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.