USPTO issues 101 guidance limiting examiner ability to merely conclude elements are well-known, convention or routine

By Gene Quinn
April 19, 2018

USPTO issues 101 guidance limiting examiner ability to merely conclude elements are well-known, convention or routineEarlier today at the Unleashing American Innovation Symposium hosted by the National Institute of Standards and Technology, USPTO Director Andrei Iancu informed the audience in attendance that the United States Patent and Trademark Office would later in the day publish fresh guidance relating to patent eligible subject matter under 35 U.S.C. 101. It was just last week during the question and answer period after Iancu’s first major policy speech at the U.S. Chamber of Commerce, in response to a question from former Commissioner for Patents Bob Stoll, that Iancu promised new guidance within several weeks.

As is typical when a Federal Register Notice is signed, an advance copy — referred to as an unpublished version of the Notice — is made available the day before official publication in the Federal Register. The Federal Register Notice signed by Director Iancu on April 18, 2018, which relates to the Federal Circuit’s recent decision in Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018), will officially publish on Friday, April 20, 2018.

“The USPTO has issued today a Federal Register notice and memorandum to the patent examining corps in response to a recent decision by the U.S. Court of Appeals for the Federal Circuit in Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018), pertaining to subject matter eligibility,” explained Paul Fucito, a spokesman for the United States Patent and Trademark Office in the Office of Communications. “This new guidance pertains to the second step of the Alice-Mayo framework for determining subject matter eligibility, and is focused on how examiners are to analyze and document a conclusion that a claim clement is ‘well-understood, routine, conventional’ during the patent examination process.”

Berkheimer is obviously an important and helpful decision from the patentee’s perspective. The Federal Register Notice appears to also be quite helpful as well.

“[A]n 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,” the Notice reads. “A finding that an element is well-understood, routine, or conventional cannot be based only on the fact that the specification is silent with respect to describing such element.”

The Notice is significant because, in a 101 rejection, an examiner cannot simply assume that elements or a combination of elements are “well understood, routine or conventional.” Examiners will be required to either cite to an admission by the applicant in the specification, or something said during prosecution, court cases holding elements conventional, or a written publication establishing, that the element or elements are well understood, routine or conventional. The Notice explains that “official notice” is to be used very sparingly.

“The USPTO is requesting public comment on the new guidance,” Fucito explained. “The USPTO is determined to continue its mission to provide clear and predictable patent rights in accordance with this rapidly evolving area of the law, and to that end, may issue further guidance in the future.”

The deadline for receiving public comments will be 120 days from official publication in the Federal Register, which will take place on Friday, April 20, 2018.

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and founder of IPWatchdog.com. Gene is also a principal lecturer in the PLI Patent Bar Review Course and an attorney with Widerman Malek. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

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Discuss this

There are currently 22 Comments comments.

  1. temorit April 19, 2018 5:01 pm

    The best part is where the memo makes it explicit that if the Applicant challenges the Official Notice, the Examiner MUST go back and give one of the first three types of evidence. This is supposed to already be the practice for Official Notice, but as many of us know, that is not how it usually works. Usually when you challenge Official Notice, you get a response like “your challenge/rebuttal was not persuasive, so I’m now considering it admitted prior art.”

  2. Anon April 19, 2018 6:09 pm

    Unless they also change the “Official Notice memorandum,” examiners willl NOT be able to use that for the factual predicate part of the 101 analysis.

    As I have pointed out previously, Official Notice may NOT be used in any way to establish the “state of the art,” and conventionality certainly falls within the ambit of “state of the art.”

    Actual facts and proper evidentiary support will be needed for this portion of the 101 examination.

    Official Notice – no matter how “sparingly” – simply will not suffice.

  3. Anon April 19, 2018 6:11 pm

    temorit,

    Smalll – but important correction to your post: see immediately above.

  4. B April 19, 2018 6:46 pm

    From the Berkheimer memo at page 2: “While the Berkheimer decision does not change the basic subject matter eligibility framework as set forth in MPEP S2106 . . . .”

    Seriously, has anyone at the USPTO’s braintrust read MPEP 2106.07(a)(III)???

