Or alternatively: Is swallowing a pill like the manufacture of an axle?

Consider U.S. Patent 3,418,999, granted in 1968.

The representative claim is to:

Translating: If the pill floats, bow your head forward when swallowing. This allows the pill to float up to the back of your throat making it easier to swallow.

Question: Not counting prior art, would this invention be patentable today?

To be patentable, an invention must be (1) eligible under 35 U.S.C. § 101; (2) novel under 35 U.S.C. § 102, and non-obvious under 35 U.S.C. § 103. The application and claims directed to the invention must also must meet additional other requirements under 35 U.S.C. § 112 including that the invention be adequately described and clearly claimed. Sections 102 and 103 relate to novelty and non-obviousness, which simply relates to whether the invention is not already sufficiently publicly available to those skilled in the art – in other words that the invention is sufficiently novel to merit a patent.

That leaves patent eligible subject matter. This area of law is long and complex. And, while the jurisprudence extends back to at least the 1800s, it took a turn in 2012 with the Mayo ¹⁾ decision, and then again in 2014 with the Alice ²⁾ decision. These two decisions, taken together, have created what has come to be known as the “infamous” Alice/Mayo test for subject matter eligibility.

Highly respected Judge Plager of the Federal Circuit had this to say about the Alice/Mayo test in his dissent in Interval Licensing LLC v. AOL, Inc., et al. ³⁾:

So what is the test? It goes like this (and I am not even kidding):

Step 1:

Determine if the claim is a process, machine, manufacture, or composition of matter. If no, then not eligible; if yes the invention may be directed to a judicially-created “exception” (i.e., an abstract idea, a law of nature, or a natural phenomenon) and still be ineligible to be patented; otherwise, go to Step 2A, Prong 1.

• In our example, the method of swallowing a pill is a method, so we go to the next step in the analysis.

Step 2A:

Is the claim directed to a law of nature, a natural phenomenon, (product of nature), or an abstract idea? This step is divided into two prongs:

Prong 1:

Does the claim recite an abstract idea, law of nature, or natural phenomenon? If yes, go to Step 2A, prong 2.

• What an “abstract idea” is, is not well-defined, such that the courts and the PTO, (and applicants and litigants) have resorted to looking to see what earlier court decisions have said is abstract or not. While bowing the head before swallowing is a physical act, it could be understood as an application of Archimedes' principle, which states that any object experiences an upward buoyant force equal to the weight of the fluid displaced. That is to say, a pill that is lighter than the water it displaces will float.

  In American Axle & Manufacturing, Inc. v. Neapco Holdings LLC, No. 18-1763 (Fed. Cir. 2019), the Federal Circuit held that a method of manufacturing an automotive axle that involved tuning the liner to produce frequencies that dampen vibrations was directed to an abstract idea (and therefore ineligible subject matter) because it was a “mere” application of Hooke's law, which is an equation that describes the relationship between an object's mass, its stiffness, and the frequency at which the object vibrates. Therefore, in light of this caselaw, it is conceivable that a court could find that the bowing of your head when swallowing a pill with density lighter than water is an application of a natural law (Archimedes' Principle) and therefore is an abstract idea. We therefore proceed to prong 2.

Step 2A, Prong 2:

Does the claim recite additional elements that integrate the “Judicial Exception” into “A Practical Application”? If Yes, then the invention is not directed to a judicial exception and is therefore patent-eligible. Otherwise, proceed to step. 2B.

• Here, the factfinder is asked to examine whether the claim as a whole integrates the exception into a practical application of that exception. The “exception” is the application of the natural law. In the case of Am. Axle, the application was to the manufacture of a drive shaft; here the application is to the swallowing of a pill. It is an open question whether a court would perceive a qualitative difference between manufacturing a drive shaft and the swallowing of a pill. The fact that such a question even presents itself is an indication of the insanity of the Alice/Mayo test.

Step 2B:

Does the claim recite additional elements that amount to significantly more than the judicial exceptions? If not, then the claim is not eligible subject matter under 35 U.S.C. § 101; otherwise it is.

• The courts often refer to this as a search for an inventive concept. Essentially, the courts punted and are looking for novelty, although they do not admit this.. The courts say, for example, the “novelty” of any element or steps in a process, or even the process itself, is of no relevance in determining patent eligibility.⁴⁾ However, one of the possible “significantly more” somethings is whether the claim includes a limitation to something other than what is “well-understood, routine, conventional activity” and many other refer to whether the claim is directed to “improvements” to existing technology. To this seasoned practitioner, it sounds an awful lot like a comparison of the invention with what was previously known to determine if the invention is “abstract.”

So we are back to figuring out if it is “conventional” or an “improvement” to bow your head forward when swallowing. If it is new, then maybe the invention is not abstract; otherwise it is.

This thought experiment, if nothing else, tells us that Judge Plager was correct. It's hard to understand whether the Alice/Mayo test is “for good or ill” and it is impossible to reliably apply it, even to something as simple as taking a pill.