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 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 

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2 IN RE: KILLIAN

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;

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 reconsideration); 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 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;

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4 IN RE: KILLIAN

(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 

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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 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 

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 receiving treatment for developmental disabilities and/or mental illness; 

(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 . . .; 

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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, 

for at least one . . . data record of persons indicated 

as not receiving SSDI adult child benefits, comprising the steps of:

(c) caseworker identifying . . . parental 

and/or marital names and Social Security 

numbers . . . of the person . . .; 

(e) determining whether the person indicated in the . . . 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. 

Killian, 2021 WL 363335, at *6.

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IN RE: KILLIAN 7

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 (2014) (quoting Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).

In Alice, 573 U.S. at 218, and Mayo Collaborative Services 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 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 (internal quotation 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 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.

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8 IN RE: KILLIAN

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 (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 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 (determining whether a person is receiving SSDI benefits and determining 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 ‘observation, 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 performed 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 performed on a computer using conventional computer activity.” 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 gathering, analysis, and notification on generic computers to be 

directed to abstract ideas at Alice/Mayo step one. For example, in FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 

1089, 1093–94 (Fed. Cir. 2016), we held that claims directed to collecting information on access to a patient’s personal 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 specification 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 information. J.A. 67 ¶ 117 (stating that invention “frees up assigned 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 application’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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10 IN RE: KILLIAN

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 information” 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 follow 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 jurisprudence.

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 patent 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 principle” to replace the allegedly vague terms “abstract idea” 

and “inventive concept” used in Alice and Mayo. Appellant’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. Kappos, 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 Authority, 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 action.” 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 imprecision 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 Alice/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 decision making. But, as we have already explained, the APA 

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12 IN RE: KILLIAN

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 capricious” 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 judicial precedent. See Customedia, 951 F.3d at 1362. And we 

review any factual findings by the Board for substantial evidence. Id. But we may not announce that the Board acts 

arbitrarily and capriciously merely by applying binding judicial precedent, as urged by Mr. Killian. 

We turn next to Mr. Killian’s desire for “a single noncapricious 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 achieving the claimed result, see, e.g., Interval Licensing, 896 F.3d 

at 1345. 

Although there is no single, inflexible rule for the abstract 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 directed 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 asserted 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-ineligible concept.” See Elec. Power Grp., 830 F.3d at 1353. 

We have provided still further guidance for those “familiar class[es] of claims.” See id. For example, in the context 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 abstract idea. Ericsson Inc. v. TCL Commc’n Tech. Holdings 

Ltd., 955 F.3d 1317, 1327 (Fed. Cir. 2020) (quoting CyberSource, 654 F.3d at 1372). And we have explained that 

“[i]nformation as such is an intangible”; accordingly, “gathering and analyzing information of a specified content, 

then displaying the results” without “any particular assertedly 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 often turns on whether the claims focus on ‘the specific asserted 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 technological process” include an inventive concept at step two. BASCOM 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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14 IN RE: KILLIAN

U.S. at 221, 223). And claims that “recite a specific, discrete 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 technical solution beyond simply using generic computer concepts 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 until 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 considered 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 definitional 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: Deciding Appeals (1960)). Indeed, the Supreme Court has decided 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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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 settlement 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 narrowly 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 patent abstract ideas.”). In this case, nothing stops Mr. 

Killian from identifying any important distinctions between his claimed invention and claims we have analyzed 

in prior cases.

C 

Mr. Killian next argues that the search for an “inventive 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 unpersuasive, 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 inquiry, 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.’ ” (quoting 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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D 

Similarly, Mr. Killian argues that the “mental steps” 

doctrine has no foundation in modern patent law. Appellant’s Br. 46, 57–59. He asserts that, in Diamond v. Diehr, 

450 U.S. 175 (1981), and Bilski, the Supreme Court repudiated 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 mentally,” 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 (emphasis 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 directed to a process for curing synthetic rubber that incorporated 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 invention in the patent at issue. Compare id. at 193–94 (majority 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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while the dissent viewed the invention as “a method of using 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 overrule the mental steps doctrine. Nor has Mr. Killian pointed 

to any statement in Bilski that undermines a mental process 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 selecting information, by content or source, for collection, 

analysis, and display does nothing significant to differentiate a process from ordinary mental processes, whose implicit exclusion from § 101 undergirds the informationbased category of abstract ideas.”); In re Comiskey, 554 

F.3d 967, 979 (Fed. Cir. 2009) (“[M]ental processes—or processes of human thinking—standing alone are not patentable 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 evidence in the record. Appellant’s Br. 23. He refers to fiftyfive 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 Office adjudges everything in its § 101 decisions “in an evidentiary 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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18 IN RE: KILLIAN

But as the Board in this case properly found, substantial 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, conventional 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 readable 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 application’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 operations 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 implementation is not generally the sort of ‘additional featur[e]’ that provides any ‘practical assurance that the 

process is more than a drafting effort designed to monopolize the [abstract idea] itself.’ ” (quoting Mayo, 566 U.S. at 

77)). Further, “[m]erely requiring the selection and manipulation of information—to provide a ‘humanly comprehensible’ amount of information useful for users, . . . by itself 

does not transform the otherwise-abstract processes of information 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 application’s claims that a generic computer perform steps of “creating an electronic data record,” “indicating in the 

electronic data record whether the person is receiving SSDI 

adult child benefits,” “providing a caseworker display system,” “generating a data collection input screen,” “indicating 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, routine, 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) (“Relying 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 include 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 position.” Appellant’s Br. 12. We find that Mr. Killian forfeited any argument on appeal based on those fifty-five 

documents by failing to present anything more than a conclusory, 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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20 IN RE: KILLIAN

CONCLUSION

We have considered Mr. Killian’s remaining arguments 

and find them unpersuasive. For the foregoing reasons, we 

affirm the Board’s decision.

AFFIRMED

Case: 21-2113 Document: 38 Page: 20 Filed: 08/23/2022