On May 7, 2018, the USPTO posted the slides for the Examiner Training in relation to the Berkheimer decision, Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018), titled Subject Matter Eligibility: Well-Understood, Routine, and Conventional Activity.  The slides start off by making it clear the Berkheimer decision does not change the basic subject matter eligibility framework, but does clarify how to determine if an element(s) represent well-understood, routine, or conventional activity in step 2B of the subject matter eligibility analysis.  The slides distinctly point out that obviousness or lack of novelty does not establish that the additional elements are well-understood, routine, or conventional activities.

As seen in the Berkheimer Memorandum, the examiners are now instructed to expressly support a rejection with one of the following four options.  Option 1: A statement by the applicant in either the specification or during prosecution.  Option 2: a citation to a court decision discussed in MPEP § 2106.05(d)(II).  Option 3: a publication, with the slides including a reminder that merely finding the additional element in a single patent or application would not be sufficient to establish the element as well-understood, routine, or conventional, unless that patent or application demonstrates that the additional  element is widely prevalent or in common use in the relevant field.  Option 4: the examiner may take official notice.  The slides strongly caution using this option and state it should be used only when the examiner is certain the additional element is well-understood, routine, and conventional.

The examiners were reminded to consider the additional elements individually and in combination, and thus to support a rejection of a claim where the examiner takes the position that two elements are routine, then the combination of those two elements must also be shown to represent well-understood, routine, and conventional activity.  When the examiner’s position is challenged by the applicant, the examiner should reevaluate whether it is readily apparent that the additional elements are in actuality well-understood, routine, conventional activities to those who work in the relevant field.  If the applicant is responding to when the examiner has taken official notice, then the examiner should reevaluate and provide support from options 1-3.