How should examiners identify and explain abstract ideas in claims?
When identifying and explaining abstract ideas in claims, examiners should: Identify the specific claim limitation(s) that recite the abstract idea Explain why those limitations are considered abstract Identify which grouping of abstract ideas the concept falls into (mathematical concepts, mental processes, or certain methods of organizing human activity) If not in an enumerated grouping, provide…
Read MoreHow should examiners handle ‘tentative abstract ideas’ in subject matter eligibility rejections?
For ‘tentative abstract ideas’ that do not fall within the enumerated groupings, examiners should: Use form paragraph 7.05.017 in addition to other required paragraphs Provide justification for treating the limitation as an abstract idea Obtain approval from the Technology Center Director Include the TC Director’s signature in the rejection MPEP 2106.07(a)(1) states: “If the judicial…
Read MoreWhat 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…
Read MoreWhat are the form paragraphs used for subject matter eligibility rejections?
The key form paragraphs used for subject matter eligibility rejections are: 7.04.01 – Statement of Statutory Basis, 35 U.S.C. 101 7.05 – Rejection, 35 U.S.C. 101, -Heading Only- 7.05.01 – Rejection, 35 U.S.C. 101, Nonstatutory (Not One of the Four Statutory Categories) 7.05.016 – Rejection, 35 U.S.C. 101, Nonstatutory (Directed to a Judicial Exception without…
Read MoreWhat is the evidentiary standard for subject matter eligibility rejections?
The evidentiary standard for subject matter eligibility rejections varies depending on the step of the analysis: For Step 2A Prong One (identifying the judicial exception), no evidence is required For Step 2A Prong Two and Step 2B, evidence is only required to support a finding that additional elements are well-understood, routine, conventional activities MPEP 2106.07(a)(III)…
Read MoreWhat evidence is required to support a finding that claim elements are well-understood, routine, and conventional?
To support a finding that additional claim elements are well-understood, routine, and conventional, examiners must provide one of the following: A citation to an express statement in the specification or during prosecution A citation to one or more court decisions discussed in MPEP 2106.05(d) A citation to a publication demonstrating the well-understood, routine, conventional nature…
Read MoreHow should examiners analyze claims for ‘significantly more’ in Step 2B?
When analyzing claims for ‘significantly more’ in Step 2B, examiners should: Identify the additional elements beyond the judicial exception Explain why the additional elements, individually and in combination, do not amount to significantly more Consider whether the additional elements provide an inventive concept Provide evidence if asserting that elements are well-understood, routine, conventional activities MPEP…
Read MoreHow should examiners analyze claims for integration into a practical application?
When analyzing claims for integration into a practical application, examiners should: Identify any additional elements beyond the judicial exception Evaluate the integration of the judicial exception into a practical application Explain why there are no additional elements, or why the additional elements do not integrate the exception Consider the additional elements individually and in combination…
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