`Connexions Loyalty, Inc. v. Maritz Holdings Inc. - CBM2018-0037
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`standards in civil litigation are generally inapplicable during the patent examination process,
`Berkheimer informs the inquiry into whether an additional element (or combination of additional
`elements) represents well-understood, routine, conventional activity.
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`I.
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`Federal Circuit Decision in Berklzeimer: In Berkheimer, the invention relates to
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`digitally processing and archiving files in a digital asset management system. The patent
`specification explains that the system eliminates redundant storage of common text and graphical
`elements, which improves system operation efficiency and reduces storage costs. With respect
`to Mayo/Alice step 1 (step 2A in the USPTO’S guidance), the Federal Circuit held that the claims
`are directed to the abstract ideas of parsing and comparing data (claims 1—3 and 9), parsing,
`comparing, and storing data (claim 4), and parsing, comparing, storing, and editing data (claims
`5-7) based upon a comparison of these claims to claims held to be abstract in prior Federal
`Circuit decisions. Berkheimer, 881 F.3d at 1366—67. With respect to Mayo/Alice step 2 (step 2B
`in the USPTO’s guidance), 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.” Id. at 1367—68. While observing that the specification
`discussed purported improvements (e. g., reducing redundancy and enabling one-to—many editing
`as the purported improvements), the Federal Circuit held claims 1-3 and 9 ineligible because
`they do not include limitations that realize these purported improvements. Id. at 1369-70.
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`In contrast, the Federal Circuit held that claims 4-7 do contain limitations directed to purported
`improvements described in the specification (e. g., claim 4 recites “storing a reconciled object
`structure in the archive without substantial redundancy,” which the specification explains
`improves system operating efficiency and reduces storage costs), 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. Id. at 1370. The Federal Circuit
`therefore reversed the district court’s decision on summary judgment that claims 4-7 are patent
`ineligible, and remanded for further fact finding as to the eligibility of those claims. Id. at 1370-
`71.
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`Finally, the Federal Circuit drew a distinction between what is well—understood, routine,
`conventional, and what is simply known in the prior art, cautioning that the mere fact that
`something is disclosed in a piece of prior art does not mean it was a well—understood, routine,
`conventional activity or element.
`Id. at 1369.
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`Well-Understood, Routine, Conventional Activity: While the Berkhez'mer decision does
`II.
`not change the basic subject matter eligibility framework as set forth in MPEP § 2106, it does
`provide clarification as to the inquiry into whether an additional element (or combination of
`additional elements) represents well-understood, routine, conventional activity. Specifically, the
`Federal Circuit held that “[w]hether something is well-understood, routine, and conventional to a
`skilled artisan at the time of the patent is a factual determination.” Id. at 1369.
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`upholding the district court’s conclusion that the claims were drawn to a patent eligible invention), concluding that
`the district court’s fact finding that the claimed combination was not proven to be well-understood, routine,
`conventional was not clearly erroneous.
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`As set forth in MPEP § 2106.05(d)(l), an examiner should conclude that an element (or
`combination of elements) 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 relevant industry. This memorandum clarifies that such a conclusion must be based upon a
`factual determination that is supported as discussed in section III below. 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.2
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`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. See MPEP § 2106.05. As the Federal Circuit explained: “[w]hether a particular
`technology is well—understood, routine, and conventional goes beyond what was simply known
`in the prior art. The mere fact that something is disclosed in a piece of prior art, for example,
`does not mean it was well-understood, routine, and conventional.” Berkheimer, 881 F.3d at
`1369.
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`Impact on Examination Procedure: This memorandum revises the procedures set forth
`III.
`in MPEP § 2106.07(a) (Formulating a Rejection For Lack of Subject Matter Eligibility) and
`MPEP § 2106.07(b) (Evaluating Applicant’s Response).
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`Formulating Rejections: In a step 2B analysis, an additional element (or combination of
`A.
`elements) is not well—understood, routine or conventional unless the examiner finds, and
`expressly supports a rejection in writing with, one or more of the following:
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`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). A specification demonstrates the well-understood,
`routine, conventional nature of additional elements when it describes 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). A finding that an element is
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`4 2 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 Ca, 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”).
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`well—understood, routine, or conventional cannot be based only on the fact that the
`specification is silent with respect to describing such element.
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`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).
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`A citation to a publication that demonstrates the well-understood, routine, conventional
`nature of the additional element(s). An appropriate publication could include a book,
`manual, review article, or other source that describes the state of the art and discusses
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`what is well-known and in common use in the relevant industry. It does not include all
`items that might otherwise qualify as a “printed publication” as used in 35 U.S.C. § 102.3
`Whether something is disclosed in a document that is considered a “printed publication”
`under 35 U.S.C § 102 is a distinct inquiry from whether something is well-known,
`routine, conventional activity. A document may be a printed publication but still fail to
`establish that something it describes is well-understood, routine, conventional activity.
`See Exergen Corp, 2018 WL 1193529, at *4 (the single copy of a thesis written in
`German and located in a German university library considered to be a “printed
`publication” in Hall “would not suffice to establish that something is ‘well-understood,
`routine, and conventional activity previously engaged in by scientists who work in the
`field’”). 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). For example, while US. patents and published
`applications are publications, merely finding the additional element in a single patent or
`published application would not be sufficient to demonstrate that the additional element
`is well—understood, routine, conventional, unless the patent or published application
`demonstrates that the additional element are widely prevalent or in common use in the
`relevant field.
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`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, that the additional
`element(s) represents well—understood, routine, conventional activity engaged in by those
`in the relevant art, in 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). Procedures for taking official notice and addressing an
`applicant’s challenge to official notice are discussed in MPEP § 2144.03.
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`Evaluating Applicant’s Response: If an applicant challenges the examiner’s position that
`the additional element(s) is well-understood, routine, conventional activity, the examiner should
`reevaluate whether it is readily apparent that the additional elements are in actuality well-
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`3 See, e. g, In re Klopfenstein, 380 F.3d 1345 (Fed. Cir. 2004) (publicly displayed slide presentation); In re Hall, 781
`F .2d 897 (Fed. Cir. 1986) (doctoral thesis shelved in a library); Mass. Inst. of Tech. v. AB Fortia, 774 F.2d 1 104,
`1108-09 (Fed. Cir. 1985) (paper orally presented at a scientific meeting and distributed upon request); In re Wyer,
`655 F .2d 221 (CCPA 1981) (patent application laid open to public inspection).
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`understood, routine, conventional activities to those who work in the relevant field. If the
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`examiner has taken official notice per paragraph (4) of section (III)(A) above that an element(s)
`is well-understood, routine, conventional activity, and the applicant challenges the examiner’s
`position, specifically stating that such element(s) is not well-understood, routine, conventional
`activity, the examiner must then provide one of the items discussed in paragraphs (1) through (3)
`of section (III)(A) above, 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. As discussed
`previously, to represent well—understood, routine, conventional activity, the additional elements
`must be 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).
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`The MPEP will be updated in due course to incorporate the changes put into effect by this
`memorandum.
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