United States Court of Appeals 

for the Federal Circuit ______________________

IN RE: CHRISTOPHER JOHN RUDY,

Appellant

______________________

2019-2301

______________________

Appeal from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in No. 07/425,360.

______________________

Decided: April 24, 2020

______________________

CHRISTOPHER JOHN RUDY, Port Huron, MI, pro se. 

 MAI-TRANG DUC DANG, Office of the Solicitor, United 

States Patent and Trademark Office, Alexandria, VA, for 

appellee Andrei Iancu. Also represented by THOMAS W.

KRAUSE, DANIEL KAZHDAN. 

______________________

Before PROST, Chief Judge, O’MALLEY and TARANTO,

Circuit Judges.

PROST, Chief Judge.

Christopher Rudy appeals from a decision of the Patent 

Trial and Appeal Board (“Board”) affirming the rejection of 

claims 34, 35, 37, 38, 40, and 45–49 of United States Patent 

Application No. 07/425,360 (“the ’360 application”) as ineligible for patenting under 35 U.S.C. § 101. We affirm.

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I

Mr. Rudy originally filed the ’360 application on October 21, 1989. The application, entitled “Eyeless, Knotless, 

Colorable and/or Translucent/Transparent Fishing Hooks 

with Associatable Apparatus and Methods,” has undergone 

a lengthy prosecution, including numerous amendments

and petitions, four Board appeals, and a previous trip to 

this court in which we affirmed the obviousness of all 

claims then on appeal. In re Rudy, 558 F. App’x. 1011 (Fed. 

Cir. 2014). 

Claims 34, 35, 37, 38, 40, and 45–49 of the ’360 application were the subject of a March 2015 office action in 

which the Examiner rejected them as ineligible for patenting under 35 U.S.C. § 101. That rejection was made final 

in September 2015, and affirmed by the Board on October 

2, 2019.1 Claim 34, which the Board considered illustrative, recites the following: 

34. A method for fishing comprising steps of

(1) observing clarity of water to be fished to determine whether the water is clear, stained, or muddy,

(2) measuring light transmittance at a depth in the 

water where a fishing hook is to be placed, and then

(3) selecting a colored or colorless quality of the 

fishing hook to be used by matching the observed 

water conditions ((1) and (2)) with a color or colorless quality which has been previously determined 

to be less attractive under said conditions than 

1 Claims 26–33 and 54–60 stand allowed. All remaining claims of the ’360 application have been cancelled 

by the applicant. J.A. 957–58. 

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IN RE: RUDY 3

those pointed out by the following correlation for 

fish-attractive non-fluorescent colors:

J.A. 24, claim 34 (formatting adjusted). 

The Board conducted its analysis under a dual framework for patent eligibility, purporting to apply both 1) “the 

two-step framework described in Mayo [Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012)] 

and Alice [Corp. v. CLS Bank International, 573 U.S. 208 

(2014)],” and 2) the Patent and Trademark Office’s 2019 

Revised Patent Subject Matter Eligibility Guidance, 84 

Fed. Reg. 50 (Jan. 7, 2019) (“Office Guidance”).2 J.A. 4–5. 

2 Shortly after the Board issued its decision in this 

case, the Patent Office issued supplemental guidance. See 

October 2019 Patent Eligibility Guidance Update, 84 Fed. 

Reg. 55942 (Oct. 18, 2019). Although the supplement’s substantive eligibility analysis is not relevant to this appeal, 

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The Board concluded “[u]nder the first step of the 

Mayo/Alice framework and Step 2A, Prong 1, of [the] Office 

Guidelines” that claim 34 is directed to the abstract idea of 

“select[ing] a colored or colorless quality of a fishing hook 

based on observed and measured water conditions, which 

is a concept performed in the human mind.” J.A. 9. The 

Board went on to conclude that “[u]nder the second step in 

the Mayo/Alice framework, and Step 2B of the 2019 Revised Guidance, we determine that the claim limitations, 

taken individually or as an ordered combination, do not 

amount to significantly more than” the abstract idea. J.A. 

11.

Mr. Rudy timely appealed, challenging both the 

Board’s reliance on the Office Guidance, and the Board’s 

ultimate conclusion that the claims are not patent eligible. 

We have jurisdiction under 28 U.S.C. § 1295(a)(4)(A). 

