How should an examiner evaluate an applicant’s response to a subject matter eligibility rejection?

When evaluating an applicant’s response to a subject matter eligibility rejection, an examiner should:

1. Carefully consider all of applicant’s arguments and evidence
2. Determine if any claim amendments change the broadest reasonable interpretation
3. Reevaluate eligibility if persuasive arguments or evidence are presented
4. Provide a rebuttal in the next Office action if maintaining the rejection

The MPEP advises:

“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.”

If the applicant’s response overcomes the rejection, the examiner should withdraw it. Otherwise, a rebuttal explaining why the rejection is maintained must be provided.

To learn more:

• subject matter eligibility
• applicant response
• patent examination
• MPEP 2106.07