Federal Circuit rejects administrative-law and due process attacks on Alice and keeps the eligibility fight inside the two steps

2022-08-23Fed. Cir.

In re Killian, No. 2021-2113 (Fed. Cir. Aug. 23, 2022) (precedential) (Chen, J., joined by Taranto and Clevenger, JJ.), affirming Ex parte Killian, No. 2020-003680 (P.T.A.B. Feb. 1, 2021), rehearing denied (P.T.A.B. May 3, 2021), on United States Application No. 14/450,042

United States Application No. 14/450,042 claims "a computerized method for determining overlooked eligibility for social security disability insurance (SSDI)/adult child benefits through a computer network": cross-referencing a federal Social Security database against a state database of persons treated for mental illness or developmental disabilities and determining eligibility "based on the identified information" and "current SSDI benefit legal requirements." The examiner and the Patent Trial and Appeal Board rejected all pending claims under Section 101 of Title 35 of the United States Code, the Board finding them directed to "a search algorithm for identifying people who may be eligible for SSDI benefits they are not receiving," a mental process. The Federal Circuit, through Judge Chen, unanimously affirmed, holding at step one that collecting and understanding information are mental tasks, and at step two that the claims "do not detail how the computer should go about determining eligibility." The court rejected Killian's broader attacks: the Administrative Procedure Act's standards of review "do not apply to decisions by courts," so the Board does not act arbitrarily by following precedent; Killian "never argues that the standard runs afoul of the void-for-vagueness doctrine"; Alice and Mayo require the search for an "inventive concept"; and the Board's finding that the computer elements are conventional is reviewed for substantial evidence, supplied by the specification's statement that the method "may be performed by any suitable computer system."

What it changesThe attacks on the framework itself are closed at the Federal Circuit: an applicant cannot win by arguing that Alice is too vague to apply, that the Board acts arbitrarily by following it, or that "inventive concept" has no statutory basis, and a brief that spends its pages there has spent them on nothing. The Board's step two finding that a claim's additional elements are well-understood, routine and conventional is a finding of fact reviewed for substantial evidence, and a specification that says the method runs on any suitable computer system is by itself substantial evidence. For machine learning applications that means two things: strike the boilerplate that says the invention can run on any general-purpose computer, and build the record during prosecution, with declarations or cited literature, on why the specific training or inference mechanism was not conventional, because a conclusory appeal argument resting on evidence left out of the appendix is forfeited. Claim how the determination is made, not that it is made.

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Burbage Law is the practice of Jon Burbage, a registered patent attorney. 342 United States patents have issued from applications he wrote; the full list is on the Patents page. More about Jon Burbage.

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