Federal Circuit Defends the Alice/Mayo Test

In In re Killian, No. 2021-2113 (Fed. Cir. August 23, 2022), the Federal Circuit affirmed the PTAB’s rejection of pending claims of U.S. Patent Application No. 14/450,042 (“’042 application”) under 35 U.S.C. § 101.

The ’042 application is directed to a system and method for determining eligibility for social security disability insurance benefits through a computer network. During prosecution, the examiner argued that all pending claims are directed to an abstract idea and lack any additional element beyond generic recitation of computer functionalities. The Board affirmed.

The Federal Circuit affirmed. At Alice step 1, the Federal Circuit held that the claims are directed to an abstract idea of collecting information from various sources and understanding the meaning of that information, which can be performed by a human. That these steps are performed on a generic computer did not save the claims at Alice step 2.

The Federal Circuit rejected all of the appellant’s arguments. First, there was no violation of Administrative Procedure Act from “arbitrary and capricious” law because the Board followed the binding Supreme Court precedent. Second, the Federal Circuit refused to provide a single definition of abstract idea, noting that the case law provides sufficient guidance. Third, there was no violation of the patentee’s due process rights because comparing the patentee’s case to earlier § 101 cases is “the classic common law methodology for creating law.” Fourth, the search for “inventive concept” at Alice step 2 is not improper because it never required the patentee to prove “degree of skill and ingenuity” beyond those of a person of ordinary skill in the art. Fifth, the “mental steps” doctrine has not been repudiated in modern patent law. Sixth, the Board’s finding that the claims recited generic computer functions was supported by substantial evidence.