Since most of my last post discussing Judge Moore’s dissent focused on her criticism of the majority’s conclusion that the claimed invention—placing a tuned liner into a hollow “propshaft” to attenuate two modes of vibration—was directed to Hooke’s law and nothing more, I do not want to leave without commenting briefly on Judge Moore’s two other concerns. This despite the fact that a divided Fed. Cir. recently denied rehearing en banc.
The second concern that the Judge addresses is that the majority, having concluded that the claims invoke a natural law, failed to carry out the step 2 analysis required by the Alice/Mayo test, which required them to determine whether or not the claims contained an “inventive concept.” Judge Moore points to a number of elements of the claim that, as she explained the record below, were indisputably novel, including the use of a tuned liner to reduce two modes of vibration.
Judge Moore also criticizes the majority for interjecting a s.112 enablement inquiry into the s. 101 analysis, when considering claims that involve assembly of the propshaft assembly by carrying out steps in the method using concrete elements, particularly the pre-tuned liner that is inserted into the propshaft. However, after re-reading the majority’s opinion it is clear that they concluded the claim was directed to a desired result, without any of the “how to” needed accomplish that result. While this seems facially in error, once the majority, citing the “Telegraph cases”, concluded that the claim was merely directed to Hooke’s law and nothing more, the majority could not in good conscience proceed to search for an inventive concept in the remaining claim elements.
Put simply, once the majority held that the claims were no more than an attempt to claim a result “without limiting the claim to particular methods of achieving the result” and that the result was simply an attempt to claim a natural law and nothing more, Judge Moore was going to lose both her arguments that the enablement analysis a la O’Reilly v. Morse was improper and that the majority needed to carry out step 2 of the Alice/Mayo test. Of course, if the claims are directed to a law of nature and nothing more, it is not clear if any amount of detail in the steps required to “apply it” would, or could meet the enablement requirement. If you doubt this, go back and read Athena.