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The USPTO recently provided a Memorandum and Examiner training related to a Federal Circuit decision, Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018). The Memo and training give hope that the patent office is taking seriously the need for consistency in applying rejections under 35 U.S.C. §101. While the Memo and training apply to Examiners, it remains an open question how the Patent Trial and Appeal Board (PTAB) will consider the contents of the Memo.

In Ex Parte Jadran Bandic, et al., (Decision) decided by the PTAB on April 30, 2018, this question appears to be partially answered. The case hinges on a §101 analysis of a single independent claim with five steps. The PTAB first reverses the Examiner’s rejection under Alice Step One as failing to consider the claim as a whole, stating that the “The Examiner’s asserted abstract idea is based on “the steps within the [claimed] method of comparing and determining” and ignores the claim as a whole” (Decision, pages 4-5). Despite the sufficiency of the Step One reversal for disposing of the Appeal, the PTAB also considered the Alice Step Two analysis.

In the Alice Step Two section of the Decision, the PTAB found that “The Examiner’s analysis of the second step of the Alice analysis is conclusory and unsupported” (Decision, page 6). The PTAB continued by making it clear that unsupported statements from an Examiner are insufficient for complying with Step Two (See, e.g., Decision, pages 5-6). This sentiment is certainly suggested and supported by the Berkheimer case, but more importantly, the analysis by the PTAB here upholds the requirements presented in the Memo that are placed on Examiners in making a Step Two rejection. Namely, that absent a citation to an Applicant’s admission, a court decision, or a publication “demonstrating the well-understood, routine, conventional nature of the additional element(s),” a rejection under Step Two is inappropriate (Memo, pages 3-4).

Thus, the Decision validates the Memo’s interpretation of Berkeheimer requiring Examiners to “expressly support[] a rejection in writing” with a citation to an Applicant’s statement, court decision, or publication, and further that the citation must demonstrate not only that the identified additional elements were known, but well-known, routine, and conventional.

My thanks to Jeff Cobia of Schwegman, Lundberg & Woessner, P.A., for this posting.

On May 7, 2018, the USPTO posted the slides for the Examiner Training in relation to the Berkheimer decision, Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018), titled Subject Matter Eligibility: Well-Understood, Routine, and Conventional Activity.  The slides start off by making it clear the Berkheimer decision does not change the basic subject matter eligibility framework, but does clarify how to determine if an element(s) represent well-understood, routine, or conventional activity in step 2B of the subject matter eligibility analysis.  The slides distinctly point out that obviousness or lack of novelty does not establish that the additional elements are well-understood, routine, or conventional activities.

As seen in the Berkheimer Memorandum, the examiners are now instructed to expressly support a rejection with one of the following four options.  Option 1: A statement by the applicant in either the specification or during prosecution.  Option 2: a citation to a court decision discussed in MPEP § 2106.05(d)(II).  Option 3: a publication, with the slides including a reminder that merely finding the additional element in a single patent or application would not be sufficient to establish the element as well-understood, routine, or conventional, unless that patent or application demonstrates that the additional  element is widely prevalent or in common use in the relevant field.  Option 4: the examiner may take official notice.  The slides strongly caution using this option and state it should be used only when the examiner is certain the additional element is well-understood, routine, and conventional.

The examiners were reminded to consider the additional elements individually and in combination, and thus to support a rejection of a claim where the examiner takes the position that two elements are routine, then the combination of those two elements must also be shown to represent well-understood, routine, and conventional activity.  When the examiner’s position is challenged by the applicant, the examiner should reevaluate whether it is readily apparent that the additional elements are in actuality well-understood, routine, conventional activities to those who work in the relevant field.  If the applicant is responding to when the examiner has taken official notice, then the examiner should reevaluate  and provide support from options 1-3.

My thanks to David Dyer at Schwegman, Lundberg & Woessner, P.A., for this post.