How does the USPTO handle claims that cover both statutory and non-statutory embodiments?

The USPTO has specific guidelines for handling claims that cover both statutory and non-statutory embodiments. According to the MPEP:

“A claim whose BRI covers both statutory and non-statutory embodiments embraces subject matter that is not eligible for patent protection and therefore is directed to non-statutory subject matter. Such claims fail the first step (Step 1: NO) and should be rejected under 35 U.S.C. 101, for at least this reason.“

In such cases, the USPTO recommends the following best practices:

1. The examiner should point out the broadest reasonable interpretation (BRI) that leads to the claim covering non-statutory subject matter.
2. If possible, the examiner should recommend an amendment that would narrow the claim to only cover statutory embodiments.

For example, claims to “computer-readable media” can sometimes encompass both statutory (e.g., non-transitory storage devices) and non-statutory (e.g., transitory signals) embodiments. In such cases, the examiner would typically suggest amending the claim to specifically recite “non-transitory computer-readable media” to overcome the rejection.

To learn more:

• Statutory Subject Matter
• Non-statutory Subject Matter
• Broadest Reasonable Interpretation
• 35 U.S.C. 101
• Patent Examination