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

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

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.“