How can an applicant respond to a patent-eligible subject matter rejection?

Question

Accepted Answer

Source: FAQ (MPEP-Based) BlueIron Update: 2024-09-30 10 Rules 5 Related FAQs This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice. 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 subject matter eligibility rejection The MPEP states: “ In response to a rejection based on failure to claim patent-eligible subject matter, applicant may: (i) amend the claim, e.g., to add additional elements or modify existing elements so that the claim as a whole amounts to significantly more than the judicial exception, (or integrates the judicial exception into a practical application), (ii) present persuasive arguments based on a good faith belief as to why the rejection is in error and/or (iii) submit evidence traversing a subject matter eligibility rejection according to the procedures set forth in MPEP § 716.01 and 37 CFR 1.132. “ Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse Response to Subject Matter Eligibility Rejection MPEP 2106.07(b) Permitted Claim Must Include Significantly More Than Abstract Idea MPEP 2106 Prohibited Flowchart for Subject Matter Eligibility Analysis MPEP 2106 Recommended Flowchart for Subject Matter Eligibility Analysis MPEP 2106 Claim Is Eligible When Integrating Judicial Exception into Practical Application MPEP 2106.07(b) Permitted Claims Directed to Judicial Exception Must Have Significantly More Than Exception MPEP 2106 Prohibited Claim Interpretation Affects Significantly More Analysis MPEP 2106 Permitted Claims Must Recite Additional Elements Significantly More Than Judicial Except...