II

Mr. Rudy contends that the Board “misapplied or refused to apply . . . case law” in its subject matter eligibility 

analysis and committed legal error by instead applying the 

Office Guidance “as if it were prevailing law.” Appellant’s 

Br. 1. Mr. Rudy argues that the Office Guidance “simplistically represent[s] patent-eligible subject matter law,” and 

is used by the Patent Office as a “shortcut to ease Mayo/Alice test application, with no force or effect of law.” Appellant’s Arg. 33; Reply Br. 7–8. We agree with Mr. Rudy that 

the Office Guidance is not, itself, the law of patent eligibility, does not carry the force of law, and is not binding in our 

patent eligibility analysis.

our discussion of the role of the Office Guidance applies 

equally to the supplement.

3 Appellant’s Arg. refers to the Attached Argument 

Sheet submitted as an attachment to Mr. Rudy’s informal 

opening brief. 

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Section 101 of the Patent Act provides that “[w]hoever 

invents or discovers any new and useful process, machine, 

manufacture, or composition of matter, or any new and 

useful improvement thereof, may obtain a patent therefor, 

subject to the conditions and requirements of this title.” 35 

U.S.C. § 101. However, the Supreme Court “ha[s] long held 

that this provision contains an important implicit exception: Laws of nature, natural phenomena, and abstract 

ideas are not patentable.” Assoc. for Molecular Pathology 

v. Myriad Genetics, Inc., 569 U.S. 589 (2013) (quoting 

Mayo, 566 U.S. at 71). 

In determining whether those judicial exceptions apply, we are bound to “follow the Supreme Court’s two-step 

framework for patent eligibility under § 101.” Customedia

Techs., LLC v. Dish Network Corp., 951 F.3d 1359, 1362 

(Fed. Cir. 2020) (citing Alice, 573 U.S. at 217); see also Rivers v. Roadway Express, Inc., 511 U.S. 298, 312 (1994) 

(“[O]nce the [Supreme] Court has spoken, it is the duty of 

other courts to respect that understanding of the governing 

rule of law.”) We are similarly bound by our own fulsome 

precedent on the proper application of the Supreme Court’s 

test. Newell Cos., Inc. v. Kenney Mfg. Co., 864 F.2d 757, 

765 (Fed. Cir. 1988) (“This Court has adopted the rule that 

prior decisions of a panel of the court are binding precedent 

on subsequent panels unless and until overturned [e]n 

banc.”); see Customedia, 951 F.3d at 1362–66 (collecting 

cases).

We are not, however, bound by the Office Guidance, 

which cannot modify or supplant the Supreme Court’s law 

regarding patent eligibility, or our interpretation and application thereof. As we have previously explained:

While we greatly respect the PTO’s expertise on all 

matters relating to patentability, including patent 

eligibility, we are not bound by its guidance. And, 

especially regarding the issue of patent eligibility 

and the efforts of the courts to determine the 

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distinction between claims directed to [judicial exceptions] and those directed to patent-eligible applications of those [exceptions], we are mindful of 

the need for consistent application of our case law.

Cleveland Clinic Found. v. True Health Diagnostics LLC, 

760 F. App’x. 1013, 1020 (Fed. Cir. 2019) (non-precedential). Accordingly, we apply our law and the relevant Supreme Court precedent, not the Office Guidance, when 

analyzing subject matter eligibility. To the extent the Office Guidance contradicts or does not fully accord with our 

caselaw, it is our caselaw, and the Supreme Court precedent it is based upon, that must control. See id. at 1021 

(holding claims ineligible, despite Office Guidance suggesting otherwise, where statements and examples in the 

Guidance were inconsistent with Ariosa Diagnostics, Inc. 

v. Sequenom, Inc., 788 F.3d 1371 (Fed. Cir. 2015)).

III

Turning to Mr. Rudy’s case, we conclude that although 

a portion of the Board’s analysis is framed as a recitation 

of the Office Guidance, in this particular case the Board’s 

reasoning and conclusion are nevertheless fully in accord 

with the relevant caselaw.

“We review the PTAB’s factual findings for substantial 

evidence and its legal conclusions de novo.” Redline Detection, LLC v. Star Envirotech, Inc., 811 F.3d 435, 449 (Fed. 

Cir. 2015) (citation omitted). Whether a claim is drawn to 

patent-eligible subject matter under 35 U.S.C. § 101 is a 

question of law, which we review de novo. SRI Int’l., Inc. 

v. Cisco Sys., Inc., 930 F.3d 1295, 1302 (Fed. Cir. 2019). 

Applying the Supreme Court’s two-step Alice/Mayo

framework, we first must determine whether the claims at

issue are directed to a patent-ineligible concept, such as an 

abstract idea or a law of nature. Alice, 573 U.S. at 217. If 

they are, we must “consider the elements of each claim both 

individually and ‘as an ordered combination’ to determine 

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whether the additional elements ‘transform the nature of 

the claim’ into a patent eligible application” of that abstract 

idea or natural law. Id. (quoting Mayo, 566 U.S. at 72).

