Federal Circuit disposition — 21-2113

United States Court of Appeals
for the Federal Circuit
______________________
IN RE: JEFFREY A. KILLIAN,
Appellant
______________________
2021-2113
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. 14/450,042.
______________________
Decided: August 23, 2022
______________________
BURMAN YORK MATHIS , III, Law Office of Burman Y.
Mathis, Harper's Ferry, VA, argued for appellant.
MONICA BARNES L ATEEF , Office of the Solicitor, United
States Patent and Trademark Office, Alexandria, VA, ar-
gued for appellee Katherine K. Vidal. Also represented by
MARY L. K ELLY , T HOMAS W. K RAUSE, AMY J. N ELSON, F AR-
HEENA Y ASMEEN RASHEED.
______________________
Before T ARANTO, CLEVENGER , and CHEN, Circuit Judges.
CHEN, Circuit Judge.
Jeffrey A. Killian appeals from the decision of the Pa-
tent Trial and Appeal Board (Board) affirming the exam-
iner’s rejection of claims 1, 5–8, 12–15, 19, 20 and 22 (all
pending claims) of U.S. Patent Application No. 14/450,042
(’042 application) under 35 U.S.C. § 101. See Ex Parte
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IN RE: KILLIAN 2
Jeffrey A. Killian, No. 2020-003680, 2021 WL 363335
(P.T.A.B. Feb. 1, 2021). We affirm.
BACKGROUND
The ’042 application relates to a system and method
“for determining eligibility for Social Security Disability
Insurance [SSDI] benefits through a computer network.”
J.A. 45 ¶ 2. This process entails looking up information
from two sources: (1) a Federal Social Security database;
and (2) a State database containing records for patients re-
ceiving treatment for developmental disabilities or mental
illness. J.A. 47 ¶¶ 11–12. For those patients identified in
the State database as meeting certain criteria but not cur-
rently receiving SSDI benefits, the method uses relevant
information to determine if a given patient is entitled to
receive SSDI benefits. J.A. 47–48 ¶¶ 12–13. The specifi-
cation explains that once the relevant information is on
hand, “the automated system seamlessly carries out the
process of determining who is eligible for SSDI and who is
not, which frees up assigned staff to perform more tradi-
tional duties.” J.A. 67 ¶ 117.
Claim 1 is representative1:
A computerized method for determining overlooked
eligibility for social security disability insurance
(SSDI)/adult child benefits through a computer
network, the method comprising the steps of:
(a) providing a computer processor and a
computer readable media;
1 The Board treated claim 1 as representative. See
Ex Parte Jeffrey A. Killian, No. 2020-003680, 2021 WL
1784797, at *2, *5 (P.T.A.B. May 3, 2021) (denying recon-
sideration); Killian, 2021 WL 363335, at *4. On appeal,
Mr. Killian does not argue that it erred in doing so.
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IN RE: KILLIAN 3
(b) providing access to a Federal Social Se-
curity database through the computer net-
work, wherein the Federal Social Security
database provides records containing infor-
mation relating to a person’s status of SSDI
adult child benefits and/or parental and/or
marital information relating to SSDI adult
child benefit eligibility;
(c) providing access to a State database
through the network, wherein the State da-
tabase provides records containing infor-
mation relating to persons receiving
treatment for developmental disabilities
and/or mental illness from a State licensed
care facility;
(d) selecting at least one person from the
State database who is identified as receiv-
ing treatment for developmental disabili-
ties and/or mental illness;
(e) creating an electronic data record com-
prising information relating to at least the
identity of the person and social security
number, wherein the electronic data record
is recorded on the computer readable me-
dia;
(f) retrieving the person’s Federal Social
Security record containing information re-
lating to the person’s status of SSDI adult
child benefits through the network;
(g) determining whether the person is re-
ceiving SSDI adult child benefits based on
the SSDI status information contained
within the Federal Social Security data-
base record through the computer network;
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IN RE: KILLIAN 4
(h) indicating in the electronic data record
whether the person is receiving SSDI adult
child benefits or is not receiving SSDI adult
child benefits;
for at least one electronic data record of persons in-
dicated as not receiving SSDI adult child benefits,
comprising the steps of:
(a) providing a caseworker display system;
(b) generating a data collection input
screen display to the caseworker display
system relating to the electronic data rec-
ord of persons indicated as not receiving
SSDI adult child benefits;
(c) caseworker identifying and inputting
parental and/or marital names and Social
Security numbers into the electronic data
record of the person indicated in the elec-
tronic data record as not receiving SSDI
adult child benefits;
(d) retrieving parental and/or marital So-
cial Security record(s) from the Federal So-
cial Security database through the
computer network in order to identify in-
formation for determining eligibility for
SSDI adult child benefits;
(e) determining whether the person indi-
cated in the electronic data record is eligi-
ble for receiving SSDI adult child benefits
based on the identified information for de-
termining eligibility of SSDI adult child
benefits and current SSDI benefit legal re-
quirements; and
(f) indicating in the electronic data record
whether the person is eligible for SSDI
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IN RE: KILLIAN 5
adult child benefits or is not eligible for
SSDI adult child benefits.
