What should examiners do if an applicant challenges a well-known, routine, conventional activity assertion?
When an applicant challenges an examiner’s assertion that certain elements are well-known, routine, conventional activities, the examiner must carefully reevaluate their position. The MPEP 2106.07(b) provides specific guidance:
“If applicant responds to an examiner’s assertion that something is well-known, routine, conventional activity with a specific argument or evidence that the additional elements in a claim are not well-understood, routine, conventional activities previously engaged in by those in the relevant art, the examiner should reevaluate whether the additional elements are in actuality well-known, routine, conventional activities to those who work in the relevant field.“
Examiners should:
- Fully reevaluate their position, especially if the elements are not discussed in the specification as known generic functions/components/activities
- Consider providing evidence to support the rejection if it is maintained
- Refer to MPEP § 2106.05(d) for examples of elements that courts have found to be well-understood, routine, and conventional
If the examiner took official notice and the applicant challenges it, the examiner must provide one of the items discussed in paragraphs (A) through (C) of subsection III or an affidavit/declaration under 37 CFR 1.104(d)(2) to support their position.
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