Patent Office asks Federal Circuit to Allow Board to Reconsider Eligibility Rejections

The Office taking a proactive approach to reviewing cases on appeal to the Federal Circuit is good news for applicants facing Alice based 101 rejections.

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Yesterday I wrote about the United States Patent and Trademark Office filing a Director’s Unopposed Motion to Vacate and Remand in In re Intelligent Medical Objects, Inc., which was filed on June 5, 2018. This was not the only such motion filed by the USPTO. On June 4, 2018, the Office filed an Unopposed Motion for Remand in In re: Allscripts Software, LLC, which similarly asks the United States Court of Appeals for the Federal Circuit to vacate the decision of the Patent Trial and Appeal Board and remand the appeal to the USPTO so the Board can reconsider eligibility rejections of the claims in question in light of Berkheimer.

The unopposed motion reads:

This appeal arises from the ex parte appeal decision of the Patent Trial and Appeal Board (Board), affirming the final rejection of claims 1-20 under 35 U.S.C. § 101 in Application Serial No. 14/320,355. In reaching its decision, the Board held that § 101 is an issue of law and that while evidence “may be helpful in certain situations,” there is no requirement to support a § 101 rejection with evidence under the patent-eligibility analysis articulated in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014). After the Board issued the decision on appeal, this Court issued its decision in Berkheimer, holding that the question of whether a claim element is well-understood, routine, and conventional under Alice Step #2 is a question of fact and requires evidentiary support, particularly where the issue is disputed. Appellant Allscripts asserts that the Board decision here is inconsistent with Berkheimer. Additionally, the USPTO has since issued guidance implementing Berkheimer in ex parte examinations like this one…

The Director believes that it is in the best interest of the parties and this Court to remand the case to the USPTO to allow the Agency to reconsider the patent eligibility of the pending claims in light of Berkheimer and related USPTO guidance. A remand to permit further administrative proceedings in light of these subsequent developments would prevent this Court, Allscripts, and the USPTO from needlessly expending resources. See, e.g., In re Gould, 673 F.2d 1385, 1387 (CCPA 1982). That is particularly true under these circumstances, where the intervening developments relate to factual issues that should be considered by the Agency in the first instance.

The Office taking a proactive approach to reviewing cases on appeal to the Federal Circuit is good news for applicants facing Alice based 101 rejections. Obviously, now is not the time to allow those cases to go abandoned if they remain commercially relevant.


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Join the Discussion

10 comments so far.

  • [Avatar for step back]
    step back
    June 13, 2018 08:44 pm

    Mike @9

    Sounds like you are at the wishing well hoping for a return to the days when TMS* was the law of the land.

    Alas the Supreme Court did away with the TMS test for section 103 in its famous KSR v. Teleflex case.

    *TMS stands for Teaching, Motivation or Suggestion. It used to be that the PTO had to show presence of TMS in the prior art. No more.

  • [Avatar for Mike]
    June 12, 2018 10:35 pm

    Gene: This is awesome. Honing in on certainty when jurisprudence has rendered 101 patent eligibility to be uncertain is a fantastic move by Director Iancu.

    But what about the big uncertainty problem the court(s) created with 103 obviousness rejections regarding “motivation to combine”?

    Gene, can you mention this to Director Iancu?

    Because when an examiner states “A skilled artisan would be motivated to combine X and Y for the purpose of Z”, WHERE’S THE PROOF? How does the examiner know this? Is this not merely subjective?

    I mean, anybody can say someone would be motivated to combine for whatever reason. But we need the same evidential standard for motivation to combine!

    The takeaway from the Berkheimer memo: It’s impossible to argue someone’s mere OPINION properly, so when said opinion is that some element X (or combo) is conventional, the question is: OK, but says who? You must show me the facts in support of your opinion.

    So just as Berkheimer states that determining whether something is routine, conventional, etc is a factual determination and therefore requires evidence of such conventionality when an examiner provides a 101 rejection, why not do the same for motivation in 103 obviousness determinations? That is, determining whether someone would be motivated to combine two or more prior art references is also a factual determination and requires evidential proof of the motivation.

    If Director Iancu could do something to address this, this too would go a long way, because there is a lot of patent uncertainty due to 103 obvious motivations being 100% subjective, when what we need are determinations based on facts.

  • [Avatar for Pro Se]
    Pro Se
    June 9, 2018 09:21 pm

    Thanks step back and Mark! Great info as always!

    Us $-poor pro se folks can use all the help we can get!

  • [Avatar for step back]
    step back
    June 9, 2018 03:14 pm

    Pro Se @4
    PTO database (free) is back up today and shows 26 PTAB decisions thus far citing Berkheimer

    Search By Decison date range : From xxx to 12/27/2018, Document Text Search: “Berkheimer”
    26 items found, displaying all items.

