Prompted by the Federal Circuit decision in Berkheimer v. HP Inc , the USPTO issued a new memorandum directed to “Changes in Examination Procedure Pertaining to Subject Matter Eligibility.” The memorandum is intended to revise Section 2106.07 of the Manual of Patent Examining Procedure.

The Berkheimer decision  ruled that while patent eligibility is ultimately a question of law, “whether something is well-understood, routine, and conventional to a skilled artisan at the time of the patent is a factual determination.”

Under the new guidance, Examiners are advised that it is not sufficient to merely allege that a claimed element  (or combination of claimed elements) is “well-understood, routine or conventional” without one of the four items that follow:

1. citing express statement made in the specification or by an applicant  demonstrating the conventional nature of the element;

2. citing a Federal Circuit decision noting the conventional nature of the claimed element;

3. citing a publication that demonstrates the conventional nature of the claimed element or describes the state of the art and that which is well-known and in common use in the relevant industry; or

4. taking official notice of the conventional nature.

The memorandum provides that the fourth option should only be used when “the examiner is certain, based upon his or her personal knowledge, that the additional element(s) represents well-understood, routine, conventional activity engaged in by those in the relevant art, in that the additional elements are widely prevalent or in common use in the relevant field, comparable to the types of activity or elements that are so well-known that they do not need to be described in detail in a patent application to satisfy 35 U.S.C. § 112(a).” Should applicant challenge official notice, the examiner is must provide one of items 1 to 3 discussed above or issue an affidavit setting forth the facts supporting the examiner’s position.

Also noted in the memo: “whether something is disclosed in a document that is considered a ‘printed publication’ under 3 5 U.S. C § 102 is a distinct inquiry from whether something is well-known, routine, conventional activity. A document may be a printed publication but still fail to establish that something it describes is well-understood, routine, conventional activity.”