Seven Questions for the USPTO Following the Berkheimer Memorandum

Fenwick & West LLP

Fenwick & West LLP

Hot on the heels of the Federal Circuit’s April ruling in Berkheimer v. HP, the U.S. Patent and Trademark Office issued a memorandum that, if adopted as part of the Manual of Patent Examination Procedures, would provide detailed guidance on how examiners are to decide Step 2 of the Alice analysis, and determine whether an element or elements of the claim separate it from the abstract idea and thus cover patentable subject matter. The Berkheimer decision itself is the subject of a petition by HP for further review by the Supreme Court.

In addition, following the memorandum, the USPTO also issued a Request for Comments, and in late August the office published the 32 comments submitted by a wide variety of entities, including IP organizations, law firms, corporations and associations, and individuals.

While the comments included a wealth of different suggestions, a number of common issues emerged.

First, there were concerns that the memorandum, which focused on “the limited question” of how to determine whether claim elements or a combination of elements “represents well-understood, routine, conventional activity” is confusing in its focus on specific elements. These concerns included: 

Combinations of Elements. Several commenters expressed concern that examiners will fail to consider the claims as a whole, and instead just consider elements individually. However, the Supreme Court in Alice v. CLS explained that either “an element or a combination of elements” may provide the requisite patentable subject matter.

Dependent Elements.  A number of commenters also stressed the importance of reminding the examiner to similarly analyze dependent claims as a whole, not by element. 

Second, there were comments directed to providing further clarity so examiners do not conflate the section 101 analysis of what is patentable subject matter with the other analyses the examiners conduct.

112 Conflation. The memorandum recites that “the analysis as to whether an element (or combination of elements) is widely prevalent… is the same as the analysis under 35 U.S.C. § 112(a) as to whether an element is so well know that it need not be described in detail in the patent specification.” Many entities were concerned that this would lead examiners to confuse the section 101 and 112 written description and enablement analyses.

102/103 Conflation.  Commenters expressed concern that examiners not confuse the section 101 and section 102 or section 103 prior art analyses. The memorandum emphasizes that there is a difference between what is in the prior art and what is “conventional.” Commenters variously suggested separate explanations be provided of 101 and 102 or 103 rejections, and that section 101 rejections be more detailed than 102 or 103 rejections.

Third, comments addressed the sources of proof outlined in the memorandum for what constitutes “conventional” technology. 

Citation of cases.  Commenters were concerned that the memorandum provisions permitting examiners to cite to court decision would lead to reliance on decisions that did not address the particular claim element or combinations of elements at issue in the prosecution file before them. 

Use of official notice.  Another common theme was concern that permitting an examiner to take official notice of what is “well-understood, routine, and conventional” could result in rejections that were not adequately open to scrutiny, unless the basis for that conclusion was provided. 

Admissions.  There were also multiple requests for clarification regarding whether specification statements about prior art to, or commercial availability of, claim elements—or silence about the elements—constitute admissions that the elements are “well-understood, routine, and conventional.”

The USPTO will hopefully provide additional clarity of some of these issues, and provide a clear framework for prosecution of eligibility.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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