J.A. 30–31.
The examiner rejected all pending claims of the ’042
application under § 101, finding that they were directed to
the abstract idea of “determining eligibility for social secu-
rity disability insurance . . . benefits” and lacked additional
elements amounting to significantly more than the ab-
stract idea because the additional elements were simply ge-
neric recitations of generic computer functionalities. J.A.
89. Mr. Killian appealed to the Board, which affirmed the
examiner’s rejection and designated its affirmance as a
new ground for rejection under 37 C.F.R. § 41.50(b).
Killian, 2021 WL 363335, at *1. The Board found that the
claims are directed to the patent-ineligible abstract idea of
“a search algorithm for identifying people who may be eli-
gible for SSDI benefits they are not receiving.” Id. at *6. It
determined that the essential steps recited by claim 1—the
“selecting” and “determining” limitations2—can be
2 More specifically, the essential steps identified by
the Board are:
(d) selecting at least one person from the
State database who is identified as receiv-
ing treatment for developmental disabili-
ties and/or mental illness;
(g) determining whether the person is re-
ceiving SSDI adult child benefits based on
the SSDI status information contained
within the Federal Social Security data-
base record . . .;
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IN RE: KILLIAN 6
performed in the human mind and are thus “an abstract
mental process.” Id. at *6–7. It then found that the re-
maining steps were merely directed to data gathering or
data output and were therefore appropriately categorized
as “insignificant extra-solution activity” or “primitive com-
puter operations found in any computer system” “which do
not integrate the processes into a ‘practical application,’
and which do not recite an ‘inventive concept.’ ” Id. at *8–
9.
The Board denied Mr. Killian’s request for rehearing.
Killian, 2021 WL 1784797, at *6.
Mr. Killian appeals. We have jurisdiction under 28
U.S.C. § 1295(a)(4)(A).
D ISCUSSION
Patent eligibility under § 101 is a question of law that
may implicate underlying issues of fact. In re Marco Gul-
denaar Holding B.V., 911 F.3d 1157, 1159 (Fed. Cir. 2018)
(citing Interval Licensing LLC v. AOL, Inc., 896 F.3d 1335,
for at least one . . . data record of persons indicated
as not receiving SSDI adult child benefits, compris-
ing the steps of:
(c) caseworker identifying . . . parental
and/or marital names and Social Security
numbers . . . of the person . . .;
(e) determining whether the person indi-
cated in the . . . data record is eligible for
receiving SSDI adult child benefits based
on the identified information for determin-
ing eligibility of SSDI adult child benefits
and current SSDI benefit legal require-
ments.
Killian, 2021 WL 363335, at *6.
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IN RE: KILLIAN 7
1342 (Fed. Cir. 2018)). We review the Board’s ultimate con-
clusion on patent eligibility de novo. Id. We review any
underlying factual findings for substantial evidence. Cus-
tomedia Techs., LLC v. Dish Network Corp., 951 F.3d 1359,
1362 (Fed. Cir. 2020).