A

With respect to claim 34, we conclude, as the Board did, 

that the claim is directed to the abstract idea of selecting a 

fishing hook based on observed water conditions. The 

claimed method requires three steps. First, the user “observ[es] the clarity of water” to determine whether the water is “clear, stained, or muddy.” J.A. 24. Second, the user

“measur[es] light transmittance at a depth in the water 

where a fishing hook is to be placed.” Id. Third and finally, 

the user “select[s] a colored or colorless . . . fishing hook” 

based on the clarity and light transmittance of the water, 

in accordance with the chart that is included in the claim. 

Id. This mental process of hook color selection based on a 

provided chart demonstrates that claim 34 as a whole is

directed to an abstract idea. See Elec. Power Grp., LLC v. 

Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016) (“[W]e 

have treated analyzing information by steps people go 

through in their minds . . . without more, as essentially 

mental processes within the abstract-idea category.”).

We have held in the computer context that “collecting 

information” and “analyzing” that information are within 

the realm of abstract ideas. Id. at 1353–54 (collecting 

cases). The same is true in other contexts, including the

fishing context. Cf. Affinity Labs of Tex., LLC v. DirecTV, 

LLC, 838 F.3d 1253, 1259 (Fed. Cir. 2016) (“[M]erely limiting the field of use of the abstract idea to a particular existing technological environment does not render the 

claims any less abstract.”). Claim 34 requires nothing 

more than collecting information (water clarity and light 

transmittance) and analyzing that information (by applying the chart included in the claim), which collectively 

amount to the abstract idea of selecting a fishing hook 

based on the observed water conditions. Indeed, Mr. Rudy 

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concedes in his brief that “all that is required of the angler 

is observation, measuring, and comparison with a predetermined chart.” Appellant’s Arg. 16. As Mr. Rudy continued, “even a fish can distinguish and select colors . . . the 

fisherman can do this too.” Id. at 16–17. While we decline 

today to adopt a bright-line test that mental processes capable of being performed by fish are not patent eligible, this 

observation underscores our conclusion that claim 34 is directed to the abstract idea of selecting the color of a fishing 

hook. See Elec. Power Grp., 830 F.3d at 1354 

We are not persuaded by Mr. Rudy’s arguments otherwise. Mr. Rudy contends that claim 34’s preamble, “a 

method for fishing,” is a substantive claim limitation such 

that each claim requires actually attempting to catch a fish 

by placing the selected fishing hook in the water. Appellant’s Arg. 8–9. Even if that were true, which we need not 

decide, such an “additional limitation” would not alter our 

conclusion because the “character of claim [34], as a whole, 

remains directed to [an] abstract idea.” Chargepoint, Inc. 

v. SemaConnect, Inc., 920 F.3d 759, 770 (Fed. Cir. 2019).

Mr. Rudy further argues that claim 34 is not directed 

to an abstract idea both because fishing “is a practical technological field . . . recognized by the PTO” and because he 

contends that observing light transmittance is unlikely to 

be performed mentally. Appellant’s Arg. 16–18. Neither is 

persuasive. There is no dispute that an applicant can obtain subject-matter eligible claims in the field of fishing. 

But that is irrelevant to the fact that the claims currently 

before us are not eligible.4 And while Mr. Rudy contends 

that “it is doubtful a fisherman could mentally determine 

light transmittance with the accuracy and precision found 

4 For the same reason, we are not persuaded by Mr. 

Rudy’s argument that patents “similar” to his application

were issued by the PTO decades ago. Appellant’s Arg. 23–

24. 

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in the claims,” the plain language of the claims encompasses such mental determination. J.A. 24. Mr. Rudy admitted as much during prosecution, stating that light 

transmittance may be measured by any “instrument or 

method, the claims not specifying how that is to be done.” 

J.A. 994. Because the claims before us are not limited in 

the way Mr. Rudy suggests, we are not in a position to 

opine on whether theoretical claims that were so limited 

would be patent eligible. See Sanofi-Aventis U.S., LLC v. 

Dr. Reddy’s Labs., Inc., 933 F.3d 1367, 1374 (Fed. Cir. 

2019) (“We cannot issue an advisory opinion on such a theoretical dispute and we decline to do so here.”)

Finally, in an apparent attempt to invoke the machineor-transformation test for patent eligibility, Mr. Rudy argues that practicing claim 34 “acts upon or transforms fish” 

by transforming “freely swimming fish to hooked and 

landed fish” or by transforming a fishing hook “from one 

not having a target fish on it to one dressed with a fish 

when a successful strike ensues.” Appellant’s Arg. 18–19. 

