What should examiners consider when evaluating an applicant’s response to a subject matter eligibility rejection?

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

Examiners must carefully evaluate all aspects of an applicant’s response to a subject matter eligibility rejection. The MPEP 2106.07(b) provides guidance:

“When evaluating a response, examiners must carefully consider all of applicant’s arguments and evidence rebutting the subject matter eligibility rejection. If applicant has amended the claim, examiners should determine the amended claim’s broadest reasonable interpretation and again perform the subject matter eligibility analysis.“

Key considerations for examiners include:

• Analyzing any claim amendments and their impact on eligibility
• Assessing arguments about integration into a practical application
• Evaluating evidence of significantly more than a judicial exception
• Considering the combination of additional elements, not just individual elements

If the applicant’s response persuasively establishes eligibility, the rejection should be withdrawn.