On April 20, 2018, the USPTO published (https://www.gpo.gov/fdsys/pkg/FR-2018-04-20/pdf/2018-08428.pdf) in the Federal Register a “Request for Comments on Determining Whether a Claim Element is Well-Understood, Routine, Conventional for Purposes of Subject Matter eligibility” that references a memorandum to the Examiner Corps the day before pertaining to examination procedure regarding Subject Matter Eligibility (https://www.uspto.gov/sites/default/files/documents/memo-berkheimer-20180419.PDF). The public comment period ends on August 20, 2018.

The purpose of the Memo was to clarify examination of subject matter eligibility following a recent Federal Circuit decision (Berkheimer v. HP Inc, 881 F.3d 1360 (Fed. Cir. 2018)- http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/17-1437.Opinion.2-6-2018.1.PDF. The memo explains:

As set forth in MPEP § 2106.05(d)(I), an examiner should conclude that an element (or combination of elements) represents well-understood, routine, conventional activity only when the examiner can readily conclude that the element(s) is widely prevalent or in common use in the relevant industry. This memorandum clarifies that such a conclusion must be based upon a factual determination that is supported as discussed in section III below. This memorandum further clarifies that the analysis as to whether an element (or combination of elements) is widely prevalent or in common use is the same as the analysis under 35 U.S.C. § 112(a) as to whether an element is so well-known that it need not be described in detail in the patent specification.

The question of whether additional elements represent well-understood, routine, conventional activity is distinct from patentability over the prior art under 35 U.S.C. §§ 102 and 103. This is because a showing that additional elements are obvious under 35 U.S.C. § 103, or even that they lack novelty under 35 U.S.C. § 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. See MPEP § 2106.05. As the Federal Circuit explained: "[w]hether a particular technology is well-understood, routine, and conventional goes beyond what was simply known in the prior art. 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.

The Memo and the Notice seek to explain that subject matter eligibility “must be based upon a factual determination that is supported. . .” and “that the analysis for determining whether an element (or combination of elements) is widely prevalent or in common use is the same as the analysis under 35 U.S.C. 112(a) as to whether an element is so well-known that it need not be described in detail in the patent specification.”

There are four key facts that the USPTO identifies are critical to the step 2B analysis for assessing patent eligibility:

  1. Citation in the specification or statement during prosecution, e.g., “that the specification does not need to describe the particulars of such additional elements to satisfy 35 U.S.C. § 112(a).”
  2. A relevant court decision
  3. A citation to a publication, e.g. “a book, manual, review article, or other source that describes the state of the art and discusses what is well-known and in common use in the relevant industry.”
  4. Official notice by an Examiner-provided the Examiner is “certain” of the fact(s) being noted.

These materials reinforce the need to key in on aspects of the invention that are not within the scope of subject matter ineligibility, particularly when drafting the specification.