83 FR 17536 - Request for Comments on Determining Whether a Claim Element Is Well-Understood, Routine, Conventional for Purposes of Subject Matter Eligibility
DEPARTMENT OF COMMERCE
Patent and Trademark Office Federal Register Volume 83, Issue 77 (April 20, 2018)
Patent and Trademark Office
Federal Register Volume 83, Issue 77 (April 20, 2018)
| Page Range | 17536-17538 | |
| FR Document | 2018-08428 |
[Federal Register Volume 83, Number 77 (Friday, April 20, 2018)] [Notices] [Pages 17536-17538] From the Federal Register Online [www.thefederalregister.org] [FR Doc No: 2018-08428] ----------------------------------------------------------------------- DEPARTMENT OF COMMERCE Patent and Trademark Office [Docket No.: PTO-P-2018-0033] Request for Comments on Determining Whether a Claim Element Is Well-Understood, Routine, Conventional for Purposes of Subject Matter Eligibility AGENCY: United States Patent and Trademark Office, Commerce. ACTION: Request for comments. ----------------------------------------------------------------------- SUMMARY: The U.S. Court of Appeals for the Federal Circuit (Federal Circuit) recently issued a decision regarding the inquiry of whether a claim limitation represents well-understood, routine, conventional activities (or elements) to a skilled artisan in the relevant field. Specifically, the Federal Circuit found that whether a claim element, or combination of elements, represents well-understood, routine, conventional activities to a skilled artisan in the relevant field is a question of fact. The United States Patent and Trademark Office (USPTO) has implemented this decision in a memorandum recently issued to the Patent Examining Corps (the Berkheimer memorandum). The Berkheimer memorandum is available to the public on the USPTO's internet website. Examiners had been previously instructed to conclude that an element (or combination of elements) is 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 Berkheimer memorandum now clarifies that such a conclusion must be based upon a factual determination that is supported as discussed in the memorandum. Aditionally the Berkheimer memorandum now also specifies that the analysis for determining whether an element (or combination of elements) is widely prevalent or in common use is the same as the analysis under 35 U.S.C. 112(a) as to whether an element is so well-known that it need not be described in detail in the patent specification. The USPTO is now seeking public comment on its subject matter eligibility guidance, and particularly its guidance in the Berkheimer memorandum to the Patent Examining Corps. DATES: Comment Deadline Date: Written comments must be received on or before August 20, 2018. ADDRESSES: Comments must be sent by electronic mail message over the internet addressed to: [email protected]. Electronic comments submitted in plain text are preferred, but also may be submitted in ADOBE[supreg] portable document format or MICROSOFT WORD[supreg] format. Comments not submitted electronically should be submitted on paper in a format that facilitates convenient digital scanning into ADOBE[supreg] portable document format. The comments will be available for viewing via the USPTO's internet website (http://www.uspto.gov). Because comments will be made available for public inspection, information that the submitter does not desire to make public, such as an address or phone number, should not be included in the comments. FOR FURTHER INFORMATION CONTACT: Carolyn Kosowski, Senior Legal Advisor, at 571-272-7688 or Matthew Sked, Senior Legal Advisor, at 571- 272-7627, both with the Office of Patent Legal Administration. SUPPLEMENTARY INFORMATION: I. Federal Circuit Decision in Berkheimer: The Federal Circuit recently issued a precedential decision holding that the question of whether certain claim limitations are well-understood, routine, conventional elements raised a disputed factual issue, which precluded summary judgment that all of the claims at issue were not patent eligible. See Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018). Shortly thereafter, the Federal Circuit reaffirmed the Berkheimer standard in the context of a judgment on the pleadings and judgment as a matter of law.\1\ While summary judgment, judgment on the pleadings, and judgment as a matter of law standards in civil litigation are generally inapplicable during the patent examination process, these decisions inform the inquiry into whether an additional element (or combination of additional elements) represents well-understood, routine, conventional activity. The USPTO has implemented this decision in the Berkheimer memorandum, which was recently issued to the Patent Examining Corps and is available to the public on the USPTO's internet website. --------------------------------------------------------------------------- \1\ See Aatrix Software, Inc. v. Green Shades Software, Inc., 882 F.3d 1121 (Fed. Cir. 2018) (reversing a judgment on the pleadings of ineligibility, finding that whether the claims in the challenged patent perform well-understood, routine, conventional activities is an issue of fact); Exergen Corp. v. Kaz USA, Inc., Nos. 2016-2315, 2016-2341, 2018 WL 1193529, at *1 (Fed. Cir. Mar. 