April, 23rd, 2018

The U.S. Patent and Trademark Office has issued a guidance memo implementing the recent holding of the Federal Circuit in Berkheimer v. HP, Inc. The USPTO Memorandum clarifies the inquiry into whether a claim limitation represents well-understood, routine, conventional activity to one skilled in the relevant field. Such a conclusion must now be based upon a factual determination.

 In order to conclude a claim element (or a combination of claim elements) is well-understood, routine, conventional activity, the examiner must cite at least one of the following as factual support.

  • An express statement in the specification or a statement made by applicant during prosecution that demonstrates the well-understood, routine, conventional nature of the claim element(s).

  • A court decision discussed in MPEP § 2106.05(d)(II) which notes the well-understood, routine, conventional nature of the claim element(s).

  • A publication (e.g., book, manual, review article) that describes the state of the art and discusses what is well-known and in common use within the relevant industry.

  • An official notice taken by the examiner when the examiner is certain, based on personal knowledge, that the claim element(s) represents well-understood, routine, conventional activity.

If a § 101 rejection is encountered, applicants should make sure the examiner has provided a sufficient factual basis for the rejection.

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