How can examiners determine if a limitation is merely a field of use or technological environment?

Patent examiners need to carefully evaluate claim limitations to determine if they merely indicate a field of use or technological environment. The MPEP 2106.05(h) provides guidance on this process:

“For claim limitations that generally link the use of the judicial exception to a particular technological environment or field of use, examiners should explain in an eligibility rejection why they do not meaningfully limit the claim.”

Examiners should consider whether the limitation:

• Merely refers to a particular environment without integrating the judicial exception into a practical application
• Simply uses generic computer functions to execute an abstract idea
• Attempts to limit the use of an abstract idea to a particular technological environment without adding significantly more

For example, the MPEP states that “an examiner could explain that employing generic computer functions to execute an abstract idea, even when limiting the use of the idea to one particular environment, does not add significantly more, similar to how limiting the abstract idea in Flook to petrochemical and oil-refining industries was insufficient.”

Examiners are advised to carefully consider each claim on its own merits and evaluate all other relevant considerations before making a determination on this aspect of patent eligibility.

To learn more:

• Field of Use
• Technological Environment
• Patent Examination
• Claim Analysis