April 26, 2018

Updated Examination Procedure For 101 Rejections Announced in USPTO Berkheimer Memo

By Leanne M. Rakers, Principal; Michael R. Nye, Principal; Nicholas S. Drysdale, Principal

Executive Summary

Andrei Iancu, confirmed to lead the USPTO in February 2018, has made his views clear on the current state of subject matter eligibility under 35 U.S.C. § 101. At the U.S. Chamber of Commerce, he stated that the current law on § 101 “has created a more unpredictable patent landscape that is hurting innovation …”

In a memo dated April 19, 2018 — the second memo on the topic of § 101 during Mr. Iancu’s tenure — the USPTO has attempted to rein in what an Examiner can consider to be well-understood, routine, or conventional (collectively referred to below simply as “routine”). This should make it harder for Examiners to make conclusory allegations that aspects of an Applicant’s claim are routine, and give practitioners another tool to use in arguing § 101 rejections.

Additional Detail

If a claim is found to be directed to an abstract idea or other judicial exception, the claim can be saved by reciting something significantly more than the abstract idea. However, elements that are judged routine generally do not count as significantly more.

Specifically, the April 19 memo clarifies that an element (or combination of elements) is not routine simply because the element is found in a prior art reference. Instead, the memo states “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.” This immediately suggests a trap for the unwary: while attempting to argue that an element is routine to overcome a § 112(a) rejection, the Applicant may be making statements against interest with respect to § 101.

In more detail, the memo dictates that Examiners should not find that an additional claim element (or combination of claim elements) is routine unless the Examiner finds and expressly supports (in writing) the finding via one or more of:

  1. A citation to an express statement in the specification or a statement made during prosecution that demonstrates the routine nature of the additional element(s)
  2. A citation to one or more court decisions noting the routine nature of the additional element(s)
  3. A citation to a publication that demonstrates the routine nature of the additional element(s)
  4. A statement that the Examiner is taking official notice of the routine nature of the additional element(s)

Additionally, the memo requires the Examiner to reconsider a finding that an element is routine if challenged by an Applicant. If the Examiner has chosen option (4) above, a challenge by the Applicant requires the Examiner to support their official notice position via option (1), (2), or (3) above or to supply a supporting affidavit or declaration setting forth specific factual statements and explanation.

Take Home

It appears the memo will generally make it more difficult for Examiners to support rejections under § 101 where the Examiner alleges that one or more claim elements are routine. Examiners may also be more reluctant to allege that additional claim features are routine without providing some documentary support. An Applicant’s challenge may now be more likely to prompt the Examiner to reconsider their position on § 101. Lastly, Applicants should consider describing in detail in their specifications additional features that may be considered under step 2 of Alice/Mayo, even though they may not be integral to their inventions.