How should examiners respond to arguments about claim specificity and non-preemption?
When applicants argue that their claims are specific and do not preempt all applications of an exception, examiners should reconsider their eligibility analysis. The MPEP 2106.07(b) provides guidance:
“If applicant argues that the claim is specific and does not preempt all applications of the exception, the examiner should reconsider Step 2A of the eligibility analysis, e.g., to determine whether the claim is directed to an improvement to the functioning of a computer or to any other technology or technical field. If an examiner still determines that the claim is directed to a judicial exception, the examiner should then reconsider in Step 2B whether the additional elements in combination (as well as individually) amount to an inventive concept, e.g., because they are more than the non-conventional and non-generic arrangement of known, conventional elements.“
Key points for examiners:
- Reconsider Step 2A to evaluate potential improvements to technology or technical fields
- In Step 2B, assess if the combination of elements amounts to an inventive concept
- Remember that preemption is not a standalone test but an underlying concern
The MPEP notes: “Such reconsideration is appropriate because, although preemption is not a standalone test for eligibility, it remains the underlying concern that drives the two-part framework from Alice Corp. and Mayo (Steps 2A and 2B).“
To learn more: