Following the Federal Circuit’s recent decision in Berkheimer v. HP Inc., the United States Patent and Trademark Office (“Office”) has revised the examination procedures to place a higher burden on examiners rejecting claims for lack of subject matter eligibility under 35 U.S.C. § 101, thereby improving applicants’ ability to address and overcome these rejections. In particular, the Office now requires examiners to expressly provide one of four categories of factual support for an assertion that a particular claim element is well-understood, routine, and conventional under step 2B of the Alice subject matter eligibility analysis. These clearer guidelines will result in increased success in overcoming subject matter eligibility rejections.

Office Test for Eligibility

In order to determine whether a patent claim is directed to patent eligible subject matter, examiners are instructed under step 1 of the Alice test to first determine whether a claim is directed to a process, machine, manufacture, or composition of matter statutory category. If step 1 is satisfied, then a two-part eligibility analysis comprising steps 2A and 2B is applied. Step 2A requires a determination of whether the claim is directed to a judicially recognized exception.

If the claim is directed to an exception under step 2A, then step 2B requires a determination of whether the claim recites “significantly more” than the exception. One way of satisfying the “significantly more” requirement is to include a specific claim limitation that is not well-understood, routine, and conventional in the relevant field. The decision in Berkheimer has resulted in clearer guidelines on how this determination of what is not well-understood, routine, or conventional will be made. Berkheimer Decision

In Berkheimer, the Federal Circuit vacated a summary judgment finding that there was a factual dispute regarding whether the claims recited limitations that were well-understood, routine, and conventional. The patent at issue in Berkheimer related to digitally processing and archiving files in a digital asset management system and as one example included a claim that recited “storing a reconciled object structure in the archive without substantial redundancy.”

In view of statements in the patent specification that storing object structures in the archive without substantial redundancy improved system operating efficiency and reduced storage costs, and that known asset management systems did not archive documents in this manner, the Federal Circuit concluded that there was a genuine issue of fact about what was well-understood, routine, and conventional such that summary judgment was improper. Accordingly, whether a claim element is well-understood, routine, and conventional is now a factual determination. New Office Guidelines

Following Berkheimer, the Office has now issued updated guidelines specifying that examiners should assert that a claim element represents well-understood, routine, and conventional activities only when they can readily conclude that the element is widely prevalent or in common use in the relevant industry. In particular, to support such a subject matter eligibility rejection under step 2B Examiners are now required to provide one of: (1) an express statement by the applicant, (2) a previous court decision, (3) a printed publication, or (4) a statement that the examiner is taking “official notice” that demonstrates the element is well-understood, routine, and conventional. While the four categories may initally appear to provide a broad basis for supporting an eligibility rejection, each category has been particularly limited by the new guidelines. 1. Express Statements

Express statements by the applicant have been limited to an explicit admission that claim element(s) are sufficiently well-known such that the particulars of the element(s) do not need to be described in a manner required to satisfy the written description requirement. Additionally, an assertion that a claim element is well-understood, routine, or conventional cannot be based only on the fact that the specification is silent with respect to describing the element. 2. Court Decision

Court decisions that can be used to support an eligibility rejection are listed in Section 2106.05(d)(II) of the Manual of Patent Examining Procedure and are currently quite limited, particularly with respect to computer-implemented technology. Additionally, applicants may often be able to distinguish their claimed technology from what is disclosed in the various recited cases. 3. Printed Publications

Printed publications must not only disclose the claim elements, but the nature of the publication and the description of the additional elements must demonstrate that the claim elements are widely prevalent or in common use in the relevant field. Accordingly, a publication that discloses a claim element may be used to support a prior art rejection, but fail to establish that the limitation is well-understood, routine, and conventional. In fact, the Office has explicitly stated that disclosure of a claim element in a single publication is insufficient to demonstrate that the element is well-understood, routine, and conventional. 4. Official Notice

The fourth category identified by the Office is only available when an examiner is certain that a claim element represents well-understood, routine, and conventional activity engaged in by those in the relevant art. Further, if an applicant challenges an examiner’s position, the examiner must provide evidence from one of the other categories or a personal declaration to support the official notice taken by the examiner that a claim element is well-understood, routine, and conventional. Conclusion With the bar significantly raised for examiners rejecting claims for lack of subject matter eligibility, such rejections will be less numerous and better-reasoned, thereby providing more certainty for applicants regarding whether their inventions qualify as eligible subject matter. To improve the odds for applicants, practitioners should be mindful of, and generally avoid, admissions in specifications and during prosecution, regarding the state of the art and what may be prevalent or in common use in a relevant field.

Additionally, applicants should consider supporting claim elements in the specification with relatively functional language targeted toward features that are not common in the art so that such language is available for incorporation into the claims during prosecution if required to traverse an eligibility rejection. In Berkheimer, the recitation of storing the reconciled object structure in the archive “without substantial redundancy,” and corresponding specification language regarding improved system operating efficiency and reduced storage costs, and the state of the art, allowed the patentee to successfully assert a factual dispute and potentially avoid a finding of invalidity of the patent. In view of the functional nature of this limitation and unclear impact on claim construction, we would recommend caution in initially incorporating this type of functional claim language, particularly with classes of software technologies that are less likely to receive patent eligible subject matter rejections.

We note that the new guidelines are just one strategic tool of many that have been successfully used by the patent practitioners at LeClairRyan to overcome subject matter eligibility rejections. We will continue to closely monitor the Office’s pronouncements, as well as decisions issued by the courts in this area of the patent law, and are available to discuss what we believe are effective approaches for avoiding and overcoming subject matter eligibility rejections.