Background
Bernard Rudy applied for a patent on a method for selecting and fitting footwear using digital imaging and foot measurements. The patent examiner rejected the claims as directed to an abstract idea under 35 U.S.C. § 101, applying the Alice/Mayo two-step framework. The Patent Trial and Appeal Board affirmed the examiner’s rejection.
On appeal, Rudy argued that the USPTO’s 2019 Revised Guidance — an internal policy document that reorganized and refined how examiners should apply the Alice/Mayo test — should govern the analysis and that the Board had failed to properly apply it. The USPTO had issued the guidance to bring more consistency and predictability to § 101 examination.
The Federal Circuit took the opportunity to address a question that had been lurking in the background of patent prosecution: what weight, if any, do USPTO eligibility guidelines carry in court?
The Court’s Holding
The Federal Circuit affirmed the rejection and made clear that the USPTO’s eligibility guidance — including the 2019 Revised Guidance — is not binding on the courts. The court held that the controlling legal standard for § 101 is the Alice/Mayo framework as articulated by the Supreme Court and the Federal Circuit, and that internal agency guidance documents, however useful they may be for examiners, cannot override or reshape the judicial precedent on patent eligibility.
Reviewing the claims on the merits under the proper legal standard, the court agreed that the footwear-fitting method was directed to an abstract idea — essentially the mental steps of measuring feet and selecting shoes — and that the claimed computer implementation did not supply an inventive concept sufficient to transform the abstract idea into patent-eligible subject matter under Alice step two.
Key Takeaways
- The USPTO’s eligibility guidelines, including the 2019 Revised Guidance, are not binding on Article III courts — courts apply the Supreme Court’s Alice/Mayo framework directly, not the USPTO’s restatement of it.
- Applicants whose claims were allowed under USPTO guidance may still face § 101 challenges in litigation; patent issuance under the guidance does not guarantee eligibility under the case law standard courts will apply.
- The gap between what the USPTO allows under its guidance and what courts will uphold remains a real risk for patent portfolios in software and business method areas.
- Methods involving routine human cognitive steps — like measuring, comparing, or selecting — implemented on generic computers face a high hurdle at Alice step two without a concrete technological improvement.
Why It Matters
This decision clarifies an important tension in the patent system. The USPTO issues guidance to help examiners consistently apply § 101, and the 2019 Revised Guidance was widely welcomed by patent applicants as a more permissive framework. But the Federal Circuit’s message in In re Rudy is direct: what the USPTO says in its guidance may help get a patent through examination, but it is not the standard that courts apply when validity is challenged in litigation.
This means companies cannot rely solely on prosecution-stage allowances to assess the strength of their § 101 position in court. A patent allowed under the 2019 guidance may still be found ineligible when a court applies Alice/Mayo as interpreted by the Federal Circuit. The decision reinforces the importance of patent drafting strategies — like emphasizing concrete technical improvements in the specification — that satisfy not just the USPTO’s administrative framework but the more rigorous standard courts will ultimately use.