How should examiners respond to applicant’s arguments regarding well-understood, routine, conventional activity?

When responding to an applicant’s arguments regarding well-understood, routine, conventional activity, examiners should follow these guidelines:

• If the applicant challenges the examiner’s position that an additional element is well-understood, routine, conventional activity, the examiner should reevaluate whether it is readily apparent that the element is widely prevalent or in common use in the relevant industry.
• If it is not readily apparent, the examiner should provide additional evidence to support their position, as outlined in MPEP 2106.07(a)(III).
• The examiner may need to include a discussion of the evidence to clarify the record.

As stated in MPEP 2106.07(b): “If an applicant challenges the examiner’s position that an additional element (or combination of elements) 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.“

To learn more:

• well-understood
• routine
• conventional activity
• examiner response
• applicant arguments
• patent examination