In Re MCFADDEN

• Court: Court of Appeals for the Federal Circuit
• Decided: April 7, 2026
• Docket: 25-1834
• Status: Unpublished

Opinion

Case: 25-1834 Document: 30 Page: 1 Filed: 04/07/2026

NOTE: This disposition is nonprecedential.

United States Court of Appeals for the Federal Circuit ______________________

IN RE: BRIAN MCFADDEN, Appellant ______________________

2025-1834 ______________________

Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. 15/891,363. ______________________

Decided: April 7, 2026 ______________________

BRIAN MCFADDEN, Miami, FL, pro se.

OMAR FAROOQ AMIN, Office of the Solicitor, United States Patent and Trademark Office, Alexandria, VA, for appellee John A. Squires. Also represented by KAKOLI CAPRIHAN, NICHOLAS THEODORE MATICH, IV, ROBERT J. MCMANUS.

______________________

Before REYNA, HUGHES, and CUNNINGHAM, Circuit Judges. PER CURIAM. In February 2018, Brian David McFadden filed patent application No. 15/891,363. During prosecution, the exam- iner rejected claim 14 of Mr. McFadden’s application as Case: 25-1834 Document: 30 Page: 2 Filed: 04/07/2026

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(1) anticipated under 35 U.S.C. § 102 by Mr. McFadden’s previous patent application publication No. 2015/0088879 and (2) directed to ineligible subject matter under 35 U.S.C. § 101. The Patent Trial and Appeal Board af- firmed the examiner’s rejection on both grounds. For the following reasons, we affirm. I A Patent application No. 15/891,363 (the ’363 applica- tion) is titled “System and Methods for Operating an Infor- mation Exchange,” and its abstract states that it is generally directed toward “[m]ethods and apparatuses use- ful for operating, regulating, and controlling” such an ex- change. Appx 461.1 The application’s specification explains that an information exchange could be a “social network,” “ad network,” “digest,” or “any service that facilitates a flow of information items from producers to consumers.” Appx 469 ¶ 11. The information exchange may comprise “computer coded software,” or “any combination of one or more physical computer hardware systems . . . with an ap- plicable operating system appropriate for the specific hard- ware and, in the case of more than one, interconnected via a private or public network.” Appx 470 ¶¶ 25–26. The specification then elaborates that, for each infor- mation item and consumer, two paired metrics exist: the value or priority of the information to the consumer and the value or priority to the information producer if the in- formation is consumed by the consumer. See Appx 471 ¶ 52. In one embodiment, based on the relationship be- tween the consumer and producer values, the exchange de- termines what information will be part of an “include

1 Appx refers to the Corrected Appendix submitted with Mr. McFadden’s opening brief. Dkt. No. 18. Case: 25-1834 Document: 30 Page: 3 Filed: 04/07/2026

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region,” i.e., included in the information stream to the con- sumer. Appx 471 ¶ 53. Similarly, the ’363 application’s specification also de- scribes an embodiment where information distribution sce- narios are compared based on an “exchange value,” defined as “indicat[ing] a value to the information exchange at a specific point.” Appx 474 ¶ 97. This “specific point” may be based on paired producer and consumer values. Id. The specification explains that the exchange value, in turn, may be calculated from a “distribution difference . . . be- tween a specified distribution and a second distribution,” where “the second distribution is an incremental distribu- tion generated by the incremental transformation . . . of the specified distribution and a set of incremental points that depend on the specific point.” Appx 475 ¶ 101. This in- cremental transformation may be accomplished, for exam- ple, by adding or removing information items from the distribution stream while maintaining the distribution vol- ume. See Appx 474 ¶ 92. Thus, the exchange value de- scribed in the ’363 application compares multiple information distribution scenarios to determine how infor- mation should best be presented to a consumer—for in- stance, based on the order of information items in the distribution stream. In line with these disclosures, claim 14 of the ’363 ap- plication recites: 14. An information exchange apparatus for deter- mining an exchange value, comprising of: a first distribution of information items; a specific point; a means for generating a second distribution of information items, wherein the means for gen- erating uses the first distribution and the spe- cific point; Case: 25-1834 Document: 30 Page: 4 Filed: 04/07/2026

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a means for computing a distribution difference between the first distribution and the second distribution, whereby the exchange value for the specific point is the distribution difference. Appx 247. B The examiner rejected Mr. McFadden’s application pursuant to 35 U.S.C. §§ 101 and 102(a)(1). The examiner began by noting that certain limitations in claim 14 in- voked the presumption of means-plus-function claiming under 35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. § 112, ¶ 6. Regarding the § 101 rejection, the examiner determined that the limitations of claim 14 recited abstract ideas, that the only specification structures supporting the means- plus-function claim limitations were generic computing el- ements recited at a high level of generality, and that no technological improvements or practical applications were recited by the claim. The examiner then concluded that no additional elements were present to transform these ab- stract ideas into patent eligible subject matter under § 101. Thus, the examiner held that claim 14 was “directed to an abstract idea without significantly more as required by the Alice test . . . .” Appx 330; see Alice Corp. Pty. v. CLS Bank Int’l, 573 U.S. 208, 217–18 (2014). As to the § 102(a)(1) re- jection, the examiner found that Mr. McFadden’s previous patent application publication No. 2015/0088879, also di- rected toward regulation of information exchanges, antici- pated claim 14. The Board affirmed the examiner’s final rejection of claim 14. As for the § 101 rejection, the Board rejected Mr. McFadden’s argument that claim 14 was not directed toward an abstract idea at Alice step one, but rather a spe- cialized system, because the ’363 application only recited generic computer systems in the specification. The Board also rejected Mr. McFadden’s argument that the examiner erred by failing to consider “the structure associated with Case: 25-1834 Document: 30 Page: 5 Filed: 04/07/2026

