Deadline to Submit Comments to USPTO on Berkheimer Memo Approaching

By Donald Zuhn --

In April, the U.S. Patent and Trademark Office issued a memorandum to its Patent Examining Corps discussing changes in examination procedure pertaining to subject matter eligibility in view of the Federal Circuit's decision in Berkheimer v. HP, Inc. (see "USPTO Updates Patent Eligibility Guidance in View of Berkheimer").  Following the issuance of the memorandum, the Office also published a notice of the Federal Register seeking public comment on the Office's subject matter eligibility guidance, and particularly on its guidance in the Berkheimer memorandum.

The notice, entitled "Request for Comments on Determining Whether a Claim Element Is Well- Understood, Routine, Conventional for Purposes of Subject Matter Eligibility" (83 Fed. Reg. 17536), discusses the Berkheimer decision as well as the Office's Berkheimer memorandum and sets an August 20, 2018 deadline for the submission of written comments.  Those wishing to submit comments can do so by sending them by e-mail to [email protected].  Submitted comments can be viewed here -- to date, comments have been submitted by one law firm and five individuals.

In its notice, the Office indicates that the Federal Circuit, in Berkheimer, found that whether a claim element, or combination of elements, represents well-understood, routine, conventional activities to a skilled artisan in the relevant field is a question of fact.  Prior to the Berkheimer decision, the Office notes that Examiners had been instructed to conclude that an element (or combination of elements) is well-understood, routine, conventional activity only when an Examiner can readily conclude that the element is widely prevalent or in common use in the relevant industry.  As a result of the Berkheimer decision, and as outlined in last April's memo, the Office now requires that such a conclusion must be based upon a properly supported factual determination.

The notice explains that the Berkheimer memo specifies that the analysis for determining 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.  The notice also suggests that:

The 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 is because a showing that additional elements are obvious under 35 U.S.C. 103, or even that they lack novelty under 35 U.S.C. 102, is not by itself sufficient to establish that the additional elements are well-understood, routine, conventional activities or elements to those in the relevant field.

The notice points to guidance from its Berkheimer memo that in order for an Examiner to establish that an additional element (or combination of elements) is well-understood, routine, or conventional, the Examiner must find, and expressly support in writing, one or more of the following:

1. A citation to an express statement in the specification or to a statement made by an applicant during prosecution that demonstrates the well- understood, routine, conventional nature of the additional element(s).

2. A citation to one or more of the court decisions discussed in MPEP § 2106.05(d)(II) as noting the well-understood, routine, conventional nature of the additional element(s).

3. A citation to a publication that demonstrates the well-understood, routine, conventional nature of the additional element(s).

4. A statement that the examiner is taking official notice of the well- understood, routine, conventional nature of the additional element(s).

Both the notice and Berkheimer memo provide additional discussion of the items above, and in particular, items 3 and 4.

Comments

[Skeptical]

I will note here that the portion of the Berkheimer memo with advice concerning "taking Official Notice" is itself IN CONFLICT with the Memorandum For Taking Official Notice**.

The Berkheimer memo has a (weak) out in that it does provide that the mere assertion by an applicant against Official Notice means that the examiner MUST drop the Official Notice route and provide real (APA-demanded) evidentiary support.

But it is more than a bit disingenuous (and a trap for the unwary) to suggest that an examiner may take Official Notice improperly.

**It is not proper to take Official Notice of items to establish a "state of the art." While this has been geared to "state of the art" in terms of the traditional 102/103 factors, conventionality is ALSO a state of the art condition.

Sadly, this path by the Office merely means that my clients will have to pay extra for an additional examination cycle with examiners trying to "slip one by" only to then have to backtrack and do what they were supposed to do in the first instance when I challenge them.