What should examiners do if an applicant argues that an additional element is not well-understood, routine, conventional activity?

When an applicant argues that an additional element is not well-understood, routine, conventional activity, examiners should take the following steps:

1. Reevaluate whether it is readily apparent that the additional element is well-understood, routine, conventional activity in the relevant field.
2. If it is not readily apparent, provide additional evidence to support the examiner’s position, as outlined in MPEP 2106.07(a)(III).
3. Include a discussion in the Office action to explain the examiner’s position and address the applicant’s arguments.

MPEP 2106.07(b) states: “If it is not readily apparent that the additional element is well-understood, routine, conventional activity, the examiner should reevaluate Step 2B of the eligibility analysis, for example, by reviewing the portion of the specification that describes the additional element to determine if the additional element is described in a way that indicates that the additional element is well-understood, routine, conventional activity.“

To learn more:

• well-understood routine conventional activity
• applicant arguments
• examiner response
• Step 2B
• patent examination