Section 101 provides “[w]hoever invents or discovers
any new and useful process, machine, manufacture, or
composition of matter, or any new and useful improvement
thereof, may obtain a patent therefor, subject to the condi-
tions and requirements of” Title 35 of the United States
Code. The Supreme Court has long held that “[l]aws of na-
ture, natural phenomena, and abstract ideas are not pa-
tentable” under § 101. Alice Corp. Pty. v. CLS Bank Int’l,
573 U.S. 208, 216 (2014) (quoting Ass’n for Molecular Pa-
thology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
In Alice, 573 U.S. at 218, and Mayo Collaborative Ser-
vices v. Prometheus Laboratories, Inc., 566 U.S. 66, 77–78
(2012), the Supreme Court explicated a two-step test for
determining whether claimed subject matter falls within
one of the judicial exceptions to patent eligibility. First, we
“determine whether the claims at issue are directed to a
patent-ineligible concept,” such as an abstract idea. Alice,
573 U.S. at 218. Second, if the claims are directed to a pa-
tent-ineligible concept, we “examine the elements of the
claim to determine whether it contains an inventive con-
cept sufficient to transform the claimed abstract idea into
a patent-eligible application.” Id. at 221 (internal quota-
tion marks omitted) (quoting Mayo, 566 U.S. at 72, 80).
The claims of the ’042 application do not pass this
threshold test. As the Board found, they are directed to the
patent-ineligible abstract mental process of “a search algo-
rithm for identifying people who may be eligible for SSDI
benefits they are not receiving.” See Killian, 2021 WL
363335, at *6.
We have held that mental processes are abstract ideas
under Alice/Mayo step one. See, e.g., CyberSource Corp. v.
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IN RE: KILLIAN 8
Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011)
(“[C]omputational methods which can be performed en-
tirely in the human mind are the types of methods that em-
body the ‘basic tools of scientific and technological work’
that are free to all men and reserved exclusively to none.”
(quoting Gottschalk v. Benson, 409 U.S. 63, 67 (1972)); see
also Elec. Power Grp., LLC v. Alstom, S.A., 830 F.3d 1350,
1354 (Fed. Cir. 2016) (“[W]e have treated analyzing infor-
mation by steps people go through in their minds, or by
mathematical algorithms, without more, as essentially
mental processes within the abstract-idea category.” (cita-
tions omitted)). That is, where the “focus of the claimed
advance over the prior art” shows that “the claim’s ‘charac-
ter as a whole’ is directed to” steps that “can be performed
in the human mind, or by a human using a pen and paper”
the claim is for a patent-ineligible abstract idea. Affinity
Labs of Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1257
(Fed. Cir. 2016) (quoting Elec. Power Grp., 830 F.3d at
1353) (other citations omitted); CyberSource, 654 F.3d at
1372.
The thrust of the ’042 application’s representative
claim 1 is the collection of information from various sources
(a Federal database, a State database, and a caseworker)
and understanding the meaning of that information (deter-
mining whether a person is receiving SSDI benefits and de-
termining whether they are eligible for benefits under the
law). See J.A. 38–39. The Board correctly concluded that
“[t]hese steps can be performed by a human, using ‘obser-
vation, evaluation, judgment, [and] opinion,’ because they
involve making determinations and identifications, which
are mental tasks humans routinely do.” Killian, 2021 WL
363335, at *6 (citation omitted).
That these steps, with the exception of the step of the
caseworker obtaining additional information, are per-
formed on a generic computer does not save the claims from
being directed to an abstract idea. We have distinguished
between claims “directed to an improvement in the
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IN RE: KILLIAN 9
functioning of a computer,” versus those, like the claims at
issue here, that simply recite “generalized steps to be per-
formed on a computer using conventional computer activ-
ity.” See In re TLI Commc’ns LLC Pat. Litig., 823 F.3d 607,
612 (Fed. Cir. 2016) (quoting Enfish, LLC v. Microsoft
Corp., 822 F.3d 1327, 1338 (Fed. Cir. 2016)).