8, 2018) (non-precedential) (affirming a district court's denial of a motion for judgment as a matter of law of patent ineligibility, thus upholding the district court's conclusion that the claims were drawn to a patent eligible invention, concluding that the district court's fact finding that the claimed combination was not proven to be well- understood, routine, conventional was not clearly erroneous). --------------------------------------------------------------------------- The USPTO recognizes that unless careful consideration is given to the particular contours of subject matter eligibility (35 U.S.C. 101), it could ``swallow all of patent law.'' Alice Corp. v. CLS Bank International, 573 U.S. ___, ___, 134 S. Ct. 2347, 2352 (2014) (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71 (2012)). The Berkheimer memorandum provides additional USPTO guidance that will further clarify how the USPTO is determining subject matter eligibility in accordance with prevailing jurisprudence. Specifically, the Berkheimer memorandum addresses the limited question of whether an additional element (or combination of additional elements) represents well-understood, routine, conventional activity. 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. II. Well-Understood, Routine, Conventional Activity: The USPTO's current understanding of the judicial framework distinguishing patents and applications that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible [[Page 17537]] applications of those concepts--the Mayo-Alice framework--is set forth in section 2106 of the Manual of Patent Examining Procedure (MPEP). While the Berkheimer decision does not change the basic subject matter eligibility framework as set forth in MPEP Sec. 2106, it does provide clarification as to the inquiry into whether an additional element (or combination of additional elements) represents well-understood, routine, conventional activity. Specifically, the Federal Circuit held that ``[w]hether something is well-understood, routine, and conventional to a skilled artisan at the time of the patent is a factual determination.'' Berkheimer, 881 F.3d at 1369. As set forth in MPEP Sec. 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. The Berkheimer memorandum clarifies that such a conclusion must be based upon a factual determination that is supported as discussed in section III below. The Berkheimer memorandum further clarifies that the analysis as to whether an element (or combination of elements) is widely prevalent or in common use is the same as the analysis under 35 U.S.C. 112(a) as to whether an element is so well-known that it need not be described in detail in the patent specification.\2\ --------------------------------------------------------------------------- \2\ See Genetic Techs. Ltd. v. Merial LLC, 818 F.3d 1369, 1377 (Fed. Cir. 2016) (supporting the position that amplification was well-understood, routine, conventional for purposes of subject matter eligibility by observing that the patentee expressly argued during prosecution of the application that amplification was a technique readily practiced by those skilled in the art to overcome the rejection of the claim under 35 U.S.C. 112, first paragraph); see also Lindemann Maschinenfabrik GMBH v. Am. Hoist & Derrick Co., 730 F.2d 1452, 1463 (Fed. Cir. 1984) (``[T]he specification need not disclose what is well known in the art.''); In re Myers, 410 F.2d 420, 424 (CCPA 1969) (``A specification is directed to those skilled in the art and need not teach or point out in detail that which is well-known in the art.''); Exergen Corp., 2018 WL 1193529, at *4 (holding that ``[l]ike indefiniteness, enablement, or obviousness, whether a claim is directed to patent eligible subject matter is a question of law based on underlying facts,'' and noting that the Supreme Court has recognized that ``the inquiry `might sometimes overlap' with other fact-intensive inquiries like novelty under 35 U.S.C. 102''). --------------------------------------------------------------------------- The question of whether additional elements represent well- understood, routine, conventional activity is distinct from patentability over the prior art under 35 U.S.C. 102 and 103. This is because a showing that additional elements are obvious under 35 U.S.C. 103, or even that they lack novelty under 35 U.S.C. 102, is not by itself sufficient to establish that the additional elements are well- understood, routine, conventional activities or elements to those in the relevant field. See MPEP Sec. 2106.05. As the Federal Circuit explained: ``[w]hether a particular technology is well-understood, routine, and conventional goes beyond what was simply known in the prior art. The mere fact that something is disclosed in a piece of prior art, for example, does not mean it was well-understood, routine, and conventional.'' Berkheimer, 881 F.3d at 1369. III. Impact on Examination Procedure: The Berkheimer memorandum revises the procedures set forth in MPEP Sec. 2106.07(a) (Formulating a Rejection For Lack of Subject Matter Eligibility) and MPEP Sec. 2106.07(b) (Evaluating Applicant's Response). A. Formulating Rejections: In a step 2B analysis, 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, one or more of the following: 1. A citation to an express statement in the specification or to a statement made by an applicant during prosecution that demonstrates the well-understood, routine, conventional nature of the additional element(s). A specification demonstrates the well-understood, routine, conventional nature of additional elements when it describes the additional elements as well-understood or routine or conventional (or an equivalent term), as a commercially available product, or in a manner that indicates that the additional elements are sufficiently well-known that the specification does not need to describe the particulars of such additional elements to satisfy 35 U.S.C. 112(a). 