"In a significant victory for software patent applicants, the Federal Circuit reversed the a PTAB rejection of computer system claims in In re McFadden, 2024-2107 (Fed. Cir. Sept. 5, 2025). One problem with the decision is its non-precedential status - even though it clearly breaks new ground. The case offers another example of the potential power of 112(f) means-plus-function claims."
"The examiner had rejected claims 10-18 under § 101 as "software per se" without structural recitations, and claims 10-17 under § 112(b) as indefinite mixed claims reciting both apparatus limitations and method steps. The Board affirmed both of those rejections, but the Federal Circuit has now reversed on § 112(b) and vacated and remanded on § 101, ordering the Board to proceed with Alice/ Mayo analysis rather than stopping at the statutory category inquiry."
Federal Circuit reversed PTAB on McFadden, reversing §112(b) indefiniteness rejection and vacating/remanding §101 'software per se' ruling, directing the Board to perform Alice/Mayo analysis. Claims recited non-technical terms such as "a module" and "a subsystem" and lacked explicit structural limitations. Court held nonce words should be treated as means-plus-function under §112(f) and found that specification descriptions of generic computer hardware can supply corresponding structure. Court distinguished impermissible mixed system/method claims from permissible system capability claims when addressing indefiniteness. Decision remains non-precedential despite creating significant guidance for software patent claim drafting.
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