How can an applicant respond to a patent-eligible subject matter rejection?
According to MPEP 2106.07(b), an applicant can respond to a rejection based on failure to claim patent-eligible subject matter in three main ways:
- Amend the claim to add additional elements or modify existing elements
- Present persuasive arguments based on a good faith belief as to why the rejection is in error
- Submit evidence traversing the subject matter eligibility rejection
The MPEP states: “In response to a rejection based on failure to claim patent-eligible subject matter, applicant may: (i) amend the claim, e.g., to add additional elements or modify existing elements so that the claim as a whole amounts to significantly more than the judicial exception, (or integrates the judicial exception into a practical application), (ii) present persuasive arguments based on a good faith belief as to why the rejection is in error and/or (iii) submit evidence traversing a subject matter eligibility rejection according to the procedures set forth in MPEP § 716.01 and 37 CFR 1.132.“
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