In re Killian

• Decision Date: 23 August 2022
• Docket Number: 2021-2113
• Citation: 45 F.4th 1373
• Parties: IN RE: Jeffrey A. KILLIAN, Appellant
• Court: U.S. Court of Appeals — Federal Circuit

45 F.4th 1373

IN RE: Jeffrey A. KILLIAN, Appellant

2021-2113

United States Court of Appeals, Federal Circuit.

Decided: August 23, 2022

Burman York Mathis, III, Law Office of Burman Y. Mathis, Harper's Ferry, VA, argued for appellant.

Monica Barnes Lateef, Office of the Solicitor, United States Patent and Trademark Office, Alexandria, VA, argued for appellee Katherine K. Vidal. Also represented by Mary L. Kelly, Thomas W. Krause, Amy J. Nelson, Farheena Yasmeen Rasheed.

Before Taranto, Clevenger, and Chen, Circuit Judges.

Chen, Circuit Judge.

Jeffrey A. Killian appeals from the decision of the Patent Trial and Appeal Board (Board) affirming the examiner'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 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 receiving 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 currently 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 specification 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 traditional 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;

(b) providing access to a Federal Social Security database through the computer network, wherein the Federal Social Security database provides records containing information 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 database provides records containing information 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 receiving treatment for developmental disabilities and/or mental illness;

(e) creating an electronic data record comprising 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 media;

(f) retrieving the person's Federal Social Security record containing information relating to the person's status of SSDI adult child benefits through the network;

(g) determining whether the person is receiving SSDI adult child benefits based on the SSDI status information contained within the Federal Social Security database record through the computer network;

(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 indicated 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 record 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 electronic data record as not receiving SSDI adult child benefits;

(d) retrieving parental and/or marital Social Security record(s) from the Federal Social Security database through the computer network in order to identify information for determining eligibility for SSDI adult child benefits;

(e) determining whether the person indicated in the electronic data record is eligible for receiving SSDI adult child benefits based on the identified information for determining eligibility of SSDI adult child benefits and current SSDI benefit legal requirements; and

(f) indicating in the electronic data record whether the person is eligible for SSDI 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 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. 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 eligible 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 performed in the human mind and are thus "an abstract mental process." Id. at *6–7. It then found that the remaining steps were merely directed to data gathering or data output and were therefore appropriately categorized as "insignificant extra-solution activity" or "primitive computer 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).

DISCUSSION

Patent eligibility under § 101 is a question of law that may implicate underlying issues of fact. In re Marco Guldenaar Holding B.V. , 911 F.3d 1157, 1159 (Fed. Cir. 2018) (citing Interval Licensing LLC v. AOL, Inc. , 896 F.3d 1335, 1342 (Fed. Cir. 2018) ). We review the Board's ultimate conclusion on patent eligibility de novo. Id. We review any underlying factual findings for substantial evidence. Customedia 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 conditions and requirements of" Title 35 of the United States Code. The Supreme Court has long held that "[l]aws of nature, natural phenomena, and abstract ideas are not patentable" under § 101. Alice Corp. Pty. v. CLS Bank Int'l , 573 U.S. 208, 216, 134 S.Ct. 2347, 189 L.Ed.2d 296 (2014) (quoting Ass'n for Molecular Pathology v. Myriad Genetics, Inc. , 569 U.S. 576, 589, 133 S.Ct. 2107, 186 L.Ed.2d 124 (2013) ).

In Alice , 573 U.S. at 218, 134 S.Ct. 2347, and Mayo Collaborative Services v. Prometheus Laboratories, Inc. , 566 U.S. 66, 77–78, 132 S.Ct. 1289, 182 L.Ed.2d 321 (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, 134 S.Ct. 2347. Second, if the claims are directed to a patent-ineligible concept, we "examine the elements of the claim to determine whether it contains an inventive concept sufficient to transform the claimed abstract idea into a patent-eligible application." Id. at 221, 134 S.Ct. 2347 (internal quotation marks omitted) (quoting Mayo , 566 U.S. at 72, 80, 132 S.Ct. 1289 ).

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 algorithm 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. Retail Decisions, Inc. , 654 F.3d 1366, 1373 (Fed. Cir. 2011) ("[C]omputational methods which can be performed entirely in the human mind are the types of methods that embody 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, 93 S.Ct. 253, 34 L.Ed.2d 273 (1972) ); see also Elec. Power Grp., LLC v. Alstom, S.A. , 830 F.3d 1350, 1354 (Fed. Cir. 2016) ("[W]e have treated analyzing information by steps people go through in their minds, or by mathematical algorithms, without more, as essentially mental processes within the abstract-idea category." (citations omitted)). That is, where the "focus of the claimed advance over the prior art" shows that "the claim's ‘character 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...