How 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 by examiners in evaluating patent applications for compliance with the substantive law, but do not serve as a basis for a rejection.”
While applicants may cite these materials to support eligibility arguments, examiners should not require claims to be modeled after specific examples to establish eligibility. Rejections must be based on the substantive law as interpreted by judicial precedent.
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