    Pretty much rewrites that whole section.

    While I’m thrilled the PTO and the courts have caught on to this whole evidence thing, its people like this are the reasons we put instructions on shampoo bottles.

  5. B April 19, 2018 6:54 pm

    To anon: “Unless they also change the “Official Notice memorandum,” examiners willl NOT be able to use that for the factual predicate part of the 101 analysis.”

    Let me just fill you in on something I saw in October 2016. Judge Hughes expressly asked the Solicitor whether Examiners will be able to provide evidence for 101 rejections, including through official notice, of whether something is well-known or routine, etc.

    I’m not saying that you’re wrong. You and I seem to agree on 95% of everything. I’m just telling you what’s on the CAFC’s collective mind.

    With that said, challenging official notice makes you right 100% of the time.

  6. B April 19, 2018 7:32 pm

    Gene,

    I know I come off a bit of an aggressive prat with my criticisms of the CAFC and the USPTO. Then again, it’s their inability to apply law, as well as provide clear direction and common sense, that have collectively costs my clients tens of millions of dollars.

    Despite Berkheimer, Aatrix and Exergen being decided months ago, the PTAB continues to do massive damage. Here’s the latest three 101 decisions published today:

    https://e-foia.uspto.gov/Foia/RetrievePdf?system=BPAI&flNm=fd2017000956-04-12-2018-1

    https://e-foia.uspto.gov/Foia/RetrievePdf?system=BPAI&flNm=fd2017000228-04-12-2018-1

    https://e-foia.uspto.gov/Foia/RetrievePdf?system=BPAI&flNm=fd2017001738-04-12-2018-1

    No 102s, no 103s – only 101 rejections on some detailed claims.

    —————————–

    Now here is the last PTAB decision that cites Berkheimer: https://e-foia.uspto.gov/Foia/RetrievePdf?system=BPAI&flNm=fd2017006995-03-30-2018-1

    The PTAB actually cites Berkheimer against the Appellant/Applicant while ignoring the central idea of evidence.

    Now look at this decision: https://e-foia.uspto.gov/Foia/RetrievePdf?system=BPAI&flNm=fd2016006613-03-28-2018-2

    When challenged on a factual dispute, the idiot panel just states: “Thus, evidence may be helpful where, for instance, facts are in dispute, but evidence is not always necessary. Appellants have not persuaded us that evidence is necessary in this case.”

    So, evidence is necessary only when the PTAB declares it to be necessary!

    This level of stupid must be vigorously practiced to be so perfected

  7. Anon April 19, 2018 7:38 pm

    Hughes was clearly wrong (as was your USPTO advisary).

    I do feel for you as you were the victim of a runaway cart of pure B$.

    In today’s environment advocates should be ready to quote chapter and verse and not let the Office violate their own guidance, rules, the APA or the court holdings.

    If the examiner will not heed the proper controls, elevation is in order. A calm and resolute discussion climbing the rings of authority as necessary should be undertaken until the Office SOP falls in line with what is required.

    (I do recognize that this is cold comfort to those already run over)

  8. Anon April 19, 2018 7:43 pm

    B @ 6,

    In that last case, did the patentee have the burden of persuasion?

    In most all cases, the answer would have been no and the PTAB decision is then a matter of clear legal error (and should be appealed).

  9. Curious April 20, 2018 8:10 am

    So, evidence is necessary only when the PTAB declares it to be necessary!

    This level of stupid must be vigorously practiced to be so perfected
    Welcome to the PTAB – where if you aren’t misinterpreting the law, you aren’t trying hard enough to affirm the examiner.

  10. Mark Nowotarski April 20, 2018 10:08 am

    It will be interesting to see how the examiner corps responds to this guidance. The key issue is how to determine if dependent claims recite statutory subject matter. There is still no need to provide evidence to support a holding that a claim is directed to an abstract idea. Will examiners start allowing dependent claims because they recite steps that go beyond the abstract idea of the independent claim or will they hold that the steps of dependent claims merely recite an additional abstract idea.

