The U.S. Patent and Trademark Office has issued training regarding the recent holding of the Federal Circuit in Berkheimer v. HP, Inc. The USPTO Training clarifies the inquiry into whether a claim limitation or combination of elements represents well-understood, routine, conventional activity to one skilled in the relevant field. Such a conclusion must now be based upon factual determinations.
In order to conclude a claim element or combination of 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 an 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 demonstrates the state of the art and discusses what is well-known and in common use within the relevant industry.
It is important to note that not all items sufficient for rejection under § 102 are adequate to demonstrate wide prevalence or common use in the relevant field.
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. Examiners must provide specific factual findings predicated on sound technical and scientific reasoning to support the conclusion of common knowledge.
If a § 101 rejection is encountered, applicants should make sure the examiner has provided sufficient evidence for the rejection.
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