Berkheimer Prompts USPTO to Modify § 101 Exam Procedure

Following the Federal Circuit’s recent discussion in Berkheimer v. HP, Inc., of the requisite factual inquiry when applying the Alice/Mayo patent-eligibility test of 35 U.S.C. § 101, United States Patent and Trademark Office has issued a memorandum revising procedures examiners are to follow in formulating rejections for lack of subject matter eligibility and in evaluating applicants’ responses to such rejections.  Notably, the revised procedures list specific written support that a patent examiner must provide to support a finding, under step 2B of the Alice test, that “an additional element (or combination of elements) is not well-understood, routine or conventional.” (Emphasis added.)

As a refresher, Manual of Patent Examination Procedure (MPEP) § 2106 sets forth a “subject matter eligibility test” as follows:

  • Step 1: Is the claim outside any statutory category, i.e., not directed to a process, machine, manufacture or composition of matter?
  • Step 2A: Is the claim directed to a judicial exception, i.e., a law of nature, a natural phenomenon, or an abstract idea?
  • Step 2B: If the answer in Step 2A is yes, does the claim recite additional elements that amount to significantly more than the judicial exception?

Step 1, of course, rarely comes into play, and what most of us think of as the two-part patent-eligibility test is really Steps 2A and 2B.

According to the revised procedures, a finding under Step 2B that “an additional element (or combination of elements) is not well-understood, routine or conventional unless the Examiner finds, and expressly support the rejection in writing with, one or more of:”

  1. A statement made by the applicant in the specification or during prosecution.
  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 demonstrating “the well-understood, routine, conventional nature of the additional element(s),” which is not necessarily everything qualifying as a “printed publication” under 35 USC § 102, because, for example, a prior art patent might describe a feature without demonstrating that it is “well-understood, routine, [or] conventional.”
  4. Official Notice, which can be challenged as set forth in MPEP § 2144.

Lessons for Practice

The USPTO appears to have imposed heretofore nonexistent evidentiary requirements for patent-eligibility rejections to be sustained, and seems to have provided practitioners with additional tools for responding to patent-eligibility rejections.

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