Proving the Factual Underpinnings of Eligibility

by Dennis Crouch

Director Iancu has made clear that the current state of patent eligibility jurisprudence is untenable.  Examiners need clear guidance — something he and I both see as lacking in the Supreme Court jurisprudence.  In addition to being ambiguous, we also share the perspective that the Alice/Mayo test unduly restricts the scope of eligible subject matter.  The PTO’s action here involves several fronts: (1) issuing guidance that is as-clear-as-possible for examiners and applicants; (2) working with Congress to legislatively broaden eligibility scope; (3) using the PTO’s to push public sentiment toward supporting strong and broad patent rights (when an underlying invention truly exists).

On the first front, the USPTO has: (1) issued a new “Berkheimer memorandum” focusing on the Federal Circuit’s holding in Berkheimer that”[w]hether something is well-understood, routine, and conventional to a skilled artisan at the time of the patent is a factual determination;” and (2) issued a Request for Public Comment on USPTO “subject matter eligibility guidance, and particularly … guidance in the Berkheimer memorandum to the Patent Examining Corps.”

The USPTO follows a multi-step process in determining patent eligibility.  First, the office considers whether the invention meets the express statutory requirements under Section 101 (“process, machine, manufacture, or composition of matter, or . . . improvement thereof”).  This first step is at times called either Step 0 or Step 1 of the eligibility analysis.  After satisfying the statute, the PTO must then consider whether the atextual limitations apply (abstract idea, law of nature, natural phenomenon).  In Alice/Mayo, the Supreme Court explained that this later inquiry involves two sub-steps identified as either (a) Alice/Mayo Step 1 and 2 or (b) Step 2A and 2B of the USPTO Eligibility Guidance.   In the two sub-steps, the Agency must first determine whether the claim is directed toward one of the eligibility exceptions. Then, if so directed, determine whether the claim includes “significantly more” than the ineligible concept — such as an “inventive concept.”

Although eligibility is considered a question of law, an open issue is the extent that  underlying elements are questions of fact.  In Berkheimer, the Federal Circuit started to answer this question — by holding that “whether a claim element or combination of elements is well-understood, routine and conventional to a skilled artisan in the relevant field is a question of fact.”

Running with that holding the Berkheimer memo requires examiners base any conclusion of well-understoodness upon evidence. Running in the background here is a reminder that patent examination begins with an assumption of patent eligibility unless the examiner shows otherwise.   In the memo, the PTO identifies four ways to prove that an element is well-understood in the art:

  1. An express admission by the applicant;
  2. A citation to a PTO-approved court decision holding that a the particular element at issue is well-understood in the art;
  3. “A citation to a publication that demonstrates the well-understood, routine, conventional nature of the additional element.” Here, the focus is not simply whether the element was known in the prior art, but whether it was “widely prevalent or in common use in the relevant field.” Here, the USPTO draws in written-description doctrine – noting that this is “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); or
  4. Taking “official notice” of the well-understoodness of the element.  The memorandum cautions that “[t]his option should be used only when the examiner is certain, based upon his or her personal knowledge, that the additional element 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).”  Further, if an applicant challenges the “official notice” then the examiner must provide direct evidence to satisfy the element.

The PTO is looking for commentary by August 20, 2018 to Eligibility2018@uspto.gov.

21 thoughts on “Proving the Factual Underpinnings of Eligibility

  1. 6

    What is probably most disappointing about the timing of Oil States and SAS is that the ONGOING nature of THIS thread will be soon forgotten (and will need to be resurrected).

    Even more so (given the boost to the “State” and especially the administrative agency), the details as noted in this particular thread – and in particular with all due humility – those items that I have put forth – will be critical in making sure that the “gift” of the “Gist/Abstract” sword is properly sheathed away from wanton and conclusory wielding by the administrative state.

  2. 5

    Do I need to explain again why “conventional/routine” is just the extreme edge of what will qualify as “insufficiently innovative” to save a claim that covers otherwise ineligible subject matter?

    Or is it totally obvious to most of you out there (never seemed like a particularly difficult concept to me but, hey, everyone’s mileage varies).

