What factors do examiners consider when evaluating insignificant extra-solution activity?

According to MPEP 2106.05(g), examiners consider several factors when determining whether an additional element is insignificant extra-solution activity:

1. Whether the extra-solution limitation is well known: This overlaps with the well-understood, routine, conventional consideration and should not be considered in the Step 2A Prong Two analysis.
2. Whether the limitation is significant: Examiners assess if it imposes meaningful limits on the claim such that it is not nominally or tangentially related to the invention. This is considered in both Step 2A Prong Two and Step 2B.
3. Whether the limitation amounts to necessary data gathering and outputting: Examiners evaluate if all uses of the recited judicial exception require such data gathering or data output. This is considered in both Step 2A Prong Two and Step 2B.

The MPEP advises: “Examiners should carefully consider each claim on its own merits, as well as evaluate all other relevant considerations, before making a determination of whether an element (or combination of elements) is insignificant extra-solution activity.”

To learn more:

• patent examination
• extra-solution activity
• Step 2A
• Step 2B