While there was basically no chance that the Federal Circuit would agree to an argument premised on the proposition that the standard laid out by its reviewing court (and applied by it) was incomprehensible, I think the Federal Circuit choosing to address that argument with a precedential opinion rather than affirming the board under rule 36 is interesting in and of itself. Even more is that the Federal Circuit acknowledged and responded to “Mr. Killian’s desire for ‘a single noncapricious definition or limiting principle’ for ‘abstract idea’ and ‘inventive concept.’” Thus, In re Killian not only shows that the Federal Circuit feels the need to respond to criticisms of the Alice/Mayo framework, it also shows what the Federal Circuit feels is the closest it can come to concrete definitions of the phrases “abstract idea” and “inventive concept” which are at the heart of the eligibility determination.

                Turning first to “abstract idea,” the Federal Circuit began by acknowledging that there is no single rule which could distinguish what was and was not an abstract idea.  It explained that such a rule did not exist because there were at least three different types of abstract ideas: (1) methods of organizing human activity, (2) claims to mental processes, and (3) claims to results rather than means of achieving them. It also said that it had provided guidance as to what constitutes an abstract idea in the form of cases which said that the abstract idea determination was made based on the claimed advance over the prior art, and cases which said that the intangibility of information meant that advance in the specified content of information were abstract. It finally turned specifically to software inventions, stating that, for that kind of invention eligibility “often” turns on whether the claims focus on “the specific asserted improvement in computer capabilities” or “on a process that qualifies as an ‘abstract idea’ for which computers are invoked merely as a tool.”

                The treatment of “inventive concept” was similar, with the Federal Circuit indicating that it had provided guidance, but stopping short of elaborating a clear definition. With respect to guidance, there was actually very little on offer, with the examples of guidance laid out by the Federal Circuit largely restating principles already laid out as “guidance” for what was an abstract idea. For instance, the first example of guidance in the discussion of “inventive concept” was that “methods that ‘improve[] an existing technological process’ include an inventive concept at step two.” However, the discussion of abstract ideas had already stated that the lack of “any particular assertedly inventive technology” would doom a claim to an invention where the improvement was information of specified content, and so it isn’t clear what would be added by treating an improvement to “an existing technological process” as an inventive concept.

                Ultimately, I don’t think the Federal Circuit’s explication of its “guidance” would be particularly satisfying to someone who, like the appellant in Killian, is frustrated by the current state of 101 caselaw. Indeed, the fact that the Federal Circuit could do no better than provide a non-exhaustive list of types of abstract ideas, then point to various past cases as “guidance” seems to confirm the ad-hoc and nature of contemporary subject matter eligibility analysis. I suspect that the Federal Circuit realized this, since it ended its discussion of “abstract idea” and “inventive concept” by explaining that, even if it was “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.” Hopefully, the Supreme Court will view this as an invitation to come up with a standard that a court couldn’t even hypothetically be persuaded is “insolubly unclear,” as otherwise I think the frustration felt by Mr. Killian (and many others) is likely only to get worse.

Disclaimer – “The statements and views expressed in this posting are my own and do not reflect those of my law firm, are intended for general informational purposes only, and do not constitute legal advice or a legal opinion.”