How should an examiner formulate a rejection for lack of subject matter eligibility?

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.

An examiner should formulate a rejection for lack of subject matter eligibility by following these steps:

1. Identify the judicial exception recited in the claim
2. Explain why the identified limitation(s) falls within one of the abstract idea groupings
3. Identify any additional elements beyond the judicial exception
4. Explain why the additional elements do not integrate the exception into a practical application or amount to significantly more

The MPEP provides this guidance:

“The rejection should identify the judicial exception by referring to what is recited (i.e., set forth or described) in the claim and explain why it is considered an exception. The rejection should also identify any additional elements recited in the claim beyond the judicial exception and explain why they do not integrate the exception into a practical application and/or amount to significantly more than the exception.”