How does the particularity or generality of a claim affect the “mere instructions to apply” analysis?

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.

The particularity or generality of a claim is an important factor in determining whether it constitutes “mere instructions to apply an exception.” The MPEP 2106.05(f) provides guidance on this aspect:

“A claim having broad applicability across many fields of endeavor may not provide meaningful limitations that integrate a judicial exception into a practical application or amount to significantly more.”

Key considerations include:

1. Breadth of application: Claims with broad applicability across many fields are more likely to be seen as mere instructions to apply an exception.
2. Specificity of implementation: More specific claims that detail how a solution is implemented are less likely to be considered mere instructions.
3. Meaningful limitations: Claims should include meaningful limitations that integrate the exception into a practical application.
4. Effect vs. mechanism: Claims that focus on the effect of an abstract idea without describing the mechanism for achieving it are more likely to be seen as mere instructions.

For example, in Internet Patents Corporation v. Active Network, Inc., the court found that a claim maintaining the state of data in an online form without describing how it was accomplished was too general and amounted to mere instructions to apply an abstract idea.

To avoid being characterized as mere instructions, claims should provide specific, meaningful limitations on how the abstract idea or exception is applied in a particular context or field.