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. 2. A citation to one or more of the court decisions discussed in MPEP Sec. 2106.05(d)(II) as noting the well-understood, routine, conventional nature of the additional element(s). 3. A citation to a publication that demonstrates the well- understood, routine, conventional nature of the additional element(s). An appropriate publication could include a book, manual, review article, or other source that describes the state of the art and discusses what is well-known and in common use in the relevant industry. It does not include all items that might otherwise qualify as a ``printed publication'' as used in 35 U.S.C. 102.\3\ Whether something is disclosed in a document that is considered a ``printed publication'' under 35 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. See Exergen Corp., 2018 WL 1193529, at *4 (the single copy of a thesis written in German and located in a German university library considered to be a ``printed publication'' in Hall ``would not suffice to establish that something is `well-understood, routine, and conventional activity previously engaged in by scientists who work in the field' ''). The nature of the publication and the description of the additional elements in the publication would need to demonstrate 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). For example, while U.S. patents and published applications are publications, merely finding the additional element in a single patent or published application would not be sufficient to demonstrate that the additional element is well- understood, routine, conventional, unless the patent or published application demonstrates that the additional element are widely prevalent or in common use in the relevant field. --------------------------------------------------------------------------- \3\ See, e.g., In re Klopfenstein, 380 F.3d 1345 (Fed. Cir. 2004) (publicly displayed slide presentation); In re Hall, 781 F.2d 897 (Fed. Cir. 1986) (doctoral thesis shelved in a library); Mass. Inst. of Tech. v. AB Fortia, 774 F.2d 1104, 1108-09 (Fed. Cir. 1985) (paper orally presented at a scientific meeting and distributed upon request); In re Wyer, 655 F.2d 221 (CCPA 1981) (patent application laid open to public inspection). --------------------------------------------------------------------------- 4. A statement that the examiner is taking official notice of the well-understood, routine, conventional nature of the additional element(s). This option should be used only 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). Procedures for taking official notice and addressing an [[Page 17538]] applicant's challenge to official notice are discussed in MPEP Sec. 2144.03. B. Evaluating Applicant's Response: If an applicant challenges the examiner's position that the additional element(s) is well-understood, routine, conventional activity, 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 examiner has taken official notice per paragraph (4) of section (III)(A) above that an element(s) is well- understood, routine, conventional activity, and the applicant challenges the examiner's position, specifically stating that such element(s) is not well-understood, routine, conventional activity, the examiner must then provide one of the items discussed in paragraphs (1) through (3) of section (III)(A) above, or an affidavit or declaration under 37 CFR 1.104(d)(2) setting forth specific factual statements and explanation to support his or her position. As discussed previously, to represent well-understood, routine, conventional activity, the additional elements must be 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). The MPEP will be updated in due course to incorporate the changes put into effect the Berkheimer memorandum. As discussed previously, the Berkheimer memorandum is available to the public on the USPTO's internet website. The USPTO is seeking public comment on its subject matter eligibility guidance, and particularly its guidance in the Berkheimer memorandum. Dated: April 18, 2018. Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office. [FR Doc. 2018-08428 Filed 4-19-18; 8:45 am] BILLING CODE 3510-16-P
![17536 Federal Register / Vol. 83, No. 77 / Friday, April 20, 2018 / Notices
FOR FURTHER INFORMATION CONTACT: Kim website. Examiners had been previously patent eligible. See Berkheimer v. HP
Iverson, Public Information Officer, instructed to conclude that an element Inc., 881 F.3d 1360 (Fed. Cir. 2018).