    Just raise your hand and I’ll be happy to explain why if the allegedly “significantly more” is “in the prior art”, then that is pretty much all a defendant or the PTO will need to show to satisfy 101. Any CAFC decision to the contrary is just a pile of cr @p that will ultimately be overturned because of the absurd and unjust results that will inevitably follow.

    1. 5.1

      There is nothing in your post here that touches on the issue in any cogent way.

  3. 4

    Gee, if the PTO (or Dennis – LOL) was interested in “clarity” maybe they could take five minutes and tell everyone what’s conventional and well-understood.

    Is that a really difficult task? In the computer context?

    Oh right: computers and logic were invented just yesterday. It’s like magic. Someday we’ll understand how they really work but that day is far away in the distant future. Right, Dennis?

  4. 3

    What strikes me as remarkable is the command that the determination “cannot be based only on the fact that the specification is silent with respect to describing such element”. Applicant’s get to enjoy the position that claimed elements with bare descriptions are both sufficiently supported and unconventional.

    1. 3.1

      Softie woftie applicant’s get to enjoy the position that claimed elements with bare descriptions are both sufficiently supported and unconventional.

      Fixed for accuracy.

      Coddling the lowest form of patent applicant is a long-standing practice at the USPTO. Because reasons!

      That practice has nothing to do with entitled rich people and their endless attempts to grab more power/money, of course.

    2. 3.2

      Applicant’s get to enjoy the position that claimed elements with bare descriptions are both sufficiently supported and unconventional.

      Do you have a citation to any authority that “claimed elements with bare descriptions are [inherently] sufficiently supported”?

      1. 3.2.1

        For my part, I would cite Hybritech Inc. v. Monoclonal Antibodies Inc., 802 F.2d 1367, 1384 (Fed. Cir. 1986) (“[A] patent need not teach, and preferably omits, what is well known in the art”) for that proposition.

        I am sympathetic to Ben’s complaint that one should be able to infer conventionality from a lack of detail presented in the application. If the applicant considers that the reader is already so well-acquainted with some aspect of the technology that it does not need to be described, then that should be enough to establish its “conventionality” prima facie.

        The idea, however, that every claimed element needs to be described in the detail strikes me as nuts. There is no upside to verbiage for verbiage’s sake. If it really is well known, then one should not (not just “should not have to,” but “should not” tout court) weary the reader with details that everyone already knows.

        1. 3.2.1.1

          then that should be enough to establish its “conventionality” prima facie.

          No.

          That is not what conventional means.

          Merely known is not conventional.
          Even if that merely known is merely known by those persons having ordinary skill in the art.

          Being in widespread use IS conventional.

    3. 3.3

      What strikes me as remarkable is the command that the determination “cannot be based only on the fact that the specification is silent with respect to describing such element”. Applicant’s get to enjoy the position that claimed elements with bare descriptions are both sufficiently supported and unconventional.

      Not necessarily… Consider the alternative – that a specification that is silent regarding an element is proof that the element is well known. That means that a failure to meet the requirements of 112 would be evidence of anticipatory prior art – or, said another way, a lack of a sufficiently enabled written description would, ironically, not be non-enabled prior art.

      Example: I draft a patent application directed to a time travel machine, but fail to describe how my flux capacitor works (because, of course, it doesn’t)… but that silence some how makes working flux capacitors “conventional and well known” for the purposes of 101?

      It’s far more accurate to reject the application under 112 than 101 in such a case. Let the Applicant try to overcome the rejection by arguing that it’s a conventional element well known in the field, rather than assuming that it is due to their silence and forcing them to rebut it.

      1. 3.3.1

        Ok. I can cheerfully agree that 112 rejections are better than 101 rejections in 99.9% of these cases anyway. You have convinced me (for whatever little my opinion is worth).

  5. 2

    Number 4 is DOA – anyone can figure that out by looking at the existing guidelines as to when Official Notice may be taken.

    (hint: it is not proper to take Official Notice in order to establish the “state of the art.” – and that include the state of what is or is not conventional).

    Number 2 is likely also on life support – what the courts do (with Judicial Notice) is NOT the same as what an administrative agency may due under the APA.

    Add to that that the courts themselves have made such an unmitigated mess of things that to call what they pass off as “facts” and “proper evidentiary support” ae the opposite of those things.

