Sunday, October 21, 2018

The USPTO and the Berkheimer memo

The last paragraph of an allthingspros post on Berkheimer states:

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.


The problematic nature of Berkheimer resides in the issue that what was "well-understood, routine, and conventional" at some point in the past is a matter of opinion, not one of fact. What was disclosed in a piece of prior art is a matter of historical fact. A separate issue, raised in the CCIA brief and elsewhere, is that those of skill in the art do not tend to memorialize those things which are "well-understood, routine, and conventional."

Ebert note

See also

See also CCIA brief


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