We have found similar claims pertaining to data gath-
ering, analysis, and notification on generic computers to be
directed to abstract ideas at Alice/Mayo step one. For ex-
ample, in FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d
1089, 1093–94 (Fed. Cir. 2016), we held that claims di-
rected to collecting information on access to a patient’s per-
sonal health information, analyzing that information to
detect indicia of improper access, and notifying a user if
improper access had occurred were directed to a “mental
process within the abstract idea category.” In Electric
Power Group, we held that claims for a method of detecting
events on an interconnected power grid with steps reciting
receipt of data from various sources, interpretation of that
data, and display of the results were directed to an abstract
idea. Elec. Power Grp., 830 F.3d at 1351–54. So too, here,
Mr. Killian’s claims must fail Alice/Mayo step one as they
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. As the application’s spec-
ification suggests, nothing technical exists in the nature of
these steps; they could be performed by a person reading
and comprehending the meaning of the recited infor-
mation. J.A. 67 ¶ 117 (stating that invention “frees up as-
signed staff to perform more traditional duties”).
At Alice/Mayo step two, we agree with the Board that
there is no inventive concept to be found in the ’042 appli-
cation’s claims. A claim does not pass muster at step two
by “[s]tating an abstract idea while adding the words ‘apply
it with a computer.’ ” Alice, 573 U.S. at 223. The additional
steps in representative claim 1 do no more than instruct
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IN RE: KILLIAN 10
the practitioner to perform the abstract steps of gathering
information, determining if a person is receiving benefits
or is eligible for benefits under the law, and displaying the
results of that analysis, all on a generic computer. As in
Electric Power Group, 830 F.3d at 1355, the claims here do
not detail how the computer should go about determining
eligibility for benefits, beyond saying that the computer
should determine eligibility based “on the identified infor-
mation” and “current SSDI benefit legal requirements.”
J.A. 31. That is, the claims require comparing information
against eligibility requirements—the same process that
humans seeking to determine benefit eligibility must fol-
low either with or without a computer. See FairWarning¸
839 F.3d at 1095.
Mr. Killian raises myriad arguments on appeal. Most
of his arguments are directed not to the specifics of the
claims of the ’042 application but to the corpus of § 101 ju-
risprudence.
A
Mr. Killian first argues that the standard promulgated
in Alice and Mayo is indefinite—so poorly defined that it
renders all court and Board decisions finding a claim pa-
tent ineligible under the Alice/Mayo standard arbitrary
and capricious under the Administrative Procedure Act
(APA), 5 U.S.C. § 706(2)(A), and the Due Process Clause of
the Fifth Amendment. Appellant’s Br. 20–22, 26–29. He
seeks “a single non-capricious definition or limiting princi-
ple” to replace the allegedly vague terms “abstract idea”
and “inventive concept” used in Alice and Mayo. Appel-
lant’s Reply Br. 5–7. After the Supreme Court’s decision in
Dobbs v. Jackson Women’s Health Organization, 142 S. Ct.
2228 (2022), Mr. Killian submitted a supplemental filing
arguing that, under that case, the Supreme Court’s § 101
jurisprudence as expounded in Alice; Mayo; Bilski v. Kap-
pos, 561 U.S. 593 (2010); Parker v. Flook, 437 U.S. 584
(1978); and Benson are “mere policy preferences” that
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IN RE: KILLIAN 11
“stand on exceptionally weak constitutional grounds” and
should be reconsidered. Citation of Supplemental Author-
ity, ECF No. 37. We do not find Mr. Killian’s arguments
persuasive.
We first address Mr. Killian’s assertion that our own
decisions applying the Alice/Mayo standard are somehow
improper under the APA. As a preliminary matter, we note
that the standards of review established in the APA, 5
U.S.C. § 706, do not apply to decisions by courts, such as
our own. The APA governs judicial review of “agency ac-
tion.” 5 U.S.C. § 704. Courts are not “agencies” under that
statute. 5 U.S.C. § 701(b)(1)(B).
Although Mr. Killian alludes to Fifth Amendment Due
Process Clause violations stemming from the alleged im-
precision of the Alice/Mayo standard, he never argues that
the standard runs afoul of the void-for-vagueness doctrine.
