Section 101 Jurisprudence Still Sound Post-Dobbs
Before Taranto, Clevenger, and Chen. Appeal from the Patent Trial and Appeal Board.
Summary: Section 101 jurisprudence is still sound post-Dobbs.
Killian applied for a patent related to a system and method “for determining eligibility for Social Security Disability Insurance [SSDI] benefits through a computer network.” The examiner found that the claims were directed to an 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. The Patent Trial and Appeal Board (“Board”) affirmed the rejection of all pending claims under 35 U.S.C. § 101. Killian appealed and the Federal Circuit affirmed the Board’s decision.
On appeal, Killian argued that Dobbs v. Jackson Women’s Health Organization, 142 S. Ct. 2228 (2022), undermined the Supreme Court’s § 101 jurisprudence. Killian asserted that because Alice, Mayo, Bilski, Parker, and Benson were “mere policy preferences,” they were constitutionally unsound post-Dobbs. Killian also argued that the Alice/Mayo analysis is so vague that the Board’s decision holding a claim patent ineligible is arbitrary and capricious under the Administrative Procedure Act. The Federal Circuit disagreed and walked through the contrary prior jurisprudence in the field. The Federal Circuit also noted its own judicial limitations, which prevented it from addressing many of the issues Killian raised.
On the substance of Killian’s claims, the Federal Circuit agreed with the Board and found that the claims are directed to “collection of information, comprehending the meaning of that collected information, and indication of the results, all on a generic computer network operating in its normal, expected manner.” The Federal Circuit stated that steps that “can be performed in the human mind, or by a human using a pen and paper” are unpatentable abstract mental processes, and implementing these abstract mental processes “on a generic computer does not save the claims from being directed to an abstract idea.” The Federal Circuit further pointed out that the application’s specification suggests “nothing technical exists in the nature of these steps” by stating that the invention “frees up assigned staff to perform more traditional duties."
Editor: Paul Stewart
Written by: Jeremiah S. Helm, Ph.D. & Mary Bao