    As to 6’s (still in error) comment of “Wholly false. 101 does not function like 102 does.” – I corrected you the VERY FIRST TIME you tried to say that, 6.

    Overall – and with all due humility – this is exactly as I have been putting the points on the table.

    You’all are welcome.

  6. 1

    “Running in the background here is a reminder that patent examination begins with an assumption of patent eligibility unless the examiner shows otherwise. ”

    Wholly false. 101 does not function like 102 does.

    1. 1.1

      6,

      Surely 35 USC falls under the examination rubric of (emphasis added)

      35 U.S.C. 131 Examination of application.

      The Director shall cause an examination to be made of the application and the alleged new invention; and if on such examination it appears that the applicant is entitled to a patent under the law, the Director shall issue a patent therefor.

      Since you like to play with the word “entitled,” I do not see how you differentiate this from the same word in 35 USC 102.

      Where do you get your “wholly false” view from?

      1. 1.1.1

        (s) 101 says “may obtain a patent”
        (s) 102 says “A person shall be entitled to a patent unless”

        So yes, there is some argument for sections 101 and 102 having different burdens.

        Though I have yet to find those arguments clearly elucidated (probably due to my lack of particular interest, but still . . . )

      2. 1.1.2

        “Surely 35 USC falls under the examination rubric of (emphasis added)”

        It sure does. An examination must be carried out, and it must appear that it actually gets in 101, and is not excluded subject matter, for the entitlement under 102 to even begin to need to be considered (absent compact prosecution desires). Ye olde “threshold inquiry”. If you haven’t submitted something to the office for which you may obtain a patent (as adjudged by the claims) you certainly never get to the point of being entitled. If not for compact prosecution the entitlement question should never even be addressed until it has been determined you’ve submitted something for which you may obtain a patent.

        It’s a largely academic difference for most applications as obviously the PTO will have to send notice of rejection and that will be subject to review. But still it could hypothetically matter and the USSC has been quite clear on this topic.

        1. 1.1.2.1

          It’s a largely academic difference

          Does not explain your past love affair with the word “entitled,” nor does it distinguish from entitled (under 102) versus entitled under 101 (and general examination).

          In other words, your post at 1 just does not make sense any way you want to spin it.

          1. 1.1.2.1.1

            “nor does it distinguish from entitled (under 102) versus entitled under 101 (and general examination).”

            There is only one “entitled/entitlement” mentioned in the previous statutes before 131 re re and that is in 102. There is no entitlement under 101. Rather in 101 it is setting forth what the whole patenting scheme/gubmit program is for. Entitlement under the scheme comes later in 102.

            “In other words, your post at 1 just does not make sense any way you want to spin it.”

            Sure it does re re 101 does not function like 102 does. And there certainly is not assumption of patent ELIGIBILITY under 101 like there is of ENTITLEMENT under 102. What you may obtain a patent for is not an entitlement to a patent or anything having to do with what you appear to be entitled to under 131 (or 151 for that matter). And you certainly do not enjoy a presumption that you have presented something for which you may obtain a patent.

            1. 1.1.2.1.1.1

              131 covers everything – maybe you missed that.

        2. 1.1.2.2

          This is a really good point, and one that I had never considered before. Thanks for the little nugget of enlightenment.

          1. 1.1.2.2.1

            Greg, your reply here appears to respond to 6’s 1.1.2 (never get tot he point of entitled) which quite misses the point to which 6 is responding to (my post at 1.1: 35 U.S.C. 131 carries the very same “entitled” language that 6 wants to evade by stating the “entitled” language is in 102, but not 101).

            You appear (and I provide the possibility that the comment threading merely makes it so appear) to miss the very same point that 6 misses: 35 U.S.C. 131 sweeps in BOTH 101 and 102, and thus the attempted point by 6 of noting that there is no “entitled” in 101 is a logical fallacy.

            Especially given how he has enjoyed attempting to use that word in the “hand-out” sense of other public-works programs like welfare or food stamps.

            Entitled is there in an overarching sense.

            Of course, ALL aspects of section 35 need to be met before the entitlement is granted, but that is every bit true for 102 as it is for 101. Hence, 6’s attempted point is a nullity.

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