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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