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`~hToFeo~ UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Commissioner for Patents
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`www.uspto.gov
`
`MEMORANDUM
`
`DATE:
`
`April 19, 2018
`
`TO:
`
`FROM:
`
`Patent E~ng Corps
`
`"ff!~. Bahr
`
`
`Deputy Commissioner
`
`for Patent Examination Policy
`
`
`SUBJECT: Changes in Examination Procedure Pertaining to Subject Matter Eligibility,
`Recent Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.)
`
`The USPTO recognizes that unless careful consideration is given to the particular contours of
`subject matter eligibility (35 U.S.C. § 101), it could "swallow all of patent law." Alice Corp. v.
`CLS Bank International, 573 U.S._,_, 134 S. Ct. 2347, 2352 (2014) (citing Mayo
`Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71, 132 S. Ct. 1289, 1293-1294
`(2012)). This memorandum provides additional USPTO guidance that will further clarify how
`the USPTO is determining subject matter eligibility in accordance with prevailing jurisprudence.
`Specifically, this memorandum addresses the limited question of whether an additional element
`(or combination of additional elements) represents well-understood, routine, conventional
`activity. The USPTO is determined to continue its mission to provide clear and predictable
`patent rights in accordance with this rapidly evolving area of the law, and to that end, may issue
`further guidance in the future.
`
`The U. S. Court of Appeals for the Federal Circuit (Federal Circuit) recently issued a
`precedential decision holding that the question of whether certain claim limitations represent
`well-understood, routine, conventional activity raised a disputed factual issue, which precluded
`summary judgment that all of the claims at issue were not patent eligible. See Berkheimer v. HP
`Inc., 881F.3d1360 (Fed. Cir. 2018). Shortly thereafter, the Federal Circuit reaffirmed the
`Berkheimer standard in the context of a judgment on the pleadings and judgment as a matter of
`law. 1 While summary judgment, judgment on the pleadings, and judgment as a matter of law
`
`1 In Aatrix Software, Inc. v. Green Shades Software, Inc., 882 F.3d 1121 (Fed. Cir. 2018), the Federal Circuit
`reversed a judgment on the pleadings of ineligibility, similarly finding that whether the claims in the challenged
`patent perform well-understood, routine, conventional activities is an issue of fact. In Exergen Corp. v. Kaz USA,
`Inc., Nos. 2016-2315, 2016-2341, 2018 WL 1193529, at *1 (Fed. Cir. Mar. 8, 2018) (non-precedential), the Federal
`Circuit affirmed a district court's denial of a motion for judgment as a matter oflaw of patent ineligibility (thus
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`Gree, Inc.
`Ex. 2003
`Page 1
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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.
`
`Federal Circuit Decision in Berkheimer: In Berkheimer, the invention relates to
`L
`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.
`
`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.
`
`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.
`
`Well-Understood, Routine, Conventional Activity: While the Berkheimer decision does
`IL
`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.
`
`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.
`
`2
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`Gree, Inc.
`Ex. 2003
`Page 2
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`As set forth in MPEP § 2106.05(d)(I), 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
`
`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.
`
`Impact on Examination Procedure: This memorandum revises the procedures set forth
`IIL
`in MPEP § 2106.07(a) (Formulating a Rejection For Lack of Subject Matter Eligibility) and
`MPEP § 2106.07(b) (Evaluating Applicant's Response).
`
`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:
`
`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
`
`· 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 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").
`
`3
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`Ex. 2003
`Page 3
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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.
`
`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). An appropriate publication could include a book,
`manual, review article, or other source that describes the state of the art and discusses
`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 3 5 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 U.S. 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.
`
`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, 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.
`
`Evaluating Applicant's Response: If an applicant challenges the examiner's position that
`B.
`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
`
`3 See, e.g., Jn re Klopfenstein, 380 F.3d 1345 (Fed. Cir. 2004) (publicly displayed slide presentation); Jn re Hall, 781
`F.2d 897 (Fed. Cir. 1986) (doctoral thesis shelved in a library); Mass. Inst. ofTech. v. AB Fortia, 774 F.2d 1104,
`1108-09 (Fed. Cir. 1985) (paper orally presented at a scientific meeting and distributed upon request); Jn re Wyer,
`655 F.2d 221(CCPA1981) (patent application laid open to public inspection).
`
`4
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`Ex. 2003
`Page 4
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`understood, routine, conventional activities to those who work in the relevant field. If the
`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 (Ill)(A) above, or an affidavit or declaration under 3 7 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).
`
`The MPEP will be updated in due course to incorporate the changes put into effect by this
`memorandum.
`
`5
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`Gree, Inc.
`Ex. 2003
`Page 5
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`