How should examiners evaluate claims with added generic computer components?
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.
When applicants amend claims to add generic computer components, examiners must carefully evaluate whether this integration results in a practical application or significantly more. The MPEP 2106.07(b) provides guidance:
“If applicant amends a claim to add a generic computer or generic computer components and asserts that the claim is integrated into a practical application or recites significantly more because the generic computer is ‘specially programmed’ (as in Alappat, now considered superseded) or is a ‘particular machine’ (as in Bilski), the examiner should look at whether the added elements integrate the judicial exception into a practical application or provide significantly more than the judicial exception.“
Key points for examiners:
- Merely adding a generic computer or components does not automatically overcome an eligibility rejection
- Evaluate whether the added elements integrate the exception into a practical application
- Assess if the combination of elements provides significantly more than the judicial exception
The MPEP cites relevant case law: “Merely adding a generic computer, generic computer components, or a programmed computer to perform generic computer functions does not automatically overcome an eligibility rejection.” (Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 224 (2014))