USPTO asks Federal Circuit to Vacate, Remand 101 Case to Board in Light of Berkheimer

By Gene Quinn
June 6, 2018

Yesterday the United States Patent and Trademark Office (USPTO) filed a Director’s Unopposed Motion to Vacate and Remand in In re Intelligent Medical Objects, Inc.

The appeal arose from an ex parte appeal to the Patent Trial and Appeal Board (Board), which affirmed the final rejection of claims 1-14 of Application Serial No. 13/622,934 under 35 U.S.C. § 101.

The examiner found that certain steps in the claims were well-understood, routine, and conventional activities previously known in he industry. The Board also noted that the applicant did not show how the claims are technically performed such that they are not routine, conventional functions of a computer.

Notwithstanding, after the decision of the Board the Federal Circuit decided Berkheimer, which Director Iancu believes requires the Board’s original decision to be vacated and reconsidered in light of both Berkheimer and USPTO guidance relating to Berkheimer (see here and here).

The Solicitor’s Office wrote in the Motion:

[A]fter the Board issued the decision on appeal, this Court issued its decision in Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018), holding that the question of whether a claim element is well-understood, routine, and conventional under Alice is a question of fact and requires evidentiary support, particularly where the issue is disputed. Appellant asserts that the Board decision in this case is inconsistent with Berkheimer. See, e.g., Br. at 15 and 30-31 (disputing the examiner’s finding of “conventionality” and asserting a lack of evidence). Additionally, shortly after Berkheimer was decided, the Agency issued guidance implementing Berkheimer in ex parte cases…

The Director believes that Berkheimer and related Agency guidance merit vacating the Board’s decision and remanding it to the USPTO to allow the Agency to fully reconsider the patent eligibility of the pending claims under the Alice test, Berkheimer, and current agency guidance. A remand permitting further proceedings would prevent this Court, Appellant, and the Agency from needlessly expending resources. See, e.g., In re Gould, 673 F.2d 1385, 1387 (CCPA 1982). That is particularly true here, where intervening precedent and guidance relate to factual issues that should be considered by the Agency in the first instance.

This development is encouraging for patent owners, and could result in a significant shift in how the Office handles the 101 inquiry. If nothing else, it seems that Director Iancu is doing what he can to require agency decision makers to follow the dictates of the Berkheimer memo.

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and President & CEO ofIPWatchdog, Inc.. Gene founded in 1999. Gene is also a principal lecturer in the PLI Patent Bar Review Course and Of Counsel to the law firm of Berenato & White, LLC. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Warning & Disclaimer: The pages, articles and comments on do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of Read more.

Discuss this

There are currently 8 Comments comments.

  1. Anon June 6, 2018 5:53 pm

    The Board also noted that the applicant did not show how the claims are technically performed such that they are not routine, conventional functions of a computer.”

    Lacking the establishing of a prima facie case in the first instance, the applicant is under NO DUTY to do as the Board “also noted.”

    I do hope in the “replay” that the Board at least acknowledges that there was no switch in burden.

  2. JCD June 6, 2018 6:59 pm

    FYI, a similar motion was filed Monday in 2018-1451. Hopefully, the approach of dismissing elements as conventional in a conclusory fashion without evidentiary support for § 101 analysis will dwindle moving forward, but if anyone does find themselves facing the issue, I had already filed the opening brief which was designed to try to squarely raise the issue.

  3. Paul Cole June 7, 2018 7:54 am

    Very favourable development, as is the Berkheimer decision itself.

  4. BP June 7, 2018 9:39 am

    From oral argument – Judge Schopfer: “Okay, I’m just going to cut you off. You’re over your time.” “If you have a small conclusion, you’re welcome to present it now, or I think we understand your position”. The panel did not need to ask any questions in response to the compelling oral argument, because it had already decided? This case should have gone before the Fed Cir to set precedent for the PTAB.

  5. Anon June 7, 2018 11:27 am


    This case should have gone before the Fed Cir to set precedent for the PTAB.

    What “precedent” do you think would have been (or needs to have been) set?

    As is, the rule of law has been made abundantly clear without the en banc step.

    As has been noted on this issue previously, there are NO actual direct CAFC cases that hold what the dissent here wants (and wants in order to have a “split” so as to drive to an en banc decision). The dissent here simply wants the (simple) issue decided otherwise, lost at the panel level, and wants to “win” at a higher level to enforce his viewpoint.

    That is not happening.

    Do you somehow think that other panels may now rule otherwise?

    (that’s not necessarily a trick question, mind you – given that the CAFC panel to panel volatility is well known for certain subjects, as that court has shown little comity to following its own stare decisis)

  6. BP June 7, 2018 5:52 pm

    Anon, as to “What ‘precedent’ do you think would have been (or needs to have been) set?” Would have been nice to see a decision without a remand. Without getting into details/arguing details/taking sides, if the Fed Cir nixed the “abstract idea” of the Examiner/PTAB, then no reason to consider Berkheimer, and the decision could have been another precedent as to what is not an “abstract idea”. The PTAB relies heavily on Erie Indemnity, claims 1 and 19 in Erie Indemnity do not appear to be such a close fit to claim 1. The Fed Cir needs to start drawing more lines – the USPTO rips away that opportunity, at least for the moment.

  7. Anon June 8, 2018 8:10 am

    Thanks BP,

    If I understand your reply, you wanted this case to set a different precedent by “going all the way” and being decided.

    I can get that (although, I will add that your desire, while noble, appears to be quite meaningless given how little accord the CAFC already gives to its own internal rules on stare decisis. In other words, the very thing you want from an en banc position is supposed to occur based on a panel decision (subsequent panels are supposed to hew to prior panel reasoning).

    Further, you overlook the fact that the battle has MANY fronts, and THIS decision is along a different – but no less important – front: the factual predicate and what it means for an administrative agency (under its own rules – see Official Notice rules; as well as APA rules) to do its job executing the law, and the factual predicates under that law.

    This is a HUGE win for the pro-patent side.

    As I have also indicated several times now, the Office has the burden of providing a prima facie case.

    The very notion of the Supreme Court “gift” of the “Gist/Abstract” sword is laden with “common law” law writing. The administrative agency in its duty of executing the law simply does NOT have that power – and a strict application of how to treat facts and requiring evidence of “conventionality**” goes a long way to making sure that examiners do not become “mini-me’s” of the Supreme Court Justices.

    ** – A reminder may be prudent here: no matter the memo, conventionality is NOT so tied to the 112(a) examination tool, and the burden is FAR more than showing simple existence (102), or even existence of piece parts + motivation + other things (103). Making the case of “that’s conventional” has to rise to the level of showing widespread adoption and use. THAT is what needs to be shown – and properly shown with facts and evidence. And per the constraints of when Official Notice may be used, notably the FACT that Official Notice may not be used to indicate any type of “state of the art,” examiners may NOT simply “assert” conventionality as they have become so accustomed to asserting things.

    Further still, ALL one has to do in those cases in which an examiner HAS improperly asserted Official Notice (whether or not they have called their actions such) is for the applicant to challenge the assertion and point out the error (as I have laid out). Since doing so shows that the examiner has failed in their part to make a prima facie case, there is NO burden switch, and the applicant need not do more. THAT is why I indicate in post 1 that I hope Iancu takes this opportunity to make sure the examiners – as a group – understand this, rather than applicant’s fighting the examiner corp one battle at a time.

  8. BP June 8, 2018 2:57 pm

    Anon – good points. Given the PTAB’s record on 101, I expect the appellant will be back to the Fed Cir in due time (three years?).