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…
Read MoreHow should examiners respond to applicant’s arguments regarding well-understood, routine, conventional activity?
When responding to an applicant’s arguments regarding well-understood, routine, conventional activity, examiners should follow these guidelines: If the applicant challenges the examiner’s position that an additional element is well-understood, routine, conventional activity, the examiner should reevaluate whether it is readily apparent that the element is widely prevalent or in common use in the relevant industry.…
Read MoreHow should examiners respond to arguments about claim specificity and non-preemption?
When applicants argue that their claims are specific and do not preempt all applications of an exception, examiners should reconsider their eligibility analysis. The MPEP 2106.07(b) provides guidance: “If applicant argues that the claim is specific and does not preempt all applications of the exception, the examiner should reconsider Step 2A of the eligibility analysis,…
Read MoreWhat should examiners do if an applicant challenges a well-known, routine, conventional activity assertion?
When an applicant challenges an examiner’s assertion that certain elements are well-known, routine, conventional activities, the examiner must carefully reevaluate their position. The MPEP 2106.07(b) provides specific guidance: “If applicant responds to an examiner’s assertion that something is well-known, routine, conventional activity with a specific argument or evidence that the additional elements in a claim…
Read MoreWhat should examiners do if an applicant argues that an additional element is not well-understood, routine, conventional activity?
When an applicant argues that an additional element is not well-understood, routine, conventional activity, examiners should take the following steps: Reevaluate whether it is readily apparent that the additional element is well-understood, routine, conventional activity in the relevant field. If it is not readily apparent, provide additional evidence to support the examiner’s position, as outlined…
Read MoreHow should examiners evaluate claims with added generic computer components?
When applicants amend claims to add generic computer components, examiners must carefully evaluate whether this integration results in a practical application or significantly more. The MPEP 2106.07(b) provides guidance: “If applicant amends a claim to add a generic computer or generic computer components and asserts that the claim is integrated into a practical application or…
Read MoreHow should examiners evaluate applicant’s arguments regarding the improvement to computer functionality or other technology?
When evaluating applicant’s arguments regarding improvements to computer functionality or other technology, examiners should: Carefully consider the applicant’s arguments and any supporting evidence provided. Determine whether the claimed invention provides a technical improvement that is reflected in the specification. Assess whether the improvement is to the functioning of a computer itself or to any other…
Read MoreWhat should examiners consider when evaluating an applicant’s response to a subject matter eligibility rejection?
Examiners must carefully evaluate all aspects of an applicant’s response to a subject matter eligibility rejection. The MPEP 2106.07(b) provides guidance: “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…
Read MoreHow can an applicant argue for integration into a practical application or significantly more?
Applicants can argue for patent eligibility by demonstrating that their claim integrates a judicial exception into a practical application or amounts to significantly more. The MPEP 2106.07(b) provides guidance: “Applicant may argue that a claim is eligible because the claim as a whole integrates the judicial exception into a practical application or amounts to significantly…
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