How does the USPTO determine if a claim limitation is insignificant extra-solution activity?
The United States Patent and Trademark Office (USPTO) uses specific criteria to determine if a claim limitation constitutes insignificant extra-solution activity. According to MPEP 2106.05(g), examiners consider the following factors:
- Whether the extra-solution limitation is well known
- Whether the limitation is significant (i.e., it imposes meaningful limits on the claim such that it is not nominally or tangentially related to the invention)
- Whether the limitation amounts to necessary data gathering and outputting
The MPEP states: “Another consideration when determining whether a claim integrates the judicial exception into a practical application in Step 2A Prong Two or recites significantly more in Step 2B is whether the additional elements add more than insignificant extra-solution activity to the judicial exception.” Examiners are instructed to evaluate these factors in the context of the claimed invention to determine if the activity is truly insignificant or if it contributes meaningfully to the invention’s core purpose.
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