-make a difference take a look at altogether with eligibility utility.” Michael Risch, A Incredibly Valuable Necessity, 19 Geo. Mason L. Rev. 57 (2011).  The problem  for Smith nevertheless is that the courts have not approved Prof. Risch’s strategies.

Maybe the most interesting argument by Smith was his statement that “[t]he starting off stage for the Board’s evaluation of should have been to establish whether the promises complied with the helpful necessity.” The temporary goes on to argue that: “If it is practical, it is by law patent eligible.”  On attraction, the Federal Circuit mentioned to start with that Smith’s argument is “without citation” and then uncovered that it is also without having advantage.  In certain, the court concluded that utility and eligibility are different and distinct doctrines: “utility is not the check for patent eligibility.” The Supreme Courtroom alluded to this distinction in its Myriad Genetics final decision. Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013) (isolation of “important and beneficial gene [is] not an act of invention”).  More, utility is not a prong of the Alice/Mayo investigation.

For every Curiam Viewpoint by Judges Lourie, Dyk, and Hughes
James Mitchell (Mitchell IP) represented Mr. Smith Sarah Craven (USPTO Associate Solicitor) was on the other facet.

= = =

 

&#13
&#13

&#13
&#13


&#13

Leave a Reply