2106.05(d) Well-Understood, Routine, Conventional Activity
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If the additional element (or combination of elements) is a specific limitation other than what is well-understood, routine and conventional in the field, for instance because it is an unconventional step that confines the claim to a particular useful application of the judicial exception, then this consideration favors eligibility.
- If, however, the additional element (or combination of elements) is no more than well-understood, routine, conventional activities previously known to the industry, which is recited at a high level of generality, then this consideration does not favor eligibility.
DDR Holdings, LLC v. Hotels.com, L.P., provides an example of additional elements that favored eligibility because they were more than well-understood, routine conventional activities in the field.
The claims in DDR Holdings were directed to systems and methods of generating a composite webpage that combines certain visual elements of a host website with the content of a third-party merchant.
The court found that the claim had additional elements that amounted to significantly more than the abstract idea, because they modified conventional Internet hyperlink protocol to dynamically produce a dual-source hybrid webpage, which differed from the conventional operation of Internet hyperlink protocol that transported the user away from the host’s webpage to the third party’s webpage when the hyperlink was activated.
Thus, the claims in DDR Holdings were eligible.
On the other hand, Mayo Collaborative Servs. v. Prometheus Labs., provides an example of additional elements that were not an inventive concept because they were merely well-understood, routine, conventional activity previously known to the industry, which were not by themselves sufficient to transform a judicial exception into a patent eligible invention.
In Mayo, the claims at issue recited naturally occurring correlations (the relationships between the concentration in the blood of certain thiopurine metabolites and the likelihood that a drug dosage will be ineffective or induce harmful side effects) along with additional elements including telling a doctor to measure thiopurine metabolite levels in the blood using any known process.
The Court found this additional step of measuring metabolite levels to be well-understood, routine, conventional activity already engaged in by the scientific community because scientists “routinely measured metabolites as part of their investigations into the relationships between metabolite levels and efficacy and toxicity of thiopurine compounds.”
Even when considered in combination with the other additional elements, the step of measuring metabolite levels did not amount to an inventive concept, and thus the claims in Mayo were not eligible.
I. EVALUATING WHETHER THE ADDITIONAL ELEMENTS ARE WELL-UNDERSTOOD, ROUTINE, CONVENTIONAL ACTIVITY
When making a determination whether the additional elements in a claim amount to significantly more than a judicial exception, the examiner should evaluate whether the elements define only well-understood, routine, conventional activity.
- In this respect, the well-understood, routine, conventional consideration overlaps with other Step 2B considerations, particularly the improvement consideration, the mere instructions to apply an exception consideration, and the insignificant extra-solution activity consideration.
- Thus, evaluation of those other considerations may assist examiners in making a determination of whether a particular element or combination of elements is well-understood, routine, conventional activity.
In addition, examiners should keep in mind the following points when determining whether additional elements define only well-understood, routine, conventional activity.
- 1. An additional element (or combination of additional elements) that is known in the art can still be unconventional or non-routine. The question of whether a particular claimed invention is novel or obvious is “fully apart” from the question of whether it is eligible.
- 2. A prior art search should not be necessary to resolve the inquiry as to whether an additional element (or combination of additional elements) is well-understood, routine, conventional activity. Instead, examiners should rely on what the courts have recognized, or those in the art would recognize, as elements that are well-understood, routine, conventional activity in the relevant field.
- 3. Even if one or more additional elements are well-understood, routine, conventional activity when considered individually, the combination of additional elements may amount to an inventive concept.
In many instances, the specification of the application may indicate that additional elements are well-known or conventional.
Even if the specification is silent, however, courts have not required evidence to support a finding that additional elements were well‐understood, routine, conventional activities, but instead have treated the issue as a matter appropriate for judicial notice.
- As such, a rejection should only be made if an examiner relying on the examiner's expertise in the art can readily conclude in the Step 2B inquiry that the additional elements do not amount to significantly more (Step 2B: NO).
- If the elements or functions are beyond those recognized in the art or by the courts as being well‐understood, routine, conventional activity, then the elements or functions will in most cases amount to significantly more (Step 2B: YES).
II. ELEMENTS THAT THE COURTS HAVE RECOGNIZED AS WELL-UNDERSTOOD, ROUTINE, CONVENTIONAL ACTIVITY IN PARTICULAR FIELDS
Because examiners should rely on what the courts have recognized, or those of ordinary skill in the art would recognize, as elements that describe well‐understood, routine activities, the following section provides examples of elements that have been recognized by the courts as well-understood, routine, conventional activity in particular fields.
- It should be noted, however, that many of these examples failed to satisfy other Step 2B considerations (e.g., because they were recited at a high level of generality and thus were mere instructions to apply an exception, or were insignificant extra-solution activity).
- Thus, examiners should carefully analyze additional elements in a claim with respect to all relevant Step 2B considerations, including this consideration, before making a conclusion as to whether they amount to an inventive concept.
The courts have recognized the following computer functions as well‐understood, routine, and conventional functions when they are claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity.
- i. Receiving or transmitting data over a network, e.g., using the Internet to gather data
- ii. Performing repetitive calculations
- iii. Electronic recordkeeping
- iv. Storing and retrieving information in memory
- v. Electronically scanning or extracting data from a physical document
- vi. A web browser’s back and forward button functionality
This listing is not meant to imply that all computer functions are well‐understood, routine, conventional activities, or that a claim reciting a generic computer component performing a generic computer function is necessarily ineligible.
- Courts have held computer‐implemented processes not to be significantly more than an abstract idea (and thus ineligible) where the claim as a whole amounts to nothing more than generic computer functions merely used to implement an abstract idea, such as an idea that could be done by a human analog (i.e., by hand or by merely thinking).
- On the other hand, courts have held computer-implemented processes to be significantly more than an abstract idea (and thus eligible), where generic computer components are able in combination to perform functions that are not merely generic.
The courts have recognized the following laboratory techniques as well-understood, routine, conventional activity in the life science arts when they are claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity.
- i. Determining the level of a biomarker in blood by any means
- ii. Using polymerase chain reaction to amplify and detect DNA
- iii. Detecting DNA or enzymes in a sample
- iv. Immunizing a patient against a disease
- v. Analyzing DNA to provide sequence information or detect allelic variants
- vi. Freezing and thawing cells
- vii. Amplifying and sequencing nucleic acid sequences
- viii. Hybridizing a gene probe
Below are examples of other types of activity that the courts have found to be well-understood, routine, conventional activity when they are claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity.
- i. Recording a customer’s order
- ii. Shuffling and dealing a standard deck of cards
- iii. Restricting public access to media by requiring a consumer to view an advertisement
- iv. Identifying undeliverable mail items, decoding data on those mail items, and creating output data
- v. Presenting offers and gathering statistics
- vi. Determining an estimated outcome and setting a price
- vii. Arranging a hierarchy of groups, sorting information, eliminating less restrictive pricing information and determining the price
