Berkheimer Memorandum: A Big Shift, in Fact

On April 19, the USPTO issued one of the more consequential and examination-changing opinions on the subject of § 101 since its initial memoranda on Alice. The memorandum discusses Step 2B (“significantly more”) of the Mayo/Alice test as applied by the Federal Circuit’s opinion in Berkheimer v. HP (which is discussed here). In that case, the Federal Circuit found that while the appealed claims were directed to an abstract idea (Step 2A), the district court erred in concluding that there were no factual questions underlying the § 101 inquiry. The Berkheimer court focused on certain language in claims that contained limitations “directed to [an] arguably unconventional inventive concept described in the specification.” The court reversed the finding of ineligibility as the defendant offered no evidence that the claims in fact recited “well‑understood, routine, and conventional” techniques.

The USPTO’s memorandum on April 19 acknowledging Berkheimer addresses this “limited question:” whether additional elements “represent well-understood, routine, conventional activity” and the particular reasoning required to support such a finding. The Office acknowledges for the first time that evidence may be required: “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.” (Contrast this with the July 2015 Update, at 7: “a rejection should only be made if an examiner relying on his or her expertise in the art can readily conclude in the Step 2B inquiry that the additional elements do not amount to significantly more”)

The memo—especially Section III—seemingly suggests that a claim recites “significantly more” unless proven otherwise: “an additional element (or combination of elements) is not well-understood, routine, or conventional unless the examiner finds, and expressly supports a rejection in writing with” certain evidence. This evidence is limited to the following four categories, each of which reminds examiners that the element(s) in question must be explicitly found to be well‑understood, routine, or conventional—not merely known.

1. A citation to an express statement in the specification or a statement made during prosecution about the element(s) in question. Evidence of this type must describe the elements as well‑understood, routine, or conventional, or otherwise in a manner that indicates that the elements are so well‑known that they do not need description in the specification to meet 35 U.S.C. § 112(a).
2. A citation to a court decision in MPEP § 2106.05(d)(II) which notes the well-understood, routine, or conventional nature of the element(s) in question.
3. A citation to a publication that demonstrates the well-understood, routine, or conventional nature of the element(s). Note that merely finding additional elements in a single patent or publication is not sufficient to demonstrate its well‑known nature. Rather, the “nature of the publication and the description of the elements . . . would need to demonstrate that the additional elements are widely prevalent or in common use in the relevant field.”
4. A statement that the Examiner is taking Official Notice, which can be challenged under § 2144.04.  If the Examiner does take Notice and the applicant challenges the Notice, the Examiner must provide evidence according to falling into one of categories (1) through (3) above or submit an affidavit or declaration with particular factual statements and explanation supporting their assertions.  

The PTO notes at the very end that the MPEP will be updated to incorporate the changes in this memo.

The USPTO attempts to make this memo sound like a “clarification.” But this is, in fact, a big departure from current practice. One small example: current MPEP § 2106.05(d)(I) notes that “courts have not required evidence to support a finding that additional elements were well‐understood, routine, conventional activities, but instead have treated the issue as a matter appropriate for judicial notice,” and even advises examiners against performing a “prior art search.” Contrast this with category 3 above, which the USPTO notes must demonstrate the well‑understood nature of any such element(s).

Given the high bar for evidence that an examiner may wish to rely upon, it may be to your advantage to push back on rejections under § 101 that do not cite sufficient evidence for Step 2B. This also further highlights the need to have the examiner make explicit what rationale and/or support is being relied upon not only for § 101 rejections, but any patentability rejections.