How are Form Paragraphs 7.05.015, 7.05.016, and 7.05.017 used together in patent rejections?
Form Paragraphs 7.05.015, 7.05.016, and 7.05.017 are used together in patent rejections to provide a comprehensive explanation for why a claim is rejected under 35 U.S.C. 101 for lack of subject matter eligibility. According to MPEP 2106.07(a)(1), these form paragraphs correspond to the steps of the Alice/Mayo test:
- Form Paragraph 7.05.015: Identifies the claim as directed to an abstract idea and specifies which abstract idea grouping it falls under (Step 2A, Prong One).
- Form Paragraph 7.05.016: Explains that the claim does not recite additional elements that integrate the judicial exception into a practical application (Step 2A, Prong Two).
- Form Paragraph 7.05.017: Explains that the claim does not recite additional elements that amount to significantly more than the judicial exception (Step 2B).
By using these form paragraphs together, examiners can systematically address each step of the subject matter eligibility analysis, providing a clear and structured rejection that applicants can understand and respond to effectively.
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Topics:
MPEP 2100 - Patentability,
MPEP 2106.07(A)(1) - Form Paragraphs For Use In Lack Of Subject Matter Eligibility Rejections,
Patent Law,
Patent Procedure