SAFMC; phone: (843) 571–4366 or toll (or combination of elements) is well- Shortly thereafter, the Federal Circuit
free: (866) SAFMC–10; fax: (843) 769– understood, routine, conventional reaffirmed the Berkheimer standard in
4520; email: kim.iverson@safmc.net. activity only when the examiner can the context of a judgment on the
SUPPLEMENTARY INFORMATION: Agenda readily conclude that the element(s) is pleadings and judgment as a matter of
items for the Spiny Lobster Advisory widely prevalent or in common use in law.1 While summary judgment,
Panel include the following: A review of the relevant industry. The Berkheimer judgment on the pleadings, and
Spiny Lobster Amendment 13 (gear memorandum now clarifies that such a judgment as a matter of law standards
requirements and cooperative conclusion must be based upon a factual in civil litigation are generally
management procedures), development determination that is supported as inapplicable during the patent
of a Fishery Performance Report for discussed in the memorandum. examination process, these decisions
spiny lobster, and a discussion of Aditionally the Berkheimer inform the inquiry into whether an
regulatory reform. Advisory panel memorandum now also specifies that additional element (or combination of
members will provide recommendations the analysis for determining whether an additional elements) represents well-
as appropriate. element (or combination of elements) is understood, routine, conventional
widely prevalent or in common use is activity. The USPTO has implemented
Special Accommodations the same as the analysis under 35 U.S.C. this decision in the Berkheimer
The meeting is physically accessible 112(a) as to whether an element is so memorandum, which was recently
to people with disabilities. Requests for well-known that it need not be issued to the Patent Examining Corps
auxiliary aids should be directed to the described in detail in the patent and is available to the public on the
Council office (see ADDRESSES) 3 days specification. The USPTO is now USPTO’s internet website.
prior to the public meeting. seeking public comment on its subject The USPTO recognizes that unless
Note: The times and sequence specified in matter eligibility guidance, and careful consideration is given to the
this agenda are subject to change. particularly its guidance in the particular contours of subject matter
Berkheimer memorandum to the Patent eligibility (35 U.S.C. 101), it could
Authority: 16 U.S.C. 1801 et seq. Examining Corps. ‘‘swallow all of patent law.’’ Alice Corp.
Dated: April 17, 2018. DATES: Comment Deadline Date: Written v. CLS Bank International, 573 U.S. __
Tracey L. Thompson, comments must be received on or before _, ___, 134 S. Ct. 2347, 2352 (2014)
Acting Deputy Director, Office of Sustainable August 20, 2018. (citing Mayo Collaborative Servs. v.
Fisheries, National Marine Fisheries Service. Prometheus Labs., Inc., 566 U.S. 66, 71
ADDRESSES: Comments must be sent by
(2012)). The Berkheimer memorandum
[FR Doc. 2018–08340 Filed 4–19–18; 8:45 am] electronic mail message over the
provides additional USPTO guidance
BILLING CODE 3510–22–P internet addressed to: Eligibility2018@
that will further clarify how the USPTO
uspto.gov.
Electronic comments submitted in is determining subject matter eligibility
DEPARTMENT OF COMMERCE in accordance with prevailing
plain text are preferred, but also may be
jurisprudence. Specifically, the
submitted in ADOBE® portable
Patent and Trademark Office Berkheimer memorandum addresses the
document format or MICROSOFT
limited question of whether an
[Docket No.: PTO–P–2018–0033] WORD® format. Comments not
additional element (or combination of
submitted electronically should be
Request for Comments on Determining additional elements) represents well-
submitted on paper in a format that
Whether a Claim Element Is Well- understood, routine, conventional
facilitates convenient digital scanning
activity. The USPTO is determined to
Understood, Routine, Conventional for into ADOBE® portable document
Purposes of Subject Matter Eligibility continue its mission to provide clear
format. The comments will be available and predictable patent rights in
AGENCY: United States Patent and for viewing via the USPTO’s internet accordance with this rapidly evolving
Trademark Office, Commerce. website (http://www.uspto.gov). Because area of the law and, to that end, may
comments will be made available for issue further guidance in the future.