  11. B April 20, 2018 10:38 am

    “There is still no need to provide evidence to support a holding that a claim is directed to an abstract idea”

    Unless one reads Alice Corp.

    That said, you bring up a great point. One strategy examiners use is to copy an entire claim and declare “ABSTRACT,” and note that any computer components add nothing.

  12. Anon April 20, 2018 10:49 am

    I highly recommend comments to be submitted to the notice in the Federal Register today for a call for comments as to the Iancu’s “how do we handle facts.”.

    One area in particular that should be addressed: what constitutes “facts and proper evidentiary support.”

    As I read the Iancu notice, it appears that what may “pass” for facts and proper evidence might be the mere ramblings of court cases.

    This must not be allowed to happen.

    For a number of critical reasons:

    First and foremost, court cases have left a “Void for Vagueness” entirely contradictory mess, and to allow this mess to pass for “facts” and “proper evidentiary support” would nullify the meaning of those words.

    Second, the USPTO is an administrative agency and should not be allowed to bootleg from the Article III courts the notion of “Judicial Notice” as a substitute for “Official Notice” under the different controlling statute of the Administrative Procedures Act.

    Some – including CAFC judges themselves – have indicated that the application of the Supreme Court “Gist/Abstract” sword is writing law through common law evolution.

    101 is NOT something that Congress has provided to the Article III branch authority to write with common law.

    Quite in fact, the Act of 1952 expressly took that power away.

    ALL attempts to “bootleg” around what Congress did should be met with fierce resistance.

    Lastly, the protection of innovation demands that examination NOT be carried out “on the whim” of examiners “making things up” or through proxy of judges “making things up.”

    The Supreme Court may feel that they can “scriven” as sloppily as they may – but the rest of the system should not descend to that level.

  13. B April 20, 2018 12:10 pm

    HEY ANON

    ‘As I read the Iancu notice, it appears that what may “pass” for facts and proper evidence might be the mere ramblings of court cases.’

    This literally happened to one of my clients. The PTAB cited dicta and unrelated holdings in other cases as evidence in a Decision on Rehearing.

    I think that the CAFC is likely to reverse that nonsense on appeal. We’ll know in a month or two. There’s a million problems with the idea. It’s an improper application of collateral estoppel, for example. Different devices; different claim scopes; different outcomes.

    Hey, how do you argue that your client’s invention is not as technological as the invention in Trading Technologies?

    There’s a point that the 101 analysis becomes a 103 analysis, and at that point, the 101 analysis should end.

  14. anony April 20, 2018 2:07 pm

    One issue with the memo is that while evidence may be required for “additional elements” under a 2B (Alice part 2) analysis, there is no statement that evidence is required for the elements analyzed under 2A (Alice part 1).

  15. B April 20, 2018 4:54 pm

    “One issue with the memo is that while evidence may be required for “additional elements” under a 2B (Alice part 2) analysis, there is no statement that evidence is required for the elements analyzed under 2A (Alice part 1).”

    Yep – because the UPSTO braintrust is too lazy and STUPID to actually read Alice Corp (see slip op at p. 9) or McRo v. Bandai (slip op at pp. 24, 26)

    Are you listening Bob?

  16. Anon April 20, 2018 6:37 pm

    Fact and evidence are required.

    Period.

    Be it for part 1 or part 2.

    The memo not mentioning this merely means that the memo is not fully correct.

    It is NOT the memo that sets the rules – but rather, it the memo that attempts to reflect the rules *(such as from the APA which controls the administrative agency of the USPTO).

    The USPTO simply cannot do whatever it wants (and write a memo accordingly).

  17. B April 20, 2018 9:14 pm

    Fact and evidence are required.

    Period.

    Be it for part 1 or part 2.

    There is an possible exception, and the exception goes to how something is claimed. For example, in Electric Power Group, the claim was all about sampling and displaying data different types of data with the exception of a processing step, which was nothing more than “determining an instability parameter of a power grid . . . based on a measured voltage.”

    That constitutes such a high level of generality that it preempts the entire idea of determining an instability parameter of a power grid.

