USPTO Changes Patent Examination Procedure Pertaining to Subject Matter Eligibility in View of Berkheimer v. HP, Inc.


On 19 April 2018 Robert W. Bahr, Deputy Commissioner for Patent Examination Policy, released a memorandum providing “additional USPTO guidance that will further clarify how the USPTO is determining subject matter eligibility [pertaining to] the limited question of whether an additional element (or combination of additional elements) represents well-understood, routine, conventional activity.” The US Court of Appeals for the Federal Circuit (“Federal Circuit”) recently issued a precedential decision over Berkheimer v. HP, Inc. holding that the question above “raised a disputed factual issue.”

Federal Circuit Decision in Berkheimer

The Berkheimer patent specification claims to improve system operation efficiency and reduce storage costs in a digital asset management system by eliminating redundant storage of common text and graphical elements. “The Federal Circuit considered the elements of each claim both individually and as an ordered combination, recognizing that ‘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…’ The Federal Circuit held claims 1-3 and 9 of disputed patent ineligible because they do not include limitations that realize these purported improvements… The Federal Circuit held that claims 4-7 do contain limitations directed to purported improvements described in the patent specification…, raising a genuine issue of material fact as to whether the purported improvements were more than well-understood, routine conventional activity previously known in the industry [and] therefore reversed the district court’s decision on summary judgment that claims 4-7 are patent ineligible…” The Federal Circuit determined that an additional element(s) cannot necessarily be considered well-understood, routine, or conventional activity simply because it is disclosed in a piece of prior art.

The Berkheimer decision provides clarification as to the question of whether an additional element(s) represents well-understood, routine, conventional activity. The memorandum clarifies that an examiner’s conclusion that an additional element(s) represents well-understood, routine, conventional activity “only when the examiner can readily conclude that the element(s) is widely prevalent or in common use in the relative industry [and] such a conclusion must be based upon a factual determination.”

 Impact on New Examination Guideline

The memorandum revises the procedures for an examiner to formulate a rejection for lack of subject matter eligibility and evaluating an applicant’s response to said rejection. An examiner must now expressly find one or more of the following to reject an additional element(s) for being well-understood, routine, or conventional:

  1. “A citation to an express statement…made by an applicant…that demonstrates the well-understood, routine, conventional nature of the additional element(s)…as a commercially available product, or in a manner that indicates that the additional element(s) is sufficiently well-known that the specification does not need to describe the particulars of such an additional element(s) to satisfy US U.S.C. § 112(a) [and] cannot be based only on the fact that the specification is silent with respect to describing such element(s).”

  2. A citation to one or more of the court decisions discussed in MPEP § 2106.05(d)(II) …”

  3. “A citation to a publication that…describes the state of the art and discusses what is well-know and in common use in the relevant industry…

  4. “A statement that the examiner is taking official notice of the well-understood, routine, conventional nature of the additional element(s), This option should be used only when the examiner is certain, based upon his or her personal knowledge…” 

With regard to evaluating an applicant’s response, the memorandum states “if an applicant challenges the examiner’s position…, the examiner should reevaluate whether it is readily apparent that the additional elements are in actuality well-understood, routine, conventional activities…If the examiner has taken official notice per paragraph (4)…and the applicant challenges the examiner’s position…, the examiner must then provide one of the items discussed in paragraphs (1) through (3)…or an affidavit or declaration under 37 CFR 1.104(d)(2) setting forth specific factual statements and explanation to support his or her position.”


PATENT, Trademark and IP Law Blog

  • CIONCA Staff4/20/2018 5:25:25 PM

    USPTO Changes Examination Procedure Pertaining to Subject Matter Eligibility in View of Berkheimer v. HP, Inc.

Marin Cionca | Founder of CIONCA IP

Marin Cionca, Esq.

Registered Patent Attorney

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