Last Thursday, in response to the decision reached in Berkheimer v. HP, Inc., 881 F.3d 1360 (Fed. Cir. 2018), the USPTO issued a Memorandum to address changes in examination procedure for subject matter eligibility. The Berkheimer case and the Memorandum have particular applicability to cases in which claims are alleged to be directed to abstract ideas. Under current examination guidelines, even if a claim is directed to an abstract idea, the claim may be patentable provided it includes one or more elements that amount to significantly more than the abstract idea itself, for example, a particular application of the abstract idea to a particular technological field. Examiners will often allege that elements of an Applicant’s claim recite well-understood or conventional components or steps, and, as a consequence amount to nothing more than implementation of an abstract idea using conventional techniques, which would render the claim ineligible for patent protection. In its recent Memorandum, the USPTO clarified the Examiner’s necessary burden to satisfy the factual inquiry set forth in Berkheimer, i.e., “whether a claim element or combination of elements is well-understood, routine and conventional to a skilled artisan in the relevant field is a question of fact.”
In rejecting claims under 35 U.S.C. § 101, an Examiner must now provide factual evidence or take Official Notice in accordance with MPEP § 2144.03 before the Examiner can establish that an additional element (or combination of additional elements) is well-understood, routine, and conventional. If the Examiner takes Official Notice that is contested by an Applicant, the Examiner must provide an affidavit under 37 C.F.R. § 1.104(d)(2) setting forth specific factual statements and an explanation to support the Examiner’s position, or factual evidence that is on the record or in the art. The factual evidence must be one or more of the following:
- A citation to an express statement in Applicant’s specification that demonstrates the well-understood, routine, conventional nature of the additional element(s). For example:
- A citation to a description of a commercially available product that describes the claim element(s), or
- A citation to an express statement that the additional element(s) are so well-known that they do not need to be described in detail in a patent application to satisfy 35 U.S.C. § 112(a). The fact that the specification is silent regarding details of the additional element(s) is not sufficient to be considered an express statement.
- A citation to a statement made by an Applicant during prosecution that demonstrates the well-understood, routine, conventional nature of the additional element(s).
- A citation to one or more of the court decisions discussed in MPEP § 2106.05(d)(II) that indicate the well-understood, routine, conventional nature of the additional element(s).
- A citation to a publication that demonstrates the well-understood, routine, conventional nature of the additional element(s). An appropriate publication could include a book, manual, review article, or other source that describes the state of the art and discusses what is well-known and in common use in the relevant industry.
Ultimately, the USPTO now will require an Examiner to determine whether a claim element or combination of elements is well-understood, routine and conventional by identifying evidence on the record, by identifying evidence in the art, or by the Examiner’s own attestation.
There are a number of practical pointers for Applicants to consider in view of the new Memorandum. First, Applicants should require that Examiners provide evidence to support allegations that the claim element(s) are well-understood, routine, or conventional. Bald assertions are not sufficient to satisfy the Examiner’s burden. Second, Applicants should avoid characterizations or statements that may be perceived as an admission that claim elements are well-understood, routine, and conventional. For example, Applicants should carefully consider the necessity of admitting in their specification that technologies or components are conventional or commercially available. Likewise, during prosecution, Applicants should carefully avoid making any statements that may be construed as an admission that claim elements are well-understood, routine, and conventional. Lastly, Applicants should, when appropriate, contest an Examiner’s Official Notice to ensure that the Examiner has met the burden of demonstrating that an element is well-known.