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

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 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.