Quotes of the day

Whether something is well-understood, routine, and conventional to a skilled artisan at the time of the patent is a factual determination. Whether a particular technology is well-understood, routine, and conventional goes beyond what was simply known in the prior art. The mere fact that something is disclosed in a piece of prior art, for example, does not mean it was well-understood, routine, and conventional.

Berkheimer v. HP INC., No. 2017-1437 (Fed. Cir. Feb. 8, 2018)(slip opinion at 14).

An examiner’s assertion that a particular fact or principle is well-known is not evidentiary support. Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1362 (Fed. Cir. 2016). 

In re Google, 2022-2012 (Fed. Cir. January 9, 2023)(slip opinion at 10 citing Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1362 (Fed. Cir. 2016) and DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1367 (Fed. Cir. 2006). 

Sure sounds like the PTO should be required to provide evidence in a §101 rejection that something is well-understood, routine, and conventional to a skilled artisan at the time of the patent — not mere examiner or APJ opinions — or otherwise the rejection should fail for lack of substantial evidence.

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