Patent Riffs & Links: Post-Berkheimer Guidance Uses §112 Analysis

So, Step 2B of the Alice analysis is just like examination under … § 112, first paragraph?

The memo:

This memorandum further clarifies that the analysis as to whether an element (or combination of elements) is widely prevalent or in common use is the same as the analysis under 35 U.S.C. § 112(a) as to whether an element is so well-known that it need not be described in detail in the patent specification…

[FN2] See Genetic Techs. Ltd v. Merial LLC, 818 F.3d 1369, 1377 (Fed. Cir. 2016) (supporting the position that amplification was well-understood, routine, conventional for purposes of subject matter eligibility by observing that the patentee expressly argued during prosecution of the application that amplification was a technique readily practiced by those skilled in the art to overcome the rejection of the claim under 35 U.S.C. 112, first paragraph); see also Lindemann Maschinenfabrik GMBH v. Am. Hoist & Derrick Co., 730 F.2d 1452, 1463 (Fed. Cir. 1984) (“[T]he specification need not disclose what is well known in the art.”); In re Myers, 410 F.2d 420, 424 (CCPA 1969) (“A specification is directed to those skilled in the art and need not teach or point out in detail that which is well-known in the art.”); Exergen Corp., 2018 WL 1193529, at *4 (holding that “[l]ike indefiniteness, enablement, or obviousness, whether a claim is directed to patent eligible subject matter is a question of law based on underlying facts,” and noting that the Supreme Court has recognized that “the inquiry ‘might sometimes overlap’ with other fact-intensive inquiries like novelty under 35 U.S.C. § 102”).

…The nature of the publication and the description of the additional elements in the publication would need to demonstrate that the additional elements are widely prevalent or in common use in the relevant field, comparable to the types of activity or elements that 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).

USPTO Updates Patent Eligibility Guidance in View of Federal Circuit Berkheimer Opinion
Proskauer Rose LLP: “The memo notes that, for an examiner to conclude a claim element is well-understood, routine, and conventional, the specification must describe the additional elements as “well-understood or routine or conventional (or an equivalent term), as a commercially available product, or in a manner that indicates that the additional elements are sufficiently well-known that the specification does not need to describe the particulars of such additional elements to satisfy 35 U.S.C. § 112(a).’ Also, for a printed publication or the examiner’s personal knowledge to satisfy the inquiry, it must reflect that ‘the additional elements are widely prevalent or in common use in the relevant field, comparable to the types of activity or elements that 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).'”

Analyzing the Impact of the USPTO’s Berkheimer Memorandum
Adam Saxon: “applicants would be wise to remove (or at least rethink) certain statements in their application specification that could be interpreted as indicating that certain features and/or elements of a claimed invention are well-understood, routine, and/or conventional in the art”

USPTO Updates Examination Guidelines for Patent Eligible Subject Matter | LEXOLOGY
Hunton Andrews Kurth LLP: “Significantly, the Memo further emphasizes that ‘[t]he question of whether additional elements represent well-understood, routine, conventional activity is distinct from patentability over the prior art under 35 U.S.C. §§ 102 and 103.’ This important distinction is express recognition that “[t]he mere fact that something is disclosed in a piece of prior art…does not mean it was well-understood, routine and conventional.’ … These guidelines should provide a clearer record for the public while also providing a sound basis for applicants to challenge a poorly supported rejection. Thus, both patent quality and acceptance rates for patent applications may be improved by these newly announced guidelines.”

Director Iancu worries current state of Section 101 ‘weakens the robustness of our IP system’ | IPWATCHDOG
Director Iancu on Step 2B post-Berkheimer: “So just to use the example from last week, okay? On the second step of the Alice-Mayo test where one has to look at whether something is conventional or not the additional elements whether they’re conventional or not. Well, what does that mean? What does the word “conventional” mean? And how does it differ from just having prior art in the record? And are our examiners supposed to do now a conventionality search of some sort or analysis of some sort? And more importantly how are they to document it? So those are things that we just looked at this one narrow issue of conventionality and we provided this guidance. The guidance there’s two things. First it tells our examiners how to document their conclusions. Okay. You’ve got to put it in writing. You’ve got to support it with evidence. And unless you’re absolutely sure then that it’s so common that you can just take traditional notice but then if challenged then you still have to support it with evidence. So that’s on the documentation front and I think that can help with the records and it can help our applicants. But then there’s also the question of what does it mean? How is an examiner to know what conventional means? And we said look it’s the same analysis as you would do for Section 112 which you’re used to. Our examiners know how to do Section 112 analysis we’ve been doing at the office Section 112 analysis for years on years. So now our examiners have something to ground themselves in. they have the experience and the knowledge of how to approach this one issue. So that was that guidance. There are other areas where we can try to do similar things and provide similar types of guidance to help not just the examiners but also the applicants who come before us.”

From the training:


Limitations that the courts have found to qualify as “significantly more”
-Improvements to the functioning of a computer MPEP 2106.05(a);
-Improvements to any other technology or technical field MPEP 2106.05(a);
-Applying the judicial exception with, or by use of, a particular machine MPEP 2106.05(b);
-Effecting a transformation or reduction of a particular article to a different state or thing MPEP 2106.05(c);
-Adding a specific limitation other than what is well-understood, routine, conventional activity in the field, or adding unconventional steps that confine the claim to a particular useful application MPEP 2106.05(d); or
-Other meaningful limitations beyond generally linking the use of the judicial exception to a particular technological environment MPEP 2106.05(e).