PTO Can and Should Use Alice/Mayo Framework to Assess Eligibility
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Addressing a challenge of the Alice/Mayo framework in the context of the Administrative Procedure Act (APA) and the Fifth Amendment's due process clause, the US Court of Appeals for the Federal Circuit affirmed a Patent Trial & Appeal Board (Board) decision finding that patent claims directed to analyzing social security benefit applications were patent ineligible under 35 U.S.C. § 101. In re Killian, Case No. 21-2113 (Fed. Cir. Aug. 23, 2022) (Taranto, Clevenger, Chen, JJ.)
Jeffrey Killian filed a patent application related to a system and method for determining eligibility for social security disability insurance (SSDI) benefits through a computer network. The examiner rejected the claims under § 101, finding that they were directed to the abstract idea of "determining eligibility for social security disability insurance . . . benefits" and lacked additional elements amounting to significantly more than the abstract idea because the additional elements were simply generic recitations of generic computer functionalities. Killian appealed to the Board, which affirmed the examiner's rejection. The Board explained that the claims were directed to the patent ineligible abstract idea of "a search algorithm for identifying people who may be eligible for SSDI benefits they are not receiving," and that the "determining" and "selecting" limitations of the claims could be performed by the human mind and thus were an "abstract mental process." Killian appealed.
Killian raised several arguments that generally fell into three categories:
- The Alice/Mayo standard is indefinite under the APA.
- The § 101 analysis for software violated Killian's Fifth Amendment due process rights.
- Step 2 of the Alice/Mayo analysis has no basis in patent law.
Addressing the first argument, the Federal Circuit noted that the APA cannot apply to the decisions of courts because courts are not agencies. Next, the Court dismissed Killian's argument that all § 101 decisions are void because the Alice/Mayo standard is indefinite. The Court explained that it has routinely found that mental processes are abstract ideas, including claims that were directed to data gathering, analysis and notification on generic computers. The Court found that nothing in Killian's claims provided an inventive manner to accomplish the claimed method, and thus the § 101 rejection was entirely proper. As a final point, the Court stated that it was bound to Supreme Court precedent and only new overruling precedent would change the analysis it applied.
The Federal Circuit also rejected Killian's due process argument. Killian argued that his due process rights were violated because he did not have an opportunity to appear in the other cases regarding patent eligibility. As an initial matter, the Court noted that no "void-for-vagueness" doctrine argument was put forward, and the doctrine requires a case-by-case analysis. The Court found that this was not a close case, as data gathering and analysis methods run afoul of established § 101 precedent. Next, the Court addressed the common law approach of not requiring "a single governing definitional context" and a comparison to previously decided cases finding it appropriate. Killian's due process rights were found to be unaffected by prior decisions because he had the opportunity to identify and argue distinctions between previous cases and the claims in his application.
The Federal Circuit next addressed Killian's challenge to Step 2 of Alice/Mayo as lacking a "foundation in modern patent law." The Court rejected the argument that "inventive concept" was removed by Congress when the "invention requirement" was removed in 1952, noting that Killian had failed to equate the two standards. The Court also noted that there was no requirement for a "degree of skill and ingenuity" beyond the ordinary skill in the art (the invention requirement) in Step 2 of Alice/Mayo. The Court also stated that Supreme Court precedent required a search for an inventive concept, and thus the Court was required to search for an inventive concept in Killian's claims. The Court noted that mental steps have long been an ineligible category of abstract ideas. Reviewing Killian's cited cases, the Court pointed out that the issue in Diehr was framed as a disagreement between the majority and dissent over the definition of the invention, with no comment on or overruling of the mental steps doctrine. Similarly, the Court found that nothing in Bilski diminished the doctrine or provided any exceptions.
Finally, the Federal Circuit dismissed Killian's argument regarding evidence of eligibility. The Court found that all the evidence overwhelmingly supported the finding that the claims were directed toward well-understood, routine and conventional activity capable of being performed on a generic computer with no recitation of an inventive "specific limitation or combination of limitations."
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