In Re: Jeffrey A. Killian
Docket No. 2021-2113 (https://cafc.uscourts.gov/opinions-orders/21-2113.OPINION.8-23-2022_1994643.pdf)
TARANTO, CLEVENGER, CHEN
August 23, 2022
Brief Summary: Board decision finding claims ineligible under section 101 affirmed. Summary: Mr. Killian appealed USPTO Board decision affirming the examiner’s rejection of certain claims of US Ser. No. 14/450,042 under 35 USC section 101 (Appeal No. 2020-003680, Feb. 1, 2021). “The ‘042 application relates to a system and method “for determining eligibility for Social Security Disability Insurance [SSDI] benefits through a computer network” which includes obtaining information “from two sources: (1) a Federal Social Security database; and (2) a State database containing records for patients receiving treatment for developmental disabilities or mental illness” and then using “relevant information to determine if a given patient is entitled to receive SSDI benefits.” Representative claim 1 is directed to “[a] computerized method for determining overlooked eligibility for social security disability insurance (SSDI)/adult child benefits through a computer network” including providing access to the databases, selecting a person who is receiving treatment, creating an electronic record, retrieving the person’s SSDA status, determining whether the person is receiving SSDI benefits, and ultimately indicating in an electronic record whether the person is eligible for SSDI benefits. The examiner rejected the claims under section 101 as being “directed to the abstract idea of “determining eligibility for social security disability insurance . . . benefits” and lacking “additional elements amounting to significantly more than the abstract idea because the additional elements were simply generic recitations of generic computer functionalities”, and the Board agreed (““an abstract mental process”, “insignificant extra-solution activity”, “primitive computer operations found in any computer system” without integration” into a ‘practical application,’ and which do not recite an ‘inventive concept’”). The FC panel reviewed the Board ultimate conclusion de novo and its factual findings for substantive evidence (In re Marco Guldenaar, FC 2018; Customedia, FC 2020). It also explained that under Alice (US 2014) and Mayo (US 2012), it first must “‘determine whether the claims at issue are directed to a patent-ineligible concept,’ such as an abstract idea” and then determine whether the claims “contains an inventive concept sufficient to transform the claimed abstract idea into a patent-eligible application.” The FC panel found that “[t]he claims of the ’042 application do not pass this threshold test” (CyberSource, FC 2011; Elec. Power, FC 2016; Affinity Labs, FC 2016) as the collection and understanding of the information “can be performed by a human, using ‘observation, evaluation, judgment, [and] opinion” that “are performed on a generic computer” which “does not save the claims from being directed to an abstract idea” (Fair Warning, FC 2016). Mr. Killian argued, e.g., that “the standard promulgated in Alice and Mayo is indefinite”, improper under the APA, “arbitrary and capricious”, and the court has not provided proper guidance on what is an abstract idea or an inventive concept, but the FC panel disagreed, citing, e.g., Ericsson, FC 2020; Finjan, FC 2018; BASCOM, FC 2016). The Board decision was therefore affirmed.
Federal Circuit summaries 