    This is actually pre-Alice, and akin to O’Reilly v. Morse.

    Unfortunately, Taranto couldn’t be bothered to express his opinion in terms of preemption.

    A friend of mine was recently Rule 36’ed on a claim that was nothing more than a phone used to convert a video signal from a first format to an HD format with no detail in-between. Ignoring the phone part, the claim arguably preempted all possible such conversions.

    I’m not saying I agree with the rejection – I just saying there are times when evidence isn’t necessary EXCEPT that the first format and HD format are admitted or inferred as known in the relevant art in the spec.

  18. Anon April 21, 2018 9:30 am

    Electric Power Group has been distinguished by a case that provides the reasoning that I have used.

    As I mentioned in post 12, comments to the Federal Register must stress that facts and proper evidentiary support must not be allowed to follow the “Judicial Notice” path.

    We are close to restoring sanity (leastwise, sanity that fact and proper evidentiary processes can provide). Now is not the time to “punt” this back to the whims of judges who frankly just don’t know better.

  19. Brian Pangrle April 22, 2018 3:58 pm

    Anon @18: “must not be allowed to follow the ‘Judicial Notice’ path”.

    It would be helpful to understand the genesis of “Official Notice” at the USPTO. Even “Judicial Notice” has limits, per FRE 201(f):

    Instructing the Jury. In a civil case, the court must instruct the jury to accept the noticed fact as conclusive. In a criminal case, the court must instruct the jury that it may or may not accept the noticed fact as conclusive.

    Is there a chain of cases/legislative history behind the USPTO’s “Official Notice”, particularly to make an uncontested “Official Notice” an “admission”?

  20. Anon April 22, 2018 4:26 pm

    Brian,

    One aspect of the difference is that administrative agencies fall under the APA (while the court do not). The administrative agency is simply differently constrained as to how it may treat facts.

    As I have posted – one CRITICAL aspect is that Official Notice may NOT be used to establish state of the art.

    This points out a direct fault with the recent Bahr attempt (and notice that this attempt is “glossed over” in that all that is required to overcome the Office taking such Official Notice is that the applicant merely has to challenge the taking. – Once challenged, the Office then must backtrack and supply the fact and proper evidentiary support that has always been required for such.

  21. Brian Pangrle April 22, 2018 11:24 pm

    Thanks Anon @20, I see a few more faults as well. The memo is littered with too many examples of how an examiner can satisfy without evidence that is directly on point. The other day, an examiner kept asking me why I was repeatedly saying “preponderance of the evidence”. The examiner did not know (or was not trained) as to the standard for fact finding. Hand-waving is the new standard – where policy trumps evidence. Does the IRS take “Official Notice”? If so, as to what types of facts for what purpose? If a taxpayer fails to contest “Official Notice” by the IRS (if that exists), does it become an admission of fact by the taxpayer?

  22. Brian Pangrle April 22, 2018 11:37 pm

    5 USC 566(e): The transcript of testimony and exhibits, together with all papers and requests filed in the proceeding, constitutes the exclusive record for decision in accordance with section 557 of this title and, on payment of lawfully prescribed costs, shall be made available to the parties. When an agency decision rests on official notice of a material fact not appearing in the evidence in the record, a party is entitled, on timely request, to an opportunity to show the contrary.

    https://scholarship.law.duke.edu/cgi/viewcontent.cgi?article=2308&context=dlj
    The respondent, for example, wants an opportunity to rebut or explain all the “evidence” which the examiner or agency relies upon in making its decision. Yet the agency wishes to avoid the burden of having to prove once again previously established “facts.” As a result the agencies developed the doctrine of “official notice” in administrative hearings, a concept which expands on the concept of judicial notice’, long applied in judicial proceedings. Briefly, this concept requires that an agency give the respondent prior notice and an opportunity to rebut any material facts which the agency would otherwise presume to exist.

    As said, “the agency wishes to avoid the burden of having to prove once again previously established ‘facts.’ ” As to a combination of elements, can the agency piecemeal its way through by taking Official Notice of each of the elements individually? Or, those elements cherry-picked as not being part of the “abstract idea”?

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