Last week, the Federal Circuit affirmed the rejection by the Patent Trial and Appeal Board of claims 1-3 of U.S. Patent Application No. 15/726,162 as being patent ineligible under 35 U.S.C. § 101. The '162 application, which is entitled "An Iterative Process of Squeezing Excess Food out of Daily Food Intake to Achieve and Maintain Weight Loss Using Hunger as a Feedback Mechanism," is directed to a method for weight loss. The '162 application contains three independent claims, of which claim 1 is representative:
1. A process wherein, on day one, you--which stands for a user of the process-- cut your food intake during all three regular meals, break-fast, lunch, and dinner, by 1/3 and keep it that way for 3 months, and follow the how-to-eat rules: (1) no food unless you are hungry, or it is your regular mealtime, breakfast, lunch, or dinner, (2) if you are hungry and it is not your regular mealtime, you drink a glass of water, first, and wait 10-15 minutes; if you are still hungry, then you eat a snack, and (3) the amount of the snack is determined by your BMI (body mass index) and the time left before the next regular meal or bedtime, whichever comes first.
During prosecution of the application, the Examiner rejected claims 1-3 of the '162 application as being patent ineligible under § 101. The Applicant, Mr. Zach Zunshine, appealed the rejection to the Board, which affirmed the Examiner's rejection. In particular, the Board agreed with the Examiner that the claims recite an abstract idea, concluding that the claims describe methods of managing personal behavior, and that the claims do not recite any limitations that integrate the abstract idea into a practical application.
In affirming the Board, the Federal Circuit similarly concluded that claims 1–3 are directed to an abstract idea. The Court explained that "[e]ach of claims 1–3 amount to nothing more than reducing food intake to achieve weight loss and snacking to curb hunger," adding that "[h]umans have long managed their personal diets in such a manner, and thus claims 1–3 are directed to an abstract idea." Citing Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1084, 1092 (Fed. Cir. 2019), the Court also noted that "[t]he fact that the claims might add a 'degree of particularity' as to the amount that food intake is reduced 'does not impact our analysis at step one.'"
In response to the Applicant's argument that claims 1–3 are not directed to abstract ideas because these claims "represent specific improvements in the field of calorie-restrictive diets," analogizing the '162 application to McRO, Inc. v. Bandai Namco Games America, 837 F.3d 1299 (Fed. Cir. 2016), and Rapid Litigation Management, Ltd. v. CellzDirect, Inc., 827 F.3d 1042 (Fed. Cir. 2016), the Court responded that:
[U]nlike the specific improvements recited by the claims in those cases, the purported improvement in claims 1–3—i.e., solving the "hunger problem" in calorie-restricted weight-loss diets—is neither a technical improvement tied to a specific apparatus nor an improvement of an existing technological process. Instead, in this case, the solution to the hunger problem in claims 1–3 is itself an ineligible abstract idea.
In response to the Applicant's argument that claims 1-3 teach the treatment of a disease (i.e., obesity and diseases afflicting the overweight and obese) and are patent eligible like the claims in Vanda Pharmaceuticals Inc. v. West Ward Pharmaceuticals International, Ltd., 887 F.3d 1117 (Fed. Cir. 2018), the Court disagreed, noting that:
In Vanda, we did not hold that all methods of treating a disease are categorically patent eligible, but explained that the claims at issue were patent eligible because they were directed to "a specific method of treatment for specific patients using a specific compound at specific dose to achieve a specific outcome." 887 F.3d at 1136 (emphases added). Claims 1–3 are quite different. The claims merely direct a user to manage his or her food intake according to a series of rules that humans have long followed in managing their diets. Such personal management of food intake is an abstract idea that is not patent eligible.
The Court determined that the claims of the '162 application were different from those found to be patent eligible in Vanda, pointing out that the claims at issue here "merely direct a user to manage his or her food intake according to a series of rules that humans have long followed in managing their diets," and concluding that "[s]uch personal management of food intake is an abstract idea that is not patent eligible."
Turning to the second step of the Alice/Mayo inquiry, the Court determined that nothing in the claims, either individually or as an ordered combination, transformed the claims into a patent-eligible application of the abstract idea recited therein. In response to the Applicant's argument that the elements of claims 1–3 are not found in the prior art and together the elements produce "spectacular" weight loss, the Court responded that "[t]he purported inventive concepts . . . are nothing more than the abstract ideas themselves," and that the suggested novelty of the claims fails to transform the abstract idea of limiting food intake into a patent-eligible process. The Court therefore affirmed the Board's determination that claims 1-3 of the '162 application are patent ineligible under § 101.
In re Zunshine (Fed. Cir. 2020)
Panel: Chief Judge Prost and Circuit Judges Newman and O'Malley
Per curiam opinion