ACTION: Request for comments.
public inspection, information that the II. Well-Understood, Routine,
SUMMARY: The U.S. Court of Appeals for submitter does not desire to make Conventional Activity: The USPTO’s
the Federal Circuit (Federal Circuit) public, such as an address or phone current understanding of the judicial
recently issued a decision regarding the number, should not be included in the framework distinguishing patents and
inquiry of whether a claim limitation comments. applications that claim laws of nature,
represents well-understood, routine, FOR FURTHER INFORMATION CONTACT: natural phenomena, and abstract ideas
conventional activities (or elements) to Carolyn Kosowski, Senior Legal from those that claim patent-eligible
a skilled artisan in the relevant field. Advisor, at 571–272–7688 or Matthew
Specifically, the Federal Circuit found Sked, Senior Legal Advisor, at 571–272– 1 See Aatrix Software, Inc. v. Green Shades
that whether a claim element, or 7627, both with the Office of Patent Software, Inc., 882 F.3d 1121 (Fed. Cir. 2018)
Legal Administration. (reversing a judgment on the pleadings of
combination of elements, represents ineligibility, finding that whether the claims in the
well-understood, routine, conventional SUPPLEMENTARY INFORMATION: challenged patent perform well-understood,
activities to a skilled artisan in the I. Federal Circuit Decision in routine, conventional activities is an issue of fact);
relevant field is a question of fact. The Berkheimer: The Federal Circuit Exergen Corp. v. Kaz USA, Inc., Nos. 2016–2315,
sradovich on DSK3GMQ082PROD with NOTICES
2016–2341, 2018 WL 1193529, at *1 (Fed. Cir. Mar.
United States Patent and Trademark recently issued a precedential decision 8, 2018) (non-precedential) (affirming a district
Office (USPTO) has implemented this holding that the question of whether court’s denial of a motion for judgment as a matter
decision in a memorandum recently certain claim limitations are well- of law of patent ineligibility, thus upholding the
issued to the Patent Examining Corps understood, routine, conventional district court’s conclusion that the claims were
drawn to a patent eligible invention, concluding
(the Berkheimer memorandum). The elements raised a disputed factual issue, that the district court’s fact finding that the claimed
Berkheimer memorandum is available to which precluded summary judgment combination was not proven to be well-understood,
the public on the USPTO’s internet that all of the claims at issue were not routine, conventional was not clearly erroneous).
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![Federal Register / Vol. 83, No. 77 / Friday, April 20, 2018 / Notices 17537
applications of those concepts—the sufficient to establish that the additional publication’’ as used in 35 U.S.C. 102.3
Mayo-Alice framework—is set forth in elements are well-understood, routine, Whether something is disclosed in a
section 2106 of the Manual of Patent conventional activities or elements to document that is considered a ‘‘printed
Examining Procedure (MPEP). While the those in the relevant field. See MPEP publication’’ under 35 U.S.C. 102 is a
Berkheimer decision does not change § 2106.05. As the Federal Circuit distinct inquiry from whether
the basic subject matter eligibility explained: ‘‘[w]hether a particular something is well-known, routine,
framework as set forth in MPEP § 2106, technology is well-understood, routine, conventional activity. A document may
it does provide clarification as to the and conventional goes beyond what was be a printed publication but still fail to
inquiry into whether an additional simply known in the prior art. The mere establish that something it describes is
element (or combination of additional fact that something is disclosed in a well-understood, routine, conventional
elements) represents well-understood, piece of prior art, for example, does not activity. See Exergen Corp., 2018 WL
routine, conventional activity. mean it was well-understood, routine, 1193529, at *4 (the single copy of a
Specifically, the Federal Circuit held and conventional.’’ Berkheimer, 881 thesis written in German and located in
that ‘‘[w]hether something is well- F.3d at 1369. a German university library considered
understood, routine, and conventional III. Impact on Examination Procedure: to be a ‘‘printed publication’’ in Hall
to a skilled artisan at the time of the The Berkheimer memorandum revises ‘‘would not suffice to establish that
patent is a factual determination.’’ the procedures set forth in MPEP something is ‘well-understood, routine,
Berkheimer, 881 F.3d at 1369. § 2106.07(a) (Formulating a Rejection and conventional activity previously
As set forth in MPEP § 2106.05(d)(I), For Lack of Subject Matter Eligibility) engaged in by scientists who work in
an examiner should conclude that an and MPEP § 2106.07(b) (Evaluating the field’ ’’). The nature of the
element (or combination of elements) Applicant’s Response). publication and the description of the
represents well-understood, routine, additional elements in the publication
A. Formulating Rejections: In a step
conventional activity only when the would need to demonstrate that the
2B analysis, an additional element (or
examiner can readily conclude that the additional elements are widely
combination of elements) is not well-
element(s) is widely prevalent or in prevalent or in common use in the
understood, routine or conventional
common use in the relevant industry. relevant field, comparable to the types
unless the examiner finds, and
The Berkheimer memorandum clarifies of activity or elements that are so well-
expressly supports a rejection in writing
that such a conclusion must be based known that they do not need to be
with, one or more of the following:
upon a factual determination that is described in detail in a patent
supported as discussed in section III 1. A citation to an express statement application to satisfy 35 U.S.C. 112(a).