Nor could he, as vagueness as applied to the particular case
is a prerequisite to establishing facial vagueness. Bowling
v. McDonough, 38 F.4th 1051, 1061 (Fed. Cir. 2022). While
there are close cases under the Alice/Mayo standard, the
’042 application does not present such a close case—as we
have already explained, the claims of the ’042 application
are clearly patent ineligible in view of our precedent. We
conclude that Mr. Killian has not shown that our decisions
applying the Alice/Mayo standard are improper.
We turn now to Mr. Killian’s allegation that all Board
decisions finding a claim patent ineligible under the Al-
ice/Mayo standard are arbitrary and capricious under the
APA. Board final decisions are reviewable under the APA.
5 U.S.C. § 704; 35 U.S.C. § 141(a). At heart, Mr. Killian
attacks the Supreme Court’s interpretation of § 101, which
it determined includes an implicit exception, as well as the
common law standard promulgated by the Court under
that interpretation—arguing that the vagueness of those
decisions has led to arbitrary and capricious agency deci-
sion making. But, as we have already explained, the APA
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IN RE: KILLIAN 12
does not empower us to review decisions of “the courts of
the United States” because they are not agencies. 5 U.S.C.
§ 701(b)(1)(B). We may not turn the “arbitrary and capri-
cious” standard of the APA back onto the Supreme Court
or our own court. As we have already done for the claims
of the ’042 application, we review de novo the Board’s legal
determinations under § 101 and the judicial exceptions in
individual cases for compliance with the statute and judi-
cial precedent. See Customedia, 951 F.3d at 1362. And we
review any factual findings by the Board for substantial ev-
idence. Id. But we may not announce that the Board acts
arbitrarily and capriciously merely by applying binding ju-
dicial precedent, as urged by Mr. Killian.
We turn next to Mr. Killian’s desire for “a single non-
capricious definition or limiting principle” for “abstract
idea” and “inventive concept.” Appellant’s Reply Br. 5–7.
As to the abstract idea exception, no single, hard-and-fast
rule that automatically outputs an answer in all contexts
exists because there are different types of abstract ideas,
including (1) methods of organizing human activity, such
as “fundamental economic practice[s],” see, e.g., Alice, 573
U.S. at 220–21; Bilski, 561 U.S. at 611; (2) claims to mental
processes, even if performed on a computer rather than in
the human mind, see, e.g., Benson, 409 U.S. at 67, 71–72;
and (3) claims to results rather than to a means of achiev-
ing the claimed result, see, e.g., Interval Licensing, 896 F.3d
at 1345.
Although there is no single, inflexible rule for the ab-
stract idea inquiry, our court has provided guidance as to
what constitutes an abstract idea. We have explained that,
first, “[t]he ‘abstract idea’ step of the inquiry calls upon us
to look at the ‘focus of the claimed advance over the prior
art’ to determine if the claim’s ‘character as a whole’ is di-
rected to excluded subject matter.” Affinity Labs, 838 F.3d
at 1257 (quoting Elec. Power Grp., 830 F.3d at 1353) (other
citations omitted). Once we identify the “focus of the as-
serted claims,” we may consider whether the claims “fall
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IN RE: KILLIAN 13
into a familiar class of claims ‘directed to’ a patent-ineligi-
ble concept.” See Elec. Power Grp., 830 F.3d at 1353.
We have provided still further guidance for those “fa-
miliar class[es] of claims.” See id. For example, in the con-
text of claims to results, we have explained that claims that
“simply demand[] the production of a desired result . . .
without any limitation on how to produce that result” are
directed to an abstract idea. Interval Licensing, 896 F.3d
at 1345. In the context of mental processes, such as that
claimed by the ’042 application, we have explained that if
a claim’s steps “can be performed in the human mind, or by
a human using a pen and paper,” and the elements in the
claim do not contain a sufficient inventive concept under
Alice/Mayo step two, the claim is for a patent-ineligible ab-
stract idea. Ericsson Inc. v. TCL Commc’n Tech. Holdings
Ltd., 955 F.3d 1317, 1327 (Fed. Cir. 2020) (quoting Cyber-
Source, 654 F.3d at 1372). And we have explained that
“[i]nformation as such is an intangible”; accordingly, “gath-
ering and analyzing information of a specified content,
then displaying the results” without “any particular assert-
edly inventive technology for performing those functions”
is an abstract idea. Elec. Power Grp., 830 F.3d at 1353–54.
