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ARTICLE · 08 SEPTEMBER 2022

Federal Circuit Defends The Alice/Mayo Test

Finnegan, Henderson, Farabow, Garrett & Dunner LLP
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The '042 application is directed to a system and method for determining eligibility for social security disability insurance benefits through a computer network.

United StatesIntellectual Property
Yinan Liu, Ph.D.
Yinan Liu, Ph.D.
Ji-Hye (Christina) Yang
Ji-Hye (Christina) Yang
Elizabeth Ferrill
Elizabeth Ferrill
Author LinkedIn connections

In In re Killian, No. 2021-2113 (Fed. Cir. August 23, 2022), the Federal Circuit affirmed the PTAB's rejection of pending claims of U.S. Patent Application No. 14/450,042 ("'042 application") under 35 U.S.C. § 101.

The '042 application is directed to a system and method for determining eligibility for social security disability insurance benefits through a computer network. During prosecution, the examiner argued that all pending claims are directed to an abstract idea and lack any additional element beyond generic recitation of computer functionalities. The Board affirmed.

The Federal Circuit affirmed. At Alice step 1, the Federal Circuit held that the claims are 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 the claims at Alice step 2.

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