Claiming a Result That Follows From a Natural Law, Without Claiming a Specific Manner of Achieving the Result, Can Lead to Invalidity Under Section 101

The patentee appealed from a Section 101 dismissal. The asserted claims were directed to tuning propeller shaft liners to attenuate two modes of vibrations simultaneously. The district court found this was directed to a natural law (specifically, Hooke’s law), and that the claims did not include a sufficient inventive concept beyond applying the natural law. The Federal Circuit affirmed.

The patentee argued on appeal that attenuating a liner for two modes of vibrations involved more than simply applying Hooke’s law. The court disagreed, finding instead that the asserted claims were directed to achieving a result (i.e., attenuating two modes of vibrations simultaneously) without claiming how to achieve that result. Specifically, “the patent claims do not describe a specific method for applying Hooke’s law in this context. They simply state that the liner should be tuned to dampen certain vibrations.” Additional details contained in the specification are irrelevant because the Section 101 inquiry turns on the claims themselves.

Thus, as to step one of the Alice inquiry, because “[t]he claims [at issue] simply instruct the reader to tune the liner,” the claimed process “merely amounts to an application of a natural law . . . without the benefit of instructions on how to do so.” Under step two, the remaining limitations were “conventional additions” that were collectively insufficient “to create patent eligibility.”

Judge Moore dissented, claiming that the majority “disregarded or just plain ignored” evidence of nonconventionality, and incorrectly held that whether liners were used in the prior art for attenuating certain vibrations “makes no difference to the section 101 analysis.” Instead, the majority incorrectly turned an unraised enablement inquiry into a section 101 issue.