How can examiners determine if a claim limitation is more than “mere instructions to apply an exception”?

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 should carefully consider each claim on its own merits and evaluate all relevant considerations to determine if an element or combination of elements is more than mere instructions to apply an exception. The MPEP 2106.05(f) provides guidance on this evaluation:

“[E]xaminers 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 more than mere instructions to apply an exception.”

Examiners should consider factors such as:

• Whether the claim recites only the idea of a solution or outcome without details of how it is accomplished
• Whether the claim invokes computers or other machinery merely as a tool to perform an existing process
• The particularity or generality of the application of the judicial exception

Additionally, examiners should consider how the claim limitations interact with other considerations, such as improvements to technology (MPEP 2106.05(a)), particular machine (MPEP 2106.05(b)), and particular transformation (MPEP 2106.05(c)).