    Not all of them are reversals.
    For example, Ex parte BRIAN M. WOLF mailed 5/29/2018 (Application 13/534,416) addresses both of Aatrix and Berkheimer but sides with the examiner anyway.

    You can search for and read the rest using the FOIA site:

  • [Avatar for Mark Nowotarski]
    Mark Nowotarski
    June 9, 2018 08:42 am

    Pro Se@4,

    Anticipat is an excellent resource for finding appeal decisions like this. It’s subscription based, but well worth it. Here are 5 reversals I found citing Berkheimer.


    Mark N

    Ex Parte Ageenko et al
    Claims 1-26 under §103(a): Affirmed
    Combination Must Teach or Suggest Limitations

    Claims 1-26 under §101 – patent-ineligible subject matter: Reversed
    abstract idea – step 2
    12316967 05/24/2018 2017003422 Final

    Ex Parte Galloway et al
    Claims 35-48 under §103(a): Reversed
    Combination Must Teach or Suggest Limitations

    Claims 35-48 under §101 – patent-ineligible subject matter: Reversed
    abstract idea – prima facie case
    Naturally Occurring Phenomenon – prima facie case
    13512585 05/22/2018 2017004696 Final

    Ex Parte Bandic et al
    Claims 27-34 under §101 – patent-ineligible subject matter: Reversed
    abstract idea – step 1
    13036783 04/30/2018 2016004417 Final

    Ex Parte Bhogal et al
    Claims 1-4, 8-10, 12-18, 23, 24, 27 under §101 – patent-ineligible subject matter: Reversed
    abstract idea – step 2
    12178896 03/15/2018 2016008742 Final

    Ex Parte Berstis
    Claims 16-18, 22-24, 28-39 under §101 – patent-ineligible subject matter: Reversed
    abstract idea – step 1
    abstract idea – step 2
    12366951 03/12/2018 2016007050 Final

  • [Avatar for step back]
    step back
    June 9, 2018 01:59 am

    Pro Se @4
    I recall seeing at least one recent PTAB decision that reversed the 101 based on Berkheimer. (The PTO database is off line now. A simple search of recent PTAB decisions including that text string should bring the case to light once the database becomes available again)

  • [Avatar for Pro Se]
    Pro Se
    June 8, 2018 07:59 pm

    Gene, or anyone, do you know if the Board has either reversed — or remanded — any 101 appeals based on Berkheimer and/or the Office’s recent 101 examinational guidance?

  • [Avatar for step back]
    step back
    June 8, 2018 03:59 pm

    Eric @2,

    I suspect there is a sub-population at the USPTO of examiners and legal analysts who truly believe that all software is ineligible because all they can touch with their hands and see with their eyes is the unchanged computer box.

    Then there is another sub-population who have been trained in science and understand the universe is much more than what Medieval man can touch with his hands and see with his natural eyes without aid of unnatural machinery.

    What we are witnessing is the battle between these two groups (both of whom have very fine –cough, cough– people).

    The past decade has been ruled by the Medieval gang (at the US Supreme Court, PTAB and elsewhere).

    Maybe a new dawn is rising. Maybe not. Time will tell.

  • [Avatar for Eric Berend]
    Eric Berend
    June 8, 2018 09:15 am

    Hmm: is it not possible that the PTO is rushing to head off the opportunity for the CAFC to render ALL of the claims demolished by this Nose Of Wax ‘Alice at the PTAB’ nonsense – eligible?

    Q: Since WHEN does ANYTHING the PTAB does, EVER respect or “favor” the patentee?
    A: It DOES NOT – and HAS NEVER done so.

    Q: When do you know when a proven, incorrigible liar has lied?
    A: When its lips move.

    Is this not, too obvious? If an actual U.S. Court gets ahold of these blanket rejections under Berkheimer, then there is a very good chance that ‘all’ of the claims will be declared eligible.

    This way, at least ‘some’ of the claims can be lassoed in to possibly be ‘rejected’, in YET ANOTHER UNCONSTITUTIONAL “REVIEW”.

    Here comes the PTAB screaming, in essence, for YET ANOTHER bite at the PATENTEE’s apple. When did this ‘Vacate and Remand’ intervention EVER occur, for the hundreds of travesties that stole inventors’ and patentees’ Article 8 Constitutional properties?

    For the independent inventor, the clownshow put up by these idiots is worth a bit of popcorn; if one has been able to to learn to cope with the obsessively contemptuous, completely outrageous conduct and manifest, obdurate treachery routinely practiced by these IP pirates’ sycophants.

  • [Avatar for Mark Nowotarski]
    Mark Nowotarski
    June 8, 2018 07:23 am

    It will be interesting to see if more 101 rejections will be reversed at the board citing Berkheimer.