What 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 Form Paragraph 7.05.017 used for in patent examination?
Form Paragraph 7.05.017 is a crucial tool in patent examination for addressing subject matter eligibility under 35 U.S.C. 101. According to MPEP 2106.07(a)(1), this form paragraph is used: “To explain that the claim(s) do not recite additional elements that amount to significantly more than the judicial exception.” Specifically, Form Paragraph 7.05.017 is employed when: The…
Read MoreWhat is the purpose of form paragraph 7.05.016 in patent examination?
Form paragraph 7.05.016 is used for rejections under 35 U.S.C. 101 when the claimed invention is directed to a judicial exception without significantly more (i.e., without an inventive concept). This form paragraph should be preceded by form paragraph 7.05. The MPEP provides the following structure for this form paragraph: “the claimed invention is directed to…
Read MoreWhat is the “field of use and technological environment” consideration in patent eligibility?
The “field of use and technological environment” consideration is part of the patent eligibility analysis under 35 U.S.C. § 101. It examines whether the additional elements in a claim amount to more than generally linking the use of a judicial exception (such as an abstract idea) to a particular technological environment or field of use.…
Read MoreHow does “field of use” affect patent eligibility?
The concept of “field of use” is important in patent eligibility analysis. According to MPEP 2106.05(h): “Another consideration when determining whether a claim integrates the judicial exception into a practical application in Step 2A Prong Two or recites significantly more than a judicial exception in Step 2B is whether the additional elements amount to more…
Read MoreHow does extra-solution activity or field-of-use affect a machine’s contribution to patent eligibility?
The involvement of a machine in extra-solution activity or as a field-of-use limitation can significantly impact its contribution to patent eligibility. MPEP 2106.05(b) states: “Use of a machine that contributes only nominally or insignificantly to the execution of the claimed method (e.g., in a data gathering step or in a field-of-use limitation) would not integrate…
Read MoreHow should patent examiners explain rejections based on insignificant extra-solution activity?
When rejecting a claim based on insignificant extra-solution activity, patent examiners should provide a clear explanation. The MPEP 2106.05(g) advises: “For claim limitations that add insignificant extra-solution activity to the judicial exception (e.g., mere data gathering in conjunction with a law of nature or abstract idea), examiners should explain in an eligibility rejection why they…
Read MoreWhat are some examples of claims that were found to be mere instructions to apply an exception?
The MPEP 2106.05(f) provides several examples of claims that courts have found to be mere instructions to apply an exception: Remotely accessing user-specific information through a mobile interface and pointers without describing how the mobile interface and pointers accomplish the result (Intellectual Ventures v. Erie Indem. Co.) A general method of screening emails on a…
Read MoreWhat are examples of claims that do not integrate a judicial exception through treatment?
The MPEP 2106.04(d)(2) provides examples of claims that do not integrate a judicial exception through treatment. These include: Insignificant extra-solution activity: “For example, a claim reciting the step of ‘administering a drug providing 6-thioguanine to a patient’ (without more) is not a meaningful limitation.” General treatment: “For example, consider a claim that recites mentally analyzing…
Read MoreWhat are examples of claims that improve technology and are not directed to a judicial exception?
The MPEP provides several examples of claims that improve technology and are not directed to a judicial exception. These examples demonstrate how courts have found certain claims to be patent-eligible due to their technological improvements: Enfish, LLC v. Microsoft Corp.: Claims to a self-referential table for a computer database were found to be an improvement…
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