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the means-plus function elements of the claim as described in the specification . . . and how the structure of the ele- ments are a practical part of the information exchange sys- tems where they are applied,” because the examiner explicitly construed the specification structure to only cover “software running on generic computer elements.” Ex Parte Brian David McFadden, No 2024-001173, 2024 WL 4926191 (P.T.A.B. Nov. 25, 2024), at *5 (Board Decision) (quoting Appx 332, 364). The Board also found unpersua- sive Mr. McFadden’s argument that the ’363 application is directed to a technological improvement under this court’s decision in Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1330 (Fed. Cir. 2016). Finally, regarding Alice step two, the Board noted that Mr. McFadden did not present any argu- ments alleging error in the examiner decision. The Board therefore sustained the rejection under § 101. Turning next to the rejection under § 102(a)(1), the Board rejected an argument from Mr. McFadden that the examiner had failed to prove a prima facie case of anticipa- tion, determining that Mr. McFadden had merely “gener- ally allege[d] that the Examiner has failed to match the corresponding structure in the Specification with the struc- ture in the prior art, without explaining or otherwise iden- tifying the alleged mismatch.” Board Decision, 2024 WL 4926191, at *9. The Board denied rehearing, and this appeal followed. We have jurisdiction under 28 U.S.C. § 1295(a)(4)(A). II On appeal, Mr. McFadden challenges the Board’s de- terminations with respect to both patent eligibility under § 101 and anticipation under § 102(a)(1). Because we agree with the Board regarding its ineligibility determination, we need not reach anticipation. We review the Board’s factual findings for substantial evidence and its legal conclusions de novo. In re Rudy, Case: 25-1834 Document: 30 Page: 6 Filed: 04/07/2026

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956 F.3d 1379, 1383 (Fed. Cir. 2020). Whether a claim is patent eligible under 35 U.S.C. § 101 is a question of law, which we review de novo. Id. To determine whether claims in a patent or patent ap- plication are directed toward eligible subject matter under § 101, the Supreme Court’s Alice decision articulates a two- step framework. First, we must “determine whether the claims at issue are directed to a patent-ineligible concept.” Alice, 573 U.S. at 218. Second, if we determine that the claims are directed to an ineligible concept such as an ab- stract idea, we “examine the elements of the claim to deter- mine whether it contains an inventive concept sufficient to transform the claimed abstract idea into a patent-eligible application.” Id. at 221. (cleaned up). Under this relevant framework, we agree with the Board that: (1) claim 14 is directed toward an abstract idea, and (2) claim 14 does not contain an inventive concept sufficient to transform this abstract idea into a patent-eli- gible application. See Board Decision, 2024 WL 4926191, at *7–8. Mr. McFadden’s arguments to the contrary misun- derstand our case law and mistake the disclosures of the ’363 application. A At Alice step one, the Board concluded that claim 14 is directed to an abstract idea because it “recites a method of organizing human activity, i.e., an abstract idea,” and “the claim does not include additional elements or a combina- tion of elements that integrates the recited abstract idea into a practical application.” Id. at *7. We agree. The limi- tations of claim 14, at base, recite generating one distribu- tion of information items, then comparing it to a previous distribution of information items, to determine how infor- mation should be presented to a consumer. And the speci- fication is clear that an information item is to be understood broadly as encompassing embodiments such as “message,” “audio clip,” “news,” and “advertisement.” Case: 25-1834 Document: 30 Page: 7 Filed: 04/07/2026

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Appx 469 ¶ 15. We therefore agree with the Board that the claim is directed to “advertising, sales, and marketing ac- tivity,” or at least the close corollary of packaging and pre- senting information, which is an abstract idea covering “[c]ertain methods of organizing human activity.” Board Decision, 2024 WL 4926191, at *5. Our precedent confirms that claims directed toward such methods are abstract. See, e.g., Mobile Acuity Ltd. v. Blippar Ltd., 110 F.4th 1280, 1293 (Fed. Cir. 2024) (“As we have by now frequently held, claims reciting generalized steps of collecting, analyzing, and presenting information, using nothing other than the conventional operations of generic computer components, are directed to abstract ideas.”). We further conclude at Alice step one, as the Board did, that claim 14 is not directed toward a specialized computer system or an improvement in technology. We agree with the Board that claim 14 does not claim any improvements in technology, instead only claiming mathematical opera- tions and determinations implemented via computer. See Board Decision, 2024 WL 4926191, at *7. And the specifi- cation makes clear that the claimed information exchange runs on generic computer hardware and software systems. See Appx 470 ¶¶ 25–26. It is axiomatic that merely “recit- ing ‘use of an abstract mathematical formula on any gen- eral purpose computer,’ or ‘a purely conventional computer implementation of a mathematical formula,’” is abstract and does not constitute an improvement to technology. In re TLI Commc’ns LLC Pat. Litig., 823 F.3d 607, 612 (Fed. Cir. 2016) (quoting Enfish, 822 F.3d at 1338). We therefore conclude at Alice step one that claim 14 is di- rected to an abstract idea. At Alice step two, we agree with the Board that no ad- ditional elements or combinations of elements supply an inventive concept that transforms the abstract ideas claimed into patent-eligible subject matter. The claim amounts to simply inputting information into a generic computer and running computations and transformations Case: 25-1834 Document: 30 Page: 8 Filed: 04/07/2026