below. The Berkheimer memorandum in the specification or to a statement For example, while U.S. patents and
further clarifies that the analysis as to made by an applicant during published applications are publications,
whether an element (or combination of prosecution that demonstrates the well- merely finding the additional element in
elements) is widely prevalent or in understood, routine, conventional a single patent or published application
common use is the same as the analysis nature of the additional element(s). A would not be sufficient to demonstrate
under 35 U.S.C. 112(a) as to whether an specification demonstrates the well- that the additional element is well-
element is so well-known that it need understood, routine, conventional understood, routine, conventional,
not be described in detail in the patent nature of additional elements when it unless the patent or published
specification.2 describes the additional elements as application demonstrates that the
The question of whether additional well-understood or routine or additional element are widely prevalent
elements represent well-understood, conventional (or an equivalent term), as or in common use in the relevant field.
routine, conventional activity is distinct a commercially available product, or in 4. A statement that the examiner is
from patentability over the prior art a manner that indicates that the taking official notice of the well-
under 35 U.S.C. 102 and 103. This is additional elements are sufficiently understood, routine, conventional
because a showing that additional well-known that the specification does nature of the additional element(s). This
elements are obvious under 35 U.S.C. not need to describe the particulars of option should be used only when the
103, or even that they lack novelty such additional elements to satisfy 35 examiner is certain, based upon his or
under 35 U.S.C. 102, is not by itself U.S.C. 112(a). A finding that an element her personal knowledge, that the
is well-understood, routine, or additional element(s) represents well-
2 See Genetic Techs. Ltd. v. Merial LLC, 818 F.3d conventional cannot be based only on understood, routine, conventional
1369, 1377 (Fed. Cir. 2016) (supporting the position the fact that the specification is silent activity engaged in by those in the
that amplification was well-understood, routine, with respect to describing such element.
conventional for purposes of subject matter relevant art, in that the additional
eligibility by observing that the patentee expressly 2. A citation to one or more of the elements are widely prevalent or in
argued during prosecution of the application that court decisions discussed in MPEP common use in the relevant field,
amplification was a technique readily practiced by § 2106.05(d)(II) as noting the well- comparable to the types of activity or
those skilled in the art to overcome the rejection of
the claim under 35 U.S.C. 112, first paragraph); see
understood, routine, conventional elements that are so well-known that
also Lindemann Maschinenfabrik GMBH v. Am. nature of the additional element(s). they do not need to be described in
Hoist & Derrick Co., 730 F.2d 1452, 1463 (Fed. Cir. 3. A citation to a publication that detail in a patent application to satisfy
1984) (‘‘[T]he specification need not disclose what 35 U.S.C. 112(a). Procedures for taking
is well known in the art.’’); In re Myers, 410 F.2d
demonstrates the well-understood,
420, 424 (CCPA 1969) (‘‘A specification is directed routine, conventional nature of the official notice and addressing an
to those skilled in the art and need not teach or additional element(s). An appropriate
sradovich on DSK3GMQ082PROD with NOTICES
point out in detail that which is well-known in the 3 See, e.g., In re Klopfenstein, 380 F.3d 1345 (Fed.
publication could include a book,
art.’’); Exergen Corp., 2018 WL 1193529, at *4 Cir. 2004) (publicly displayed slide presentation);
(holding that ‘‘[l]ike indefiniteness, enablement, or
manual, review article, or other source In re Hall, 781 F.2d 897 (Fed. Cir. 1986) (doctoral
obviousness, whether a claim is directed to patent that describes the state of the art and thesis shelved in a library); Mass. Inst. of Tech. v.
eligible subject matter is a question of law based on discusses what is well-known and in AB Fortia, 774 F.2d 1104, 1108–09 (Fed. Cir. 1985)
underlying facts,’’ and noting that the Supreme common use in the relevant industry. It (paper orally presented at a scientific meeting and
Court has recognized that ‘‘the inquiry ‘might distributed upon request); In re Wyer, 655 F.2d 221
sometimes overlap’ with other fact-intensive
does not include all items that might (CCPA 1981) (patent application laid open to public
inquiries like novelty under 35 U.S.C. 102’’). otherwise qualify as a ‘‘printed inspection).