We have provided further guidance for “cases involving
software innovations,” where the abstract idea “inquiry of-
ten turns on whether the claims focus on ‘the specific as-
serted improvement in computer capabilities . . . or,
instead, on a process that qualifies as an “abstract idea” for
which computers are invoked merely as a tool.’ ” Finjan,
Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299, 1303 (Fed. Cir.
2018) (quoting Enfish, 822 F.3d at 1335–36).
Our case law also provides guidance as to “inventive
concept,” particularly in the context of claims for computer
implementations of abstract ideas. We have explained that
claims for methods that “improve[] an existing technologi-
cal process” include an inventive concept at step two. BAS-
COM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827
F.3d 1341, 1350–51 (Fed. Cir. 2016) (quoting Alice, 573
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IN RE: KILLIAN 14
U.S. at 221, 223). And claims that “recite a specific, dis-
crete implementation of the abstract idea” rather than
“preempt[ing] all ways of” achieving an abstract idea using
a computer may include an inventive concept. Id. at 1350.
But claims to “an abstract idea implemented on generic
computer components, without providing a specific tech-
nical solution beyond simply using generic computer con-
cepts in a conventional way” do not pass muster at step
two. Id. at 1352. “Neither ‘attempting to limit the use of
[the idea] to a particular technological environment’ nor a
‘wholly generic computer implementation’ is sufficient.”
buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1354 (Fed.
Cir. 2014) (quoting Alice, 573 U.S. at 222, 223).
Even if we were persuaded by Mr. Killian’s argument
that the Alice/Mayo framework is insolubly unclear, both
this court and the Board would still be bound to follow the
Supreme Court’s § 101 jurisprudence as best we can as we
must follow the Supreme Court’s precedent unless and un-
til it is overruled by the Supreme Court. See Rodriguez de
Quijas v. Shearson/Am. Exp., Inc., 490 U.S. 477, 484
(1989).
B
Mr. Killian argues that comparing his case to other
cases in which this court and the Supreme Court consid-
ered issues of patent eligibility under § 101 violates his due
process rights because he had no opportunity to appear in
those other cases. Appellant’s Br. 64–66. We disagree.
Examination of earlier cases “is the classic common law
methodology for creating law when a single governing def-
initional context is not available.” Amdocs (Israel) Ltd. v.
Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016)
(citing Karl N. Llewellyn, The Common Law Tradition: De-
ciding Appeals (1960)). Indeed, the Supreme Court has de-
cided cases arising under § 101 through comparison to its
prior opinions. Alice, 573 U.S. at 221 (“[W]e need not labor
to delimit the precise contours of the ‘abstract ideas’
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IN RE: KILLIAN 15
category in this case. It is enough to recognize that there
is no meaningful distinction between the concept of risk
hedging in Bilski and the concept of intermediated settle-
ment at issue here.”); Bilski, 561 U.S. at 609 (“Rather than
adopting categorical rules that might have wide-ranging
and unforeseen impacts, the Court resolves this case nar-
rowly on the basis of this Court’s decisions in Benson,
Flook, and Diehr, which show that petitioner’s claims are
not patentable processes because they are attempts to pa-
tent abstract ideas.”). In this case, nothing stops Mr.
Killian from identifying any important distinctions be-
tween his claimed invention and claims we have analyzed
in prior cases.
C
Mr. Killian next argues that the search for an “in-
ventive concept” at the second step of the Alice/Mayo
framework is improper because Congress did away with an
“invention” requirement when it enacted the Patent Act of
1952. Appellant’s Br. 28–36. This argument is unpersua-
sive, because, as an initial matter, Mr. Killian has not even
established the premise of his argument that “inventive
concept” is the same thing as the “invention” requirement
which he attributes to Hotchkiss v. Greenwood, 52 U.S. (11
How.) 248, 267 (1850). Unlike Hotchkiss, our Alice/Mayo
precedent has never required, for an inventive concept in-
quiry, an examination of whether the “degree of skill and
ingenuity” expressed in the claimed invention is beyond
that possessed by one or ordinary skill in the art. See id.