While the machine-or-transformation test remains “a useful and important clue” for determining eligibility under 

§ 101, Bilski v. Kappos, 561 U.S. 593, 604 (2010), we need 

not decide in this case whether the transformation from 

free fish to hooked fish is the type of transformation discussed in Bilski and its predecessor cases. As Mr. Rudy 

explains elsewhere in his brief, even if claim 34 was read 

to require the act of fishing, “landing a fish is never a sure 

thing. Many an angler has gone fishing and returned 

empty handed.” Appellant’s Arg. at 18. Claim 34 therefore 

does not actually recite or require the purported transformation that Mr. Rudy relies upon. 

B

Having concluded that claim 34 is directed to the abstract idea of selecting a fishing hook based on observed 

water conditions, we turn to step two of the Alice/Mayo inquiry and ask whether the elements of the claim, either 

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individually or as an ordered combination, transform the 

nature of the claim into a patent eligible application of that 

abstract idea. Alice, 573 U.S. at 217. We conclude that 

they do not.

In this case, the three elements of the claim (observing 

water clarity, measuring light transmittance, and selecting 

the color of the hook to be used) are each themselves abstract, being mental processes akin to data collection or 

analysis. Considered as an ordered combination, these 

three steps merely repeat the abstract idea of selecting a 

fishing hook based on observed water conditions. But 

transformation of an abstract idea into a patent-eligible 

claim “requires more than simply stating the abstract idea 

while adding the words ‘apply it.’” Alice, 573 U.S. at 222

(quoting Mayo, 566 U.S. at 72). Here, the elements of the 

claim, either individually or as an ordered combination, do 

not amount to “‘significantly more than a patent upon the 

ineligible concept itself.’” Id. at 219 (quoting Mayo, 566 

U.S. at 73) (alterations omitted). Accordingly, claim 34 

fails to recite an inventive concept at step two of the Alice/Mayo test, and is not patent eligible under 35 U.S.C. 

§ 101.

C

Mr. Rudy further contends that the Board erred by considering Claim 34 illustrative of all pending claims and not 

separately analyzing them. Appellant’s Arg. 8, 9. We see 

nothing in the remaining claims, however, that would 

meaningfully distinguish them from claim 34 in a patent 

eligibility analysis. 

Claim 38, the only other independent claim on appeal, 

begins with a method that is substantively identical to 

claim 34, but includes a slightly different chart for selecting the fishing hook color. J.A. 26. Because the substance 

of claim 34’s hook color chart was not the basis of our eligibility determination, the slightly different substance of 

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IN RE: RUDY 11

claim 38’s chart does not render it patent eligible. Claim 

38 includes only one additional limitation, which recites:

wherein the fishing hook used is disintegrated from 

but is otherwise connectable to a fishing lure or 

other tackle and has a shaft portion, a bend portion 

connected to the shaft portion, and a barb or point 

at the terminus of the bend, and wherein the fishing hook used is made of a suitable material, which 

permits transmittance of light therethrough and is 

colored to colorless in nature.

J.A. 26. These physical details of the fishing hook and lure, 

which Mr. Rudy does not contend are novel or unconventional, do not change our conclusion that claim 38 is ineligible for patenting. Our step-one analysis of claim 34 is 

equally applicable to claim 38 because, as described above, 

this limitation does not change the fact that the character 

of the claim, as a whole, is directed to an abstract idea. And 

our step-two analysis is equally applicable because “‘wellunderstood, routine, conventional activities’ previously 

known to the industry” cannot provide an inventive concept. Alice, 573 at 221 (quoting Mayo, 566 U.S. at 79). We 

therefore affirm that Board’s conclusion that claim 38 is 

not patent eligible. 

For the same reasons, we affirm the Board’s conclusions that dependent claims 35, 37, and 40 are not patent 

eligible, as each recites the physical attributes of the connection between the fishing hook and the fishing lure in 

ways not meaningfully distinct from claim 38. We also affirm the Board’s conclusions regarding claims 45–49, which 

differ from the previously discussed claims only in that 

they mandate a specific color of fishing hook, which neither 

changes the character of the claims as a whole, nor provides an inventive concept distinct from the abstract idea 

itself. See, e.g., J.A. 27 (“[Claim] 49. The method of claim 

37, wherein the fishing hook used is selected to be red.”). 

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III

For the foregoing reasons, the Board’s conclusion that 

claims 34, 35, 37, 38, 40, and 45–49 of the ’360 application 

are ineligible for patenting is affirmed.

AFFIRMED

COSTS

The parties shall bear their own costs.

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