How does the USPTO handle claims that involve both abstract and non-abstract elements?

When claims involve both abstract and non-abstract elements, the USPTO follows these guidelines:

1. Identify abstract ideas: Examiners first identify any abstract ideas within the claim.
2. Evaluate additional elements: They then assess whether the claim includes additional elements that integrate the abstract idea into a practical application or amount to significantly more than the abstract idea itself.
3. Consider the claim as a whole: The entire claim is evaluated to determine if it is directed to an abstract idea or if the non-abstract elements transform it into patent-eligible subject matter.

According to MPEP 2106.04(a): “Examiners should determine whether a claim recites an abstract idea by (1) identifying the specific limitation(s) in the claim under examination that the examiner believes recites an abstract idea, and (2) determining whether the identified limitations(s) fall within at least one of the groupings of abstract ideas listed above.”

The MPEP further states: “A claim is not ‘directed to’ a judicial exception, and thus is patent eligible, if the claim as a whole integrates the recited judicial exception into a practical application of that exception.”

To learn more:

• mixed claims
• abstract and non-abstract elements
• patent eligibility