What are examples of “applying it” with a computer in patent claims?
Examples of “applying it” with a computer in patent claims, which may indicate mere instructions to apply an exception, include: Using a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) Adding the words “apply it” (or an equivalent) with the judicial exception, or…
Read MoreWhat are examples of abstract ideas “having no particular concrete or tangible form”?
The category of abstract ideas “having no particular concrete or tangible form” is a catch-all category for abstract ideas that don’t fit neatly into the other three categories (mathematical concepts, certain methods of organizing human activity, and mental processes) as described in MPEP 2106.04(a). While the MPEP doesn’t provide an exhaustive list, it does offer…
Read MoreHow can examiners determine if a claim limitation is more than “mere instructions to apply an exception”?
Examiners should carefully consider each claim on its own merits and evaluate all relevant considerations to determine if an element or combination of elements is more than mere instructions to apply an exception. The MPEP 2106.05(f) provides guidance on this evaluation: “[E]xaminers should carefully consider each claim on its own merits, as well as evaluate…
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 MoreHow does the examination guidance relate to the substantive law on patent eligibility?
The examination guidance, training materials, and examples provided by the USPTO explain the substantive law on patent eligibility and establish examination procedures, but they do not serve as an independent basis for rejection. The MPEP clarifies: “Examination guidance, training, and explanatory examples discuss the substantive law and establish the policies and procedures to be followed…
Read MoreHow does the USPTO evaluate improvements to technology in Step 2A Prong Two?
In Step 2A Prong Two, the USPTO evaluates whether the claim as a whole integrates the judicial exception into a practical application, including by considering if the claimed invention improves the functioning of a computer or other technology/technical field. As stated in MPEP 2106.04(d)(1): “The specification need not explicitly set forth the improvement, but it…
Read MoreHow do examiners evaluate whether additional elements amount to significantly more?
According to MPEP 2106.05, examiners should evaluate whether additional elements amount to significantly more by considering: Improvements to the functioning of a computer or to any other technology/technical field Applying the judicial exception with, or by use of, a particular machine Effecting a transformation or reduction of a particular article to a different state or…
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 MoreWhat is the difference between ‘directed to’ a judicial exception and ‘reciting’ a judicial exception?
There is an important distinction between a claim ‘reciting’ a judicial exception and being ‘directed to’ a judicial exception in patent eligibility analysis: ‘Reciting’ a judicial exception means the claim sets forth or describes the exception. Being ‘directed to’ a judicial exception means the exception is not integrated into a practical application. As stated in…
Read MoreWhat is the difference between a claim ‘reciting’ and ‘involving’ an abstract idea?
The distinction between a claim ‘reciting’ an abstract idea and ‘involving’ an abstract idea is crucial in patent eligibility determinations. According to the MPEP: “Some claims are not directed to an abstract idea because they do not recite an abstract idea, although it may be apparent that at some level they are based on or…
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