What are the key steps in formulating a subject matter eligibility rejection?
The key steps in formulating a subject matter eligibility rejection under 35 U.S.C. 101 are:
- Identify the judicial exception (abstract idea, law of nature, natural phenomenon) in the claim
- Explain why it is considered an exception
- Identify any additional elements beyond the exception
- Explain why the additional elements do not integrate the exception into a practical application or amount to significantly more
- Address the elements individually and as a combination
As stated in MPEP 2106.07(a): “When making the rejection, the Office action must provide an explanation as to why each claim is unpatentable, which must be sufficiently clear and specific to provide applicant sufficient notice of the reasons for ineligibility and enable the applicant to effectively respond.”
To learn more:
Topics:
MPEP 2100 - Patentability,
MPEP 2106.07(A) - Formulating A Rejection For Lack Of Subject Matter Eligibility,
Patent Law,
Patent Procedure