Furthermore, the Supreme Court has instructed that we
are required, at step two, to look for an inventive concept.
Alice, 573 U.S. at 217–18 (“We have described step two of
this analysis as a search for an ‘inventive concept.’ ” (quot-
ing Mayo, 566 U.S. at 72–73)). And, thus, search for an
inventive concept we must. See Rodriguez de Quijas, 490
U.S. at 484.
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IN RE: KILLIAN 16
D
Similarly, Mr. Killian argues that the “mental steps”
doctrine has no foundation in modern patent law. Appel-
lant’s Br. 46, 57–59. He asserts that, in Diamond v. Diehr,
450 U.S. 175 (1981), and Bilski, the Supreme Court repu-
diated that doctrine. Appellant’s Br. 46. This argument is
plainly incorrect.
The Supreme Court has long held that mental steps fall
within the patent-ineligible category of abstract ideas. For
example, in Benson, the Supreme Court found ineligible
claims directed to the conversion of binary-coded decimal
numerals to pure binary numerals that “can be done men-
tally,” even though “[t]he method sought to be patented
varies the ordinary arithmetic steps a human would use.”
Benson, 409 U.S. at 67, 71–72. In Mayo, the Supreme
Court more recently reiterated the judicial-exception
standard from Benson that “[p]henomena of nature, though
just discovered, mental processes, and abstract intellectual
concepts are not patentable.” Mayo, 566 U.S. at 71 (em-
phasis added) (quoting Benson, 409 U.S. at 67).
The Supreme Court did not hold in Diehr, Bilski, or any
other case that “steps performed in a computer are not
‘mental steps’ even if the steps performed in the computer
are identical to steps that could theoretically be performed
by a human mind,” as Mr. Killian contends. Appellant’s
Br. 46. In Diehr, the Supreme Court held that claims di-
rected to a process for curing synthetic rubber that incor-
porated steps using a mathematical formula and a digital
computer were patent eligible. Diehr, 450 U.S. at 177,
192–93. And the disagreement between the majority and
the dissent was not over the status and scope of the mental
steps doctrine, but over the essence of the claimed inven-
tion in the patent at issue. Compare id. at 193–94 (major-
ity opinion), with id. at 205 (Stevens, J., dissenting). The
majority described the claimed invention as “a process for
curing synthetic rubber,” id. at 177 (majority opinion),
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IN RE: KILLIAN 17
while the dissent viewed the invention as “a method of us-
ing a digital computer to determine the amount of time that
a rubber molding press should remain closed during the
synthetic rubber-curing process,” id. at 208 (Stevens, J.,
dissenting). At bottom, Diehr did not comment on or over-
rule the mental steps doctrine. Nor has Mr. Killian pointed
to any statement in Bilski that undermines a mental pro-
cess as one of the judicial exceptions; after an independent
review, we find nothing in that opinion to that effect.
Further, we are bound by our precedential decisions
holding that steps capable of performance in the human
mind are, without more, patent-ineligible abstract ideas.
See, e.g., Elec. Power Grp., 830 F.3d at 1355 (“[M]erely se-
lecting information, by content or source, for collection,
analysis, and display does nothing significant to differenti-
ate a process from ordinary mental processes, whose im-
plicit exclusion from § 101 undergirds the information-
based category of abstract ideas.”); In re Comiskey, 554
F.3d 967, 979 (Fed. Cir. 2009) (“[M]ental processes—or pro-
cesses of human thinking—standing alone are not patent-
able even if they have practical application.”); see also
CyberSource, 654 F.3d at 1372.
E
Mr. Killian argues that whether a claimed process is
well-understood, routine, and conventional is necessarily a
factual inquiry requiring the finder of fact to consult all ev-
idence in the record. Appellant’s Br. 23. He refers to fifty-
five documents allegedly before the examiner and Board
that he claims provide evidence of the patent eligibility of
the ’042 application’s claims. Id. at 12; Appellant’s Reply
Br. 12. And he asserts that the Patent and Trademark Of-
fice adjudges everything in its § 101 decisions “in an evi-
dentiary vacuum” and that “[t]here is no substantial
evidence on the record to support the present rejection.”
