Do examiners really need to follow the Berkheimer memo?

Takeaway: The argument that an Alice rejection failed to follow a USPTO requirement to identify abstract ideas by way of comparison to concepts already found by the courts to be abstract is not a successful argument before the Patent Trial and Appeal Board, because the case law on which Office guidance is based does not place the same requirements on examiners as the guidance does.  The case for PTAB enforcement of the new Berkheimer memo may be stronger.

Details:

Ex parte Burchfield
Appeal No. 2016-007437; Application No. 12/016,280; Tech. Center 3600
Decided: Apr. 19, 2018

Ex parte Dominguez
Appeal No. 2016-008588; Application No. 12/903 ,916; Tech. Center 3600
Decided: Apr. 3, 2018

Ex parte Hammock
Appeal No. 2016-007736; Application No. 14/042,379; Tech. Center 3600
Decided: Apr. 3, 2018

Ex parte Hwang
Appeal No. 2017-007960; Application No. 13/809,835; Tech. Center 2600
Decided: Mar. 20, 2018

Ex parte Austin
Appeal No. 2016-004640; Application No. 12/787,721; Tech. Center 3600
Decided: Jan. 11, 2018

Dozens of Board decisions, the above listing including only a few among the more recent, contain nearly identical language redressing appellant arguments that an examiner's subject-matter eligibility rejections fail to follow USPTO guidance requiring examiners to liken the alleged abstract idea to which the claims are said to be directed to concepts already found by the courts to be abstract.  It suffices to quote from two such cases:

Austin:

Appellants first argue that the rejection under § 101 cannot be sustained because the Examiner has failed to comply with the USPTO’s “July 2015 Update on Subject Matter Eligibility” . . . and, more particularly, because the Examiner failed in the Final Office Action to “explain how the alleged abstract idea recited in the invention is similar to one of the concepts previously identified [as patent-ineligible] by the courts” . . . .  The July 2015 Update instructs examiners to refer to the body of case law precedent in order to identify abstract ideas by way of comparison to concepts already found to be abstract, and explains that “[t]his discussion is meant to . . . ensure that a claimed concept is not identified as an abstract idea unless it is similar to at least one concept that the courts have identified as an abstract idea” . . . .  That argument is not persuasive at least because an examiner’s failure to follow the Director’s guidance is appealable only to the extent that the examiner has failed to follow the relevant statutes or case law.  To the extent the Director’s guidance goes beyond the case law and is more restrictive on the examiner than the case law, the failure of the examiner to follow those added restrictions is a matter for petition to the Director.  We are aware of no controlling precedent, nor do Appellants identify any controlling case law, that precludes an examiner from finding a claimed concept patent-ineligible unless it is similar to a concept that a court has previously identified as abstract.

(Emphasis added, citations omitted, and hyperlink and footnote text placed inline.)

Hammock:

Appellants also argue that the § 101 rejection cannot be sustained because the Examiner has not identified a case in which the courts have identified a similar concept as an abstract idea . . . . Yet, to the extent Appellants maintain that the § 101 rejection must be withdrawn because the Examiner has failed to comply with USPTO guidelines, i.e., the USPTO's May 4, 2016 Memorandum, "Formulating a Subject Matter Eligibility Rejection and Evaluating the Applicant's Response to a Subject Matter Eligibility Rejection," we note that an examiner's failure to follow the Director's guidance is appealable only to the extent that the examiner has failed to follow the statutes or case law.  To the extent the Director's guidance goes beyond the case law and is more restrictive on the Examiner than the case law, the failure of the Examiner to follow those added restrictions is a matter for petition to the Director.  We are aware of no controlling precedent, nor do Appellants identify any controlling case law, that precludes an examiner from finding a claimed concept patent-ineligible unless it is similar to a concept that a court has previously identified as abstract.

(Emphasis added and citations omitted.)

My two cents: Courts have long held abstract ideas to be unpatentable, and in Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347 (2014), the Supreme Court set out a framework for determining whether patent claims should be rejected as abstract.  As the Federal Circuit has pointed out, because there is no definition of "abstract idea" for the purposes of subject-matter eligibility analysis of claims with regard to that judicial exception to 35 U.S.C. § 101, we are resigned to compare each new case to prior cases:

The Supreme Court has not established a definitive rule to determine what constitutes an "abstract idea" sufficient to satisfy the first step of the Mayo/Alice inquiry.  Rather, both this court and the Supreme Court have found it sufficient to compare claims at issue to those claims already found to be directed to an abstract idea in previous cases.

Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1334 (Fed. Cir. 2016) (internal citation omitted).

Following the Enfish decision, the USPTO memorandum "Formulating a Subject Matter Eligibility Rejection and Evaluating the Applicant's Response to a Subject Matter Eligibility Rejection", issued May 4, 2016, turned the Federal Circuit's lament into USPTO policy by requiring examiners to explain why the identified abstract idea corresponds to a concept that the courts have previously identified as abstract:

[W]hen an examiner determines that a claim is directed to an abstract idea (Step 2A), the rejection should identify the abstract idea as it is recited (i.e., set forth or described) in the claim and explain why it corresponds to a concept that the courts have identified as an abstract idea.
...
When the examiner has determined the claim recites an abstract idea, the rejection should identify the abstract idea as it is recited (i.e., set forth or described) in the claim, and explain why it corresponds to a concept that the courts have identified as an abstract idea. See, for example, the concepts identified on the July 2015 Update: Interim Eligibility Guidance Quick Reference Sheet, page 2. Citing to an appropriate court decision that supports the identification of the subject matter recited in the claim language as an abstract idea is a best practice that will advance prosecution. Examiners should be familiar with any cited decision relied upon in making or maintaining a rejection to ensure that the rejection is reasonably tied to the facts of the case and to avoid relying upon language taken out of context. Examiners should not go beyond those concepts that are similar to what the courts have identified as abstract ideas. Examiners are reminded that a chart of court decisions is available on the USPTO's Internet Web site.

However, as shown by the above Board cases, the options for applicant enforcement of the Enfish memo are few and poor.  When examiners fail to follow the official guidance, applicants can complain to supervisors, TC directors, the ombudman, or, by way of petition, to the same supervisors or TC directors and ultimately the Office of Petitions, but applicants cannot go to the Board.  None of the available options toll the prosecution clock, meaning that an application can go abandoned while an applicant fights a procedural battle that may have little bearing on the ultimate patentability of the claims.

On April 19, 2018, the USPTO released a new Alice-rejection-related guidance memo, following the decision in Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018).  Berkheimer held that whether a particular technology is well-understood, routine, and conventional is a question of fact within the legal determination of subject-matter ineligibility, and one that 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."  881 F.3d at 1369.  In a nutshell, the Berkheimer memo instructs that examiners must provide record evidence supporting allegations that claim elements or ordered combinations of elements amount only to "well-understood, routine, and conventional" features that thus fail to add "significantly more" to the claims than the abstract idea to which they are alleged to be directed.  Such record evidence can be based on applicant admissions, prior court decisions, or findings made from cited publications, but "cannot be based only on the fact that the specification is silent with respect to describing such element" and cannot be shown "merely [by] finding the additional element in a single patent or published application . . . unless the patent or published application demonstrates that the additional element[s] are widely prevalent or in common use in the relevant field."

There are generally good reasons for making USPTO policy dictating what an examiner must or must not do when setting forth a rejection procedurally enforceable at the Patent Trial and Appeal Board, but those reasons may be weaker when it comes to the first step of the Alice framework.  To be sure, forcing examiners to adhere to USPTO policy provides safeguards to applicant procedural due process and helps to ensure that USPTO decisions are not arbitrary, capricious, or discriminatory.  Additionally, the Board considers itself to be a reviewing body, and not a place of initial examination; as such, the Board ought to free itself of reviewing abstract-idea determinations made at Alice step one that do not comport with USPTO guidance, and should just summarily reverse such determinations.  Austin, Hammock, and other decisions show that this is not the case, however, nor is this a particularly new position taken by the Board, see. e.g., Ex parte Lyons, No. 2009-007300 (B.P.A.I. Dec. 13, 2010) ("Failure to comply with guidance is not per se appealable to the Board, as the jurisdiction of the Board is limited to review of rejections rather than the conduct of the examination."), even if exceptions can be found in the appeal records.

But the appellants lost in those cases because they were not able to show binding precedential support for their suppositions as to what was required during examination.  The Federal Circuit's Berkheimer decision, however, provides more definite precedential support for the content of the Berkheimer memo than Enfish does for the May 2016 Enfish memo.  For instance, Berkheimer states in no uncertain terms that "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."  881 F.3d at 1369.  As such, applicants may have more success in asking the Board to uphold the procedural requirements imposed on examiners by the Berkheimer memo, at Alice step two, than they have had in trying to enforce the July 2015 and May 2016 guidance memos, relating to step one of the Alice framework.