How does the USPTO determine if a claim falls within a statutory category?

The USPTO determines if a claim falls within a statutory category through Step 1 of the eligibility analysis. As described in MPEP § 2106, Step 1 asks: Is the claim to a process, machine, manufacture or composition of matter?

The MPEP provides guidance on this process:

1. The claim should be evaluated using its broadest reasonable interpretation (BRI).
2. The examiner should determine whether the claim as a whole falls within one or more statutory categories.
3. If the claim falls within one or more categories (Step 1: YES), it proceeds to further analysis for eligibility.
4. If the claim does not fall within any statutory category (Step 1: NO), it is non-statutory and should be rejected under 35 U.S.C. 101.

Importantly, “A claim whose BRI covers both statutory and non-statutory embodiments embraces subject matter that is not eligible for patent protection and therefore is directed to non-statutory subject matter. Such claims fail the first step (Step 1: NO) and should be rejected under 35 U.S.C. 101, for at least this reason.“

To learn more:

• Patent Eligibility
• Statutory Category
• Step 1 Analysis
• Broadest Reasonable Interpretation
• 35 U.S.C. 101