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applicant’s challenge to official notice SUMMARY: The Committee is proposing Deletions
are discussed in MPEP § 2144.03. to add a product and services to the The following products and services
B. Evaluating Applicant’s Response: If Procurement List that will be furnished are proposed for deletion from the
an applicant challenges the examiner’s by the nonprofit agencies employing Procurement List:
position that the additional element(s) is persons who are blind or have other
well-understood, routine, conventional severe disabilities, and deletes products Products
activity, the examiner should reevaluate and services previously furnished by NSN(s)—Product Name(s):
whether it is readily apparent that the such agencies. 8410–01–466–4892—Slacks, Dress, Coast
additional elements are in actuality Guard, Women’s, Blue, 16JS
well-understood, routine, conventional DATES: Comments must be received on 8410–01–466–4905—Slacks, Dress, Coast
activities to those who work in the or before: May 20, 2018. Guard, Women’s, Blue, 12MS
8410–01–466–4906—Slacks, Dress, Coast
relevant field. If the examiner has taken ADDRESSES: Committee for Purchase Guard, Women’s, Blue, 14MS
official notice per paragraph (4) of From People Who Are Blind or Severely 8410–01–466–4912—Slacks, Dress, Coast
section (III)(A) above that an element(s) Disabled, 1401 S. Clark Street, Suite Guard, Women’s, Blue, 18MR
is well-understood, routine, 715, Arlington, Virginia, 22202–4149. 8410–01–466–4914—Slacks, Dress, Coast
conventional activity, and the applicant Guard, Women’s, Blue, 8ML
challenges the examiner’s position, FOR FURTHER INFORMATION CONTACT: For 8410–01–466–4915—Slacks, Dress, Coast
specifically stating that such element(s) further information or to submit Guard, Women’s, Blue, 12ML
is not well-understood, routine, comments contact: Amy B. Jensen, 8410–01–466–4926—Slacks, Dress, Coast
conventional activity, the examiner Telephone: (703) 603–7740, Fax: (703) Guard, Women’s, Blue, 14WS
603–0655, or email CMTEFedReg@ 8410–01–466–4930—Slacks, Dress, Coast
must then provide one of the items Guard, Women’s, Blue, 12WR
discussed in paragraphs (1) through (3) AbilityOne.gov.
8410–01–466–4935—Slacks, Dress, Coast
of section (III)(A) above, or an affidavit SUPPLEMENTARY INFORMATION: This Guard, Women’s, Blue, 12WL
or declaration under 37 CFR 1.104(d)(2) notice is published pursuant to 41 8410–01–466–6326—Slacks, Dress, Coast
setting forth specific factual statements U.S.C. 8503 (a)(2) and 41 CFR 51–2.3. Its Guard, Women’s, Blue, 4JR
and explanation to support his or her 8410–01–466–6332—Slacks, Dress, Coast
purpose is to provide interested persons Guard, Women’s, Blue, 6JS
position. As discussed previously, to an opportunity to submit comments on
represent well-understood, routine, 8410–01–466–6485—Slacks, Dress, Coast
the proposed actions. Guard, Women’s, Blue, 8JL
conventional activity, the additional
Additions 8410–01–466–6486—Slacks, Dress, Coast
elements must be widely prevalent or in Guard, Women’s, Blue, 4MS
common use in the relevant field, 8410–01–466–8155—Slacks, Dress, Coast
comparable to the types of activity or If the Committee approves the
Guard, Women’s, Blue, 10JS
elements that are so well-known that proposed additions, the entities of the
8410–01–466–8157—Slacks, Dress, Coast
they do not need to be described in Federal Government identified in this Guard, Women’s, Blue, 12JS
detail in a patent application to satisfy notice will be required to procure the 8410–01–466–8161—Slacks, Dress, Coast
35 U.S.C. 112(a). product and services listed below from Guard, Women’s, Blue, 18JS
The MPEP will be updated in due the nonprofit agencies employing 8410–01–466–8172—Slacks, Dress, Coast
