Has Eligibility become Quixotic?

by Dennis Crouch

In re: Janke, Docket No. 22-1274 (Fed. Cir. 2022) (R.36 Judgment)

Mr. Garth Janke is a former HP engineer and now a patent attorney at Garth Janke LLC.  Janke is also an inventor. Most recently, he has been pursuing patent protection on his clog-free leaf rake.  His Dulcinea. I live in a forest and have a basic rule against raking or blowing leaves–otherwise my grass would grow and then I would need to mow. But, to each his own.

Janke’s invention can be seen in the two drawings above. The Fig. 1 is a traditional prior art rake. Janke’s improvement is shown in Fig. 3. The improvement is to put a hole toward the end of each rake-tine.  A user can thread a string-trimmer line through the holes to help prevent leaf-clog.  Janke’s claim 1 is directed at a rake with holes through the tines. And he did a nice job of making clear to everyone “the holes through the tines are the only thing about the product of Claim 1 that is new.”

But, Claim 1 isn’t at issue in this appeal. Rather, the appeal focuses on the steps of constructing the rake, which the PTAB concluded lacked eligibility.  Claim 21 is directed to putting a 3-d model of the rake on a computer; Dependent claim 26 is adds a step of actually building the rake by printing-out the model using a 3D printer.

21. A process for enabling a clog-resistant feature in a hand-held leaf rake, comprising installing a first mathematical model on a computer [that represents the rake with holes in the tines].

26. The process of claim 21, further comprising applying the first mathematical model on a commercially available 3D printer to result in transforming the first mathematical model into a real leaf rake head product as defined by the first mathematical equations.

The procedure of the case is a bit wonky. Janke agreed with the examiner and the PTAB that the claims lacked eligibility under Section 101 – as interpreted by the Supreme Court.  The PTAB thus complied and affirmed the examiner rejections.  Janke then brought his appeal to the Federal Circuit, again beginning with an opening statement against his interest:

Appellant agrees with the Patent Office that the Claims 21-35 on appeal fall within the judicial exceptions to the 35 U.S.C. § 101 statutory allowances for patent-eligibility arising from Gottschalk v. Benson and Parker v. Flook.

The brief went-on to argue that two decisions are wrongly decided because and that they create a difficult threshold problem.  Representing himself, Janke asks the Federal Circuit to answer the following question:

Starting with the mathematical model itself, i.e., the “first” mathematical model of the leaf rake head product recited in Claim 21, then considering the additional limitation in Claim 21 of installing the model on a computer, then considering the additional limitation in Claim 26 of applying the model on a 3D printer to result in making the product, and finally considering Claim 1 to the product itself, when does the claimed subject matter become patent eligible and why?

Janke Appellate Brief.  On appeal, the Federal Circuit did not bite, but rather has simply issued another Rule 36 Affirmance without opinion.  I expect Janke will climb back on Rocinante and continue his fight to the the Supreme Court.