Federal Circuit Defends Alice/Mayo Test – Patent
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In In re KillianNo. 2021-2113 (Fed. Cir. August 23, 2022)the Federal Circuit affirmed the PTAB’s rejection of the pending claims of U.S. Patent Application No. 14/450,042 (“‘042 Application”) under 35 USC § 101.
The ‘042 application relates to a system and method for determining eligibility for Social Security disability benefits through a computer network. During the prosecution, the Examiner argued that all of the pending claims are directed to an abstract idea and lack any additional elements beyond the generic recitation of computer functionality. The Council confirmed.
The Federal Circuit confirmed. To Alice Stage 1, the Federal Circuit held that the claims were 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 claims to Alice 2nd step.
The Federal Circuit rejected all of the Appellant’s arguments. First, there was no violation of the Administrative Procedure Act by an “arbitrary and capricious” law because the Council followed the binding precedent of the Supreme Court. Second, the Federal Circuit declined to provide a single definition of the abstract idea, noting that the case law provides sufficient guidance. Third, there was no violation of the patentee’s due process rights, since comparing the patentee’s case to prior Section 101 cases is “the classic common law methodology for creating the right”. Fourth, the search for “inventive concept” to
Alice step 2 is not improper because it never required the patentee to demonstrate a “degree of skill and ingenuity” beyond that of a person of ordinary skill in the domain. Fifth, the doctrine of “mental steps” has not been repudiated in modern patent law. Sixth, the Board’s conclusion that the claims referred to generic computer functions was supported by substantial evidence.
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