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based on that information, which the Supreme Court and this court have been clear is insufficient to supply an in- ventive concept. See Alice, 573 U.S. at 223–24 (“Wholly ge- neric computer implementation is not generally the sort of additional feature that provides any practical assurance that the process is more than a drafting effort designed to monopolize the abstract idea itself.” (cleaned up)); United Servs. Auto. Ass’n v. PNC Bank N.A., 139 F.4th 1332, 1339 (Fed. Cir. 2025) (“Our precedent is clear that computer-me- diated implementation of routine or conventional activity is not enough to provide an inventive concept.”). Thus, as the Board correctly found, the claims are directed to ineli- gible subject matter. B Mr. McFadden lodges several arguments against the validity of the Board’s conclusion. Mr. McFadden’s argu- ments lack merit. First, at Alice step one, Mr. McFadden argues that the Board could not have made a meaningful finding on patent eligibility because it failed to construe certain limitations of claim 14 as means-plus-function limitations and disre- garded the structure disclosed in the specification associ- ated with these limitations. We disagree. Indeed, the Board explicitly credited the examiner’s treatment of certain claim limitations as “means-plus-[function] limitations,” and agreed that the only structure disclosed in the specifi- cation supporting these terms was “software running on generic computer elements.” Board Decision, 2024 WL 4926191, at *5. The Board further correctly concluded that “nothing in the Specification or elsewhere of record,” com- pelled a contrary conclusion, and Mr. McFadden did not di- rect the Board to any other structures potentially disclosed that could controvert this finding. Id. Mr. McFadden also alleges that the Board erred by de- termining that a combination of generic computing ele- ments, rather than “algorithm(s) described in the Case: 25-1834 Document: 30 Page: 9 Filed: 04/07/2026

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Specification,” provides structure to the means-plus-func- tion limitations. Appellant Br. 11–12. We are unper- suaded. While Mr. McFadden directs our attention in his briefing to alleged algorithmic structures associated with the means-plus-function limitations of claim 14, see, e.g., Appellant Br. 11 (citing Appx 475 ¶¶ 101–05, 107–08), each of these “algorithms” merely describes computing dif- ferences between information distributions at a high level of generality. For instance, one such “algorithm” sets forth four mathematical formulas for calculating distribution difference. See Appx 475 ¶ 107. These general instructions for how a standard computer is to manipulate, transform, and compare data fare no better in the abstract idea anal- ysis than generic software or computing components. See, e.g., Berkheimer v. HP Inc., 881 F.3d 1360, 1366 (Fed. Cir. 2018) (describing “parsing, comparing, storing, and editing data” as abstract ideas). Thus, even if the Board misidenti- fied structures in the specification as associated with the means-plus-function limitations of claim 14, any error was harmless. See In re Watts, 354 F.3d 1362, 1371 (Fed. Cir. 2004) (holding that remand was not required to the Board where harmful error is not demonstrated). At Alice step two, Mr. McFadden raises only one dis- cernable argument: that the algorithms disclosed in the ’363 application improve information exchange functioning and thus supply an inventive concept that is more than mere implementation of an abstract idea. This argument, however, is only raised on reply, and we have been clear that “[a]rguments raised for the first time in a reply brief are not properly before this court.” Mosaic Brands, Inc. v. Ridge Wallet LLC, 55 F.4th 1354, 1362 n.7 (Fed. Cir. 2022) (citation omitted). Even if we were to consider the merits of this argument, we would find that Mr. McFadden’s broad and generic algorithms are merely “an innovation in ineli- gible subject matter” that our caselaw bars from passing muster at Alice step two. SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163 (Fed. Cir. 2018). That is, improving Case: 25-1834 Document: 30 Page: 10 Filed: 04/07/2026

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abstract and generic calculations on a standard computer, without more, is still abstract. See id. at 1170 (holding that the invocation of generic computers “for use in carrying out improved mathematical calculations” is insufficient for in- ventive concept). Mr. McFadden therefore fails to show that any part of the Board’s § 101 determination was in- fected with error. III We have considered Mr. McFadden’s other arguments and find them unpersuasive. For these reasons, we affirm the Board’s rejection of claim 14 on § 101 grounds. AFFIRMED COSTS No costs.