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Ex Parte Jadran Bandic, et al. -- The bar is raised for proving the presence of an abstract idea

The USPTO recently provided a Memorandum and Examiner training related to a Federal Circuit decision, Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018). The Memo and training give hope that the patent office is taking seriously the need for consistency in applying rejections under 35 U.S.C. §101. While the Memo and training apply to Examiners, it remains an open question how the Patent Trial and Appeal Board (PTAB) will consider the contents of the Memo.

In Ex Parte Jadran Bandic, et al., (Decision) decided by the PTAB on April 30, 2018, this question appears to be partially answered. The case hinges on a §101 analysis of a single independent claim with five steps. The PTAB first reverses the Examiner’s rejection under Alice Step One as failing to consider the claim as a whole, stating that the “The Examiner’s asserted abstract idea is based on “the steps within the [claimed] method of comparing and determining” and ignores the claim as a whole” (Decision, pages 4-5). Despite the sufficiency of the Step One reversal for disposing of the Appeal, the PTAB also considered the Alice Step Two analysis.

In the Alice Step Two section of the Decision, the PTAB found that “The Examiner’s analysis of the second step of the Alice analysis is conclusory and unsupported” (Decision, page 6). The PTAB continued by making it clear that unsupported statements from an Examiner are insufficient for complying with Step Two (See, e.g., Decision, pages 5-6). This sentiment is certainly suggested and supported by the Berkheimer case, but more importantly, the analysis by the PTAB here upholds the requirements presented in the Memo that are placed on Examiners in making a Step Two rejection. Namely, that absent a citation to an Applicant’s admission, a court decision, or a publication “demonstrating the well-understood, routine, conventional nature of the additional element(s),” a rejection under Step Two is inappropriate (Memo, pages 3-4).

Thus, the Decision validates the Memo’s interpretation of Berkeheimer requiring Examiners to “expressly support[] a rejection in writing” with a citation to an Applicant’s statement, court decision, or publication, and further that the citation must demonstrate not only that the identified additional elements were known, but well-known, routine, and conventional.

My thanks to Jeff Cobia of Schwegman, Lundberg & Woessner, P.A., for this posting.

Principal & Chief Innovation Officer

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