course to incorporate the changes put persons who are blind or have other Guard, Women’s, Blue, 18JL
severe disabilities. 8410–01–466–8176—Slacks, Dress, Coast
into effect the Berkheimer
Guard, Women’s, Blue, 16MS
memorandum. The following product and services 8410–01–466–8195—Slacks, Dress, Coast
As discussed previously, the are proposed for addition to the Guard, Women’s, Blue, 18ML
Berkheimer memorandum is available to Procurement List for production by the 8410–01–466–8197—Slacks, Dress, Coast
the public on the USPTO’s internet nonprofit agencies listed: Guard, Women’s, Blue, 20ML
website. The USPTO is seeking public 8410–01–466–8199—Slacks, Dress, Coast
Product
comment on its subject matter eligibility Guard, Women’s, Blue, 16WS
guidance, and particularly its guidance NSN—Product Name: 6220–01–266–1651— 8410–01–466–8203—Slacks, Dress, Coast
in the Berkheimer memorandum. Spotlight, .52 AMPS 28V BA15S bulb, Guard, Women’s, Blue, 18WL
yellow/white output, HMMWV 8410–01–466–8207—Slacks, Dress, Coast
Dated: April 18, 2018. Mandatory Source of Supply: Cincinnati Guard, Women’s, Blue, 20WL
Andrei Iancu, Association for the Blind and Visually 8410–01–466–8211—Slacks, Dress, Coast
Under Secretary of Commerce for Intellectual Impaired, Cincinnati, OH Guard, Women’s, Blue, 22WL
Property and Director of the United States Mandatory for: 100% of the requirement of Mandatory Source of Supply: VGS, Inc.,
Patent and Trademark Office. the Department of Defense Cleveland, OH
[FR Doc. 2018–08428 Filed 4–19–18; 8:45 am] Contracting Activity: Defense Commissary Contracting Activity: Defense Logistics
Agency Agency Troop Support
BILLING CODE 3510–16–P
Distribution: C-List
Services
Services Service Type: Food Service and Food Service
COMMITTEE FOR PURCHASE FROM Service Types: Furniture Design, Attendant
PEOPLE WHO ARE BLIND OR Configuration and Installation Service Mandatory for: Fort Hood: Postwide, Fort
SEVERELY DISABLED Sourcing, Warehousing, Assembly and Hood, TX
Kitting Service Tool & MRO Sourcing Mandatory Source of Supply: Unknown
Procurement List; Proposed Additions and Fulfillment Service Contracting Activity: Dept of the Army,
sradovich on DSK3GMQ082PROD with NOTICES
and Deletions Mandatory for: USPFO Connecticut, National W40M NORTHEREGION Contract Ofc
Guard Bureau, National Guard Armory, Service Type: Janitorial/Custodial Service
AGENCY: Committee for Purchase From 360 Broad Street, Hartford, CT Mandatory for: Naval & Marine Corps
People Who Are Blind or Severely Mandatory Source of Supply: Industries for Readiness Reserve Center, Providence, RI
Disabled. the Blind, Inc., West Allis, WI Mandatory Source of Supply: The Fogarty
ACTION: Proposed additions to and Contracting Activity: United States Property Center, North Providence, RI
deletions from the Procurement List. and Fiscal Office (USPFO), Connecticut Contracting Activity: Dept of the Navy, Navy
National Guard, ANGB, CT Crane Center
VerDate Sep<11>2014 17:44 Apr 19, 2018 Jkt 244001 PO 00000 Frm 00019 Fmt 4703 Sfmt 4703 E:\FR\FM\20APN1.SGM 20APN1](https://thefederalregister.org/doc/83_FR_17613/page/3.svg)
Document Created: 2018-04-20 00:02:35
Document Modified: 2018-04-20 00:02:35
| Category | Regulatory Information | |
| Collection | Federal Register | |
| sudoc Class | AE 2.7: GS 4.107: AE 2.106: | |
| Publisher | Office of the Federal Register, National Archives and Records Administration | |
| Section | Notices | |
| Action | Request for comments. | |
| Dates | Comment Deadline Date: Written comments must be received on or before August 20, 2018. | |
| Contact | Carolyn Kosowski, Senior Legal Advisor, at 571-272-7688 or Matthew Sked, Senior Legal Advisor, at 571- 272-7627, both with the Office of Patent Legal Administration. | |
| FR Citation | 83 FR 17536 |
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