It is time to take a deeper look and derive or strengthen some strategies to argue for patentable subject matter eligibility during patent prosecution, now that the first round articles on the USPTO Memorandum April 19, 2018, SUBJECT: Changes in Examination Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.) have been digested. One strategy is suggested by the opening paragraph on page 1 of the memo, which says, “this memorandum addresses the limited question of whether an additional element (or combination of the additional elements) represents well-understood, routine, conventional activity.” Examiners have been arguing that individual elements are well-understood, then ignoring arguments that the combination of elements (i.e., the claim as a whole) is not shown in the Office action to be well-understood, routine conventional activity. The memo makes it clear that it is necessary for a proper rejection under 35 USC §101 for the combination of the elements to be shown (in the Office action) as well-understood, routine, conventional activity through a factual determination (see page 3), which can be a citation to an express statement in the specification or a statement made by applicant during prosecution, a citation to a court decision, a citation to a publication, or a statement of official notice (see page 4). If the Office action just has assertions, and no factual determinations, this can be argued as improper, citing the memo. Facts matter. If the examiner takes official notice, this can be challenged as discussed in MPEP §2144.03, requiring the examiner to produce a factual determination.

Another strategy is suggested in the middle of page 2. An argument that the claims are directed to an improvement, provided the specification explains how the improvement is brought about by the limitations in the claims, gains strength from Berkheimer. The relevant issue is whether the claims do or do not include limitations that realize these purported improvements. This is again a factual determination. Note that the Federal Circuit holding applied to some of the dependent claims, not necessarily to the independent claim or all of the claims. From this is derived the caution to construct the independent claim carefully to include sufficient limitations that realize the improvement described in the specification. This may be accomplished at the time of filing, or through amendment during patent prosecution. Also, a strategy is derived of observing whether the Office action has properly examined all of the dependent claims as well as the independent claims for subject matter eligibility, and arguing the rejection is improper when such is not the case, citing the memo.

Next, a strategy is derived from the bottom of page 2, in which the memo notes, “the Federal Circuit drew a distinction between what is well-understood, routine, conventional, and what is simply known in the prior art”, requiring a factual determination. Moreover (on page 3), “a showing that additional elements are obvious under 35 USC §103, or even that they lack novelty under 35 USC §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.” Also, “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. An argument that the examiner has not produced a factual determination in this regard for the combination of additional elements in the claim as a whole has strength and consistency with the memo, and might be even stronger accompanied by an argument that the examiner has not produced a factual determination in this regard even under 35 USC §103 or 35 USC §102, in cases where either there is no remaining rejection under 35 USC §103 or 35 USC §102, or such rejection has been argued strongly.

If an examiner cites an express statement in the specification or a statement made by an applicant during prosecution (see pages 3 and 4), as a factual determination that additional element(s) are well-understood, routine and conventional, a strategy of detailed analysis of the cited statement in response could counter an overbroad and thus unfounded assertion in the Office action, when such is the case. Analysis could reveal that the statement made in the specification or during prosecution pertains to a specific element, or a specific aspect of a known use of an element, but does not more broadly establish that claimed aspects or the element in combination with other elements i.e., the “combination of additional elements”, is well-understood, routine and conventional. This strategy is also applicable to citation of a court decision or a publication (see page 4), and can be set forth as a factual determination, and even as a factual determination that refutes the examiner’s factual determination.

A final strategy is derived from the wrap up of the memo (see page 5), which reminds that, “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 USC §112(a).” In the event that an office action has issued a double rejection, under both 35 USC §101 for subject matter in eligibility and 35 USC §112(a) for lack of claims enablement in the specification, analysis of the additional element(s) could produce a factual determination effective to counter both rejections. It may be that some aspect(s) of the additional element(s) are described in an examiner cited publication or court decision for the §101 rejection, in sufficient detail that those aspects of the additional element(s) do not need to be written in the specification, but that further aspects of the additional element(s) and/or combination with other elements in the claims are not described in the cited publication or court decision. This can be set forth as a factual finding countering the §112(a) rejection, and also as a factual finding that the further aspects of the additional element(s) and/or the additional element(s) in combination with other elements in the claims are not “well-understood, routine, conventional activity”, thus also countering the §101 rejection.

Takeaways

Assertions of patent subject matter ineligibility made by an examiner must be backed by factual determinations: citation of an express statement in the specification or prosecution, a court decision, a publication, or a statement of official notice, and if not so can be argued as improper.

Official notice can be challenged, requiring examiner production of a factual determination. A factual determination made by an examiner can be countered by analysis and a factual determination made in response.

Drafting initially, or amending, so that the claim limitations bring about an improvement described in the specification, and arguing such as a factual determination applies towards subject matter eligibility.

Dependent claims as well as independent claims must be examined for subject matter eligibility, and a rejection without such can be argued as improper.

Arguing lack of a factual determination that additional elements are well-understood, routine, conventional activities or elements may be made stronger by a the factual determination that the combination of additional elements is not shown in a 35 USC §103 or 35 USC §102 rejection.

Detailed analysis of a cited express statement in the specification or prosecution as to scope of what is and is not disclosed may refute examiner assertion that claimed aspects or the element in combination with other elements are well-understood, routine and conventional, as a factual determination.

Analysis of an examiner cited publication or court decision may show some aspects of an element are sufficiently well known to counter a §112(a) rejection, but refute that further aspects of the element or the element in combination with additional elements are sufficiently well known to support a §101 rejection, as a factual determination.