Last week the U.S. Court of Appeals for the Federal Circuit issued an opinion in In re Brian David McFadden, No. 24-2107 (Sept. 5, 2025), reversing-in-part and vacating-in-part a pair of Patent Trial and Appeal Board rulings rejecting McFadden's social-network "information exchange" application.
Inventor McFadden filed a patent application directed at optimally routing content between producers and consumers on a social network. The examiner rejected claims 10-18 as (1) unpatentable subject matter under § 101 because the invention was directed to "software per se" lacking any structural limitations, and therefore outside the four statutory categories of permissible subject matter and (2) indefinite under § 112(b) because they contained mixed apparatus/method claims. The Board affirmed the examiner's rejection on both grounds. McFadden appealed.
The Federal Circuit reversed-in-part and vacated-in part. On the § 101 issue, the Court faulted the Board for halting its analysis at the "statutory category" step. Though the claims do not use the word "means," the panel found the use of the term "subsystem" invokes § 112(f) requiring construction as a means-plus-function element. Turning to the specification, the Court identified corresponding structure. including servers, CPUs, or mobile devices to satisfy the machine category. Because the Board misclassified the claims as structure-less "software per se," the § 101 rejection was vacated, and the case was remanded for consideration of whether the claims satisfy § 101 under the two-step Alice/Mayo framework.
On the § 112 issue, the Court held that the claims merely recite the system's capabilities, rather than user-performed method steps. Properly read, language such as "configured to" does not require performance of method steps but, rather, directs the claims to a system or apparatus "possessing the recited structure and capable of performing the recited functions." Accordingly, the Court reversed the Board's ruling on the indefiniteness rejection.
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