Appellant’s Br. 63.
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IN RE: KILLIAN 18
But as the Board in this case properly found, substan-
tial evidence from Mr. Killian’s application supports its
finding that the additional elements of representative
claim 1 do not add “a specific limitation or combination of
limitations that are not well-understood, routine, conven-
tional activity in the field, which would be considered
‘something more’ than the judicial exception.” Killian,
2021 WL 363335, at *9. Specifically, the Board found that
the additional elements of claim 1—beyond the abstract
idea of determining entitlement to certain SSDI benefits—
are “providing a computer processor and a computer read-
able media” and various references throughout the claim
indicating that the steps are intended to be performed on a
computer, such as “through the computer network,”
“providing a caseworker display system,” and “electronic
(data record).” Id. at *8. The Board, quoting the ’042 ap-
plication’s specification, found that the claimed method
“may be performed by any suitable computer system.” Id.
at *8 (quoting J.A. 52 ¶ 42 and citing J.A. 52 ¶ 41). The
Board explained that the “operations of storing, analyzing,
receiving, and writing data are primitive computer opera-
tions found in any computer system.” Id. (citing In re Katz
Interactive Call Processing Pat. Litig., 639 F.3d 1303, 1316
(Fed. Cir. 2011)).
As the Supreme Court has explained, generic computer
functions, performed on, as the application itself admits,
any generic computer, do not provide an inventive concept.
Alice, 573 U.S. at 223–24 (“[W]holly generic computer im-
plementation is not generally the sort of ‘additional fea-
tur[e]’ that provides any ‘practical assurance that the
process is more than a drafting effort designed to monopo-
lize the [abstract idea] itself.’ ” (quoting Mayo, 566 U.S. at
77)). Further, “[m]erely requiring the selection and manip-
ulation of information—to provide a ‘humanly comprehen-
sible’ amount of information useful for users, . . . by itself
does not transform the otherwise-abstract processes of in-
formation collection and analysis.” Elec. Power Grp., 830
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IN RE: KILLIAN 19
F.3d at 1355. Thus, the requirements of the ’042 applica-
tion’s claims that a generic computer perform steps of “cre-
ating an electronic data record,” “indicating in the
electronic data record whether the person is receiving SSDI
adult child benefits,” “providing a caseworker display sys-
tem,” “generating a data collection input screen,” “indicat-
ing in the electronic data record whether the person is
eligible for SSDI adult child benefits,” and similar generic
data tasks are not a transformative inventive concept.
Because the ’042 application’s specification admits that
the computer, which the Board correctly identified as the
additional element of the claims, is well-understood, rou-
tine, and conventional, no further evidence is needed. See
Berkheimer v. HP Inc., 890 F.3d 1369, 1371 (Fed. Cir. 2018)
(Moore, J., concurring in denial of rehearing en banc) (“Re-
lying on the specification alone may be appropriate where,
as in Mayo, the specification admits as much.” (citing
Mayo, 566 U.S. at 79)).
Finally, while Mr. Killian refers, rather obliquely, to
fifty-five documents allegedly presented to the examiner
and the Board, Mr. Killian does not explain on appeal what
specifically these fifty-five documents show, nor did he in-
clude them in the joint appendix. In his opening brief, Mr.
Killian said about these documents only that “there are
fifty-five separate documents of unquestioned veracity and
efficacy entered into evidence that support Appellant’s po-
sition.” Appellant’s Br. 12. We find that Mr. Killian for-
feited any argument on appeal based on those fifty-five
documents by failing to present anything more than a con-
clusory, skeletal argument. See SmithKline Beecham
Corp. v. Apotex Corp., 439 F.3d 1312, 1320 (Fed. Cir. 2006)
(explaining that a party forfeits undeveloped arguments on
appeal).
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IN RE: KILLIAN 20
CONCLUSION
We have considered Mr. Killian’s remaining arguments
and find them unpersuasive. For the foregoing reasons, we
affirm the Board’s decision.
AFFIRMED
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